Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

May 5, 2020

2019005858 (P.T.A.B. May. 5, 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.
14/998,173 12/23/2015 Owen Minor 357796-US-NP
(1777.A67US1
9938
144365 7590 05/05/2020
Schwegman Lundberg & Woessner, P.A.
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
KASSIM, KHALED M
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
05/05/2020 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):
SLW@blackhillsip.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte OWEN MINOR
________________

Appeal 2019-005858
Application 14/998,173
Technology Center 2400
________________

Before JOHN A. JEFFERY, JOHNNY A. KUMAR, and
CARL L. SILVERMAN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

INVENTION
The invention relates to a group communication system for a plurality
of users. Abstract; Spec. ¶¶ 6–7. In particular, output volume levels of
individual audio streams from each of the users are independently
controllable (Spec. ¶¶ 30, 37–40), and a visual indication is provided to
indicate if a user is muted (id. ¶ 57) or participating in a side conversation.
Id. ¶ 63.
Claim 1 is illustrative of the invention and is reproduced below, with
emphases to indicate limitations in dispute:
1. A method, comprising:

running a communication client application on a user
terminal so as to enable the user terminal to participate in a
group communication session over a network with respective
communication clients running on other user terminals;

receiving, by the user terminal, a plurality of audio data
streams, each carrying audio data generated at a respective one
of the other user terminals;

associating each of the received audio data streams with a
respective one said other user terminals to enable the audio data
streams to be output through one or more audio output devices

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Microsoft Technology Licensing,
LLC is the real party in interest. Appeal Br. 2.
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of the user terminal and output volume level of the individual
audio data streams to be independently controllable; and

presenting, via the communication client application, a
visual indication that a first user terminal of the other user
terminals has muted its respective audio data stream to the user
terminal such that the respective audio data stream is not output
to the communication client application, the visual indication
further indicating that the respective audio data stream is not
muted for a second user terminal of the other user terminals.

Appeal Br. 14 (Claims App.) (emphases added).

REJECTION2
Claims 1–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Keith et al. (EP 0 659 006 A2; published June 21, 1995)
(“Keith”)3 and Mikan et al. (US 2011/0075820 A1; published Mar. 31,
2011) (“Mikan”). Final Act. 4–12.

ISSUES
1. Under § 103, has the Examiner erred in rejecting claim 1 by finding that
Keith and Mikan collectively would have taught or suggested presenting
a visual indication?

2 The Examiner withdrew the rejection of claim 20 under 35 U.S.C. § 101.
See Ans. 3–4. Therefore, this rejection is not before us on appeal.
3 The prior art reference EP 0 659 006 A2 indicates the first-named co-
inventor as Keith Barraclough. However, because the Examiner and
Appellant refer throughout the Final Action, Examiner’s Answer, Appeal
Brief, and Reply Brief to this prior art reference as “Keith,” rather than
“Barraclough,” we nonetheless refer to the reference as “Keith” for clarity
and consistency with the assumed nomenclature.

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2. Under § 103, has the Examiner erred in rejecting claim 1 by finding that
Keith and Mikan collectively would have taught or suggested presenting
a visual indication that [A] a first user terminal of the other user terminals
has muted its respective audio data stream to the user terminal
(hereinafter “mute limitation”), and that [B] the respective audio data
stream is not muted for a second user terminal of the other user terminals
(hereinafter “not mute limitation”)? (bracketed lettering and parenthetical
information added to indicate disputed limitations).
ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs.4 Arguments Appellant could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
On this record, and as discussed below, we see no error in the
Examiner’s reliance on Keith and Mikan for collectively teaching or
suggesting the disputed claim limitations as provided in our issue statement
above.
The Examiner’s findings and Appellant’s arguments
Keith is directed to an audio conferencing system, whereby multiple
audio input streams are received by a computer workstation of a user over a
network, and the user is able to see the volume of each audio input stream
independently and to control the volume for each audio input stream. See
Keith Abstract. Mikan is directed to managing the status of participants of a

4 Claims 2–18 are not argued separately from claim 1 in either of Appellant’s
briefs (Appeal Br. 7–13; Reply Br. 2–5), and will not be separately
addressed.
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tele-networking meeting. See Mikan Abstract. In one embodiment, Mikan
teaches a display 214 that shows the identification and status of each of the
participants of the tele-networking meeting. Mikan ¶ 40. Mikan teaches, as
an example, that the display may display participant “Joe” on Line 1, and his
status is active; the display may also display participant “Jennifer” on Line
2, and her status is mute. Id.
The Examiner finds that the combination of Keith and Mikan teaches
a visual indication and the mute and not mute limitations, because Mikan
teaches, at paragraph 40:
display 214 may display that the participant on Line 1 is Joe
and his status is active and show Line 2 is Jennifer and her status is
mute. Therefore, Mikan clearly display[s] two indications, one that
indicate[s] one of the participants (Joe) is active and not muted and
other indication that indicate[s] other participant ([J]ennif[]er) is
muted.
Ans. 5–6 (citation omitted) (emphasis added); see also Final Act. 5.
The Examiner further finds that Mikan teaches “a participant or user
has the ability to mute his/her connections.” Ans. 6 (citing Mikan ¶ 67).
Appellant argues that “claim 1 explicitly recites that the ‘visual
indication’ is the same visual indication that performs two functions”
(emphasis added), namely the mute and not mute limitations. Reply Br. 2.
Appellant additionally argues that paragraph 40 of Mikan does not describe
what is displayed on the display 214. Appeal Br. 12. Appellant further
contends that Mikan does not teach that a muted participant is able to
converse with other participants. Reply Br. 3–5. Specifically, Appellant
argues that Mikan does not teach a visual indication showing both that a
participant has been muted, and that the participant is still communicating
with the other participants. Id. at 4. Appellant also argues that “Mikan does
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not disclose that Joe’s status is displayed relative to Jennifer.” Id. at 3.
Appellant then argues that, “Mikan does not explain what it means to be
‘active’ in the context of muted and non-muted participants.” Id. at 4.
Appellant next argues features such as, “the muted participant is able to
converse with non-muted participants” (id. at 3); “a visual indication as to
whether the muted participant is still conversing with other participants” (id.
at 3–4); “the muted participant has been muted, but . . . the muted participant
is still communicating with the other participants” (id. at 4). Finally,
Appellant argues that Mikan does not teach in paragraph 40 who has muted
Jennifer, per claim limitation A. Appeal Br. 12.

1. Whether the combination of Keith and Mikan would have taught “a
visual indication”
We are guided that, “an indefinite article ‘a’ or ‘an’ in patent parlance
carries the meaning of ‘one or more’ in open-ended claims containing the
transitional phrase ‘comprising.’” See KCJ Corp. v. Kinetic Concepts, Inc.,
223 F.3d 1351, 1356 (Fed. Cir. 2000). On the other hand, “[w]hen the claim
language and specification indicate that ‘a’ means one and only one, it is
appropriate to construe it as such even in the context of an open-ended
‘comprising’ claim.” Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir. 2011).
Accord In re Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016) (“But while ‘a’
sometimes is non-restrictive as to number, permitting the presence of more
than one of the objects following that indefinite article, context matters even
as to whether the word has that meaning.”).
Here, the indefinite article “a” is recited in an open-ended claim
containing the transitional phrase “comprising,” and therefore, the term “a
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visual indication” (emphasis added) means “one or more visual indications.”
Appellant’s Specification discloses that the side conversation icon 404 “may
take any suitable graphical form, may be animated, and may also include an
audio notification.” Spec. ¶ 63. Therefore, Appellant’s Specification places
no restrictions on “a” visual indication that would limit it to one and only
one visual indication; consequently, the broadest reasonable interpretation of
“a visual indication” is “one or more visual indications.”
We agree with the Examiner that Keith and Mikan collectively teach a
visual indication, as the term is properly construed. Although Appellant
argues, and we agree, that the term should be interpreted under the broadest
reasonable interpretation in view of Appellant’s Specification, Appellant
provides no particular citations to the Specification. See Appeal Br. 7; Reply
Br. 2. Therefore, we determine our own interpretation of the terms “a visual
indication” in light of Appellant’s Specification.
As such, we find Appellant’s arguments that the claim requires a
single—or the same—visual indication to perform the functions of the mute
and not mute limitations unpersuasive, because Appellant’s arguments are
not commensurate with the scope of the claim language.
We find similarly unavailing Appellant’s argument that Mikan does
not teach either the operation of presenting, or how the visual indication is
presented to a user. Appeal Br. 11–12. In the present case, claim 1 does not
specify the form of the visual indication, or how it is otherwise displayed.
See claim 1. As Mikan’s paragraph 40 explains, “display 214 may also
display the status of the participants. . . . For example, display 214 may
display . . . [Joe’s] status is active. Additionally, display 214 may show . . .
[Jennifer’s] status is mute.” Mikan ¶ 40.
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Accordingly, we agree with the Examiner that the combination of
Keith and Mikan teaches presenting (i.e., Mikan’s “display 214 may [also]
display” and “display 214 may show;” see id.) a visual indication, per claim
1.
2. Whether Keith and Mikan collectively would have taught the visual
indication performing the functions of the mute and not mute
limitations
We disagree with Appellant’s contentions that claim 1 requires the
visual indication to indicate whether a muted participant is still conversing
with other participants, to indicate the status of muted or non-muted
participants with respect to each other, and to indicate that a muted
participant is conversing with non-muted participants.5 Reply Br. 3–5. In
particular, we disagree with Appellant’s argument that “claim 1 recites that
the visual indication relates to the same audio data stream (i.e., ‘the
respective audio data stream’).” Id. at 3.
Appellant’s argument that the visual indication relates to the same
audio data stream, appears directed to Figure 4a of Appellant’s
Specification. Figure 4a is reproduced below:

5 Mikan explicitly teaches a visual indication for a “subconference” (Mikan
¶ 34), whereby a subconference participant is muted with respect to a
remainder of participants of a tele-networking meeting (see, e.g., Mikan ¶¶
61–64, Fig. 7 (steps 410, 412, 414)), but is not muted for other participants
within the subconference. See id.
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Figure 4a, above, illustrates a schematic representation of a meeting
room interface. Spec. ¶ 20.
Paragraph 63 of Appellant’s Specification describes Figure 4a:
In embodiments, when user A has muted another user in the
call, the communication client 222a [of user A] may determine
that audio is still being transmitted to communication clients
222 of other non-muted users. . . . In this situation rather than
displaying a muted control icon 402 in the user interface of the
muted user, a side conversation icon 404 is displayed instead. .
. . Here user E has muted user A such that the audio stream
associated with user E is not being received by communication
client 222a. However the communication client 222e [of user
E] at terminal 102e detects that the audio is still being
transmitted for one or more other users in the call.
Communicating client 222e will transmit a signal to
communication client 222a which informs that user E is in a
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side conversation with one or more of the other communication
clients. Based on the information in the received signal
communication client 222a uses generates the side
conversation icon 404 beside user E's graphical representation
at area 310e.

Spec. ¶ 63 (emphases added).
Notably, in contrast to the disclosure of Figure 4a and paragraph 63 of
Appellant’s Specification, claim 1 does not require that “its respective audio
data stream” in the mute limitation be the same audio data stream as “the
respective audio data stream” in the not mute limitation. In particular, claim
1 requires, inter alia, “receiving . . . a plurality of audio data streams, each
carrying audio data generated at a respective one of the other user
terminals.” See claim 1. Namely, each of the first user terminal and the
second user terminal has its own respective audio data stream.
Based on the limitations of claim 1, therefore, we agree with the
Examiner’s claim interpretation that a visual indication of the mute and not
mute limitations “can be interpreted as, during a conference or conversation
session between multiple users, presenting at the display of one [of the]
users participating at the session that one or more of the participant[] users
are muted and other one more of the participants are not muted.” Ans. 6.
In other words, Mikan teaches a respective audio data stream for Joe
(active, i.e., not mute, respective audio data stream; Mikan ¶ 40), and a
respective audio data stream for Jennifer (mute respective audio data stream;
id.). Mikan further teaches, as discussed supra, a visual indication for Joe’s
status and a visual indication for Jennifer’s status.
Accordingly, with respect to the mute and not mute limitations, we
find no error with the Examiner’s finding that the mute limitation is directed
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to the respective audio data stream of the first user terminal (user Jennifer in
Mikan; see Mikan ¶ 40), and that the not mute limitation is directed to the
respective audio data stream of the second user terminal (user Joe in Mikan;
id.). See Final Act. 5; Ans. 5–7.
We are also not persuaded by Appellant’s argument that Mikan is
unclear as to whether a participant viewing the Mikan display 214 has muted
Jennifer, or whether Jennifer has muted herself (see Appeal Br. 12; see also
mute limitation: “a first user terminal . . . has muted its respective audio data
stream” (emphasis added)), because Mikan teaches that users may mute their
own connections. Mikan ¶ 67; see also Ans. 6.
For the foregoing reasons, we sustain the Examiner’s obviousness
rejection of claim 1 in view of Keith and Mikan, and of claims 2–18
depending therefrom. Arguments related to the rejection of claims 19 and 20
refer to the arguments presented for claim 1. See Appeal Br. 10, 13; Reply
Br. 5.
CONCLUSION
In summary:

TIME PERIOD FOR 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).

AFFIRMED
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 103 Keith, Mikan 1–20