Ex Parte Adams et al

Patent Trial and Appeal Board

Oct 18, 2012

10785227 (P.T.A.B. Oct. 18, 2012)

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.
10/785,227 02/25/2004 Samuel S. Adams YOR920040028US1 1536
48150 7590 10/19/2012
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
BELANI, KISHIN G
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
10/19/2012 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 parte SAMUEL S. ADAMS, PETER MALKIN,
and JEREMY BRAND SUSSMAN
____________________

Appeal 2009-013642
Application 10/785,227
Technology Center 2400
____________________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
ROBERT E. NAPPI, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013642
Application 10/785,227

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1, 14, and 15 under appeal read as follows:
1. A method of providing a composite data feed for an online meeting, said
method comprising at least one of:
providing a capability for at least one participant node in said
online meeting to input a layout rule for a customized composite
image of said online meeting to be seen specifically at said at least
one participant node; and
receiving a layout rule defining a composite image of said
online meeting that can be customized for at least one participant node
in said online meeting.
14. A service comprising at least one of:
conducting an online meeting in which any or all nodes
participating in said online meeting receives a composite image of
said online meeting that is potentially customized for each said node,
wherein at least one of a size and a layout of subpanes of the
composite image are controlled by user-specified rules;
operating one of said nodes in said online meeting in which said
customized composite images are possible;
calculating a composite image in said online meeting;
providing a facility for said online meeting, said facility
comprising at least one of a hardware or software component to be
used in one of said nodes and at least one of a hardware or software
component to be used in calculating a composite image in said online
meeting;
providing a maintenance for said facility for said online
meeting; and
providing a training for at least one of using and operating said
online meeting or said facility.
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15. A signal-bearing medium tangibly embodying a program of machine-
readable instructions executable by a digital processing apparatus to perform
a method of providing a composite data feed for an online meeting, said
method comprising at least one of:
providing a capability for at least one participant node in said
online meeting to input a layout rule for a customized composite
image of said online meeting to be seen specifically at said at least
one participant node; and
receiving a layout rule defining a composite image of said
online meeting that can be customized for at least one participant node
in said online meeting.

Rejections on Appeal
The Examiner rejected claim 15 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
The Examiner rejected claim 14 under 35 U.S.C. § 102(b) as being
anticipated by Kamata (US 5,953,050).
The Examiner rejected claims 1, 2, and 15 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Van Dok (US 2004/0162877
A1) and Digate (US 2004/0161090 A1).
1

The Examiner rejected claims 3-7, 9, and 10 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Van Dok, Digate, and
Kamata.
2

The Examiner rejected claims 8 and 11 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Van Dok, Digate, and Moran
(US 6,018,346).
3

1
Separate patentability is not argued for claim 15.
2
Separate patentability is not argued for claims 4-7 and 9.
3
Separate patentability is not argued for claim 11.
Appeal 2009-013642
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The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kamata and Digate.
4

Appellant’s Contentions
1. Appellants contend that the Examiner erred in rejecting
claim 15 under 35 U.S.C. § 101 because:
Appellants respectfully disagree and point out that the
Examiner's position is based entirely upon taking of words out-
of-context of its intended meaning in the specification, clearly
directed to media used to store computer instructions, when
interpreted by one having ordinary skill in the art, who is
willing to be free of the bias of attempting to interpret every
reference to "transmission media" as somehow referring to a
"signal", which is reasonably considered non-statutory under
the holding of Nuijten, and that every reference to "transmission
media" converts any claim remotely related to this reference as
equivalent to a "signal."
That is, "energy" per se is not used to store computer
instructions. Nor is this claim directed to a "signal" per se, as
were the facts of Nuijten. Moreover, to one having any genuine
skill in the art, signals per se are not used to store instructions,
and, contrary to the confusion running rampant within the
USPTO in the aftermath of the Nuijten holding, the terminology
"transmission media" is not equivalent to "signal." Indeed, if
taken outside any other context, the terminology "transmission
media" would clearly mean the media through which a
transmission occurs and would not even refer to a signal per se.
Therefore, someone at the USPTO is clearly very confused
about underlying technology.
(App. Br. 9)(Emphasis omitted).

4
Separate patentability is not argued for claim 13.

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2. Appellants contend that the Examiner erred in rejecting the
claim 14 under 35 U.S.C. § 102(b) because:
[A]s explained at lines 21-22 of page 13 [of Appellants’
Specification], each layout rule might be of the form
"(Condition) (Layout Specification)", so that the user's layout
rules comprise a Boolean combination of conditions, as
described in dependent claim 2. There is no suggestion that the
user's selection in Kamata uses such a format or method based
on user rules.
(App. Br. 13).
3. Appellants contend that the Examiner erred in rejecting claims
1-11 and 15 under 35 U.S.C. § 103(a) because Van Dok does not teach a
composite image of an online meeting as claimed. (App. Br. 15-16 and 20).
4. Appellants contend that the Examiner erred in rejecting claims
12 and 13 under 35 U.S.C. § 103(a) because Digate does not teach a layout
rule set for a composite image of an online meeting as claimed. (App. Br.
21).

Issues on Appeal
Did the Examiner err in rejecting claim 15 as being directed to
non-statutory subject matter?
Did the Examiner err in rejecting claim 14 as being anticipated under
35 U.S.C. § 102(b) because Kamata fails to disclose the argued claim
limitation?
Did the Examiner err in rejecting claims 1-13 and 15 as being
unpatentable under 35 U.S.C. § 103(a) because Van Dok and Digate fail to
teach or suggest the argued claim limitations?

Appeal 2009-013642
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
We agree with the Appellants’ above contention 3 and 4. The
Examiner erred because neither Van Dok nor Digate teach a composite
image of an online meeting as claimed. (Ans. 6 and 20).
We disagree with the Appellants’ above contention 1. Appellants’
explicitly state that “signal-bearing media” include “transmission media
such as digital and analog and communication links and wireless.” (Spec.
24). This inclusion of “wireless” is more than sufficient to support the
Examiner’s conclusion. Separately, we note that Appellants’ argument that
the “USPTO is …confused” about technology associated with “transmission
media” is misplaced. The Examiner’s finding are supported by intrinsic
evidence as discussed above and extrinsic evidence, see for example ¶
[0032] of US 20030050993 A1 states (assigned to International Business
Machines Corporation, Appellants’ Real Party in Interest) (emphasis added):
The method 500 can also be implemented in conjunction with
an article of manufacture having a computer-readable signal-
bearing medium. The medium may be a recordable data
storage medium, a modulated carrier signal, or another type of
medium.
We disagree with Appellants’ above contention 2. Appellants’
arguments are not commensurate in scope with Appellants’ claim 14.
Appellants contend that the “rules” of claim 14 are limited to a specific
format by definition in the Specification. Although we find an exemplary
embodiment which uses rules that correspond to Appellants’ argued
definition, we find no clear definition in Appellants disclosure that limits
rules to such embodiment. See Merck & Co., Inc., v. Teva Pharms. USA,
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Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005) (“When a patentee acts as his
own lexicographer in redefining the meaning of particular claim terms away
from their ordinary meaning, he must clearly express that intent in the
written description.”). We concur with the conclusion reached by the
Examiner.

CONCLUSIONS
(1) The Examiner did not err in rejecting claim 15 as being
unpatentable under 35 U.S.C. § 101.
5

5
Should there be further prosecution of claim 15 on this point, we direct the
Examiner’s attention to the following extrinsic evidence which demonstrates
use of the term “storage medium” in the art (including but not limited to
industry leaders such as Hewlett-Packard Company, Sun, IBM, Cisco,
Oracle, and Siemens) (emphasis added):
“Whether contained in the computer system or elsewhere, the
instructions may be stored on a variety of machine readable storage
media, such as a DASD storage (for example, a conventional "hard
drive" or a RAID array), magnetic tape, electronic read-only memory,
an optical storage device (for example, CD ROM, WORM, DVD,
digital optical tape), paper "punch" cards, or other suitable computer
readable media including transmission media such as digital, analog,
and wireless communication links.” US 20050021386 A1 at [0027],
filed July 23, 2003, assigned to Hewlett-Packard Company.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) may be the computer readable
storage medium.” US 20040244009 A1 at [0055], filed June 28,
2001, assigned to Sun Microsystems, Inc.
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“Whether contained in the computer system or elsewhere, the
instructions may be stored on a variety of machine readable storage
media, such as a DASD storage (e.g. a conventional "hard drive" or a
RAID array), magnetic tape, electronic read-only memory, an optical
storage device (e.g., CD ROM, WORM, DVD, digital optical tape),
paper "punch" cards, or other suitable computer readable media
including transmission media such as digital, analog, and wireless
communication links.” US 20030097554 A1 at [0022], filed
November 21, 2001, assigned to International Business Machines
Corporation.
“Another example of a computer-readable storage medium is
a signal that carries software across a network.” US 20080077710 A1
at [0166], filed May 1, 2003, assigned to Cisco Technologies, Inc.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) can be the computer readable
storage medium.” US 20040255307 A1 at [0032], filed May 27,
2003, assigned to Oracle International Corp.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) can be the computer readable
storage medium.” US 20020143962 A1 at [0021], filed March 14,
2001, assigned to Siemens Information and Communication
Networks, Inc.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) can be the computer readable
storage medium.” US 20110171948 A1 at [0033], filed March 21,
2003, assigned to Portal Software, Inc.
“Further, computer readable storage medium may also
encompass data signals embodied in a carrier wave such as the data
signals embodied in a carrier wave carried in a network.” US
20100115149 A1 at [0060], filed December 2, 2002, assigned to
Plantronics, Inc.
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“This program can be recorded on a computer-readable
storage medium so that it is executed in a general purpose digital
computer system. Such a storage medium may include magnetic
storage media (for example, ROMs, floppy discs, hard disks, etc.),
optically-readable media (for example, CD-ROMs, DVDs, etc.), and
media such as carrier waves (for example, transferring data through
the Internet).” US 20060265749 A1 at [0087], filed May 20, 2003.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) may be the computer readable
storage medium.” US 20060242241 A1 at [0199], filed January 29,
2002, assigned to Neoteris, Inc.
“The data structures and code described in this detailed
description are typically stored on a computer readable storage
medium, which may be any device or medium that can store code
and/or data for use by a computer system. This includes, but is not
limited to, magnetic and optical storage devices such as disk drives,
magnetic tape, CDs (compact discs) and DVDs (digital versatile discs
or digital video discs), and computer instruction signals embodied in
a transmission medium (with or without a carrier wave upon which
the signals are modulated).” US 20050204306 A1 at [0053], filed
September 15, 2003.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network including the Internet) may be the computer readable
storage medium.” US 20050037367 A9 at [0029], filed August 25,
2003, assigned to Affymetrix, Inc.
“The data structures and code described in this description can
be stored on a computer readable storage medium, which may be any
device or medium that can store code and/or data for use by a
computer system. This includes, but is not limited to, magnetic and
optical storage devices such as disk drives, magnetic tapes, CD
(compact discs) and DVD (digital video disks), and computer
instruction signals embodied in a transmission medium.” US
20050007567 A1 at [0093], filed July 10, 2003, assigned to Fortis
Systems, Inc.
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(2) Appellants have established that the Examiner erred in rejecting
claims 1-13 and 15 as being unpatentable under 35 U.S.C. § 103(a).
(3) The Examiner did not err in rejecting claim 14 as being anticipated
under 35 U.S.C. § 102(b).
(5) On this record, claims 1-13 have not been shown to be
unpatentable.
(6) Claims 14 and 15 are not patentable.

“Further, computer readable storage medium may also
encompass data signals embodied in a carrier wave such as the data
signals embodied in a carrier wave carried in a network.” US
20020180725 A1 at [0082], filed April 23, 2002, assigned to
Quantum3D, Inc.
“The term ‘computer-readable storage medium’ refers to any
medium that participates in providing the symbolic representations of
operations to a processor for execution. Such media may take many
forms, including, without limitation, volatile memory, nonvolatile
memory, flash memory, electronic transmission media, and the like.”
US 20040236726 A1 at [0027], filed May 29, 2003, assigned to
Teracruz, Inc.
“Additionally, a data signal embodied in a carrier wave (e.g.,
in a network, e.g., internet, intranet, and the like) may be the
computer readable storage medium.” US 20030175815 A1 at [0102],
filed March 26, 2003, assigned to Caliper Technologies Corp.

Appeal 2009-013642
Application 10/785,227

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DECISION
The Examiner’s rejections of claims 1-13 and 15 as being
unpatentable under 35 U.S.C. § 103(a) are reversed.
The Examiner’s rejection of claim 14 as being anticipated under
35 U.S.C. § 102(b) is affirmed.
The Examiner's rejection of claim 15 as being unpatentable under
35 U.S.C. § 101 is affirmed.
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) (2011).

AFFIRMED-IN-PART

ELD