Ex Parte Bastide et al

Patent Trial and Appeal Board

May 22, 2017

12826938 (P.T.A.B. May. 22, 2017)

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.
12/826,938 06/30/2010 Paul Roger Bastide RSW920100063US1 4259
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
05/24/2017 EXAMINER
SUN, LI P
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
05/24/2017 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):
patents @ fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ROBER BASTIDE and
ROBET EDWARD LOREDO1
Appeal 2016-007995
Application 12/826,938
Technology Center 2100
Before ERIC S. FRAHM, JOHN A. EVANS, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 4, 7—9, 11—14, and 16—28, which constitute all
the claims pending in this application. Claims 2, 3, 5, 6, 10, and 15 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal 2016-007995
Application 12/826,938
STATEMENT OF THE CASE
Appellants’ described and claimed invention generally relates to “a
web conferencing system for simultaneously transmitting multiple versions
of a web conference presentation to the participants of a web conference,
and allowing a participant or attendee to switch between the versions of the
web conference presentation as allowed by access information associated
with the participant or attendee.” Spec. Tflf 1, 12.2
Claim 1 is illustrative and reads as follows (with the disputed
limitation emphasized)'.
1. A method of providing a number of versions of a
presentation in a web conference comprising:
concurrently transmitting at least two different versions of
a presentation associated with a web conference over a network
to at least one client device;
assigning permission to the client device, the permission
defining access of the client device to a number of the at least
two different versions of the presentation based on a passcode
associated with the client device;
providing the client device with a default version of the
presentation, the default version of the presentation being
assigned to the passcode, wherein:
2 Our Decision refers to the Final Office Action mailed Apr. 13, 2016
(“Final Act.”), Appellants’ Appeal Brief filed June 2, 2016 (“App. Br.”) and
Reply Brief filed Aug. 19, 2016 (“Reply Br.”), the Examiner’s Answer
mailed July 25, 2016 (“Ans.”), and the original Specification filed June 30,
2010 (“Spec.”).
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Application 12/826,938
the default version is one of the at least two different
versions of the presentation the client device is provided
with when participation in the web conference begins, and
the default version is assigned based on at least one
characteristic of a participant associated with the client
device;
receiving a request from the client device to switch
to a second version of the presentation;
determining whether the client device is permitted
to select an alternate version of the presentation based on
the permission; and
switching transmission of the default version of the
presentation to the second version of the presentation
based on the permission, the switching requiring a
switching passcode different from the passcode to switch
from the default version of the at least two different
versions of the presentation to the at least one second
version of the presentation.
Rejections on Appeal
Claims 1, 7, 8, 11, 12, 16—19, 21—25, and 28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Barbee et al. (US
2010/0083118; published Apr. 1, 2010) (“Barbee”) and Nelson et al. (US
2003/0149696 Al; published Aug. 7, 2003) (“Nelson”).
Claims 4 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barbee, Nelson, and Donahue et al. (US 2013/0212707
Al; published Aug. 15, 2013) (“Donahue”).
Claims 13, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Barbee, Nelson, and Dunne et al. (US 7,941,412
B2; issued May 10, 2011) (“Dunne”).
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Application 12/826,938
Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barbee, Nelson, and Larson et al. (US 5,907,324; issued
May 25, 1999) (“Larson”).
ANALYSIS
The dispositive issue raised by the Briefs is whether the combination
of Barbee and Nelson, together with the Examiner’s finding that it is
“common practice in the art that access to different data/files are set up
differently,” teaches or suggests the limitation:
switching transmission of the default version of the presentation
to the second version of the presentation based on the
permission, the switching requiring a switching passcode
different from the passcode to switch from the default version
of the at least two different versions of the presentation to the at
least one second version of the presentation,
as recited in claim 1, and as similarly recited in claims 12, 22, and 23. See
App. Br. 13—22; Reply Br. 4—10.
The Examiner finds the combination of Barbee and Nelson teaches or
suggests the disputed limitation of claim 1. Final Act. 3—9; Ans. 29.
Specifically, the Examiner finds Barbee teaches “the two different
presentations provided to conference attendees are two different versions of
the presentation” (citing Barbee, Figs. 4, 5) and, “[ajfter the modification of
Nelson, the two different versions of the presentation of Barbee can also be
password controlled in the same way as set forth in Nelson.” Ans. 29. The
Examiner states that “Nelson is brought in to teach: defining access of the
client device ... to a number of the at least two different presentations . . .
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based on a passcode . . . associated with the client device.” Id. at 27 (citing
Nelson Figs. 3—5) (emphasis omitted). Citing paragraph 52 of Nelson, the
Examiner finds “the owners of presentation files create/assign access
passwords for accessing each presentation file” and, “where different access
passwords are assigned to different presentation files, it would require
switching the password being entered in order to switch access from one
presentation file to another.” Id. at 28; see also id. at 29. The Examiner
further finds “[i]t is also a common practice in the art that access to different
data/files are set up differently so one user being granted access to one
file/data would not automatically have access to other files/data [that] may
or may not be related.” Id. at 30.
We agree with Appellants’ arguments that the Examiner has erred.
App. Br. 13—22; Reply Br. 4—10. Appellants argue, and we agree, “the
Answer insists on reading more into the Nelson reference than is taught
therein.” Reply Br. 5. In particular, Appellants argue, and we agree,
“Nelson makes no mention whatsoever of the need to enter a new or
different password to access File_8 relative to accessing File_9; Nelson uses
the same password to access both.” Reply Br. 4. Appellants also argue, and
we agree, “[a] single password is created in the Nelson reference for a
specific user, and permissions are attached or assigned to that single
password. A user can access, using that single password, two different files
such as ‘File_9’ and ‘File_8’ with different permissions attached to the
single password relative to the files being opened.” Id. at 5 (citing Nelson
1 52). Thus, we agree with Appellants’ argument that “[assignment of
permissions to a single password as taught in Nelson cannot be interpreted
as ‘the switching requiring a switching passcode different from the
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passcode to switch from the default version ... to the at least one second
version of the presentation,” as recited in claim 1. Id.
Regarding the Examiner’s finding that “the two different versions of
the presentation of Barbee can also be password controlled in the same way
as set forth in Nelson,” we agree with Appellants that “the Answer fails to
appreciate that Nelson . . . does not describe the application of two separate
passwords” and, therefore, cannot teach the disputed limitation.” Id. at 6.
We further agree with Appellants’ argument that the Examiners’ finding that
Nelson’s invention “covers the situation where owners of presentation files
can assign/create different access passwords for accessing different
presentation files, which would require a switch of password when switching
from one presentation file to another” (see Ans. 30), is “incorrect since
Nelson, like Barbee, does not even mention two separate passwords,
switching between passwords, or using a separate password to switch
between two separate presentations.” Id.
Appellants contend the Examiner’s finding that it is “common
practice in the art that access to different data/files are set up differently” is a
form of official notice that has not been presented previously and, therefore,
“is a new ground of rejection that may not be asserted on appeal.” Reply Br.
7. We are not persuaded by this argument because any request to seek
review of the Examiner’s failure to designate a rejection as a new ground
must be made by petition to the Technology Center Director overseeing the
Examiner’s Art Unit. See 37 C.F.R. § 41.40(a). We do not, however, agree
with the Examiner that a common practice of assigning a different password
to different files or documents reasonably teaches or suggests “a switching
passcode different from the passcode to switch from the default version . . .
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to the at least one second version of the presentation” because the Examiner
has not provided sufficient evidence or explanation of how this common
practice apples to a switching passcode for “the at least one second version
of the presentation” as claimed, and as taught in Barbee, as compared to
different passwords for separate files or documents generally. In that regard,
we note the Specification states the term “version” and the phrase “versions
of a presentation” are meant to be understood broadly as “information or a
set of information that has a relationship to a subject being presented in a
web conference in at least one aspect.” Spec. 125. Without further
explanation from the Examiner, we find that “versions” or “information”
with such a relationship, as recited in claim 1, are different from, and not
taught by, presentation files for which an owner can assign/create different
access passwords for accessing the different files.
Thus, on this record, we do not sustain the Examiner’s rejection of
claim 1. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s
burden of proving non-patentability is by a preponderance of the evidence);
see also In re Warner, 379 F.2d 1011,1017 (CCPA 1967) (“The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.”). For the same reasons, we do not sustain
the rejection of independent claims 12, 22, and 23, as well as dependent
claims 4, 7—9, 11, 13, 14, 16—21, and 24—28.
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DECISION
The Examiner’s decision rejecting claims 1, 4, 7—9, 11—14, and 16—28
is reversed.
REVERSED
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