Ex Parte Muller et al

Patent Trial and Appeal Board

Aug 30, 2016

12828263 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/828,263 06/30/2010
46321 7590 09/01/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Michael Muller
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
CAM920100007US1 (257) 6495
EXAMINER
SALL, EL HADJI MALICK
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
09/01/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL MULLER and AMY D. TRAVIS
Appeal2014-009582
Application 12/828,263
Technology Center 2400
Before CAROLYN D. THOMAS, DEBRA K. STEPHENS, and
JEREMY J. CURCURI, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 8-12, 14, and 15. Final Act. 1. 1 We have jurisdiction
under 35 U.S.C. § 6(b ).
Claim 11 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. Ans. 2.
1 Claim 8-10, 12, 14, and 15 were amended, and claim 13 was canceled in
an after-final amendment filed December 2, 2013. The amendment was
entered. See Advisory Action dated December 17, 2013.
Appeal2014-009582
Application 12/828,263
Claims 8-12, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
obvious over Kenoyer et al. (US 2006/0256738 Al, published Nov. 16,
2006) and Colby et al. (US 6,625,643 Bl, published Sept. 23, 2003). Ans. 3-
6.
We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to "scheduling e-meetings in a
collaborative computing environment." Spec. i-f 1. Claim 8 is illustrative and
reproduced below:
8. An e-meeting data processing system configured
for e-meeting requirements assurance in e-meeting
management, the system comprising:
a computer with at least one processor and memory and
configured for communicative coupling to an e-meeting server
over a computer communications network; and,
a resource assurance module executing in the memory of
the computer, the module comprising program code enabled to
select a scheduled e-meeting for an invitee, to retrieve resource
requirements published in a document for the selected
scheduled e-meeting, the document indicating required resource
requirements for the selected scheduled e-meeting, the required
resource requirements including at least one of a particular Web
browser, a particular revision of the particular Web browser,
and a pre-installed computer program, to inspect local
computing resources of the computer, to compare the local
computing resources to the retrieved resource requirements to
identify local resource deficiencies, and to generate a notice of
the local resource deficiencies to the invitee prior to a scheduled
date and time for thee-meeting.
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Application 12/828,263
ANALYSIS
THE WRITTEN DESCRIPTION REJECTION OF CLAIM 11
The Examiner finds claim 11 fails to comply with the written
description requirement. Ans. 2. The Examiner finds "Applicant discloses
'extracting a reference .... ' which is not described in the disclosure." Ans. 2.
Claim 11 (emphasis added) is reproduced below:
11. The computer program product of claim 9, wherein the
computer readable program code for retrieving resource requirements
published for the selected scheduled e-meeting, comprises:
computer readable program code for extracting a reference to a
remote resource requirements document from the scheduled e-meeting; and,
computer readable program code for retrieving resource requirements
from the referenced remote resource requirements document.
Appellants present the following principal arguments:
1. "[C]laim 11 of Appellants' originally filed specification recites
the language 'extracting a reference to a remote resource requirements
document from the scheduled e-meeting. "' App. Br. 5; see also Reply Br. 2.
11. Appellants' originally filed Specification (i-f 16) describes the
recited (claim 11) extracting a reference. App. Br. 5-6; see also Reply Br. 3.
In response, the Examiner explains "'extracting a reference ... ' is
definitely not the same as 'determining the resource requirements of a e-
meeting by using a reference inane-meeting invite which points to a
remotely disposed requirements document, which lists the required resources
of thee-meeting'. Furthermore, such limitation was nowhere to be found in
the cited paragraph 16." Ans. 7.
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Application 12/828,263
Appellants have persuaded us that the Examiner erred in rejecting
claim 11 for failing to meet the written description requirement.
"[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en bane).
Currently pending claim 11 is the same as original claim 11.
Appellants' original Specification2 (i-f 16) discloses:
The invite 130 can include a requirements reference 150 to
requirements document 160 of required resources for the invitee.
The e-meeting 140 can be scheduled in calendar 120 of the
computer 110. Thereafter, before the scheduled date and time of
the e-meeting 140, the resources of the computer 110 can be
inspected by resource inspector 170 and compared to those of the
requirements document 160.
First, original claim 11 provides a satisfactory description to support
currently pending claim 11 because currently pending claim 11 is the same
as original claim 11, and we determine a skilled artisan would have
recognized that Appellants had possession of the claimed subject matter
based on the content of original claim 11.
Second, the original Specification (i-f 16) provides a satisfactory
description to support currently pending claim 11 because a skilled artisan
would have understood that the original Specification (i-f 16) disclosures:
"The invite 130 can include a requirements reference 150 to requirements
2 In our analysis, to decide whether or not the inventors had possession of
the claimed subject matter as of the filing date, we refer to the original
Specification at paragraph 16.
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Application 12/828,263
document 160" and "the resources of the computer 110 can be inspected by
resource inspector 170 and compared to those of the requirements document
160" describe extraction of the reference 150 from the invite 130 to permit
access to the requirements document 160.
Thus, we find the above disclosures in the Specification adequate to
convey reasonably to those skilled in the art that Appellants had possession
of the recited "extracting a reference to a remote resource requirements
document from the scheduled e-meeting" as of the filing date.
In addition, in response to the Final Action, on December 2, 2013,
Appellants filed amendments to Specification i-fi-f 16, 22. The Advisory
Action mailed December 1 7, 2013 indicates that these amendments will be
entered. However, in the Response to Arguments section of the Examiner's
Answer, the Examiner states that the amended paragraphs 16 and 22 were
not entered. See Ans. 7-8. Should prosecution of this application continue,
the Examiner should clarify the status of these amendments to the
Specification i-fi-f 16, 22. Because we find Appellants had possession of the
recited "extracting a reference to a remote resource requirements document
from the scheduled e-meeting" as of the filing date, for the same reasons, we
find that Appellants proffered amendments to the Specification paragraphs
16 and 22 do not introduce new matter.
We, therefore, do not sustain the Examiner's rejection of claim 11.
THE OBVIOUSNESS REJECTION OF CLAIMS 8-12, 14, AND 15
OVER KENOYER AND COLBY
The Examiner finds Kenoyer and Colby teach all limitations of claim
8. Ans. 3-5. The Examiner relies on Colby's microphone and camera check
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Application 12/828,263
for teaching the recited (claim 8) "retrieve resource requirements published"
and the recited (claim 8) "inspect local computing resources of the
computer." Ans. 3--4 (citing Colby col. 32, 1. 38 - col. 33, 1. 35); see also
Ans. 8-9 (Colby's microphone and camera check are resource
requirements). The Examiner relies on Colby's initiating an IE4 browser for
teaching the recited (claim 8) "the required resource requirements including
at least one of a particular Web browser, a particular revision of the
particular Web browser, and a pre-installed computer program." Ans. 4
(citing Colby col. 30, 11. 32-36; col. 31, 11. 19-24); see also Ans. 9-10 ("In
paragraph 35, Kenoyer discloses the video conferencing system components
including a display, which Examiner construes as 'the web browser'
satisfying one of the requirements of 'at least one [of] a ... ' Furthermore,
Colby discloses an IE4 browser (i.e. particular browser) ([col. 30, 11. 32-36;
col. 31, 11. 19-24]).").
Appellants present the following principal arguments:
1. "Colby discloses retrieving resource requirements from a
database and performing checks via an ActiveX control on a microphone
and a camera. But Colby fails to teach or suggest that the retrieved resource
requirements are published in a document for a selected scheduled e-
meeting." App. Br. 9-10; see also Reply Br. 6 ("Colby suggests that the
resource requirements are used to configure the network for a broadcast, so
to establish an ASP stream path. As such, 'Check Microphone' and 'Check
Camera' are not resource requirements.").
11. "There is nothing in Kenoyer that indicates that the required
resource requires a particular Web browser, a particular version of the Web
browser, or a preinstalled computer program." App. Br. 11; see also Reply
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Application 12/828,263
Br. 6-7 (Neither Kenoyer nor Colby discloses a particular web browser in
the required resource requirements).
Appellants persuade us that the Examiner erred in finding Colby
teaches retrieving published resource requirements.
First, we agree with Appellants (see App. Br. 9-10, Reply Br. 5---6)
that Colby's "Check Microphone" and "Check Camera" are not resource
requirements published in a document. Colby discloses:
The resource requirements will be retrieved from the InterVU
database and passed to the InterVU network topology manager
using ASP technology when the "Start" button on the ActiveX
control is selected. The topology manager will configure the
network for the broadcast and return the connection information
to the ActiveX control. This will establish the ASP stream path
through the firewall tunnel, from the encoder to the NetShow
servers.
Colby col. 32, 11. 55---63.
Thus, Colby's "resource requirements" relate to the network
configuration and are not directed to resource requirements for an invitee.
Colby further discloses the publisher performing microphone and camera
checks. See Colby col. 33, 11. 1---6. However, these checks are unrelated to
Colby's resource requirements. Further, even to the extent these checks
could be considered as related to resource requirements, these checks are
performed using ActiveX controls, and the Examiner has not shown how
ActiveX controls relates to the inspecting and comparing of local computing
resources, as recited in claim 8.
In addition, Appellants also persuade us that the Examiner erred in
finding Colby teaches the recited (claim 8) "the required resource
requirements including at least one of a particular Web browser, a particular
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Application 12/828,263
revision of the particular Web browser, and a pre-installed computer
program."
We adopt the plain meaning of "Web browser" in the computer
context. The plain meaning of "Web browser" in the computer context is
"Software that lets a user view HTML documents and access files and
software related to those documents." MICROSOFT COMPUTER
DICTIONARY 562 (5th ed. 2002). In light of this plain meaning, we find
the Examiner erred in finding Kenoyer' s display teaches the recited Web
browser or revision thereof.
Second, although Colby discloses (Colby col. 30, 11. 32-36; col. 31, 11.
19-24) initiating an IE4 browser, which is a particular Web browser, the
Examiner does not explain how or why, nor do we readily see how or why,
Colby's IE4 browser is related to Colby's "resource requirements" which
relate to the network configuration. See Colby col. 32, 11. 55---63. Thus,
Appellants have persuaded us that neither Kenoyer nor Colby teaches the
recited (claim 8) "the required resource requirements including at least one
of a particular Web browser, a particular revision of the particular Web
browser, and a pre-installed computer program."
We, therefore, do not sustain the Examiner's rejection of claim 8.
For reasons discussed above when addressing claim 8, we also do not
sustain the Examiner's rejection of independent claim 9, which recites:
computer readable program code for retrieving resource
requirements published in a document for the selected scheduled
e-meeting, the document indicating required resource
requirements for the selected scheduled e-meeting, the required
resource requirements including at least one of a particular Web
browser, a particular revision of the particular Web browser, and
a pre-installed computer program.
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Application 12/828,263
We also do not sustain the Examiner's rejection of claims 10-12, 14,
and 15, which depend from claim 9.
ORDER
The Examiner's decision rejecting claims 8-12, 14, and 15 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
REVERSED
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