International Business Machines Corporation

Patent Trials and Appeals Board

Dec 18, 2020

2019004996 (P.T.A.B. Dec. 18, 2020)

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.
15/596,164 05/16/2017 Jonathan Dunne SVL920150186US2_8150-0765 1532
112978 7590 12/18/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
MCINTOSH, ANDREW T
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
12/18/2020 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 2019-004996
Application 15/596,164
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 1–7, all of the claims pending in the
application.1 Appeal Br. 57–59 (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 relative parameter to each annotation, where the parameter
indicates a relevance of the annotation. Id. at 4. For each annotation, the
method also generates a decay model based on the relevance parameter,
where the decay model indicates the duration of time that the annotation is
visible to a participant, based on the relative expertise level of the
participants. Id.
Independent claim 1 is illustrative:
1. A method comprising:
receiving a plurality of annotations for a presentation presented
in a web conference;
assigning to each of the plurality of annotations a respective
relevance parameter, wherein each relevance parameter
indicates a relevance of a respective one of the plurality of
annotations to a portion of the presentation to which the
annotation pertains;
generating, using a processor, for each of the annotations, a
decay model based on the respective relevance parameter,
wherein the decay model indicates, based on respective
expertise levels of participants participating in the web
conference, a first duration of time the annotation is to be
visible to at least a first participant participating in the web
conference, and
at least a second duration of time the annotation is to be visible
to at least a second participant participating in the web
conference, wherein the second duration of time is different
than the first duration of time; and
presenting each respective annotation with the presentation in
accordance with the decay model generated for the respective
annotation.
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REFERENCES
Name Reference Date
Marshall et al.
(“Marshall”)
US 2004/0194021 A1 Sept. 30, 2004
Tang US 2013/0054636 A1 Feb. 28, 2013
Ohanyan et al
(“Ohanyan”)
US 2014/0337126 A1 Nov. 13, 2014

REJECTIONS2
Claims 1–3 and 5–7 are rejected under 35 U.S.C. § 103 as being
obvious over the combination of Tang and Ohanyan.
Claim 4 is rejected under 35 U.S.C. § 103 as being obvious over the
combination of Tang, Ohanyan, and Marshall.

OPINION
We have reviewed the Examiner’s obviousness rejections in light of
Appellant’s contentions that the Examiner has erred. Final Act. 10–21; Ans.
4–23; Appeal Br. 33–56; Reply Br. 2–15. We are not persuaded by
Appellant’s contention of Examiner error in rejecting claims 1–6 under 35
U.S.C. § 103. We are persuaded by Appellant’s contention of Examiner
error in rejecting claim 7 under 35 U.S.C. § 103.
1. Claims 1–3
We begin with claim 1. The first issue raised by Appellant is whether
the combination of Tang and Ohanyan teaches or suggests the claimed

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.
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invention, in particular, the limitation “wherein the decay model indicates,
based on respective expertise levels of participants participating in the web
conference.” Appeal Br. 57 (Claims App.).
The Examiner finds Tang to teach a method of receiving annotations
for a presentation presented in a web meeting. Final Act. 10–11. The
Examiner relies on Tang’s attendees making annotations on a copy of a
source document 402. Id. (citing Tang ¶ 49). The Examiner further finds
Tang to teach assigning a relevance parameter to each annotation, where the
relevance parameter indicates the relevance of the annotation to the pertinent
part of the presentation. Id. at 11. 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. (citing Tang ¶ 41). The Examiner
further finds Tang to teach generating a model, based on the relevance
parameter, where the model provides indications based on the respective
expertise level of participants. Id. at 11–12. The Examiner relies on Tang’s
description of a chief officer having access to all annotations, and a
marketing department member having access to less than all annotations;
e.g., only to pertinent annotations for a marketing department member. Id.
(citing Tang ¶ 63). The Examiner further notes that support staff in a
marketing department may not have the level of expertise of a marketing
professional, but they would have more marketing expertise than similar
staff of the IT department. Ans. 8.
The Examiner finds Tang to lack teaching of a decay model for each
annotation, where the decay model indicates, based on participant expertise
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level different durations of time that each annotation may be visible to each
participant. Final Act. 12. The Examiner finds Ohanyan to provide a
teaching of a decay model indicating different durations of time that each
annotation may be visible to each participant. Id. at 13. The Examiner relies
upon Ohanyan’s description of associating comments with a presentation
duration based on the number of comments from each particular participant,
and presenting each annotation in accordance with the decay model. Id. at
13 (citing Ohanyan ¶ 31). The Examiner finds the combination of Tang’s
method, of associating annotations with portions of a presentation, with
Ohanyan’s method, of generating a decay model for each of the annotations,
to teach or suggest claim 8. Id. at 14.
Appellant first argues that Tang does not teach or suggest basing a
model on “respective expertise levels of participants participating in the web
conference.” Appeal Br. 35. Specifically, Appellant argues that Tang’s
description of providing different annotations based on the participant’s
group or department is not the same as “respective expertise levels of
participants.” Id. Appellant further argues that, to the extent the Examiner
finds that the department a participant belongs to indicates their respective
expertise level, the Examiner relies upon inherency. Id. at 37–38; Reply Br.
2–3. Appellant argues that the Examiner has not shown that the department
a participant belongs to necessarily indicates a respective expertise level, and
therefore, the Examiner has not shown Tang to inherently disclose indicating
the respective expertise levels of participants. Reply Br. 2–3.
The test for obviousness is “what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Regarding generating a model
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based upon a respective expertise level of a participant, the Examiner has
cited to Tang’s determination to provide a chief officer participant with a
different access to annotations than to a member of a marketing department.
Final Act. 12 (citing Tang ¶ 63).
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 define “expertise level.”
See, e.g., Spec. ¶¶ 16–34 (defining various other terms). However, the
Specification provides an example of how an expertise level may be
calculated:
The web conferencing application 112 or web conferencing
client 140 can compare such terms and contents to information
contained in the respective participant’s user profile, for
example areas of expertise indicated in the participant’s user
profile. Based on such comparison, the web conferencing
application 112 or web conferencing client 140 can generate a
value indicating the participant’s level of expertise.

Spec. ¶ 55. We agree with the Examiner that a person’s department or status
as an officer is the type of information, like “information contained in the
respective participant’s user profile,” that is consistent with the broadest
reasonable interpretation of a level of expertise as used by the Specification.
Appellant has not provided persuasive argument as to why such a
department or status would not indicate a participant’s level of expertise that
is sufficient to persuade us in light of the use of the term in the Specification.
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Consequently, we agree with the Examiner that Tang provides such
teaching explicitly, through its examples of department and status as an
officer, and not through an inherent characteristic. For this reason also, we
are not persuaded by Appellant’s argument that Ohanyan, by itself, does not
teach a decay model based on respective expertise levels of participants.
Appeal Br. 38–41. We further note that Appellant, in the Appeal Brief,
argues that neither Tang nor Ohanyan teaches “participating in a web
conference.” Appeal Br. 35–36, 40–41. However, Appellant withdraws that
argument in the Reply Brief, so we need not address it here. Reply Br. 4.
Appellant next argues that the Examiner relies solely on hindsight to
motivate the combination of Tang and Ohanyan. 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 arrive at a
“presentation duration” based on “groups or departments that the
interviewers belong to.” Reply Br. 7. Appellant argues that one of ordinary
skill in the art would not, absent Appellant’s own teachings, “substitute
Tang’s ‘groups or departments’ for Ohanyan’s ‘number of comments
associated with the timecode’” to teach the claimed
generating for each of the annotations, a decay model based on
the respective relevance parameter, wherein the decay model
indicates, based on respective expertise levels of participants
participating in the web conference, a first duration of time the
annotation is to be visible to at least a first participant
participating in the web conference, and at least a second
duration of time the annotation is to be visible to at least a
second participant participating in the web conference, wherein
the second duration of time is different than the first duration of
time.
Appeal Br. 44–45.
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Appellant argues that the Examiner recites certain benefits provided
by Ohanyan, but that the Examiner “fails to articulate how one of ordinary
skill in the art, based on those benefits, would be motivated to combine the
teachings of Ohanyan with Tang to arrive at Appellant’s claimed invention,”
because this is not suggested by the cited passages of Ohanyan and Tang.
Id.
The Examiner explains his motivation thusly:
The motivation to combine is that this method can confer
several benefits over conventional methods. First, by
overlaying or otherwise presenting the comments in-
synchronization with the media, users are given additional
context about the comment. Second, media providers and
advertisers can easily identify which scenes, subjects, or other
media parameters resonate with the user audience, and tailor
advertisements and secondary media to those scenes (Ohanyan,
[¶ 18]).
Final Act. 14.
We first note that the Examiner cites to Ohanyan, not to Appellant’s
Specification, for these benefits of the teachings of Ohanyan. In light of the
Examiner’s detailed explanation of benefits to be achieved, we are not
persuaded by Appellant’s arguments that the Examiner provides no reason,
or no reason other than that provided by Appellant’s Specification, for
combining the teachings of Ohanyan with the teachings of Tang.
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 one of ordinary skill in the art would not, absent Appellant’s
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own teachings, “substitute Tang’s ‘groups or departments’ for Ohanyan’s
“number of comments associated with the timecode.” However, the test for
obviousness is “not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference,” but instead
“what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d at 425. Here,
Appellant has provided neither explanation nor evidence as to why the
Examiner erred in finding that one of ordinary skill would apply the relied-
upon features of the decay model taught by Ohanyan in the annotation
method of Tang.
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 and 3 stand or fall with their independent claims. Appeal Br. 33.
Accordingly, we affirm claims 1–3. See 37 C.F.R. § 41.37(c)(1)(iv).
2. Claim 5
Appellant argues that Tang and Ohanyan do not teach, either
individually or in combination, the limitations recited in claim 5. Appeal Br
45. Claim 5 recites, inter alia, “identifying at least one annotation assigned
a respective relevance parameter that exceeds a threshold value.” Appeal
Br. 58 (Claims App.). Appellant 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 46 (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
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case because it is based on a ranking dependent from other elements in the
ranking. Id.
We are not persuaded by Appellant’s argument. 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, such a limitation does not appear in the claims.
Furthermore, with respect to Appellant’s argument that the claimed
threshold value is distinguishable from Tang’s “strongly relevant” indication
because the threshold value is a precise value, Appellant admits that Tang’s
strongly relevant indication is a ranking that results from a semantic
analysis. Appeal Br. 46 (citing Tang ¶ 41). And, Appellant’s Specification
describes the threshold value as being used to determine whether a ranking
is high enough to cause the information included in the annotation to be
included in the presentation document. Spec. ¶ 60. Accordingly, we are not
persuaded that Tang’s determination of whether a ranking is sufficient to
cause an annotation to be included in a document fails to teach or suggest
the claimed threshold value, which determines whether a ranking is
sufficient to cause an annotation to be included in a presentation document.
Accordingly, we are not persuaded that the Examiner erred in finding Tang
to teach or suggest the claimed threshold value.
Appellant further argues that Tang does not teach the further recitation
of claim 5 that, “responsive to identifying the at least one annotation
assigned a respective relevance parameter that exceeds the threshold value,
automatically persisting the identified annotation to the presentation.”
Appeal Br. 46–47. Appellant argues that Tang teaches only that the
annotations are distributed to the presentation, but not that such distribution
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is based on a “relevance parameter that exceeds a threshold value.” Id. at
48.
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.
Based on our determination that the Examiner has shown Tang’s
“strongly relevant” to teach or suggest the claimed “threshold value,” we are
not persuaded of error. The Examiner has shown Tang to teach or suggest
that, responsive to an indication that an annotation is sufficiently relevant to
a portion of the document, that annotation is distributed to the document,
thus teaching or suggesting the claim limitation at issue.
Accordingly, we are not persuaded of error in the Examiner’s
rejection of claim 5, and we sustain the Examiner’s rejection thereof.
3. Claim 6
Appellant argues against the rejection of claim 6 for the same reasons
as against claim 5; i.e., that Tang’s “strongly relevant” is not disclosed by
Tang to equate to the claimed “threshold value,” and that Tang does not
disclose that the annotations are distributed based on whether the annotators
are strongly relevant. Appeal Br. 49–52. For the reasons, expressed supra,
we are not persuaded by these arguments.
Accordingly, we are not persuaded of error in the Examiner’s
rejection of claim 6, and we sustain the Examiner’s rejection thereof.
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4. Claim 7
Appellant argues that claim 7 is not taught by the combination of
Tang and Ohanyan. Claim 7 recites the further limitation,
identifying at least one annotation assigned a respective
relevance parameter that exceeds a threshold value; and
responsive to identifying the at least one annotation assigned a
respective relevance parameter that exceeds the threshold value,
automatically generating a notification to a presenter of the
presentation indicating to the presenter that the presenter should
consider updating the presentation to include in the presentation
content of the annotation.
Appeal Br. 59 (Claims App.).
The Examiner finds that Tang teaches “identifying at least one
annotation assigned a respective relevance parameter that exceeds a
threshold value.” Final Act. 18–19 (emphasis omitted). The Examiner
relies upon Tang’s teaching of associating transcribed recordings with
portions of a source document through analysis that performs a ranking on a
per-annotation basis and determines that particular annotation content is
strongly related to document content. Id. (citing Tang ¶¶ 41–42).
The Examiner further finds that Tang teaches “automatically
generating a notification to a presenter of the presentation indicating to the
presenter that the presenter should consider updating the presentation to
including in the presentation content of the annotation.” Id. at 18–19. The
Examiner relies upon Tang’s teaching of a color coding for annotations, in
which the colors may represent positive and negative sentiment for
annotations. Id. (citing Tang ¶ 51).
Appellant argues (1) that Tang’s “strongly relevant” does not teach or
suggest “threshold value,” (2) that positive and negative sentiment color
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indicators are not relevance parameters as claimed, and (3) that color coding
does not give the claimed “indicating.” Appeal Br. 52–55.
We are persuaded by Appellant’s argument. The Examiner has shown
Tang to teach or suggest identifying “strongly relevant” annotations; i.e.,
those having a relevance greater than a threshold value. The Examiner has
further shown Tang to teach or suggest generating notifications of sentiment
for an annotation, i.e., notifications that the presenter should consider in the
context of the presentation. However, the claim requires more. The claim
requires that the generation of a notification is responsive to a particularly
relevant annotation, one that exceeds a relevance parameter threshold value.
While the Examiner shows Tang to teach generating notifications to all
annotations in response to a relevance calculation, the Examiner has not
shown Tang’s use of color coding to be part of that relevance calculation.
Tang’s color coding is instead responsive to the positive or negative
sentiment. The Examiner has not shown Tang’s color coding to be a
relevance calculation that, responsive to a high relevance, provides a
notification that the presentation should be updated. Rather, Tang’s color
coding is characterized by the Examiner as automatically generating color
coded notifications whether positive, good, or neutral. Final Act. 19 (citing
Tang ¶ 51 (“[A] paragraph with 3 or 4 annotations conveying a neutral or
negative sentiment . . . may be indicated in a second color.”)). Thus, the
notifications are provided in response to all annotations, including neutral
annotations that do not indicate updating is needed. Therefore, the Examiner
has not shown, as a general matter the notifications to be responsive to
annotations that exceed a threshold value as required by the claim.
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We further consider whether the Examiner’s rejection presents any
example of Tang that may teach the claim language, by expressing
particularly relevant sentiments such that notification is being provided in
response to identifying an annotation, where the example annotation has a
threshold-exceeding relevance. The Examiner cites to Tang as providing
positive or negative sentiments that indicate that the presenter should
consider updating the presentation, such as “don’t include this part.” Id.
However, the claim requires the “relevance” to indicate the relevance of the
annotation to a portion of the presentation, not the relevance of the
annotation to the sentiment of the reviewer, which is the expressed purpose
of the color coding. Accordingly, we are persuaded by Appellant’s
argument that the Examiner has not shown Tang to teach the automatic
notification generation that is responsive to a threshold-exceeding relevance
parameter, and reverse the Examiner’s rejection of claim 7.
5. Claim 4
Appellant argues that claim 4 stands or falls together with independent
claim 1. Appeal Br. 33. Because we determine claim 1 to be properly
rejected, we also sustain the Examiner’s rejection of claim 4.

DECISION
For the above-described reasons, we sustain the Examiner’s rejection
of claims 1–6 as being obvious over the applied references under 35 U.S.C.
§ 103, and reverse the Examiner’s rejection of claim 7 as being obvious over
the applied references under 35 U.S.C. § 103.

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CONCLUSION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–7 103 Tang, Ohanyan 1–3, 5, 6 7
4 103 Tang, Ohanyan, Marshall 4
Overall
Outcome
1–3, 5, 6 7

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).

AFFIRMED IN PART