Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Nov 18, 2020

2019004219 (P.T.A.B. Nov. 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.
14/502,273 09/30/2014 Rod D. Waltermann RPS920140212USNP(710.425) 7026
58127 7590 11/18/2020
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
ORR, HENRY W
ART UNIT PAPER NUMBER
2145
MAIL DATE DELIVERY MODE
11/18/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parteROD D. WALTERMAN, NATHAN J. PETERSON,
RUSSELL SPEIGHT VANBLON, JOHN CARL MESE, and
ARNOLD S. WEKSLER

Appeal 2019-004219
Application 14/502,273
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT,Administrative Patent Judges.
HUME,Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20, which are all rejections pending
in the application. See Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Lenovo PTE, Ltd.
Appeal Br. 3.
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STATEMENT OF THE CASE2
The claims are directed to “automatically transferring presentation
control” (Spec. (Title)) and, in particular, to a “a method of identifying a
participant as a presenter and automatically transferring the presentation
device to the information handling device associated with the identified
participant.” See Spec. ¶18.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphases added to contested prior-art limitations):
1. A method comprising:
associating, using a processor, an information handling
device with a participant;
identifying, using a processor, a participant as a current
presenter, wherein the current presenter’s information handling
device is used as a presentation device;
identifying, using a processor, a second participant as a
new presenter; and
automatically transferring, using a processor, the
presentation device from the current presenter’s information
handling device to the new presenter’s information handling
device.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 13, 2018); Reply Brief (“Reply Br.,” filed May 6, 2019); Examiner’s
Answer (“Ans.,” mailed March 5, 2019); Final Office Action (“Final Act.,”
mailed June 12, 2018); and the original Specification (“Spec.,” filed
Sept. 30, 2014).
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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Dura et al. (“Dura”) U.S. 2012/0192084 A1 July 26, 2012
Kryze et al. (“Kryze”) U.S. 2014/0139426 A1 May 22, 2014
REJECTIONS
R1. Claims 1–5, 7–9, 11–14, 16–18, and 20 stand rejected under 35
U.S.C. § 102(a)(1) as being anticipated by Kryze. Final Act. 2.
R2. Claims 6, 10, 15, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kryze and Dura.
Final Act. 10.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 18–21) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
anticipation Rejection R1 of claims 1–5, 7–9, 11–14, 16–18, and 20 on the
basis of representative claim 1.
We address remaining claims 6, 10, 15, and 19 in obviousness
Rejection R2, infra.3

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to rejection of
claims 1–20, and we incorporate herein and adopt as our own for this
rejection: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments. We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments for emphasis as follows.
1. § 102(a) Rejection R1 of Claims 1–5, 7–9, 11–14, 16–18, and 20
Issue 1
Appellant argues (Appeal Br. 18–21; Reply Br. 20–23) the
Examiner’s rejection of claim 1 under 35 U.S.C. § 102(a) as being
anticipated by Kryze is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art discloses a method
comprising “associating, using a processor, an information handling device
with a participant” that includes, inter alia, “identifying, using a processor,
a second participant as a new presenter;” and “automatically transferring,
using a processor, the presentation device from the current presenter’s
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information handling device to the new presenter’s information handling
device,” as recited in claim 1?
Principles of Law
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed.
Cir. 2010). A reference inherently discloses an element of a claim “if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” Therasense, 593 F.3d at 1332 (citing Cont’l Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification 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). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Analysis
Appellant contends Kryze’s disclosure of identifying that a particular
participant has registered as a user with the SmartLight system fails to
disclose the disputed limitation “associating, using a processor, an
information handling device with a participant.” Appeal Br. 20. Appellant
specifically argues “nowhere in the cited portions of Kryze is there any
disclosure related to an ability of the SmartLight system to identify a
relationship between a user and a device.” Id.
We are not persuaded by Appellant’s arguments because they are not
commensurate with the scope of the claim. We agree with the Examiner’s
findings and broadest reasonable interpretation of the claim term
“associating” that does not require identifying a relationship between a
personal device and a specific user, and that this interpretation encompasses
Kryze, which allows any registered user of the personal device to be a
participant. Ans. 4–5.
In reviewing the record, we are not persuaded the Examiner’s claim
interpretation is overly broad or unreasonable or inconsistent with the
Specification, because Appellant does not point to any limiting definition, in
the claim, or in the Specification, that would preclude the Examiner’s broad
but reasonable construction of the term “associating, using a processor, an
information handling device with a participant,” and the reading of these
limitation on Kryze.4 We find the scope of the construed and contested

4 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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limitation broadly reads on Kryze’s SmartLight system’s communicating
with a user’s personal device for identification, and a user using their device
to register with the Smartlight system.5 See Kryze ¶¶ 78, 97.
Appellant also contends Kryze does not disclose the disputed
limitation “identifying, using a processor, a second participant as a new
presenter.” Appeal Br. 21. Appellant specifically argues “[N]owhere in
paragraph [0048] is there any discussion regarding the identification of ‘a
second participant as a new presenter.’” Id.
We are not persuaded by Appellant’s arguments because we find
Kryze’s system automatically identifying presenters discloses “identifying .
. . a second presenter.” Kryze ¶ 48.
Appellant lastly contends Kryze does not disclose the disputed
limitation “automatically transferring, using a processor, the presentation
device from the current presenter’s information handling device to the new
presenter’s information handling device.” Appeal Br. 20–21. Appellant
specifically argues “[N]owhere in paragraphs [0042] or [0049] is any
transferring action between presenters even disclosed or mentioned.” Id.
We are not persuaded by Appellant’s arguments because Kryze’s
system that automatically identifies presenters discloses this disputed
limitation. Kryze ¶ 48; Ans. 7. We not persuaded because we find Kryze’s
description of facilitating sharing a new document by displaying it once the

5 “Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999).
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new presenter has been identified discloses disputed limitation. Kryze ¶ 48;
Ans. 7. Moreover, Kryze’s identifying the problem that, when transferring
the presentation from one presenter to a second presenter, the prior art
requires the first presenter’s laptop to be disconnected so the second
presenter can connect his laptop in order to present, indicates that Kryze
discloses solving this problem of transferring from one presenter to the next
presenter. Kryze ¶ 4; Ans. 8.
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner’s finding of anticipation. Accordingly, we sustain the
Examiner’s anticipation rejection of independent claim 1, and grouped
claims 2–5, 7–9, 11–14, 16–18, and 20, which fall therewith. See Claim
Grouping, supra.
2. § 103(a) Rejection R2 of Claims 6, 10, 15, and 19
Appellant alleges a lack of motivation to combine the references.
Appeal Br. 22.
We disagree with Appellant’s contention, and find the Examiner’s
stated motivation sufficiently provides a rational underpinning to support the
combination, i.e., “It would have been obvious to one of ordinary skill in the
art at the time the invention was filed to modify the meeting agenda as
taught by Kryze to include information identifying the presenter as taught by
Dura to provide the benefit of easily communicating important details of a
meeting.” Final Act. 11.
The Examiner further finds:
Because both reference provide examples in the context of
sharing content amongst participants having a meeting, it would
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have been obvious to combine the features of the reference,
with a reasonable expectation of success, to provide the benefit
of improving collaboration between multiple users desiring to
share and present content during a meeting.
Ans. 11–12.
We find these motivational statements meet the requirements of Kahn
and KSR. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Appellant also argues “nothing in Dura accounts for the deficiencies
of Kryze as briefly outlined above with respect to the § 102 rejections.”
Appeal Br. 22. For the reasons set forth above, we do not find any
deficiencies in the rejection of claim 1. Accordingly, we also affirm the
Examiner’s rejection of claims 6, 10, 15, and 19 under § 103.
CONCLUSIONS
(1) The Examiner did not err with respect to anticipation Rejection
R1 of claims 1–5, 7–9, 11–14, 16–18, and 20 under 35 U.S.C. § 102(a), and
we sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 6, 10, 15, and 19 under 35 U.S.C. § 103(a) over the cited prior
art combination of record and we sustain the rejection.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–5, 7–9, 11–
14, 16–18, 20 102(a)
Anticipation
Kryze
1–5, 7–9, 11–
14, 16–18, 20
6, 10, 15, 19 103(a) Obviousness Kryze, Dura 6, 10, 15, 19
Overall
Outcome 1–20
FINALITY AND RESPONSE
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