International Business Machines Corporation

Patent Trials and Appeals Board

Jan 25, 2021

2019005860 (P.T.A.B. Jan. 25, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/596,477 05/16/2017 Jonathan Dunne SVL920160003US2_8150-0766 5362
112978 7590 01/25/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
MERCADO VARGAS, ARIEL
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
01/25/2021 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte JONATHAN DUNNE, JAMES P. GALVIN, JR.,
LIAM HARPUR, and AMY D. TRAVIS

Appeal 2019-005860
Application 15/596,477
Technology Center 2100

Before LINZY T. McCARTNEY, MATTHEW J. McNEILL, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–3, 5, and 6, all of the claims pending
in the application.1 Appeal Br. 45–47 (Claims App.). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 5.
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CLAIMED SUBJECT MATTER
The claimed invention generally relates to annotations for
presentations in a web conference. Spec. ¶¶ 2–3. Appellant’s method
assigns a relevance parameter to each annotation, where the parameter
indicates a relevance of the annotation. Id. ¶ 4. The relevance of the
annotation is used to determine the location of the annotation. Id. ¶¶ 4–5.
Independent claim 1 is illustrative:
1. A method comprising:
receiving a plurality of annotations for a presentation presented
in a web conference; and
for a first annotation of the plurality of annotations:
determining a respective portion of the presentation to
which the first annotation pertains by performing natural
language processing and semantic analysis on the first
annotation and the presentation;
determining a level of correlation between the first
annotation and the respective portion of the presentation to
which the first annotation pertains by applying a regression
analysis on results of the natural language processing and
semantic analysis;
based on the determined level of correlation between the
first annotation and the respective portion of the presentation to
which the first annotation pertains, assigning to the first
annotation a first relevance parameter, wherein the first
relevance parameter indicates a relevance of the first annotation
to the respective portion of the presentation to which the first
annotation pertains;
determining that the first relevance parameter has a first
value that is higher than a second value of a second relevance
parameter assigned to a second annotation of the plurality of
annotations;
responsive to determining that the first relevance
parameter has the first value that is higher than the second value
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of the second relevance parameter assigned to the second
annotation:
assigning, using a processor, based on the first
relevance parameter assigned to the first annotation, the
first annotation to a first location of a view of the
presentation presented in a virtual white board, wherein
the first location of the view comprises at least one cell
identified by a defined row and a defined column in a
defined grid of the virtual white board in which the
presentation is presented, wherein the first location of the
view to which the first annotation is assigned is different
than a second location of the view where the first
annotation originally was provided;
presenting the first annotation in the virtual white
board in the first location of the view to which the first
annotation is assigned and reserving the first location
exclusively for the first annotation, the reserving the first
location exclusively for the first annotation making the
first location unavailable for other annotations; and
re-locating the second annotation in the virtual
white board from another location to the second location
of the view where the first annotation originally was
provided.
REFERENCES
Name Reference Date
Marshall et al.
(“Marshall”)
US 2004/0194021 A1 Sept. 30, 2004
Marchisio US 6,862,710 B1 Mar. 1, 2005
Cragun et al.
(“Cragun”)
US 2005/0091253 A1 Apr. 28, 2005
Tang US 2013/0054636 A1 Feb. 28, 2013
Ball et al.
(“Ball”)
US 2017/0139921 A1 May 18, 2017

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REJECTIONS2
Claims 1–3, 5 and 6 are rejected under 35 U.S.C. § 103 as being
obvious over the combination of Tang, Marchisio, Ball, Cragun, and
Marshall.
OPINION
We have reviewed the Examiner’s obviousness rejections in light of
Appellant’s contentions that the Examiner has erred.3 Final Act. 11–24;
Ans. 5–15; Appeal Br. 34–44; Reply Br. 2–7. We are not persuaded by
Appellant’s contention of Examiner error in rejecting claims 1–3, 5, and 6
under 35 U.S.C. § 103.
1. Claims 1–3 and 6
We begin with claim 1. The first issue raised by Appellant is whether
the combination of Tang, Marchisio, Ball, Cragun, and Marshall teaches or
suggests the claimed invention. In particular, whether the Examiner is
correct in finding that Marshall teaches or suggests the limitation “reserving
the first location exclusively for the first annotation making the first location
unavailable for other annotations.” Appeal Br. 37–38; Reply Br. 2–3.
The Examiner finds Tang to teach a method of receiving annotations
for a presentation presented in a web meeting. Final Act. 11–12. The
Examiner finds Tang to describe attendees making annotations on a copy of
a source document 402. Id. (citing Tang ¶ 49). The Examiner further finds

2 The Examiner has withdrawn rejections based upon double patenting and
upon subject matter eligibility. Ans. 3. Accordingly, these rejections are not
before us, and we take no position on them.
3 Appellant has withdrawn an argument, presented in the Appeal Brief at
pages 35–36, directed to teachings of Tang. Reply Br. 2. Accordingly, this
argument is not before us, and we do not address it here.
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Tang to describe assigning a relevance parameter to each annotation based
upon semantic analysis, where the relevance parameter indicates the
relevance of the annotation to the pertinent part of the presentation. Id. at
12. The Examiner relies on Tang’s description of associating transcribed
recordings (annotations) with one or more portions of source document 402,
where each annotation is ranked as to whether the annotation content is
strongly relevant to content from a pertinent part of the source document.
Id. at 12–13 (citing Tang ¶ 41).
The Examiner relies upon Marchisio to teach or suggest determining a
level of correlation between the annotation and the pertinent part of the
presentation through a correlation analysis. Id. at 14. The Examiner relies
upon Ball for assigning relevance parameters, such as through text similarity
measurements, and locating and relocating annotations to a user in a
particular order. Id. at 15–16. The Examiner relies upon Cragun for a
defined row-and-column grid for annotations. Id. at 17–18.
The Examiner relies upon Marshall for teaching a first user’s high-
level annotation displayed in a position adjacent to the contextually relevant
portion of the document. Id. at 18. The Examiner further relies upon
Marshall for teaching the disputed limitation, “reserving the first location
exclusively for the first annotation,” by rescaling a high-value annotation to
place it more prominently while maintaining the contextual relevance with
the associated portion of the document. Id. at 18–19 (citing Marshall ¶ 55,
Fig. 7). The Examiner further states that Marshall teaches that the
annotation is “reserved” for a location because another annotation would not
be allowed to overlap with or replace the annotation at that location. Ans. 8
(citing Marshall ¶ 43).
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Appellant argues that Marshall, at the cited sections, does not
explicitly disclose, “reserving the first location exclusively for the first
annotation making the first location unavailable for other annotations.”
Appeal Br. 38; Reply Br. 3.
We determine the scope of claims in patent applications not solely on
the basis of the claim language, but upon giving claims their construction “in
light of the [S]pecification as it would be interpreted by one of ordinary skill
in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Neither Appellant nor the Specification defines “reserving the
first location exclusively.” See, e.g., Spec. ¶¶ 15–33 (defining various other
terms). However, the Specification provides an example of reserving a
location for an annotation:
Thus, based on the relevance parameters 180, 182, the web
conferencing application 112 can rank the annotation 160
higher than the annotation 162. Because the annotation 160 is
ranked higher, the web conferencing application 112 can give
the annotation 160 higher priority when determining where to
re-locate the annotation 160 in the virtual white board 200. For
instance, the web conferencing application 112 can determine
one or more cells 240 of grid 230, or portions of one or more
cells 240, where the annotation 160 is to be moved, and reserve
those cells, or the portions of the cells, exclusively for the
annotation 160. Accordingly, those cells 240, or portions
thereof, reserved for the annotation 160 can be made to be
unavailable for other annotations, such as the annotation
162.
Spec. ¶ 49. Thus, the Specification describes reserving a location for an
annotation as making that location unavailable for other annotations;
specifically, the lower-ranking annotation in a comparison of two
annotations. The Examiner interprets “reserving the first location
exclusively” for an annotation as being met by Marshall’s provision of an
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exclusive location for an annotation that may not be replaced or overlapped
by another annotation. Final Act. 18–19. This finding is supported by
Marshall, which clearly describes providing unique locations for each of
multiple annotations, stating, “any overlapping high value annotations are
resolved or separated.” Marshall ¶¶ 42 (addressing annotations from several
users), 55 (discussing separation of two annotations). Thus, we agree with
the Examiner that Marshall’s teaching of providing an annotation with a
location that is separate from “any” other annotations is consistent with the
broadest reasonable interpretation, consistent with the Specification, of the
“reserving the first location exclusively” limitation.
Appellant further argues that Marshall does not inherently disclose
that limitation, because “it is not invariable that another high value
annotation cannot be re-positioned in the upper right corner of the document
on top of or to replace the annotation 420.” Appeal Br. 38; Reply Br. 3. We
understand this to be an argument that Marshall’s annotation positioning
could be replaced should a higher value annotation be later identified, and
that this would not meet the language of the claim. Appellant does not point
to any section of Marshall that describes the replacement of annotation 420
with another annotation. To the contrary, Marshall describes separating, to
unique locations, multiple annotations that have been attempted to have been
placed in the same location by multiple users. Marshall ¶ 42. Thus, we are
not persuaded by Appellant’s argument that a hypothetical later placement
of an annotation detracts from Marshall’s teaching of reserving a first
location exclusively for an annotation and making that location unavailable
for other annotations.
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Appellant next argues that the Examiner relies solely on hindsight to
motivate the combination of Tang and Marshall. Appeal Br. 42–45; Reply
Br. 6–7. Specifically, Appellant argues that the Examiner provides no
reasoning, other than using the claims as a framework, to assemble the
references. Reply Br. 4. For example, with respect to the teachings of
Marchisio, Appellant states that the Examiner has taken a statement of
Marchisio that expresses the advantages of Marchisio’s invention, and used
that statement as a reason to combine teachings of Marchisio with the other
applied references. Id. Appellant argues that such teachings would not
provide a reasoning to combine Marchisio because Marchisio is directed to a
different invention (relating to navigating through a document set) than
Appellant’s alleged invention (a presentation presented in a web
conference). Id.
We are not persuaded. Appellant has not explained why the rationale
provided by the Examiner is not a reason to combine the teachings of
Marchisio with the other references. It has been noted that,
[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392 (CCPA 1971).
Here, the Examiner has relied upon Marchisio’s stated advantage of
improved navigability of documents in a document set to provide motivation
for applying Marchisio’s teaching of determining a level of correlation
between annotation and a location of a presentation through a regression
analysis. Final Act. 14. Appellant does not contest that Marchisio provides
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this statement of improvement. Reply Br. 4. Thus, we agree with the
Examiner that the applied references, viewed by one of ordinary skill in the
art, independently provide a reason to combine the references beyond mere
reconstruction of the disclosed and claimed invention. Accordingly, we are
not persuaded that the Examiner’s determination is based solely upon
knowledge gleaned from Appellant’s disclosure, and therefore are not
persuaded that the rejection improperly relies upon hindsight reconstruction.
Furthermore, Appellant’s argument does not take into account the
“inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The person of ordinary skill is the person of ordinary skill in the art is “a
person of ordinary creativity, not an automaton.” Id. at 421. Appellant
alleges that the invention of Marchisio is towards a different purpose than
that of claim 1. Reply Br. 4. However, the reason for combining references
is not limited to the purpose or problem addressed by Appellant, but “any
need or problem known in the field and addressed by the patent can provide
a reason for combining the elements in the manner claimed . . . a person of
ordinary skill often will be able to fit the teachings of multiple patents
together like a puzzle.” KSR, 550 U.S. at 402. For that reason also,
Appellant’s hindsight argument is not persuasive.
For the above reasons, we are not persuaded of error, and affirm the
Examiner’s rejection of claim 1. Appellant further argues that dependent
claims 2, 3, and 6 stand or fall with independent claim 1. Appeal Br. 34.
Accordingly, we affirm claims 1–3 and 6. See 37 C.F.R. § 41.37(c)(1)(iv).
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2. Claim 5
Appellant argues that neither Tang nor Marshall teaches, either
individually or in combination, the limitation “determining whether the first
relevance parameter exceeds a threshold value” recited in claim 5. Appeal
Br. 40–44. Appellant first argues that the Examiner has relied upon Tang’s
teaching of an annotation that is identified by a ranking to be “strongly
relevant” to content in the working document. Id. at 41 (citing Tang ¶ 41).
Appellant argues that Tang does not equate “strongly relevant” to a
“threshold value.” Id. Appellant argues that “threshold value” is a precise
value, unlike “strongly relevant,” which would vary from case to case
because it is based on a ranking dependent from other elements in the
ranking. Id. at 41–42.
We are not persuaded by Appellant’s argument. The Examiner finds
that Tang teaches associations of annotations to portions of the document
that have been determined to be strongly relevant to that portion of the
document. Final Act. 15–16 (citing Tang ¶ 41). The Examiner characterizes
the determination that a document is “strongly relevant” to be a relevance
parameter that exceeds a threshold value, that causes the annotations to be
distributed to (associated with a version of) the document. Id. at 16.
Appellant argues that the claimed threshold value is distinguishable from
Tang’s “strongly relevant” indication because the threshold value does not
vary from case to case. However, claim 5 requires only “determining
whether the first relevance parameter exceeds a threshold value.” Claim 5
does not further define what that threshold value must be, how it is set or
calculated, or how it may or may not vary from case to case. Because the
Examiner has found Tang to teach a threshold set at a “strongly relevant”
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value, and Appellant’s argument against the Examiner’s finding is not
commensurate with the scope of claim 5, we are not persuaded by
Appellant’s argument.
Appellant further argues that Marshall does not disclose a “threshold
value” because Marshall instead describes a “ranked importance” that will
vary depending on other elements in the ranking. Appeal Br. 43. Because
we have agreed with the Examiner’s finding that Tang teaches or suggests
the “threshold value” limitation, we need not consider whether Marshall also
teaches this limitation.
Accordingly, we are not persuaded of error in the Examiner’s
rejection of claim 5, and we sustain the Examiner’s rejection thereof.

DECISION
For the above-described reasons, we sustain the Examiner’s rejection
of claims 1–3, 5, and 6 as being obvious over the applied references under
35 U.S.C. § 103.

SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 6 103 Tang, Marchisio, Ball,
Cragun, Marshall
1–3, 5, 6

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)(iv). See
37 C.F.R. § 41.50(f).
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AFFIRMED