Todd Vernon et al.

Patent Trials and Appeals Board

Aug 16, 2019

14458731 - (D) (P.T.A.B. Aug. 16, 2019)

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.
14/458,731 08/13/2014 Todd Vernon 45098.00011-CON-C3 1016
84646 7590 08/16/2019
Proactive Patents LLC
955 Garden Park Drive
Ste 230
Allen, TX 75013
EXAMINER
KHAN, ATTA
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
08/16/2019 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):
eofficeaction@appcoll.com
mzarinelli@proactivepatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TODD VERNON and DAN JONES
____________________

Appeal 2018-007947
Application 14/458,731
Technology Center 2400
____________________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 1–20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to facilitating a multimedia
collaboration session including remote participants using various
communication equipment and networks as tools. Spec. ¶ 3. In
conventional collaboration sessions, a current presenter’s control over a
presentation in the collaboration session is usually based on a protocol that

1 Appellants identify the real party in interest as OPEN INVENTION
NETWORK. App. Br. 3.
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“is often rigid and is unlike human behavior and interaction in meetings.”
Id. ¶¶ 9–10. As a result, the collaboration session lacks a free flow of ideas
and hand off of control among participants similar to what normally occurs
in a face-to-face or personal meeting. Id. ¶¶ 11, 14.
Appellants disclosed invention relates to an “egalitarian collaboration
session” in which all participants have equal privileges or levels of
permission. Id. ¶ 55. During an egalitarian collaborative session, “[t]here
are no preassigned hierarchical roles such as a moderator or chair” and the
“system does not require, enforce, or even acknowledge any predefined roles
for the participants in a session.” Id. ¶ 57.
Claim 1 is representative and reproduced below:
1. A system, comprising:
a central server;
a plurality of client devices operated by a plurality of
participants;
a session controlled by the central server comprising the
plurality of participants which are participating via their
respective client devices, each client device having equal access
and control of the session and each client device is provided with
private communications directly with another client device;
a presentation control of the session operated by the
central server;
a viewer control of the session operated by the central
server;
at least one display section on each of the client devices
that continuously displays live history information of presented
elements that have been previously presented in the session,
wherein the live history information is a series of iconic
representations that continuously scrolls;
generating a live history dynamic list of the live history
information; and
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hyperlinking iconic representations of the presented
elements;
wherein when created information is shared by the one of
the plurality of participants the created information is broadcast
via the central server to include at least one link to a section that
stores the created information;
wherein an individual presentation space is at least one of
individually and collectively viewed during the session; and
wherein the broadcast is based on a control command that
includes information to broadcast the created information and
wherein the broadcast created information is provided to each of
the plurality of participants and displayed in each of the plurality
of participants’ client devices and a copy of the created
information is stored at each of the plurality of participant’s
client devices.

REJECTIONS2
Claims 1, 2, 4, 5, 7, 10, 11, 13, 14, and 17–19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Simonoff (US 7,043,529 B1;
May 9, 2006), Aravamudan (US 6,732,145 B1; May 4, 2004), Abrams (US
2002/0122073 A1; Sept. 5, 2002), and Stancato (WO 01/97151 A1; Dec. 20,
2001). Final Act. 6–22.
Claims 3 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simonoff, Aravamudan, Abrams, Stancato, and Ghani
(US 2002/0087592 A1; July 4, 2002). Final Act. 23–24.

2 Claims 1–20 had been rejected on the ground of non-statutory double
patenting. See Final Act. 4–5. The Examiner has withdrawn this rejection.
See Ans. 5.
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Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simonoff, Aravamudan, Abrams, Stancato, and Frees (US
2003/0149681 A1; Aug. 7, 2003). Final Act. 24–25.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simonoff, Aravamudan, Abrams, Stancato, and Campbell
(US 2007/0186002 A1; Aug. 9, 2007). Final Act. 25–26.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simonoff, Aravamudan, Abrams, Stancato, and Fernandes
(US 6,014,135; Jan. 11, 2000). Final Act. 26–27.
Claims 8, 9, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simonoff, Aravamudan, Abrams, Stancato, and England
(US 6,144,991; Nov. 7, 2000). Final Act. 27–30.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellants made.
Arguments Appellants could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 41.37(c).
The Examiner finds Simonoff discloses many recited elements of
claim 1 including, among other things, a session controlled by a “central
server” (White Board server) comprising “participants” (White Board
clients) who participate via their respective “client devices” (client host
system devices, also referred to as clients, client computers, client hosts, and
client host computers). Final Act. 6 (Simonoff 6:34–40, Fig. 3). Of
particular note, the Examiner also finds Simonoff, in combination with
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Abrams, teaches that each client “is provided with private communications
directly with another client device,” as recited in claim 1. See Ans. 9–10.
Specifically, the Examiner finds that, in a group containing two of
Simonoff’s clients having a high level privilege, Simonoff’s two clients
communicate directly with each other. Id. at 9 (citing Simonoff 20:24–55).
The Examiner relies on Abrams, in combination with Simonoff, to teach
direct and private client communications would have been obvious. Id. at
10–12; see also Final Act. 9–10 (citing Abrams ¶¶ 4, 46, 48, 52).
Appellants argue Simonoff teaches away from the disputed limitation
that “each client device is provided with private communications directly
with another client device,” noting that Simonoff explicitly discloses
“disallowing individual communication.” Appeal Br. 11; Reply Br. 3. In
particular, Appellants argue Simonoff discloses that “no White Board client
can communicate directly with another White Board client.” Appeal Br. 11
(underlining omitted, emphasis added, quoting Simonoff 23:27–29).
Appellants argue the Examiner’s proposed combination fails to consider that
the claims require each device may communicate directly with another client
device. Reply Br. 4.
We start by construing relevant portions of claim 1’s disputed
limitation, which recites a “client device is provided with private
communications directly with another client device” (emphasis added) and,
more specifically, we construe what it means for the communication to be
both direct and private. To this end, we give claims their broadest
reasonable interpretation consistent with the Specification. See In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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We turn to Appellants’ Specification, for it is the single best guide in
ascertaining the meaning of both direct and private. See Phillips v. AWH
Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc); see also Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)
(recognizing that “the specification is always highly relevant to the claim
construction analysis,” and that “[u]sually, it is dispositive”). Although we
recognize that we must not import limitations from the Specification into the
claims, see SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875
(Fed. Cir. 2004), we must nevertheless give claims their broadest reasonable
interpretation that corresponds with what and how the inventor describes the
invention in the Specification, see In re Smith Int’l, Inc., 871 F.3d 1375,
1382–83 (Fed. Cir. 2017).
We begin by construing “each client is provided with . . .
communications directly with another client device”—i.e., by construing
what it means to provide a direct communication between client devices.
Appellants’ Specification explains that conventional multimedia
collaboration architectures can be divided into two basic architectures:
central-server and peer-connected. Spec. ¶ 5. Central-server architecture
requires all participant clients to communicate with a single server. Id. “In
a peer-connected architecture, particip[ant] clients communicate directly
with one another.” Id. (emphasis added). Thus, we find, under a broad but
reasonable interpretation consistent with the Specification, claim 1’s direct
communication between client devices excludes indirect communication,
such as communications involving an intermediate server as opposed to
peer-to-peer communications.
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Indeed, the distinction between direct and indirect was addressed by
the Federal Circuit, when construing the recited term “electrically coupled”
as “arranged so that electrical signals may be passed either directly, or
indirectly via intervening circuitry, from one component to another.”
MEMS Tech. Berhad v. Int’l Trade Comm’n, 447 F. App’x. 142, 147 (Fed.
Cir. 2011) (unpublished) (emphasis added). Notably, the court declined to
limit the recited electrical coupling to direct electrical coupling in view of
the term’s plain meaning noted above. Id. By analogy, a clear recitation of
a direct communication or coupling would exclude an indirect
communication or coupling.
We next construe a private communication between client devices.
We find, under a broad but reasonable interpretation consistent with the
Specification, claim 1’s private communication between client devices
involves only the intended client devices involved in the communication.
See, e.g., Spec. ¶ 185 (defining a private workspace as being viewed only by
the intended participant associated with a particular device and a public
workspace as allowing material to be shared).
Simonoff’s White Board illustrated in Figure 4 includes a chat room
or board 1012. Simonoff 20:24–25. Simonoff’s multi-level security
filtering allows each client to communicate in the chat room or board 1012
with (1) all clients at the lowest common privilege setting, or (2) only clients
that have an equal or higher privilege level. Id. at 20:27–32. Thus,
Simonoff at least suggests that, when a White Board session consists of only
two clients having an equal privilege level, each client device is provided
with private communications with another client device. Moreover, as noted
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above, the Examiner finds the combination of Simonoff and Abrams teaches
the “private communications” limitation.
However, given our construction of the disputed “private
communications directly with another client device” limitation, we agree
with Appellants that the proposed combination fails to teach or suggest
providing each device with communications directly with another device
because Simonoff explicitly discloses that no client may communicate
directly with another client. Even to the extent that Abrams may teach or
suggest providing direct communications, which is not clear on the record,
Simonoff explicitly discloses that its communications are not direct.
Simonoff 23:27–29.
A reference teaches away when an ordinarily skilled artisan, upon
reading the reference, would be (1) discouraged from following the path set
out in the reference, or (2) led in a direction divergent from the path taken by
Appellants. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); see also In
re Kubin, 561 F.3d 1351, 1357 (Fed, Cir. 2009).
As noted above, Simonoff explicitly discloses that “no White Board
client can communicate directly with another White Board client” and
“White Board clients only communicate with the White Board server both
for reasons of security and for reasons dictated by the programming.”
Simonoff 23:28–32; see also id. at 23:26–42 (explaining the security and
programming reasons Simonoff’s White Board communications between
clients are not direct and, instead, pass through a server). Because Simonoff
explicitly prohibits direct communications, and would have, therefore, led a
person of ordinary skill in the art away from the claimed direct
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communications, we find the Examiner’s proposed combination
problematic. Abrams does not indicate whether its communications between
clients are direct or indirect and, therefore, it is unclear whether Abrams
teaches or suggests direct communications between clients. As noted
previously, even assuming Abrams suggests direct communications between
clients, we nonetheless agree with Appellants that Simonoff teaches away
from the claimed direct communications because such a combination would
do precisely what Simonoff prohibits.
Because this deficiency is dispositive of this Appeal with respect to all
claims, we do not address Appellants’ other arguments. On this record,
therefore, we are persuaded the Examiner erred in rejecting independent
claim 1, as well as independent claims 13 and 14, which recite
commensurate limitations, and claims 2, 4, 5, 7, 10, 11, and 17–19, which
ultimately depend from one of claims 1 and 14. Because the Examiner does
not find any of the additional references (i.e., Ghani, Frees, Campbell,
Fernandes, and England) cure the identified deficiency, we are persuaded the
Examiner also erred in rejecting claims 3, 6, 8, 9, 12, 15, 16, and 20, which
ultimately depend from one of claims 1 and 14 for the same reasons.
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CONCLUSION
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 1–
20.
DECISION
We reverse the Examiner’s decision to reject claims 1–20.
REVERSED