Ex Parte FOLEY et al

Patent Trial and Appeal Board

Oct 30, 2018

14090830 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/090,830 11/26/2013
112723 7590 11/01/2018
Haworth, Inc. c/o Haynes Beffel & W olfeld LLP
P.O. Box 366
Half Moon Bay, CA 94019
FIRST NAMED INVENTOR
DA VE M. FOLEY
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HAWT 1011-2 4505
EXAMINER
TSAI, JAMES T
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
docket@hmbay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DA VE M. FOLEY, ADAM PEARSON, and
DEMIAN ENTREKIN
Appeal 2018-005136
Application 14/090,830 1
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 18-25, 43-50, and 67-74. Claims 1-17, 26-42, 51---66,
and 75 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Haworth, Inc. App.
Br. 2.
Appeal2018-005136
Application 14/090,830
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to
"apparatuses, methods, and systems for digital collaboration, and more
particularly to digital display systems which facilitate multiple simultaneous
users having access to global workspace data." Spec. ,r 2.
Exemplary Claim
Claim 18, reproduced below, is illustrative of the subject matter on
appeal (emphasis added to dispositive limitations):
18. A system comprising:
a client-side network node including a display having a
physical display space, a user input device, a processor and a
communication port, the client-side network node being
configured with logic:
to establish a link to a server-side network node;
to retrieve, from the server-side network node, at least
part of a log of entries to identify events in a workspace, the
workspace comprising locations having virtual coordinates,
the events identified by the entries in the log being related to
graphical targets having virtual coordinates within the
workspace, wherein an entry in the log, which identifies an
event, comprises data specifying virtual coordinates of a
location within the workspace of the graphical target related
to the event, a target identifier of the graphical target related
to the event to be displayed when rendered on the display of
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Jan. 5, 2018); Reply Brief ("Reply Br.," filed April 17, 2018); Examiner's
Answer ("Ans.," mailed Mar. 28, 2018); Final Office Action ("Final Act.,"
mailed June 16, 2017); and the original Specification ("Spec.," filed
Nov. 26, 2013).
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Application 14/090,830
the client-side network node, data identifying an action
selected from a group of actions including creation,
movement and deletion of the graphical target within the
workspace, and a time of the event;
to map a displayable area in the physical display
space to a mapped area within the workspace;
to identify events in the retrieved log having locations
within the mapped area;
to render graphical targets identified by the identified
events onto the displayable area, wherein the retrieved log
includes at least one entry for an event that identifies
creation action, and at least one entry for an event that
identifies a movement action;
to accept input data from the user input device
creating events relating to movement and creation of
graphical targets displayed within the displayable area; and
to send messages based upon the created events to the
server-side network node.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Maples et al. ("Maples") us 6,167,433
Simonoff US 7,043,529 Bl
Bigelow et al. ("Bigelow") US 2009/0234721 Al
Werner et al. ("Werner") US 2012/0169772 Al
Barrus et al. ("Barrus") US 2012/0229425 Al
Dec. 26, 2000
May 9, 2006
Sept. 17, 2009
July 5, 2012
Sept. 13, 2012
Dorninger US 2015/0089452 Al Mar. 26, 2015
Brad Johanson et al., "The Event Heap: An Enabling Infrastructure
for Interactive Workspaces," Stanford University, 2000,
https://graphics.stanford.edu/papers/eheap (accessed by Examiner
12/30/2016) (hereinafter "Johanson")
Allen G. Taylor, "SQL for Dummies," 7th Ed., July 12, 2012, Wiley
Publishing (hereinafter "Taylor")
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Application 14/090,830
Rejections on Appeal3
RI. Claims 18, 21-24, 43, 46-49, 67, and 70-73 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Barrus, Dominger, and Bigelow. Final Act. 27.
R2. Claims 19, 44, and 68 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Barrus, Dominger, Bigelow,
and Taylor. Final Act. 32.
R3. Claims 20, 45, and 69 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Barrus, Dominger, Bigelow,
Maples, and Johnson. Final Act. 33.
R4. Claims 25, 50, and 74 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Barrus, Dominger, Bigelow,
and Werner. Final Act. 36.
ISSUE
Appellants argue (App. Br. 9-19; Reply Br. 2-7) the Examiner's
rejection of claim 18 under 35 U.S.C. § 103(a) as being obvious over the
combination of Barrus, Dominger, and Bigelow is in error. These
contentions present us with the following issue:
Did the Examiner err in rejecting claim 18 under 35 U.S.C. § 103(a)
as being obvious over the suggested combination, specifically, in regards to
limitations, i.e.,
3 The Examiner's seven additional rejections recited in the Final Office
Action are moot because the claims in those rejections were canceled on
January 5, 2017, when both the Appeal Brief was filed and the Amendment
After-Appeal was entered.
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Application 14/090,830
"to map a displayable area in the physical display space
to a mapped area within the workspace;
to identify events in the retrieved log having locations
within the mapped area;
to render graphical targets identified by the identified
events onto the displayable area, wherein the retrieved log
includes at least one entry for an event that identifies creation
action, and at least one entry for an event that identifies a
movement action,"
as recited in claim 18 ( emphases added)? 4
ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to claims 18-25, 43-50, and 67-74 for the specific reasons discussed below.
We highlight and address specific findings and arguments regarding
claim 18 for emphasis as follows.
§ 103 Rejection RI of Claims 18, 21-24, 43, 46--49, 67, and 70---73
Regarding the limitations "to map," "to identify," and "to render" of
independent claim 18, Appellants contend the Examiner does not make a
prima facie finding, i.e., "The Examiner merely quotes the limitations and
sets out the finding with the vague note: '(Barrus: par. 0034, the output
devices can display some graphical events)."' App. Br. 11.
In rejecting claim 18 under§ 103(a), the Examiner finds Barrus's
output devices can display some graphical elements. Final Act. 28, citing
Barrus ,r 34.
4 Although Appellants make additional arguments regarding other
limitations of claim 1, and commensurate limitations in each of independent
claims 43 and 67, we find this identified issue to be dispositive of the
AppeaL
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Application 14/090,830
Appellants also argue, " [ t ]his passage does not address the specific
language in the claim. Barrus does not mapped an area on a display to a
mapped area in a workspace. The conclusory language in the just quoted
passage does not give any indication of what in Barrus suggests this logic."
App. Br. 13.
The Examiner further finds: "A person having ordinary skill in the art
would have understood the controller working in a multiple-display
collaborative system would have used the database's entries to map, identify
and render the graphical elements to be displayed." Ans. 16-17.
In response, Appellants contend:
The Examiner has not taken the posit[i]on that these
features are inherent. The Examiner has not taken the position
that these features are found in other references. The Examiner
has not taken the position that these features can be supplied by
"common sense."
Reply Br. 3.
Our reviewing court guides:
"The inherent teaching of a prior art reference, a question of fact,
arises both in the context of anticipation and obviousness." In re Napier, 55
F.3d 610,613 (Fed. Cir. 1995) (affirmed 35 U.S.C. § 103 rejection based in
part on inherent disclosure in one of the references). The question of
obviousness is "based on underlying factual determinations including ...
what th[e] prior art teaches explicitly and inherently." In re Zurko, 258 F.3d
1379, 1383 (Fed. Cir. 2001) (citations omitted). See also PAR
Pharmaceutical, Inc. v TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195
(Fed. Cir. 2014) ("The mere fact that a certain thing may result from a given
set of circumstances is not sufficient. If, however, the disclosure is
sufficient to show that the natural result flowing from the operation as
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Application 14/090,830
taught would result in the performance of the questioned function, it seems
to be well settled that the disclosure should be regarded as sufficient."
( citation omitted)).
However, the Examiner does not find an inherent teaching in the cited
references. 5
We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
As emphasized by our reviewing court in Smith,
[ e ]ven when giving claim terms their broadest reasonable
interpretation, the Board cannot construe the claims "so broadly
that its constructions are unreasonable under general claim
construction principles." Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015) .... "[T]he protocol of
giving claims their broadest reasonable interpretation ... does
not include giving claims a legally incorrect interpretation"
"divorced from the specification and the record evidence." Id.
( citations and internal quotation marks omitted); see PPC
Broadband, Inc. v. Corning Optical Commc 'ns RF, LLC, 815
F.3d 747, 751-53 (Fed. Cir. 2016).
In re Smith Int'!, Inc., 871 F.3d 1375, 1382 (Fed. Cir. 2017).
In this case, we find the Examiner has not fully developed the record
to show that Barrus teaches or at least suggests, the disputed limitations "to
5 For purposes of this Appeal, we do not take the position that any disputed
feature is inherently taught in the cited references. However, we leave it to
the Examiner to consider, under the proper analysis, whether the disputed
limitations of claim 18 and other independent claims are inherently taught by
one or more of the cited references. While the Board is authorized to reject
claims under 37 C.F.R. § 4I.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
(MPEP) § 1213.02.
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map," "to identify," and "to render," as required by the contested language of
claim 18.
We do not find the Examiner's claim interpretation to be reasonable or
consistent with Appellants' Specification, because there is no evidence
presented in the record regarding the knowledge of one of ordinary skill in
the art regarding the contested limitations. Thus, on this record, we are
persuaded by Appellants' argument that the cited portions of the Barrus
reference do not teach or suggest the disputed limitations "to map," "to
identify," and "to render," as recited in claim 18.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art combination to teach or suggest the dispositive limitations of claim 18,
such that we find error in the Examiner's resulting legal conclusion of
obviousness. Accordingly, we do not sustain the Examiner's obviousness
rejection of independent claim 18, or independent claims 43 and 67, which
recite the disputed limitations in commensurate form.
For the same reasons, we also reverse Rejection RI under§ 103 of
claims 21-24, 46-49, and 70-73 that variously and ultimately depend from
independent claims 18, 43, and 67.
§ 103(a) Rejections R2-R4 of Claims 19, 20, 25, 44, 45, 50, 68, 69, and 74
In light of our reversal of the rejections of independent claims 18, 4 3,
and 67, supra, we also reverse obviousness Rejections R2 through R4 under
§ I03(a) of dependent claims 19, 20, 25, 44, 45, 50, 68, 69, and 74, which
variously and ultimately depend from claims 18, 43, and 67. On this record,
the Examiner has not shown how the additionally cited secondary references
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overcome the aforementioned deficiencies with the combination of Barrus,
Dominger, and Bigelow, as discussed above regarding claim 18.
CONCLUSION
The Examiner erred with respect to obviousness Rejections RI
through R4 of claims 18-25, 43-50, and 67-74 under 35 U.S.C. § I03(a)
over the cited prior art combinations of record, and we do not sustain the
rejections.
DECISION
We reverse the Examiner's decision rejecting claims 18-25, 43-50,
and 67-74.
REVERSED
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