Ex parte Stein

Board of Patent Appeals and Interferences

Apr 27, 2000

08280341 (B.P.A.I. Apr. 27, 2000)

An amendment after the final rejection was filed as1
paper no. 16 and was entered in the record for the purposes of
this appeal [paper no. 18].
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MICHAEL V. STEIN
________________
Appeal No. 1997-2895
Application 08/280,341
________________
ON BRIEF
________________
Before HAIRSTON, LALL and GROSS, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1 to 14 and 16 to 30. Claim 151
has been withdrawn from consideration.
Appeal No. 1997-2895
Application 08/280,341
-2-
The invention relates to an educational environment. By
means of a network, a control workstation is connected to a
multiplicity of other workstations. The former is for a
teacher while the latter for the students. When the teacher
desires to observe what is displaying on the displays of the
students, the teacher sends a command to the student
workstations. The student workstations reduce the images on
their displays and transmit the data of the reduced images to
the teacher’s workstation. Thus, the teacher is able to
simultaneously see on the display of the control workstation
the reduced images from the displays of a plurality of student
workstations.
Claim 1 is reproduced below as illustrative of the
invention.
1. In a networked computer system having at least one
control workstation and a multiplicity of other workstations,
each having an associated display device for displaying
information being processed at the respective workstations, a
method for displaying information from the display devices of
a plurality of said other workstations on the display device
of said control workstation, comprising the steps of:
generating a command to said plurality of other
workstations to provide the control workstation display
information;
Appeal No. 1997-2895
Application 08/280,341
-3-
processing the information being displayed on the display
devices at each of said plurality of other workstations to
produce data relating to a reduced-size reproduction of the
information being displayed;
transmitting said reduced-size reproduction data to said
control workstation;
storing the reduced-size reproduction data received from
each of said plurality of other workstations at said control
workstation; and
simultaneously displaying a reduced-size reproduction of
the information displayed at each of said other workstations
at respective locations on the display device for said control
workstation.
The Examiner relies on the following references:
Stefik et al. (Stefik) 4,974,173 Nov. 27, 1990
Abrahamson et al.(Abrahamson) 5,002,491 Mar. 26,
1991
Piovoso et al. (Piovoso) 5,294,998 Mar. 15,
1994
Claims 1, 7, 16, 19, 20, 23, 24, 26 and 29 stand rejected
under 35 U.S.C. § 102 over Stefik. Claims 6, 10 to 13, 27, 28
and 30 stand rejected under 35 U.S.C. § 103 over Stefik.
Claims 2 to 5, 14, 17, 18, 21, 22 and 25 stand rejected under
35 U.S.C. § 103 over Stefik in view of Piovoso. Claims 8 to 9
stand rejected under 35 U.S.C. § 103 over Stefik and
Abrahamson.
Appeal No. 1997-2895
Application 08/280,341
A reply brief was filed as paper no. 20 and was entered2
in the record without any further response by the Examiner
[paper no. 22].
-4-
Rather than repeat the positions and the arguments of
Appellant and the Examiner, we make reference to the briefs2
and the answer for their respective positions.
OPINION
We have considered the rejections advanced by the
Examiner. We have, likewise, reviewed Appellant's arguments
against the rejections as set forth in the brief.
It is our view, after consideration of the record before
us, that the rejections under 35 U.S.C. § 102 and under 35
U.S.C.
§ 103 are not proper. Accordingly, we reverse.
Analysis
There are various rejections under 35 U.S.C. § 102 and 35
U.S.C. § 103. We treat them seriatim.
Rejections under 35 U.S.C. § 102
Claims 1, 7, 16, 19, 20, 23, 24, 26 and 29 are under
Appeal No. 1997-2895
Application 08/280,341
-5-
rejection as being anticipated by Stefik.
It is well established that a prior art reference
anticipates the subject of a claim when the reference
discloses every feature of the claimed invention, either
explicitly or inherently (see Hazani v. Int'l Trade Comm'n,
126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997) and
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984)).
We first take the independent claim 1. The Examiner
asserts that Stefik discloses the claimed method [answer, page
3]. Appellant argues [brief, pages 6 to 9 and reply brief,
pages 1 to 5] that Stefik does not anticipate claim 1.
Moreover, Appellant advocates that Stefik is not even related
to the same problem Appellant is trying to solve.
We agree with Appellant's position. In Stefik, all
workstations have the same status, and any one workstation can
initiate a change in the data being displayed on its screen.
That workstation locally, or some central control, can put a
notification on the network about the data change. The other
Appeal No. 1997-2895
Application 08/280,341
-6-
workstations see the notification being displayed on their
screens. The other workstations can then update the data on
their display screens. See Stefik at Col. 4, Lines 13 to 15
and Lines 28 to 32, Col. 7, Lines 18 to 36. One may consider
that the workstation generating the change in the data is the
control workstation. However, this control workstation does
not generate a “command” to the other workstations, and the
other workstations do not reduce in size the displays on their
screens and send the reduced size data to the control
workstation which can simultaneously display on its screen the
reduced displays from the other workstations. We are not
persuaded by the Examiner’s generalized statements like “[i]t
may be unclear and not explicitly disclosed [in Stefik] in
what manner the workstations are triggered to send the display
information; ...” [answer, page 12], or, the “Examiner admits
that the Office Action may not be clear on application of
Stefik et al. to the claim limitations. However, ... any
particular teachings not explicitly taught in Stefik et al.
could be extrapolated from Stefik et al. using an inherency
analysis for those claim limitations which Examiner does not
consider to be critical to the invention, including the
Appeal No. 1997-2895
Application 08/280,341
-7-
limitation in independent claim 1 of ‘generating a command
...’” [id. at 13, 14]. The Examiner’s argument is contrary to
the requirement of anticipation as enunciated above.
Furthermore, for an Examiner to rely on inherency, the
Examiner has to show that the alleged elements must, by their
very nature, perform precisely in the manner the Examiner
prescribes. The Examiner has not made, or even attempted to
make, such a showing here. Mere allegations are not
sufficient to assert inherency. Thus, we do not sustain the
anticipation rejection of claim 1 over Stefik. The other
independent claims, 19, 23 and 26 contain limitations
corresponding to those discussed above regarding claim 1.
Therefore, we do not sustain the anticipation rejection of
independent claims 19, 23 and 26, and the dependent claims 7,
16, 20, 24 and 29 over Stefik.
Rejections under 35 U.S.C. § 103
There are three different rejections under 35 U.S.C. §
103: 1.) Claims 6, 10 to 13, 27, 28 and 30 over Stefik alone,
2.) Claims 2 to 5, 14, 17, 18, 21, 22 and 25 over Stefik and
Piovoso, and 3.) Claims 8 to 9 over Stefik and Abrahamson.
With respect to a rejection under 35 U.S.C. § 103, an
Appeal No. 1997-2895
Application 08/280,341
-8-
Examiner must set forth a prima facie case of obviousness. It
is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). “Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable ‘heart’ of the
invention.” Para-Ordnance Mfg. v. SGS Importer Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to each of the above obviousness rejections,
the Examiner has relied on his position and discussion of
Stefik above with respect to independent claim 1. The
Examiner has presented no evidence, or a line of reasoning, to
cure the deficiencies of Stefik to meet the claimed
limitations discussed above. The additional references are
Appeal No. 1997-2895
Application 08/280,341
-9-
presented for different and other teachings. Thus, for
example, Piovoso stands for the concept of reducing size of a
display by “decimating between original pixels in the
neighborhood of the desired pixel position” [answer, page 7],
and Abrahamson stands for “displaying the current status
information of the other workstations ...” [id. at 10].
Since the deficiencies of Stefik are not cured, the Examiner
has failed to set forth a prima facie case with respect to any
of the three rejections under 35 U.S.C. § 103. Thus, we do
not sustain the obviousness rejections of claims 6, 10 to 13,
27, 28 and 30 over Stefik alone, of claims 2 to 5, 14, 17, 18,
21, 22 and 25 over Stefik and Piovoso, and of claims 8 to 9
over Stefik and Abrahamson.
In conclusion, we reverse the Examiner’s final rejection
of claims 1, 7, 16, 19, 20, 23, 24, 26 and 29 35 U.S.C. § 102
over Stefik. Furthermore, we reverse the decision of the
Examiner
rejecting under 35 U.S.C. § 103 claims 6, 10 to 13, 27, 28 and
30 over Stefik, claims 2 to 5, 14, 17, 18, 21, 22 and 25 over
Appeal No. 1997-2895
Application 08/280,341
-10-
Stefik and Piovoso, and claims 8 and 9 over Stefik and
Abrahamson.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
PARSHOTAM S. LALL ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
psl/ki
Appeal No. 1997-2895
Application 08/280,341
-11-
James W. Peterson
Burns, Doane, Swecker & Mathis
P. O. Box 1404
Alexandria, VA 22313-1404