Ex Parte RIDDLE

Board of Patent Appeals and Interferences

Sep 9, 2005

08646500 (B.P.A.I. Sep. 9, 2005)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GUY RIDDLE
__________
Appeal No. 2003-2053
Application 08/646,500
___________
ON BRIEF
___________
Before FLEMING, DIXON, and SAADAT, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 20, all the claims that are present in this
application. Claims 21 through 25 have been withdrawn from
consideration.
Invention
The invention relates to teleconferencing systems. See page
1 of Appellant’s specification. Teleconferencing also includes
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Application 08/646,500
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data sharing where various types of data such as documents,
spreadsheets, graphic data or other types of data, can be shared
and manipulated by all participants in the teleconference.
However, with the wide diversity of systems having different
computer capabilities, prior art systems have typically required
that the application provide support for all capabilities used
within the teleconference. This fact substantially complicates
teleconferencing applications, and makes expansion of
capabilities difficult or impossible. Thus, it would be
desirable to be able to relieve the application of the burden of
supporting all capabilities by providing accessories which
interface logically between the application and the base
teleconference component to provide additional and expandable
capabilities. See page 1 of Appellant’s specification.
Appellant solves this problem by providing a system and
method which provides capability expansion in a teleconferencing
environment. One or more accessories are invoked and arranged in
an accessory stack associated with an application. The accessory
stack is positioned logically between the teleconferencing
application and a conference component in both a logical and a
remote end point. Each accessory provides at least one
additional capability to the system independent of the
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application and the conference component. The number of
accessories so stacked can be arbitrarily large. In this way, a
teleconference application with limited functionality can be made
to appear to the user to be quite robust. Moreover, additional
capabilities can be easily added to the system. See page 2 of
Appellant specification.
Figure 4 illustrates a plurality of processes and/or
apparatus which may be operative within telecommunication system
150c. An application program 401, such as a teleconferencing
application, an audio/video server, or a data server,
communicates with conference accessory 404 in the form of
Application Program Interface calls. Each assessory 404-406 is a
derived component which adds some additional capability to the
conference component 400. An accessory 404 receives the
Application Program Interface calls from the application 401 and
events from conference component 406. An accessory claims
Application Program Interface calls and events directed to it,
and forwards those not directed to it. In this way, all events
intended for the application 401 are passed along through the
accessories to the application 401. Similarly, Application
Program Interface calls for the conference component are passed
to the conference component through the accessory stack. See
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page 9 of Appellant’s specification. Because the accessory
provides its capability to the teleconference system while
remaining independent of the application, an application with
only minimal teleconference capability may appear to the user to
be quite robust simply by accessorizing a number accessories.
See page 10 of Appellant’s specification.
Claim 1 is representative of Appellant’s claimed invention
and is reproduced as follows:
1. A system comprising:
a processor;
a memory coupled to the processor, the memory storing a
teleconferencing application and at least one accessory; and
an accessory invocation mechanism which dynamically
associates the accessory with the teleconferencing application
such that a capability of the accessory is provided during a
teleconference, independent of the teleconferencing application.
References
The references relied on by the Examiner are as follow:
Leondires et al. (Leondires) 5,841,763 Nov. 24, 1998
(Filing date Jun. 13, 1995)
Larson et al. (Larson) 5,907,324 May 25, 1999
(Filing date Nov. 5, 1997 which is continuation of application
08/485,642 filed June 7, 1995)
Shinjo et al., (Shinjo) “Object-Stacking in the World-Wide Web”
Fourth International Workshop on Object-Orientation in Operating
Systems, IEEE (Aug. 14-15, 1995), pp. 210-219.
Appeal No. 2003-2053
Application 08/646,500
1 Appellants filed an appeal brief on December 30, 2002.
The Examiner mailed an Examiner’s answer on March 25, 2003.
Appellant filed a reply brief on June 2, 2003. The Examiner
mailed an office communication on July 7, 2003, stating that the
reply brief has been entered into the record.
5
Rejections at Issue
Claims 1, 3 through 5, 9, 11, 16, 19 and 20 stand rejected
under 35 U.S.C. § 102 as being anticipated by Larson.
Claims 2, 6 through 8, 10, 13, 14 and 17 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Larson in view
of Shinjo.
Claims 12, 15 and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Larson in view of Leondires.
Throughout our opinion, we will make reference to the
briefs1 and the answer for the respective details thereof.
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner’s rejection and the arguments of Appellant
and the Examiner, for the reasons stated infra, we affirm the
Examiner’s rejection of claims 11, 16, 19 and 20 under 35 U.S.C.
§ 102 and we reverse the Examiner’s rejection of claims 1, 3
through 5 and 9 under 35 U.S.C. § 102. Furthermore, we reverse
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the Examiner’s rejection of the claims 2, 6 through 8, 10, 12, 13
through 15, 17 and 18 under 35 U.S.C. § 103.
Rejection under 35 U.S.C. § 102
For claim 1, Appellant argues that Larson fails to teach the
limitation of claim 1 requiring an accessory capability.
Appellant argues that the plain meaning of the term “accessory”
is defined in the American Heritage College Dictionary as a
subordinate or supplementary item; an adjunct. Appellant argues
that Larson fails to teach accessories that are not part of the
teleconferencing software package or teleconferencing application
software package. See pages 8 and 9 of the Brief.
The Examiner responds by stating that the definition relied
on by Appellant does not require that the subordinate be a
separate entity. The Examiner points out that the term
“accessory” does not distinguish over the Larson’s
teleconferencing software application. See page 10 of the
Examiner’s answer.
Appellant responds to the Examiner’s argument in Appellant’s
reply brief, stating that independent claim 1 not only recites
accessory capability but also recites “a capability of the
accessory is provided during a teleconference, independent of the
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teleconferencing application.” Appellant argues that the point
is that the claimed “accessory” is not an “application” included
in the original software package such as disclosed by Larson.
See pages 2 and 3 of the reply brief.
It is axiomatic that anticipation of a claim under § 102 can
be found only if the prior art reference discloses every element
of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschninenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984).
As further pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998). Claims will be given their broadest
reasonable interpretation consistent with the specification, and
limitations appearing in the specification are not to be read
into the claims. In re Etter, 756 F.2d 852, 858, 225 USPQ 1, 5
(Fed. Cir. 1985). As our reviewing court states, “[t]he terms
used in the claims bear a “heavy presumption” that they mean what
they say and have the ordinary meaning that would be attributed
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to those words by persons skilled in the relevant art.” Tex.
Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202, 64
USPQ2d 1812, 1817 (Fed. Cir. 2002).
We agree with the Examiner that the term “accessory” does
not require independence. Accepting the definition provided by
the Appellant, the definition only requires that the accessory be
a subordinate or supplementary item. Thus, we find that Larson
does teach conferencing applications which are accessories and
that they are supplemental or subordinate items to the
teleconferencing application. We further note that in the reply
brief, Appellant does not argue that the term accessory requires
more.
However, the Appellant does argue that the claim recites
“independent of the teleconferencing application.” Upon our
review of Larson, we fail to find that the teleconferencing
applications are independent of the teleconferencing software.
Larson clearly teaches that the desktop software package includes
a number of Electronic Conferencing Applications 102. See Larson
column 13, lines 42 through 58. Clearly, Larson teaches that the
Electronic Conferencing Applications 102 are part of the desktop
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conference software package which is designed to provide a
comprehensive software package including all the capabilities and
the information necessary to conduct, store and establish a
conference. Therefore, we agree with the Examiner that the
Electronic Conference Applications 102 are accessories but we
disagree with the Examiner that they are independent of the
teleconferencing application.
We note that claims 5 through 7, due to their dependence
upon claim 1, require that the accessory is independent of the
teleconferencing application. Furthermore, we note that claim 9
also requires that “the accessory provides an additional
capability independent of the teleconferencing application.”
Therefore, we will reverse the Examiner’s rejection of these
claims for the same reasons as above.
For independent claim 11, Appellant argues that the claim
limitation “accessory capabilities,” is not taught in Larson for
the same reasons as argued for independent claim 1. See page 20
of the brief. Furthermore, we note that Appellants did not
respond to the Examiner’s argument that the term “accessory” does
not distinguish over Larson in the Appellant’s reply brief.
As we have discussed above, we fail to find that the
ordinary meaning of accessory requires that the Larson’s
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electronic conferencing applications 102 be independent of the
Larson’s teleconferencing software. The term “accessory” only
requires that the Larson Electronic Conferencing Applications 102
be a subordinate or supplemental item to the Larson’s
teleconferencing application. As shown above, Larson does teach
that the Electronic Conferencing Applications 102 are accessories
in that they are supplemental items in which the software package
can choose to use. Therefore, we find that the Examiner has
shown that Larson teaches all the claimed elements recited in
Appellant’s claim 11.
For independent claim 16, Appellant argues that Larson does
not teach “automatically accessorizing all automatic accessories
each automatic accessory having a capability” as required by
Appellant’s independent claim 16. Appellant argues that Larson
fails to teach “accessories” for the same reasons as argued for
independent claim 1. Appellant further argues that Larson fails
to teach “automatic accessories.” See page 25 of the brief.
As shown above, we have found that Larson does teach
accessories. Furthermore, we find that Larson does teach
automatic accessories. The Examiner has pointed out that Larson
teaches automatic accessories in column 13, lines 23 through 29
and that the Persistent Conference Manager 108 provides all the
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necessary accessories as required by the teleconference.
Therefore, we find that Larson teaches all the claimed elements
as recited in Appellant’s claim 16.
For claims 19 and 20, we note that the Appellant has argued
these as a group. See pages 4 and 28 of the brief.
37 CFR § 1.192 (c)(7) (July 1, 2000) as amended at 62 Fed.
Reg. 53196 (October 10, 1997), which was controlling at the time
of Appellant filing the brief, states:
For each ground of rejection which Appellant contests and
which applies to a group of two or more claims, the Board
shall select a single claim from the group and shall decide
the appeal as to the ground of rejection on the basis of
that claim alone unless a statement is included that the
claims of the group do not stand or fall together and, in
the argument under paragraph (c)(8) of this section,
Appellant explains why the claims of the group are believed
to be separately patentable. Merely pointing out
differences in what the claims cover is not an argument as
to why the claims are separately patentable.
We will, thereby, consider the Appellant’s claims as standing or
falling together, and we will treat claim 19 as a representative
claim of that group. See In re McDaniel, 293 F.3d 1379, 1383, 63
USPQ2d 1462, 1465 (Fed. Cir. 2002) (“If the brief fails to meet
either requirement [of 37 CFR § 1.192 (c)(7)], the Board is free
to select a single claim from each group of claims subject to a
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common ground of rejection as representative of all claims in
that group and to decide the appeal of that rejection based
solely on the selected representative claim.”) See also, In re
Watts, 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1457 (Fed. Cir.
2004).
Appellant makes the same argument as for claim 1 in that
Appellant argues that Larson does not teach accessories
capabilities. See page 28 of brief. Therefore, we find that
Larson teaches all the claimed limitations as recited in claim 19
for the same reasons above.
Rejections under 35 U.S.C. § 103
Claims 2, 6 through 8 and 10 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Larson in view of Shinjo. We
note that claims 2 and 6 through 8 through their dependence upon
claim 1 recites “independent of the teleconferencing
application.” We also note that independent claim 10 recites
“accessory invocation mechanism stacking a plurality of
accessories each independent of the application.” As we have
found above, we fail to find that Larson teaches this limitation.
Furthermore, upon our review of Shinjo, we fail to find that
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Shinjo teaches this missing piece. Therefore, we will not
sustain the Examiner’s rejection of claims 2, 6 through 8 and 10
under 35 U.S.C. § 103.
Claims 13, 14 and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Larson in view of Shinjo. Appellant
argues that neither Larson nor Shinjo teaches or suggests
“stacking the accessories serially between the application and
the conference component” as recited in Appellant’s claim 13.
Appellant agrees that Shinjo teaches an object stacking and
server stacking model for World-Wide Web applications. However,
Appellant argues that the Examiner has not identified and the
Appellant has failed to find any teachings in Shinjo which teach
stacking teleconferencing accessories serially between a
teleconferencing application and a conference component. See
page 23 of the brief. Appellant argues that Larson and Shinjo
fails to teach “automatic accessories serially between the
teleconferencing application and a conferencing component” as
recited by appellant’s dependent claim 17. Appellant argues the
same argument as above in that Shinjo fails to teach stacking
accessories serially between the application and the conference
component. See page 26 of Appellant’s brief.
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Upon our review of Larson and Shinjo, we fail to find that
either reference teaches “stacking the accessories serially
between the application and the conference component” as recited
in claim 13 or “linking all automatic accessories serially
between the teleconferencing application and a conference
component” as recited in Appellant’s claim 17. Therefore, we
will not sustain the Examiner’s rejection of claims 13, 14 and 17
under 35 U.S.C. § 103.
Claims 12, 15 and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Larson in view of Leondires. Appellant
argues that neither Larson nor Leondires teaches or suggests
determining if a second end point participating in a
teleconference has a capability of the accessory as required by
claim 12. Appellant agrees that Leondires does teach a multi
audio-video conferencing system that performs a hardware check to
determine if the participant’s system in an audio-video
conference has hardware sufficient to participate in the
conference. However, the Appellant argues that Leondires does
not teach or suggest determining if a second end point
participating in a teleconference has accessories capabilities.
See pages 21 and 22 of the brief. Appellant makes similar
arguments for claim 18 arguing that neither Larson nor Leondires
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teaches automatically identifying which capabilities of the
automatic accessories are common to a local end point and remote
end point as recited by claim 18.
Appellant points out that the plain meaning of the term
“accessory” requires something nonessential but desirable. We
agree with this definition. Thus, accessory cannot be essential
to the application as to their existence. Therefore, we fail to
find that Leondires teaches determining if a second end point
participating in a conference has an accessory capability. We
fail to find that a teaching in Leondires of an essential
hardware component can read on the above language. Therefore, we
will not sustain the Examiner’s rejection of claims 12, 15 and 18
under 35 U.S.C. § 103.
In view of the foregoing, we have affirmed the Examiner’s
rejection of claims 9, 11, 16, 19 and 20 under 35 U.S.C. § 102
and we have reversed the rejection of claims 1, 3 through 5 and 9
under 35 U.S.C. § 102. Furthermore, we have reversed the
Examiner’s rejection of claims 2, 6 through 8, 10, 12 through 15,
17 and 18 under 35 U.S.C. § 103.
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16
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MAHSHID SAADAT )
Administrative Patent Judge )
Appeal No. 2003-2053
Application 08/646,500
17
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