Ex Parte Pepperell

Patent Trial and Appeal Board

Dec 5, 2014

11515631 (P.T.A.B. Dec. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREW PEPPERELL
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Appeal 2012-004241
Application 11/515,631
Technology Center 2400
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Before JEAN R. HOMERE, STANLEY M. WEINBERG, and
LINZY T. McCARTNEY, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-3, 5-17, 19, and 21-23. Claims 4, 18, and 20 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Claims 1-3, 7-12, 14-17, 19, and 21-23 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Comstock1 in view of Nelson.2
Claims 5, 6, and 13 stand rejected under 35 U.S.C. § 103(a) as
obvious over Comstock, in view of Nelson and Baudisch.3
STATEMENT OF THE CASE
Appellant’s invention relates to an apparatus enabling participants in a
video conference to interact with each other using data such as text or
pictures. Spec. 3. A multi-conference unit (MCU) transmits a video
conference to endpoints connected to the video conference and includes an
input for receiving a presentation data stream including mark-up data from
an endpoint. Spec. 12, 14.
Independent claims 1 and 23 are illustrative:
1. A video conference system, comprising:
a Multi-Conference Unit (MCU) to communicatively
couple plural endpoints in a video conference, the MCU
including,
a video input that receives plural video data streams
including video data from the plural endpoints,
a first presentation input that receives a first presentation
data stream including presentation data from a first endpoint,
a second presentation input that receives a second
presentation data stream including mark-up data from a second
endpoint, wherein the mark-up data is an input made by a user

1 Comstock, US 2004/0133696 A1, July 8, 2004.
2 Nelson, US 2005/0180341 A1, August 18, 2005.
3 Baudisch, US 2002/0167531 A1, Nov. 14, 2002.
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with reference to the first presentation data,
a processor that combines the data in the plural video
data streams, the presentation data stream, and the mark-up data
to produce a combined data stream, and
an output that transmits the combined data stream from
the MCU to at least one of the plural endpoints connected to the
video conference.

23. A personal computer adapted to participate in a video
conference, the personal computer comprising:
a first input to receive video data;
a presentation input to receive presentation data;
processing means for detecting mark-up data entered by a user
of the personal computer, wherein the mark-up data is an input
made by a user with reference to the presentation data; and
an output to transmit the mark-up data without a token to
a Multi-Conference Unit (MCU).

ANALYSIS
The Rejection of Claims 1-3, 5-17, 19, 21, and 22
Claim 1 recites a “multi-conference unit (MCU) . . . the MCU
including . . . .” The Examiner refers to a number of elements in Comstock
as an MCU: element 20 in Figure 1 (Ans. 5, referring to Comstock
paragraph 20); element 90 in Figure 1 (Ans. 5, referring to video
conferencing (VC) element 90 in Comstock paragraph 20); element 130 in
Figure 2 (Ans. 6, referring to multiplexer 130 in Comstock paragraph 30);
and terminal 100 in Figure 2 (Ans. 22 and 24, referring to video
conferencing (VC) terminal 100 in Comstock paragraph 28). The Examiner
finds that VC terminal 100 can be considered to be an MCU because MCU
20 resides on it. Ans. 22, 24.
Appellant contends that “[i]t is improper for the Examiner to interpret
terminal 100 as being an MCU when Comstock itself clearly establishes that
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an MCU is different from terminal 100.” App. Br. 10 (emphasis omitted).
Comstock paragraph 28 states that “video conferencing terminal 100
operates as an end terminal in a video conferencing network” and paragraph
58 states that “a connection is established between the terminal 100 and
another terminal, or between the terminal 100 and on[e] of the MCU’s 20.”
Although Comstock discloses that a terminal may be placed on an
MCU, we do not agree with the Examiner that placing the terminal on the
MCU causes the terminal 100 to become an MCU..
We are therefore persuaded that the Examiner erred in rejecting
independent claim 1 and dependent claims 2, 3, and 5-7.
Regarding independent claims 8, 11, 12, 19, and 22, Appellant
contends that those rejections should be reversed “for at least the reasons
stated for Claim 1.” App Br. 4. The Examiner similarly concludes those
rejections should be sustained for at least the reasons given with respect to
claim 1. We are therefore persuaded that the Examiner erred in rejecting
those claims as well as dependent claims 9, 10, 13-17, and 21.
In view of our disposition regarding the MCU limitation of these
claims, we do not address Appellant’s other arguments regarding them.
Accordingly, we are persuaded that the Examiner erred in rejecting
claims 1-3, 5-17, and 19-22 and we therefore do not sustain those rejections.
The Rejection of Claim 23
The Examiner finds that Comstock teaches “other data entered by a
user” and “an output adapted to transmit the other data without a token to a
multi-conference unit.” Ans. 19, citing Comstock paragraphs 52, 56, and 32.
Relying upon Comstock paragraph 40, Appellant contends that Comstock
requires using a token. App. Br. 14. We agree with the Examiner, however,
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that Comstock paragraphs 52 and 56 teach embodiments that do not require
a token. For example, paragraph 52 refers to a “token free state 204” and
paragraph 56 refers to a “system [that is] not token-operable.”
The Examiner finds that Comstock does not disclose the mark-up data
is an input made by a user with reference to the presentation data. Ans. 19.
But the Examiner finds Nelson teaches mark-up data as an input made by a
user with reference to presentation data (Ans. 19), Comstock teaches an
output adapted to transmit “the other data without a token,” (Ans. 25), and
the combination of these teachings would have suggested the claimed
subject matter to one of skill in the art, (id.). We agree with the Examiner’s
conclusion it would have been obvious to combine Nelson’s teachings with
Comstock’s, as it would predictably result in a system able to manage both
media data and annotation data for distribution to videoconference
participants. Ans. 20.
Page 14 of the Appeal Brief does not address Comstock paragraphs 52
and 56 and page 5 of the Reply Brief does not address Nelson’s teachings,
instead only arguing what Comstock does not teach.
Accordingly, we are not persuaded of Examiner error in the rejection
of claim 23 and we therefore sustain that rejection.
CONCLUSIONS
Under § 103, the Examiner erred in rejecting claims 1-3, 5-17, and 19-
22, and the Examiner did not err in rejecting claim 23.
DECISION
The Examiner’s decision rejecting claims 1-3, 5-17, and 19-22 is
reversed.
The Examiner’s decision rejecting claim 23 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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