Ex Parte Pegg et al

Patent Trial and Appeal Board

Sep 26, 2016

11110651 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111110,651 0412012005
72058 7590 09/28/2016
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Nigel Pegg
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.
58083/375130 (M098) 2245
EXAMINER
ABEDIN, NORMIN
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
ipefiling@kilpatrickstockton.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIGEL PEGG, SRINIV AS MANAPRAGADA, and
BHANUSHARMA
Appeal2015-005226
Application 11/110,651
Technology Center 2400
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
KAL YANK. DESHPANDE, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-005226
Application 11/110,651
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
42--46 and 58-66. Claims 47-57 are cancelled. We have jurisdiction under
35 U.S.C. § 6(b). This decision is related to a prior decision in Appeal
2010--012276, where we affirmed the obviousness rejection of claims 37-50
and 52-57, mailed August 5, 2013.
We affirm.
The claims are directed to an integration of telephone audio into
electronic meeting archives. Claim 42, reproduced below, is illustrative of
the claimed subject matter:
42. A computer implemented method comprising:
after an electronic meeting between at least two
participants is completed, receiving, at a conferencing server
from a telephony server separate from the conferencing server, a
telephone audio recording recorded by the telephony server, the
telephone audio recording comprises a voice portion of the
completed electronic meeting, the voice portion transmitted as
voice signals between telephone devices shared via the telephony
server, the voice portion comprising a voice signal of each
participant along with state information of the voice signal
associated with each participant;
receiving at the conferencing server a request to replay one
or more events that occurred during the electronic meeting;
responsive to the request, associating the one or more
events with timing information of the completed electronic
meeting, wherein:
i) the timing information is indexed in a metadata file
generated during the completed electronic meeting for a
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Application 11/110,651
plurality of events that occurred during the completed
electronic meeting,
ii) the plurality of events are associated with an online
portion of the electronic meeting recorded by the conferencing
server, the online portion comprising electronic information
transmitted between computer devices shared via the
conferencing server that is visually presented during the
electronic meeting and the telephone audio recording received
from the telephony server; and
synchronizing playback of the voice portion in the
telephone audio recording and a meeting archive of the online
portion using the timing information.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fen ton et al.
Bannister et al.
McN eill et al.
Crouch et al.
us 5,619,555
us 5,832,065
US 6,392,760 Bl
US 6,421,706 Bl
US 2004/0207724 Al
REJECTIONS
Apr. 8, 1997
Nov. 3, 1998
l\1ay 21, 2002
July 16, 2002
Oct. 21, 2004
The Examiner made the following rejections:
Claims 60-63 stand rejected under 35 U.S.C. § l 12(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. (Final Act. 3).
Claims 58---63 stand rejected under 35 U.S.C. § l 12(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
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inventor or a joint inventor, or for pre=ii~Iii~ the applicant regards as the
invention. (Final Act. 3-5).
Claims 42, 44, 58, 60, 61, 64, and 66 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Crouch in view of Bannister.
Claims 43, 59, and 65 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Crouch-Bannister and further in view of Fenton.
Claims 45, 46, 62, and 63 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Crouch-Bannister in view of McNeill and in further
view of Ahuja.
ANALYSIS
35 U.S.C. § 112, first and second paragraphs
With respect to the rejections under 35 U.S.C. § 112, Appellants state
"Claims 58-63 were rejected under 35 U.S.C. § 112. These rejections will
be addressed as suggested in the Action on pages 3-4 if prosecution is
reopened." (App. Br. 8). Because Appellants have not set forth any
argument to show error in the Examiner's rejection, we proforma sustain
the rejection of claims 60-63 based upon 35 U.S.C. § 112, first paragraph,
and we proforma sustain the rejection of claims 58---63 based upon 35
U.S.C. § 112, second paragraph.
35 U.S.C. § 103(a)
Independent claims 42, 58, and 60
With respect to independent claims 42, 58, and 60, Appellants present
arguments to the independent claims together. (App. Br. 8-14). We select
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Application 11/110,651
independent claim 42 as the representative claim for the group and \'l1ill
address Appellants' arguments thereto.
In this Decision, we have considered only those arguments actually
made by Appellants. Arguments which Appellants could have made but did
not make in the Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
With respect to representative claim 42, Appellants contend:
each of the independent claims recites recording and sharing
separate portions (a voice portion and an online portion) of an
electronic meeting by separate servers (a telephony server and a
conferencing server).
Neither Crouch nor Bannister teach or suggest recording
and sharing separate portions of an electronic meeting by
separate servers.
(App. Br. 9). Appellants further contend that the Crouch reference does not
suggest sharing using separate servers. (App. Br. 10-11; Reply Br. 3--4).
We note that Appellants do not identify any special definition of
"sharing," nor do Appellants identify any functions that are performed by
the "separate servers" (telephony server and conferencing server). The
Examiner finds that the Crouch reference in the Summary of the Invention
section (iii! 5 and 7) discloses the use of a recording server and a
conferencing server. (Ans. 4). We agree with the Examiner.
Additionally, the Examiner finds that the Bannister reference
additionally discloses both a voice recording device and a data
communications device. (Ans. 4). The Examiner further relies upon these
additional teachings and suggestions in the Bannister reference to buttress
the Examiner's finding that multiple servers were within the ordinary skill in
the art. (Ans. 4). We agree with the Examiner.
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The Examiner further identifies additional citations to the Crouch
reference to support the conclusion:
The reference Crouch discloses two separate, server conference
server and recording server, are used to share media stream.
Furthermore, Bannister also teaches two separate devices used to
record the voice portion in the voice storage device (voice
recording device) and to record the data portion ( online portion)
in the data communications device. The reference Bannister
clearly discloses voice portion and data portion ( online portion)
shared by separate servers.
(Ans. 6). In addition to the additional citations that the Examiner provides
for the Crouch reference, we further note that paragraph 21 of the Crouch
reference notes that the various configurations of the servers are possible and
the disclosed "figures are exemplary only." We agree with the Examiner's
factual findings and conclusion of obviousness.
Appellants further contend that the Bannister reference does not
remedy the deficiency in the Crouch reference with regards to failing to
suggest recording and sharing using separate servers. (App. Br. 11-12;
Reply Br. 4---6).
The Examiner finds that the Bannister reference additionally discloses
the use of a voice recording device in a data communications device. (Ans.
6-7). The Examiner further explains the line of reasoning between the
Crouch reference and the Bannister reference and concludes:
In the reference Bannister it is clear that there are two separate
devices used to record the voice portion in the voice storage
device (voice recording device) and to record the data portion
( online portion) in the data communications device. The voice
information (voice portion) and graphical information ( online
portion) are recorded and shared using two separate devices (the
device could be interpreted as server). Moreover the reference
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Crouch discloses t\'l/O separate ser\rers (conference ser\rer and
recording server) and recording conversation of a meeting.
(Ans. 7). We agree with the Examiner's findings and conclusion.
Appellants additionally contend that the Crouch reference does not
suggest sharing using separate servers. (Reply Br. 6-8). Appellants attempt
to differentiate the "storage devices" of the Bannister reference with the
claimed different "servers." (Reply Br. 7). Appellants' argument is
unavailing because the claimed "server" performs no functions beyond the
initial "recording" and "shared via the telephony server" limitations. (See
generally Ans. 6-7). We find that skilled artisans would have appreciated
that the storage devices taught and suggested by the Bannister reference
would have been readily able to perform the recited two functions of
recording and sharing. As a result, Appellants' argument does not show
error in the Examiner's conclusion of obviousness of representative
independent claim 42.
Appellants further contend that "even if we assume arguendo that
Bannister discloses sharing a voice portion and an online portion of a
meeting using separate servers (which Appellant refutes), the Answer does
not establish a prima facie case of obviousness. Instead, the Answer merely
explains what each of the two references allegedly discloses." (Reply Br. 8).
We disagree with Appellants and find Appellants' contention is
merely unsupported attorney argument. Attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see
also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). "Argument in the
brief does not take the place of evidence in the record." In re Schulze, 346
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F.2d 600, 602 (CCPii .. 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA
1964)). As a result, we find Appellants' argument unavailing.
Appellants additionally provide similar arguments regarding the
Bannister reference. (Reply Br. 8-9). Appellants contend that the Bannister
reference does not remedy the deficiencies in the Crouch reference. As
discussed above, we find Appellants' argument unavailing.
Additionally, Appellants contend that the Examiner's reliance upon
Official Notice in the Final Action alleging storage location is a design
option is inappropriate. (App. Br. 12; Reply Br. 9-10).
The Examiner maintains:
Examiner takes Official Notice that a skilled in the art
would understand that within interconnected systems
components storage location is just a design option based on a
particular system configuration and resource allocation. For
example, while Crouch (similarly to the instant independent
claims 58 and 60) stores all conference data in the same location
(recording server), Bannister (similarly to the instant
independent claim 42 for the same invention) stores voice and
conference data separately in the dedicated locations.
(Final Act. 12). The Examiner further finds that the Crouch reference and
the Bannister reference disclose the two different scenarios for storing the
voice data and the conference data, which we find supports the Examiner's
finding that skilled artisans would have appreciated that there are multiple
different embodiments/scenarios for both initial storage of voice data and
conference data. Voice data which is initially stored at the user location and
the system for communicating the voice data and conference data to a final
storage location may be different than the initial storage location. (Ans. 7-
8). We agree with the Examiner.
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\X/hile the Examiner's \'l/ord choice \'l/as not optimum in choosing
"Official Notice," we agree with the Examiner that one of ordinary skill in
the art at the time of the invention would have appreciated the initial
recording and storage of different data types in two locations, and that
transmitting the data to a single central location is disclosed and fairly
suggested by the Crouch and Bannister references. One of ordinary skill in
the art at the time of the invention would have further appreciated that the
storage devices of the Bannister reference may similarly be labeled "servers"
or any other label because the claimed "servers" do not perform any other
functions than the limited "record" and" share" functions. As a result,
Appellants' argument does not show error in the Examiner's underlying
factual findings or the Examiner's ultimate conclusion of obviousness of
representative independent claim 42.
We note that the language of independent claim 42 is directed to a
method, but Appellants arguments are directed to the proffered distinction of
using separate servers where the servers are not claimed as performing any
functions beyond storing initial data and sharing/ communicating that data to
a second location. We find Appellants' arguments regarding the proffered
separate server distinction do not show how the claimed "computer
implemented method" is different than the method taught or suggested by
the combination of the Crouch and Bannister references. Appellants have
not shown the method steps recited in independent claim 42 (which are
"receiving, at a conferencing server from a telephony server ... ", "receiving
at the conferencing server a request to replay ... ", responsive to the request,
associating ... ," and "synchronizing playback of the voice portion in the
telephone audio recording and a meeting archive of the online portion using
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the timing information") are different than the method steps taught or
suggested by the combination of the Crouch and Bannister references. As a
result, we find Appellants' proffered distinction does not show error in the
Examiner's findings and conclusion of obviousness of representative
independent claim 42.
Appellants finally contend that the Examiner's rejection should be
reversed because the rationale for combining the features of the Bannister
reference and the Crouch reference is insufficient. (App. Br. 12-14; Reply
Br. 10-12).
The Examiner responds to Appellants' general arguments, which
addresses the references individually, and the Examiner further maintains
that:
One of ordinary skill in the art would recognize that the results
of the combination are predictable because each element in the
combination is merely performing the same function as it would
perform separately. One would be motivated to combine these
teachings because doing so will enable synchronous playback of
the simultaneously recorded media files.
(Final Act. 9-10). Additionally, the Examiner maintains:
(It would have been obvious to an artisan of ordinary skill at the
time of applicant's invention to modify the teaching of Crouch
and in view of Bannister by implementing synchronizing
playback of the voice portion in the telephone audio recording
and a meeting archive of the online portion using the timing
information in order to synchronous playback of the
simultaneously recorded media files (Bannister, Col:2, Line: 11-
19. )).
(Ans. 9-10). We agree with the Examiner regarding the combination.
In short, Appellants have not shown why such an enhancement would
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not be a predictable use of prior art elements according to their
established functions. See KSR Intern. Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007). We therefore find the Examiner's proffered rationale
to combine the teachings of the cited references is supported by
articulated reasoning with some rational underpinning to support the
Examiner's legal conclusion of obviousness by a preponderance of the
evidence.
Dependent claims
Appellants do not set forth separate arguments for patentability of
dependent claims 43, 45, 46, 59, 62, 63, and 65. Appellants contend that
these claims will stand or fall with their respective dependent claims. (App.
Br. 14). As a result, we group these claims as falling with their respective
parent claims.
CONCLUSIONS
The Examiner did not err in rejecting claims 58---63 based upon 35
U.S.C. § 112, first and second paragraphs.
The Examiner did not err in rejecting claims 42--46 and 58---66 under
35 U.S.C. § 103 based upon obviousness.
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DECISION
We affirm the Examiner's rejections of claims 58---63 under 35 U.S.C.
§ 112, first and second paragraphs.
We affirm the Examiner's obviousness rejection of claims 42--46 and
58-66 under 35 U.S.C. § 103.
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 )(iv).
AFFIRMED
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