Ex Parte Mukherjee et al

Board of Patent Appeals and Interferences

Sep 29, 2010

10700965 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEBARGHA MUKHERJEE
and AMIR SAID
____________

Appeal 2009-005374
Application 10/700,965
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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The Appellants appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-3, 5-8, 10-18, 20-29, and 31-36. Claims 4, 9, 19, and
30 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm-In-Part.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and system for
collaborating session communications with a plurality of participants (Spec.
3).
The Illustrative Claims
Claims 1, 7, and 26, the illustrative claims, read as follows:
1. A communications method comprising:

accessing scalable media data for communication to a plurality
of participants, wherein the scalable media data is configured to
convey information regarding a subject;

accessing a plurality of respective configuration parameters
corresponding to respective ones of the participants;

first modifying the scalable media data using a configuration
parameter for a first recipient of the participants, the first
modifying providing a first data stream having a first quantity
of data to convey information for the subject;

second modifying the scalable media data using a configuration
parameter for a second recipient of the participants, the second
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modifying providing a second data stream having a second
quantity of data to convey information for the subject and
different than the first quantity of data;

directing the first and the second data streams to respective ones
of the first and the second recipient participants;

accessing communications rules for a collaboration session; and

identifying the first and the second recipient participants using
the communications rules.

7. A communications method comprising:
configuring a collaboration session to implement
communications of scalable media data intermediate a plurality
of participants;

providing scalable media data to be communicated during
the collaboration session;

identifying a recipient participant for the scalable media data;

accessing at least one configuration parameter for the recipient
participant;

scaling the scalable media data according to the configuration
parameter for the recipient participant; and

outputting the scaled media data to the recipient participant
after the scaling;

wherein the configuration parameter comprises a receiving
attribute comprising display resolution for the recipient
participant.
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26. A collaboration session comprising:

means for arranging media data according to a scalable format
for communication in a collaboration session;
means for identifying a plurality of recipient participants of the
collaboration session for receiving the media data;
means for accessing a plurality of configuration parameters for
the identified recipient participants;
means for scaling the media data according to the accessed
configuration parameters;
means for communicating the scaled media data to the
identified recipient participants; and
means for processing the communicated media data to convey
content of the communicated media data to a user;
wherein the means for identifying comprises means for
identifying respective ones of the recipient participants of the
collaboration session responsive to an identity of an originating
participant which is configured to originate the media data.

The References
The Examiner relies on the following references as evidence:
Downs US 5,894,321 Apr. 13, 1999
Roy US 6,697,341 B1 Feb. 24, 2004

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The Rejections
The following rejections are before us for review:
Claims 1-3, 5, 6, 16-18, 20-29, 31, 32, and 34-36 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Roy.
Claims 7, 8, 10-15, and 33 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Roy and Downs2.
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).

II. ISSUES
1. Has the Examiner erred in finding that Roy discloses “means for
identifying respective ones of the recipient participants of the collaboration
session responsive to an identity of an originating participant which is
configured to originate the media data”, as recited in claim 26?
2. Has the Examiner erred in finding that Roy discloses “accessing
communications rules for a collaboration session; and identifying the first
and the second recipient participants using the communications rules”, as

2 In Examiner’s Answer, the dependent claims 8, and 10-15 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Roy. We treat the rejection
of claims 8, and 10-15 as the rejection under 35 U.S.C. § 103(a) based on the
Appellants’ statements (App. Br. 4).
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recited in claim 1, “access communications rules for respective ones of the
collaboration sessions, and to use the communications rules to identify one
or more of the recipient participants”, as recited in claim 16, or “accessing
communications rules of the collaboration session which identify an
appropriate recipient participant for the scalable media data”, as recited in
claim 22?
3. Has the Examiner erred in finding that the combination of Roy and
Downs teaches or fairly suggests “scaling the scalable media data according
to a configuration parameter for the recipient participant: and . . . wherein
the configuration parameters comprising display resolution for the recipient
participant.”, as recited in claim 7?

III. PRINCIPLES OF LAW
Claim Interpretation
The claim construction analysis begins with the words of the claim.
See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996). Absent an express intent to impart a novel meaning to a claim term,
the words take on the ordinary and customary meanings attributed to them
by those of ordinary skill in the art. Brookhill-Wilk 1, LLC. v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” In re American Academy of
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Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)). “An essential purpose of
patent examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be removed,
as much as possible, during the administrative process.” Zletz, 893 F.2d 319,
322 (Fed. Cir. 1989). “Construing claims broadly during prosecution is not
unfair to the applicant . . . because the applicant has the opportunity to
amend the claims to obtain more precise claim coverage.” American
Academy, 367 F.3d at 1364.

Anticipation
“[A]nticipation of a claim under § 102 can be found only if the
prior art reference discloses every element of the claim . . . .” In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). “[A]bsence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571 (Fed. Cir. 1986). In rejecting claims under 35 U.S.C. § 102, “[a]
single prior art reference that discloses, either expressly or inherently, each
limitation of a claim invalidates that claim by anticipation.” Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation
omitted).

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Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Roy
1. Roy discloses a method and apparatus for multimedia
conferencing services (Abstract).
When the operator of a source user device, for example
user device 100, sends start-up signals to the multimedia
bridge 114--the start-up signals having associated user
device 100 information such as the identity of the user
device 100 and of the user devices with which
communication is sought, for example--the multimedia
bridge 114 receives the signals from the user device 100
and retrieves profile information from the database 116
corresponding to the identity of the user device 100
and/or the destination user devices 106, 108 and 112.
The profile information may also include default
performance parameters for each user device 100, 106,
108 and 112, along with other relevant information. This
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information can also be sent dynamically by the source
user device 100 if it is known prior to the initiation of the
multimedia conference. The multimedia bridge can also
send this information to the called user devices to
negotiate multimedia conference performance
parameters dynamically.
Based on the profile information, or alternatively based
on information supplied by the source user device 100,
the multimedia bridge 114 sends start-up requests to the
necessary user devices 106, 108 and 112 involved in the
multimedia conference. If the start-up requests are
accepted, the user devices 106, 108 and 112 send start-up
signals with associated information back to the
multimedia bridge 114.
(col. 3, ll. 39-63, Fig. 1) (Emphases added).

2. Roy further discloses that:
The multimedia bridge 114 determines whether the start-
up request is valid and/or has proper authorization. If
the start-up request is not valid and/or authorized, the
multimedia bridge 114 sends a rejection message to the
user device 100. If the request is valid, the multimedia
bridge 114 sends initiation signals to the user devices
106, 108, and 112. Upon receiving the initiation signals,
the user devices 106, 108 and 112 determine the desired
criteria for joining the conference call, such as the
desired performance parameters. Each user device 106,
108 and 112 communicates the desired criteria for
joining the multimedia conference to the multimedia
bridge 114.
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The multimedia bridge 114 examines the reply signals
from the user devices 106, 108 and 112 and adapts the
actual performance of the communication link to each
user device 106, 108 and 112, using the techniques
described hereafter, to achieve the desired performance
parameters, taking into consideration the performance
capabilities of the user devices 100, 106,108 and 112 and
the network 120. The multimedia bridge 114 prepares
itself to bridge this multimedia conference call in
accordance with the criteria agreed upon by each party.
(col. 4, ll. 21- 42).
3. Roy also discloses that a plurality of performance parameters
(configuration parameters) for scaling, such as quantization factor or color
reduction (Fig. 3).

Downs
4. Downs discloses a method and system for multimedia
conferencing (Abstract) that has effectiveness data such as the display
resolution to characterize the objects attending in the conference (col. 9, ll.
1-12).

V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). The Examiner sets forth a
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detailed explanation of a reasoned conclusion of unpatentability in the
Examiner’s Answer. Therefore, we look to Appellants’ Briefs to show error
therein. Id.
Grouping of Claims

The Appellants have elected to argue claims 7, 8, 10-15, and 33
together as a group (App. Br. 7-9). Therefore, we select independent claim
7 as the representative claim for the group, and we will address the
Appellants’ arguments with respect thereto. 37 C.F.R. § 41.37 (c)(1)(vii).
See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
35 U.S.C. § 102 rejections
We start our review by determining the appropriate scope of the
argued claim limitations in the independent claims.
First, the claims themselves do not define the argued terms.
Therefore, we have an obligation to construe the terms with broad yet
reasonable interpretations.
Furthermore, in light of the breadth of Appellants’ Specification, we
broadly but reasonably construe the claim limitation “communication rule”
as any rule, criteria, standard procedure or authority for governing the act of
communications; the claim limitation “identify” as “to establish the identity
of” or “to find out the origin, nature, or definitive elements”3; the claim

3 See WEBSTER’S II New Riverside University Dictionary (1994 ed.), at
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limitation “recipient participant” as any recipient qualified to participate in
the multimedia communication conference; and the claim limitation
“independent of communications with the originating participant” as
different or not determined or not controlled by the communications with the
originating participant because there is no limitation in the claim language to
prevent us from reading the language broadly.
We now address the merits of the Appellants’ contentions under our
claim construction.

ISSUE 1
With respect to claim 26, the Appellants contend that Roy fails to
teach a means for identifying recipient participants let alone the responsive
to an identity of an originating participant which is configured to originate
the media data (App. Br. 7). The Appellants further contend that “in Roy,
the source user device identifies the recipients who are to participate in the
communication at the start of the communication and fails to teach the
claimed limitations” (Reply Br. 2).
We disagree with the Appellants’ contentions. We find Roy teaches
that an originating participant (the user device 100) sends start-up signals to
a means for identifying (the multimedia bridge 114) to establish the
identities of other possible recipient participants (the destination user devices

606 (“identify”).

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106, 108, and 110) corresponding to the identity of the user device 100 (FF
1). We find that even though the start-up signals of the originating
participant (the user device 100) may contain the identifiers of other
destination devices, the multimedia bridge (means for identifying) picks
up/finds out the identifiers of the possible recipient participants and retrieves
their profile information from the database. So the disputed claim language
under our claim construction reads on the disputed prior art teachings.
Therefore, based on the record before us, we find the Appellants have not
shown that the Examiner has erred.
Accordingly, we sustain the Examiner’s rejection of representative
claim 26 as being anticipated by Roy under 35 U.S.C. § 102. We also
sustain the Examiner’s anticipation rejection of dependent claims 27-29, and
31, which have not been separately argued. See 37 C.F.R. § 41.37
(c)(1)(vii)(2008). In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
ISSUE 2
With respect to claims 1, 16, and 22, even though the language of
these claims is different since they are not drafted in means plus function
format, the scope of these claims is the same (at least as broad) as utilizing
communication rules of collaboration session to identify at least one
recipient participants to receive the scaled media. We review claims 1, 16,
and 22 together because the Appellants present similar arguments separately
to these claims having the same scope.
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The Appellants contend that the cited portions of the Roy reference
fail to teach “any identification of user device which receive the data let
alone identification of first and second recipient participants using
communications rules as claimed.” (App. Br. 5), “to use communications
rules to identify one or more recipient participants as claimed” (Id. 6), or
“accessing communication rules of the collaboration session which identify
an appropriate recipient participant for the scalable media data.” (Id. 7).
According to the Appellants, the multimedia bridge of the Roy reference
retrieves the profile information for the destination user device which was
previously identified by the source user device, which dos not use the
communications rules to identify those destination user devices (Reply Br. 5,
7, 8).
We disagree with the Appellants’ contentions. We find Roy teaches
that the multimedia bridge 114 retrieves profile information as well as
performance parameters for identifying possible recipient participants in the
conference or dynamically negotiates with all possible participants to
establish the performance parameters or to form the criteria agreed upon by
all participants (FF 1 and FF 2). We conclude that the claim limitation
“communications rules” reads on the performance parameters and the
desired criteria to establish the communications between the end users under
our claim construction. We also find that the disputed limitation of
accessing the communication rules to identify the recipient participants reads
on the multimedia bridge uses the performance parameters and/or the criteria
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to establish the identities of actual recipient participants of the conference
because some of the user devices may not become the recipient participants
of the conference unless being allowed to participate. Therefore, based on
the record before us, we find the Appellants have not shown that the
Examiner has erred.
Accordingly, we sustain the Examiner’s rejection of claims 1, 16, and
22 as being anticipated by Roy under 35 U.S.C. § 102.
We also sustain the Examiner’s anticipation rejection of dependent
claims 2, 3, 5, 17, 18, 20, 21, 24, and 25, which have not been separately
argued. See 37 C.F.R. § 41.37 (c)(1)(vii)(2008). In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987).
With respect to claim 6, the Appellants contend that Roy fails to
disclose a limitation of different resolutions (App. Br. 13).
We agree with the Appellants’ contention. We find that the cited
portions of Roy as well as the interpretation of the resolution as video color
by the Examiner (Ans. 6) may teach the scaling, but does not teach the
different resolutions. As such, we can not sustain the anticipation rejection
of claim 6 under 35 U.S.C. § 102.
With respect to claim 23, the Appellants contend that Roy fails to
teach identifying the originating participant and accessing the
communications rules responsive to the identification of the originating
participant (App. Br. 14).
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We disagree with the Appellants’ contention. We find that the
multimedia bridge communicates with all possible participants including the
originating participant (the source user device) for the retrieved performance
parameters to establish the communication conference (FF 1). We also find
that the multimedia bridge receives the start-up request from the originating
participant (responsive to) to access the performance parameters in the
database (FF 1). We conclude that the disputed limitations read on the
process described in the Roy reference. As such, we also sustain the
Examiner’s anticipation rejection of claim 23 under 35 U.S.C. § 102.
With respect to claim 32, the Appellants contend Roy fails to teach
that other recipient participants are identified by the communications rules,
but are not identified by the originator (App. Br. 9).
We agree with the Appellants’ contention. We find that the cited
portions of Roy by the Examiner (Ans. 14) may teach the selective
performance parameters. However, all recipient participants in the
conference call are the subset of the user devices identified by the source
user device (the originator) (FF 1). Thus, in the Roy reference, all possible
recipient participants are identified by the originator. As such, we can not
sustain the anticipation rejection of claim 32 under 35 U.S.C. § 102.
With respect to claim 34, the Appellants contend that Roy fails to
teach that one or more recipient participants are different than any recipient
identified by an originator (App. Br. 10).
We agree with the Appellants’ contention. As discussed above, all
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recipient participants in the conference call are the subset of the user devices
identified by the source user device (the originator) (FF 1). We do not find
Roy teaches that a recipient participant who joins the conference does not
originally identify a destination user device (FF 1 and FF 2). As such, we
can not sustain the anticipation rejection of claim 34 under 35 U.S.C. § 102.
With respect to claims 35-364, the Appellants contend that Roy fails to
teach that “the accessing the communications rules comprises accessing
independent of communications with the originator participant” (App. Br.
12).
We disagree with the Appellants’ contention. As discussed above, we
find that it is the multimedia bridge that communicates with all possible
recipient participants in the conference after retrieving the performance
parameters (FF 1) or all possible recipient participants negotiate a criteria as
communication rules (FF 1 and FF 2). Thus, the communications between
the multimedia bridge and all possible recipient participants are independent
of communications with the originator (the source user device). As such, we
sustain the anticipation rejection of claim 35 under 35 U.S.C. § 102.
We also sustain the Examiner’s anticipation rejection of dependent
claim 36, which has not been separately argued. See 37 C.F.R. §
41.37(c)(1)(vii); In re Nielson, 816 F.2d at 1572.

4 The Appellants present similar argument regarding to claim 36 as to the
argument regarding to claims 35 (App. Br. 12).
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35 U.S.C. § 103(a) rejections
ISSUE 3
With respect to claim 7, the Appellants contend that Roy does not
disclose the display resolution for the recipient participant (App. Br. 8). The
Appellants further contend that the combination of Roy and Downs still fails
to teach the disputed limitation of scaling data according to the configuration
parameter comprising display resolution for the recipient participant (Id.).
We disagree with the Appellants’ contentions. We find Roy teaches the
configuration parameters such as quantization factor for scaling (FF 3). We
also find that Downs teaches a parameter such as display resolution as
effectiveness data used to characterize the conference object (FF 4). Both
cited references are directed to the multimedia conferencing field. We thus
find that combining the well known element of the display resolution as
configuration parameter taught by Downs with the well known technique of
multimedia conferencing taught by Roy is nothing more than a “predictable
use of prior art elements according to their established functions.” See
KSR, 550 U.S. at 417 (Emphases added).
Therefore, based on the record before us, we find the Appellants have
not shown that the Examiner has erred.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 7. We also sustain the Examiner’s obviousness rejection of dependent
claims 8, 10-15, and 33, which are not separately argued, and fall with their
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base claims. See 37 C.F.R. § 41.37 (c)(1)(vii)(2008). In re Nielson, 816
F.2d 1567, 1572 (Fed. Cir. 1987).

VI. CONCLUSION
We conclude that the Examiner has not erred in finding that Roy
discloses “means for identifying respective ones of the recipient participants
of the collaboration session responsive to an identity of an originating
participant which is configured to originate the media data”, as recited in
claim 26.
We also conclude that the Examiner has not erred in finding that Roy
discloses “accessing communications rules for a collaboration session; and
identifying the first and the second recipient participants using the
communications rules.”, as recited in claim 1, “access communications rules
for respective ones of the collaboration sessions, and to use the
communications rules to identify one or more of the recipient participants”,
as recited in claim 16, or “accessing communications rules of the
collaboration session which identify an appropriate recipient participant for
the scalable media data”, as recited in claim 22.
We further conclude that the Examiner has not erred in finding that the
combination of Roy and Downs teaches or fairly suggests “scaling the
scalable media data according to a configuration parameter comprising
display resolution for the recipient participant”, as recited in claim 7.
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VII. ORDER
We reverse the anticipation rejection of claims 6, 32, and 34 under 35
U.S.C. § 102(e).
We affirm the anticipation rejection of claims 1-3, 5, 16-18, 20-29, 31,
and 35-36 under 35 U.S.C. § 102(e).
We affirm the obviousness rejections of claim 7-8, 10-15, and 33
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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