Ex Parte Caspi et al

Patent Trial and Appeal Board

Mar 28, 2017

12012630 (P.T.A.B. Mar. 28, 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.
12/012,630 02/04/2008 Rami Caspi 2007P21716US 3770
88087 7590 03/30/2017
Fritzsrhe. Patent
EXAMINER
c/o Buchanan Ingersoll & Rooney PC (SEN)
P. O. Box 1404
ROBINSON, MARSHON L
Alexandria, VA 22313-1404 ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMI CASPI and WILLIAM J. BEYDA
Appeal 2014-002704
Application 12/012,630
Technology Center 2100
Before CARL W. WHITEHEAD JR., J. JOHN LEE, and
SHARON FENICK, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Siemens Enterprise Communications GmbH & Co. and
Siemens Enterprise Communications Inc. as the real parties in interest. App.
Br. 1.
Appeal 2014-002704
Application 12/012,630
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants’ invention “relates to an improved video mixing system
for video and/or multimedia conferencing.” Spec. 1 1002. Claims 1, 6, 10,
and 13 are independent. Claim 1 is illustrative of the subject matter on
appeal:
1. A telecommunications system, comprising:
a presentation server;
a plurality of user devices associated with a plurality of
conference participants and connected to the presentation server
via a network; and
wherein the presentation server receives a presentation
from a conference participant of the plurality of conference
participants;
wherein the presentation server receives at least one
video feed from the plurality of conference participants;
wherein the presentation server mixes the at least one
received video feed with the received presentation to form a
mixed video presentation; and
wherein the presentation server provides the mixed video
presentation to the plurality of user devices of the plurality of
conference participants via the network; and
a transparency level being adjustable by each of the
conference participants independent of the other conference
participants via the user device associated with the conference
participant, adjustment of the transparency level adjusting how
visible the at least one video feed portion of the mixed video
presentation received from the presentation server is displayed
to the conference participant via the user device associated with
the conference participant during a conference.
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Application 12/012,630
Rejections on Appeal
Claims 1, 3—5, 10-12, and 17—19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chen (US 2006/0277454 Al; published Dec.
7, 2006), Ciudad (US 2008/0030621 Al; published Feb. 7, 2008), and
Taylor (US 2005/0278648 Al; published Dec. 15, 2005).
Claims 6, 8, 9, and 13—15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chen, Ciudad, Taylor, and Foote (US 2002/002801 Al;
published Mar. 7, 2002).
Claims 2 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chen, Ciudad, Taylor, and Doty (US 2003/0152904 Al;
published Aug. 14, 2003).
Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chen, Ciudad, Taylor, Foote, and Doty.
ANALYSIS
Appellants argue inter alia that the Examiner failed to identity
sufficient reasoning as to why a person of ordinary skill would have
modified the above prior art references to combine their teachings in the
manner asserted. See App. Br. 12—13, 19-21, 23—25; Reply Br. 4, 6—7. We
find Appellants’ arguments persuasive for the reasons explained below.
As part of the obviousness analysis, particularly when combining
teachings from multiple references, we must consider “whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
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Application 12/012,630
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”)); In re Nuvasive, Inc., 842 F.3d 1376, 1382
(Fed. Cir. 2016).
Each of the rejections on appeal rely on the combined teachings of
Chen, Ciudad, and Taylor, with some rejections also combining these
references with Foote and/or Doty. Chen generally relates to a presentation
system in which presentations can be edited by multiple users. See Chen
| 5. In Chen, a presentation includes a presentation script and presentation
assets, with the former defining how the latter are organized and displayed in
the finished presentation. Id. 5, 58. Presentation assets can include
digital media such as still pictures, audio, and video content. Id. 1 58. The
presentation script and the presentation assets may be edited independently.
Id. 1 64. Chen further describes adjusting the transparency of presentation
assets during presentation creation or editing. See Chen 1128. As the
Examiner acknowledges, however, Chen does not teach these features in the
context of a conference, as required by each of the claims on appeal. Final
Act. 3.
The Examiner relies on Ciudad to supply a teaching of conferences.
Id. at 3^4. Ciudad relates to video conferencing systems in which a video
stream of a conference participant can be altered to subtract certain
elements, such as the background behind the participant. See Ciudad ]Hf 6,
24—26. In the Final Action, the Examiner concludes, “[i]t would have been
obvious to one of ordinary skill in the art at the time of invention to combine
the video conference of Ciudad into the system of Chen to provide an
additional user environment to provide a video presentation such as the
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Application 12/012,630
presentations of Chen to a user.” Final Act. 3^4. No evidence or other
explanation is provided to support this statement. As our reviewing court
has held, such conclusory statements without evidentiary underpinning or
sufficient explanation are insufficient for a conclusion of obviousness. See
In re Lee, 277 F.3d 1338, 1343^14 (Fed. Cir. 2002).
In the Answer, the Examiner responds to Appellants’ argument by
abandoning Ciudad altogether. Rather than providing a presentation to a
user in a video conference, the Examiner asserts that multiple users
collaborating to edit a presentation, as taught in Chen, constitutes a
“conference” and, thus, Chen itself teaches that its features are applicable to
conferences. Ans. 5—6. Again, however, the Examiner fails to provide
sufficient evidence or reasoned explanation to support such a finding. For
example, even assuming arguendo that Chen’s multi-user collaboration
constitutes the recited “conference,” the Examiner does not explain
adequately how Chen teaches a user adjusting the transparency of a video
feed independent of other users, whereby the adjustment affects how the
video feed is displayed to the adjusting user during the conference, as
recited in claim 1. Chen describes the transparency adjustment feature in the
context of editing a presentation asset to affect how that asset is displayed in
the final presentation, not just to one participant in the editing process. See
Chen 1128 (describing adjusting transparency, which is then “registered]”
for the presentation); see also Chen H 120-153 (describing features,
including transparency adjustment, in a “scene composition user interface”
used to compose a scene in a presentation).
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Similarly, the Examiner does not provide adequate reasoning with
rational underpinning to support a finding that a person of ordinary skill
would have combined Chen and Ciudad with Taylor. Taylor relates to a
system in which a video stream and a user interface are displayed
simultaneously to a user, who can adjust the relative transparency of the user
interface compared to the video stream. See Taylor || 3, 12—14. In the
Final Action, the Examiner stated, “[i]t would have been obvious to one of
ordinary skill in the art at the time of invention to combine the transparency
adjustment of Taylor into the system of Chen and Ciudad to provide a
system capable of adjusting the transparency level of video during a video
conference.” Final Act. 4.2 Again, no evidence or further explanation is
cited, leaving only a conclusory statement that is insufficient. See Lee, 277
F.3d at 1343 44. In the Answer, the Examiner only adds that both Chen and
Taylor “explicitly disclose adjusting the transparency of a wide variety of
media,” and “are all related to some aspect of display presentations” and
“deal with some form of presentation to an audience.” Ans. 7. Although
these general characterizations of the references appear accurate, the
Examiner’s rationale falls short of explaining sufficiently why a person of
ordinary skill would have combined their teachings, in the context of
2 The Examiner also found in Taylor an “explicit disclosure of a system of
video conferencing which allows individual users to adjust the transparency
level of a video stream during a video conference.” Final Act. 4 (citing
Taylor || 13, 53, 55, 57). We agree with Appellants (App. Br. 13—14) that
none of the cited portions of Taylor, however, mention a video conference
or, indeed, more than a single user.
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adjusting transparency during a conference, as required by each of the
claims on appeal. See Nuvasive, 842 F.3d at 1384—85.
Because the Examiner relies on the same reasons for combining Chen,
Ciudad, and Taylor for all claims in each rejection on appeal, we do not
sustain any of the rejections.
DECISION
The decision of the Examiner to reject claims 1—20 is reversed.
REVERSED
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