Ex Parte Mock et al

Patent Trial and Appeal Board

Aug 5, 2013

11405372 (P.T.A.B. Aug. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte WAYNE E. MOCK and MICHAEL L. KENOYER
__________

Appeal 2011-003363
Application 11/405,372
Technology Center 2100
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
for performing a videoconference. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 Appellants identify the Real Party in Interest as LifeSize
Communications, Inc. (see App. Br. 2).
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Statement of the Case
Background
The method may comprise simultaneously displaying a
plurality of icons on a display device, where each icon
displays a live version of a video input signal from a
respective local video source. The icons are selectable to
select a video input signal to send to the remote endpoints in
the videoconference. In other words, by selecting a
particular icon, a user can select the video input signal
displayed by the icon as the video input signal to send to the
remote endpoints.

(Spec. 36, ll. 3-9.)
The Claims
Claims 18-41 are on appeal. Claim 18 is representative and reads as
follows:
18. A method for performing a videoconference, the
method comprising:
displaying on a display device a first video signal
comprising one or more remote participants in the
videoconference, wherein the display device is located at a
first endpoint in the video conference, wherein the video
conference comprises a plurality of endpoints, wherein each
endpoint provides video information for display at one or
more other endpoints in the videoconference;
receiving a plurality of video input signals from a
plurality of local video sources;
displaying a plurality of icons simultaneously on the
display device, wherein said displaying the plurality of icons
is performed during said displaying the first video signal,
wherein each icon displays a live version of the video input
signal from a respective one of the local video sources,
wherein the icons are selectable to select a video input signal
to send to one or more remote endpoints in the
videoconference.
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The issues
A. The Examiner rejected claims 18-20, 22, 23, 26, 28-34, 37, and 39-41
under 35 U.S.C. § 103(a) as obvious over Howell,2 Ludwig,3 Smith,4 and
Palmer5 (Ans. 4-23).
B. The Examiner rejected claims 21, 24, 25, 27, 35, 36, and 38 under 35
U.S.C. § 103(a) as obvious over Howell, Ludwig, Smith, Palmer, and
Castles6 (Ans. 23-26).
A. 35 U.S.C. § 103(a) over Howell, Ludwig, Smith, and Palmer
The Examiner finds that Howell “teaches a method for performing a
videoconference, the method comprising . . . receiving a plurality of video
input signals from a plurality of local video sources . . . displaying a plurality
of icons simultaneously on the display device . . . wherein each icon displays
a version of the video input signal” (Ans. 4-5). The Examiner finds that
“displaying on a display device a video signal comprising one or more
remote participants in the videoconference is taught by Ludwig” (id. at 5).
The Examiner finds that “displaying a live version icon is taught by Smith”
(id. at 6). The Examiner finds that “multiple endpoint videoconferencing
with each endpoint providing video information to be displayed at one or
more endpoints is taught by Palmer” (id.).
The Examiner finds it obvious to “further modify Howell ‘897-
Ludwig ‘314-Smith ‘247 to include Palmer ‘653 multiple endpoint

2 Howell, B., US 5,767,897, issued Jun. 16, 1998.
3 Ludwig et al., US 6,343,314 B1, issued Jan. 29, 2002.
4 Smith et al., US 2002/0133247 A1, published Sep. 19, 2002.
5 Palmer et al., US 5,608,653, issued Mar. 4, 1997.
6 Castles et al., US 2005/0024485 A1, published Feb. 3, 2005.
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videoconference streaming to achieve the predictable result of controlling a
multi-way videoconferencing.” (Ans. 7.
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Howell, Ludwig, Smith, and Palmer
render the claims obvious?
Findings of Fact
1. Howell teaches
video conferencing systems are being used in a wide variety
of settings to enable effective communication among
audience/participants at local and remote sites. The local and
remote site each have a video camera, a video monitor, a
loudspeaker and a microphone. A director controller is
typically at the local site to enable a director to control the
distribution of the audio and video information signals
produced at the sites for viewing and listening by the
audience/participants at the other sites.

(Howell, col. 1, ll. 8-16.)
2. Figures 1 and 3 of Howell are reproduced below:

“FIG. 1 is a diagram of a multi-point video conferencing system” (Howell,
col. 2, ll. 53-54).
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“FIG. 3 is an illustrative view of a display screen used in the control
section” (Howell, col. 2, ll. 58-59).
3. Howell teaches that “video selector 34 allows any of 8 video
sources, to be described, coupled to input ports 351-358, to be switched to
any of eight possible outputs 371-378 in response to a control signal fed
thereto from microprocessor 38 via line 43” (Howell, col. 4, ll. 5-8).
4. Howell teaches “touch control areas 641, 642 in the ‘main-
screen’ mode, and a video source selection touch screen touch area 643 in
the ‘Mark-up’ mode, enable the podium speaker 28 to easily select one of a
plurality of video devices, or video sources, such as slide camera 66 . . . the
personal camera 76 . . . coupled to input ports 351-358” (Howell, col. 7, ll.
16-23).
5. Howell teaches that a
picture-in-picture (PIP) unit 36 receives any selected one
video source of the eight video sources coupled to input
ports 351-358 of video selector 34 and output port 377 . . . the
output of the PIP unit 36 is fed to input port 355 of the video
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selector 34. On/off and PIP position control to the PIP unit
36 (i.e., whether the [sic] should be one picture, or a picture
in picture (PIP); and, if a PIP, the position of the PIP) is
supplied by the video selector 34 via line 54 in response to
podium speaker 28 touch commands via the touch screen 27
. . . . When in the PIP mode, the podium speaker 28 is
presented in a sub-region 53 of the “presentation” display
area 60, in the “Main-screen” mode

(Howell, col. 4, l. 58 to col. 5, l. 8).
6. Ludwig teaches that
Principal among the invention's goals is to replicate in a
desktop environment, to the maximum extent possible, the
full range, level and intensity of interpersonal
communication and information sharing which would occur
if all the participants were together in the same room at the
same time (referred to herein as “face-to-face
collaboration”)

(Ludwig, col. 1, ll. 22-27).
7. Figure 8B of Ludwig is reproduced below:

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Figure 8B discloses a “video mosaic of all participants, e.g., for four-party”
calls (Ludwig, col. 4, ll. 33-38).
8. Ludwig teaches “the capability of allowing a conference
participant to select a close-up of a participant displayed on a mosaic. This
capability is provided whenever a full individual video picture is available at
that user’s site” (Ludwig, col. 14, ll. 51-55).
9. Smith teaches
Media player environment 202 also includes media
stream selectors 206. Media stream selectors 206 allow a
user to select between multiple media streams. In one
embodiment of the present invention, media stream selectors
206 are icons, or other web page elements displayed in
media player environment 202 “linking” to the network
address of additional media streams. In a preferred
embodiment of the present invention, media stream selectors
206 may additional instances of the media player playing
other media streams available to the user. In some
embodiments of the present invention, media stream
selectors 206 play low resolution, and/or low frame rate
media streams. In these embodiments, media stream
selectors 206 may mimic a “picture-in-picture” function
common among televisions.

(Smith 3 ¶ 0037.)
10. Palmer teaches “n-way video teleconferencing among
networked computer workstations using the existing variable bandwidth
digital data network for transferring synchronized audio and video
teleconferencing data between the workstations” (Palmer, col. 1, ll. 45-49).

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11. Figure 5C of Palmer is reproduced below:

Figure 5C is a diagram “illustrating the multiple one-way video
teleconferencing connections established between three workstations joined
in the same teleconference” (Palmer, col. 4, ll. 8-10).
12. Palmer teaches that
each workstation places a call to each other, unconnected
workstations. Thus, each workstation participating in a
particular video teleconference establishes and maintains a
two-way video teleconference connection with each other
workstation in the teleconference. In this manner, a
teleconference participant can control what each other
participant receives from that workstation, e.g., muting
audio or pausing video to certain participants while
remaining active to other participants.

(Palmer, col. 9, ll. 34-42.)
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13. Figure 26(g) of Palmer is reproduced below:

Figure 26(g) shows “the dislay screens of three Workstations participating in
a three-way video teleconference of this invention” (Palmer, col. 5, ll. 3-5).
14. The Specification teaches that “the term ‘icon’ refers to any
visual information displayed on a portion of the display device. In one
embodiment each icon may simply comprise a rectangular window in which
the respective local video input signal is displayed” (Spec. 16, ll. 12-14).
Principles of Law
The Supreme Court has emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
As noted by the Court in KSR, “[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id. at 421. “The
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combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
Analysis
Claims 18 and 41
Howell teaches “video conferencing systems . . . to enable effective
communication among audience/participants at local and remote sites. The
local and remote site each have a video camera, a video monitor, a
loudspeaker and a microphone” (Howell, col. 1, ll. 8-11; FF 1). Thus,
Howell teaches the steps of displaying at least one remote participant on a
display device located at a first endpoint of a video conference (FF 1).
Howell further teaches the use of a video selector 34 which receives video
input signals from a plurality of video sources (FF 3). Howell also teaches
displaying touch control areas to permit selection of video sources (FF 4-5).
The Examiner acknowledges that Howell does not teach displaying of
a live version icon (see Ans. 6) and that Howell does not teach multi-way
videoconferencing (see Ans. 6).
Ludwig teaches displaying a plurality of video signals from a plurality
of endpoints, showing multiple remote participants on a single screen (FF 7).
Ludwig also teaches selecting particular icons (FF 8). Smith teaches live
icons where “[m]edia stream selectors 206 allow a user to select between
multiple media streams . . . media stream selectors 206 may mimic a
“picture-in-picture” function common among televisions” (Smith 3 ¶ 0037;
FF 9). Palmer teaches multi-way videoconferencing where
each workstation places a call to each other, unconnected
workstations. Thus, each work-station participating in a
particular video teleconference establishes and maintains a
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two-way video teleconference connection with each other
workstation in the teleconference. In this manner, a
teleconference participant can control what each other
participant receives from that workstation, e.g., muting
audio or pausing video to certain participants while
remaining active to other participants.

(Palmer, col. 9, ll. 34-42; FF 12.)
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that the person of ordinary skill would have
reasonably modified Howell’s videoconferencing method (FF 1-5) to use
videoconferencing icons such as those taught by Ludwig (FF 6-8) so that a
“teleconference participant can control what each other participant receives
from that workstation” (Palmer, col. 9, ll. 39-42; FF 12). Permitting that
control by each videoconference participant using the well-known live video
“picture-in-picture” technology disclosed by Smith would “achieve the
predictable result of viewing multiple selectable input sources in a
videoconference” (Ans. 6). Since both Howell and Ludwig teach the use of
multiple input sources, Ludwig exemplifies a desire to select such sources
(FF 6), while Smith and Palmer teaches technical modes to permit multi-way
video conferencing (FF 9-13), such a combination is merely a “predictable
use of prior art elements according to their established functions.” KSR, 550
U.S. at 417.
Appellants contend that “neither the system of Howell, which relates
to a presentation (one-way transmission without reception from remote
endpoints) system, nor the system of Smith, which relates to streaming
multimedia content (one-way reception without transmission), are germane
to a multi-way videoconference” (App. Br. 6).
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We interpret this as an argument that Howell and Smith are non-
analogous art, and we are not so persuaded. The test for non-analogous art is
first whether the art is within the field of the inventor’s endeavor and, if not,
whether it is “reasonably pertinent to the particular problem with which the
inventor was involved.” In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A
reference is reasonably pertinent if, even though it may be in a different
field” of endeavor, it logically would have commended itself to an
inventor’s attention in considering his problem “because of the matter with
which it deals.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Howell expressly discusses videoconferencing situations where each
site has a video camera, monitor, loudspeaker, and microphone and
reasonably suggests multi-way communication (FF 1). While Smith is a
more generic method concerned with switching between streams of
multimedia content, we conclude that the ordinary artisan interested in
multi-way conferencing as taught by Howell (FF 1), Ludwig (FF 6) and
Palmer (FF 10) would have found Smith’s teaching regarding selectors
which allow users to select between media streams (FF 9) pertinent to
Howell’s picture-in-picture icons (FF 5), Ludwig’s teaching to select close-
up views of an icon (FF 8) and Palmer’s teaching to allow video control by
teleconference participants (FF 12-13).
Appellants contend that
the Examiner has improperly attempted to read Appellant’s
claimed functionality into Smith in contradiction to the
functionality described by Smith, noting that the alleged
combination would include Howell’s one way video
presentation techniques, Ludwig’s display of
videoconference participants, and Smith’s “live version
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icons” for selecting multimedia input streams, but would
still fail to provide the claimed functionality of displaying a
plurality of icons simultaneously on a display device while
displaying a first video signal (from and of the remote
participants), where each icon displays a live version of the
video input signal from a respective one of the local video
sources, and where the icons are selectable to select a video
input signal to send to one or more remote endpoints in the
videoconference.

(App. Br. 7-8.)
We are not persuaded. In KSR, the court found that “[w]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” KSR, 550 U.S. at 417. In the instant situation, Howell,
Ludwig, and Palmer all teach videoconference technologies in which two or
more endpoints of a videoconference are in video communication (FF 1-3,
5-7, 10, 12) and Ludwig, Smith, and Palmer each teach icons which can be
selected to display a desired video input (FF 6, 8, 9, 12).
We note that the Specification teaches that “the term ‘icon’ refers to
any visual information displayed on a portion of the display device. In one
embodiment each icon may simply comprise a rectangular window in which
the respective local video input signal is displayed” (Spec. 16, ll. 12-14; FF
14). Thus, interpreting the term “icon” in light of the Specification, the
windows shown in Ludwig are reasonably interpreted as “icons” (FF 5), as
are the “picture-in-picture” controls of Smith (FF 9) and the video controls
of Palmer (FF 12). Indeed, given the breadth of the definition in the
Specification, even the touch screen areas of Howell, which are visual
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information on a display device used to control video input including
picture-in-picture input (FF 5), are reasonably interpreted as being “icons”
(FF 4).
While Appellants argue the combination of references, we do not find
that any element of the claimed invention is novel or unobvious over the
prior art, and we do find that there are express teachings of the need and
market pressure for multi-way video conferencing systems (FF 1, 6).
Therefore, the ordinary artisan interested in multi-source videoconferencing
as taught by Howell, Ludwig, and Palmer would have reasonably combined
the elements of the cited prior art, including the controllable icons as taught
by Howell, Ludwig, and Palmer, and also including the live video icons of
Smith, in order to “achieve the predictable result of controlling a multi-way
videoconferencing” (Ans. 29). This combination of references renders
obvious the invention of claims 18 and 41.
Claim 19
Appellants contend that
Howell’s icons are not equivalent to Appellant’s icons, not
being capable of displaying live video signals from their
associated sources, and so Howell does not, and cannot,
disclose user input selecting such an icon. Nor are Smith’s
icons equivalent to those claimed, at least because Smith’s
“live version icons” are only for selecting multimedia
streams for viewing by the user, not outgoing local signals
for display at one or more remote videoconference
endpoints.

(App. Br. 8-9.)
We are not persuaded. Claim 19 requires “receiving user input
selecting a first icon corresponding to a first local video source. . . providing
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a first local video signal over a network for display at one or more remote
endpoints in response to said selecting the first icon.” As discussed above,
the term “icon” is reasonably interpreted as visual information displayed on
a portion of a display device (FF 13). Howell teaches user selectable icons
which are visual information displayed on a display device that permit
selection of desired video streams for playback (FF 4-5), Ludwig teaches
icons including visual information from different videoconference endpoints
(FF 7) and Smith teaches that user selectable icons can include “picture-in-
picture” or live video (FF 9). Given these teachings, the prior art reasonably
suggests the use of user input for selecting live icons for display to at least
one remote endpoint as required by claim 19 (FF 1-13).
Claim 22
Appellants contend that
combining Howell (and Ludwig) and Smith would at best
produce a system in which Smith’s media stream selector
would allow the user to select a multimedia stream to
receive, and in which Howell’s static icons would allow the
user to select source video to send to remote participants, but
which would still not teach the functionality claimed

(App. Br. 10).
We are not persuaded. Initially, this argument entirely fails to address
Palmer, who expressly teaches n-way video teleconferencing between
different endpoints of the conference (FF 10) and who also teaches
permitting the workstation endpoints to control the video and audio streams
relative to other endpoints (FF 11). Appellants then address Palmer, but
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argue that “Palmer fails to disclose the particular selection means of claim
22” (App. Br. 10).
However, in making this argument, Appellants fail to combine the
references together, arguing each separately. Appellants also fail to address
the breadth of the term “icon” as discussed above (FF 14). It is the
combination of all of the cited prior art which renders claim 22 obvious,
where Palmer teaches n-way video teleconferencing (FF 10), Smith teaches
the use of live picture-in-picture icons, well known from television, for use
in network environments (FF 9), Howell teaches video conferencing where
multiple video input signals from different endpoints (FF 3) are directed to
different screens using icons (FF 4) including picture-in-picture icons (FF 5),
and Ludwig provides an exemplary videoconference display (FF 6) as well
as reasons to perform live videoconferencing between different locations (FF
7). See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”)
Appellants also contend that the prior art “nowhere mentions or even
hints at simultaneously displaying a first (main) signal that includes one or
more participants and a second (main) signal that includes a selected video
source” (App. Br. 10-11).
We are not persuaded. Ludwig shows, in figure 8B, simultaneous
display of four different signals (FF 7). Howell expressly teaches the use of
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picture-in-picture with the presentation showing a main signal from one
source and a picture-in-picture signal from a second source (FF 5). Palmer
shows, in figure 26(g), an embodiment with two different participants and
two different signals shown on a recipient workstation along with various
tools (FF 13). Each of these references teaches simultaneous display of two
video sources from two different endpoints (FF 5, 7, 13).
Claim 23
Appellants contend that “Palmer nowhere teaches or even hints at the
video teleconference data including first and second main video signals as
claimed” (App. Br. 11).
We are not persuaded. Palmer’s disclosure of the transfer of video
signals between the workstations, as represented in figure 5C and the
associated text (FF 11-12), along with the Palmer’s figure 26(g) showing a
workstation screen with images from other endpoints (FF 13) is a direct
teaching of video teleconference data with multiple video signals.
Claims 26 and 30
Appellants contend that “Howell nowhere discloses displaying such
first main video signal at all, and thus, does not, and cannot, disclose this
feature of claim 26” (App. Br. 12). Appellants also contend that the “cited
art fails to teach or suggest wherein the composite image comprises the
plurality of icons, the first main video signal, and the second main video
signal, as recited in claim 30” (id. at 14).
We are not persuaded. There is no reasonable dispute that Howell
teaches a plurality of icons on a display device (FF 4), therefore Appellants
here are contending that the combination of the prior art does not teach a
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“main video signal.” However, Howell teaches the use of a picture-in-
picture functionality, where one of the signals would be the “main” signal
and the other signal the “picture-in-picture” signal (FF 5). Ludwig teaches
composite images (FF 6-8). Moreover, as discussed above, Palmer teaches
the use of multiple video signals (FF 13) and the ability to control these
signals (FF 12), so that the combination of prior art renders claims 26 and 30
obvious.
Claims 28 and 37
Appellants contend that “Howell does not disclose displaying the
plurality of icons simultaneously with each other and simultaneously with
the first main video signal and the second main video signal” (App. Br. 13).
We are not persuaded. We agree with the Examiner, who finds that
Howell ‘897 further discloses video signals are
presented simultaneously on the display device according to
defined positions "That is, referring to FIG. 3, the
"Mainscreen" mode breaks the presenter's podium display
27 into five basic areas: the "preview" display area 62, or
window, on the left; the "presentation" display area 60, or
window, on the right; a site selection area 80 disposed along
the bottom of the "presentation" display area 60 and
"preview" display area 62; a video source selection area 64;
and, a video source control area 81 directly under the
''presentation'' and "preview" display areas 60, 62, as
shown” (column 7 lines 55-63)

(Ans. 34-35). This showing of multiple signals along with icons on a single
display is shown pictorially in figure 3 (FF 2).
Claims 29 and 32
Appellants contend that “Smith’s video signals are not equivalent to
Appellant’s claimed video input signals at least because Smith’s signals are
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remote multimedia streams, not signals from local video sources” (App. Br.
13).
We are not persuaded. As already discussed, Howell teaches the use
of picture-in-picture technology (FF 5) and Smith teaches that in “some
embodiments of the present invention, media stream selectors 206 play low
resolution, and/or low frame rate media streams. In these embodiments,
media stream selectors 206 may mimic a ‘picture-in-picture’ function
common among televisions” (Smith 3 ¶ 0037; FF 9). Thus, an ordinary
artisan using the picture-in-picture method of Howell would have reasonably
used the lower resolution, that is scaled down video signal, of Smith, to
create the picture-in-picture effect, “to achieve the predictable result of
previewing multiple selectable input sources efficiently in a
videoconference” (Ans. 36; emphasis added).
Appellants also reiterate several other contentions regarding the
combination of Smith including the non-analogous art type issue which we
have already addressed above.
Claims 31 and 40
Appellants contend that “the cited art fails to teach or suggest
wherein each icon displays the live version of the video input signal
from the respective video source at the same frame rate at which the
video input signal is received, as recited in claim 30” (App. Br. 14).
We are not persuaded. We agree with the Examiner who finds that
“Smith ‘247 explicitly discloses of this ‘In some embodiments of the present
invention, media stream selectors 206 play low resolution, and/or low frame
rate media streams’ ([0037]; emphasis added); the ‘or’ indicates the frame
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rate could be the same in the preview live icon” (Ans. 37). We agree that
the ordinary artisan, combining the teachings of Howell, Ludwig, Palmer,
and particularly Smith, would have recognized that the frame rate of the
video source was an optimizable variable depending upon the quality of the
desired image (FF 9). See In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.”)
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Howell, Ludwig, Smith, and Palmer render the claims obvious.
B. 35 U.S.C. § 103(a) over Howell, Ludwig, Smith, Palmer, and Castles
The Examiner finds that “Howell ‘897-Ludwig ‘314-Smith ‘247-
Palmer ‘653 teach a method for performing a videoconference as applied in
the claims above” (Ans. 24). The Examiner finds that these references fail
“to teach that the plurality of icons are displayed overlayed on top of a video
signal” (id.). The Examiner finds that Castles teaches “displaying a plurality
of icons overlayed on top of a video signal” (id.). The Examiner finds it
obvious to “include Castles ‘485 overlaying of icons to achieve the
predictable result of providing user friendly means of selecting icons in
videoconferencing” (id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Howell, Ludwig, Smith, Palmer, and
Castles render the claims obvious?

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Findings of Fact
15. Figure 8 of Castles is reproduced below:

“FIG. 8 is an example of a screen seen by the user during a videoconference
and showing three, video-source selection icons” (Castles 1 ¶ 0015).
16. Castles teaches:
Also shown in FIG. 8 are camera selection icons 73.
In the illustrated example, camera 1 is selected (as indicated
by the highlighted icon) and the previously associated
camera name is displayed in text box 74 which is joined by
label connector 75 to (in this case) the “doctor” icon. In
certain embodiments, the camera icons and/or video feed
labels 72 may automatically be removed from the screen
after a pre-selected interval. The time interval may be one of
the administrative functions under the “system” tab 8. In
some embodiments, video feed label 72 may only be
displayed together with label connector 75 when the user’s
pointing device “rolls over” the particular icon.
Alternatively, video feed label 72 and label connector 75
may be displayed by a first instance of user selection while
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the icon is selected by a second instance of user selection-for
example, positioning a cursor on the icon and “clicking” on
it would cause the display of video feed label 72 and
clicking on the icon a second time would cause the video
display to switch to the video feed associated with the icon.

(Castles 2 ¶ 0031.)
Analysis
Claim 21
Appellants contend that “the cited display of Castles (Figure 8 and
paragraph 0031) overlays static camera icons over a video feed of the user
himself, and thus, does not, and cannot, disclose overlaying Appellant’s ‘live
version’ icons over a displayed first video signal that includes one or more
remote participants of a videoconference” (App. Br. 21).
We are not persuaded. As discussed above, given the breadth of the
term “icon” (FF 14), Howell teaches the use of a picture-in-picture icons fed
into a videoconference (FF 5), Ludwig teaches a screen with icons (FF 7),
Palmer teaches live icons on a screen with multiple remote participants (FF
10-13), while Smith teaches live versions of picture-in-picture feeds (FF 9).
Castles is solely relied upon for the placement of the icons in the image, here
on top of a signal as shown in figure 8 of Castles (FF 15) and discussed in
the text of Castles (FF 16). We agree with the Examiner that the
combination of these references renders it obvious “to include Castles ‘485
overlaying of icons to achieve the predictable result of providing user
friendly means of selecting icons in videoconferencing.” (Ans. 43.)

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Claims 24, 25, 35, and 36
Appellants contend that “the cited art fails to teach or suggest
discontinuing display of the icons on the display device after receiving
the user input selecting the first icon” (App. Br. 21).
The Examiner finds that “Castles ‘485 discloses of discontinuing the
display of icons after a pre-selected interval” (Ans. 43). The Examiner finds
that it “would have been obvious to one of ordinary in the skill in the art to
interpret the ‘discontinuing display of the icons after selection’ as removing
the icons from display at any given point after selection; i.e. instantly or after
a time interval after selection” (id.).
We find that Appellants have the better position. We agree that
discontinuing display after receiving user input differs from discontinuing
display after a time interval (FF 16). There is also no reason given in the
rejection which would require removal of the icons after selection by a user,
since the continued presence of the icons would permit the user to easily
change the selection as desired. In the absence of a prior art teaching or
scientific reasoning, we are constrained to reverse the rejection of claims 24,
25, 35, and 36. See KSR, 550 U.S. at 418 (There must be “a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does”).
Claims 27 and 38
Appellants contend that Castles discloses “static camera icons over a
video feed of the user himself, and thus, do not, and cannot, disclose
overlaying Appellant’s ‘live version’ icons over a displayed first video
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signal that includes one or more remote participants of a videoconference”
(App. Br. 22).
We are not persuaded. As discussed already, the rejection does not
depend solely upon Castles, who clearly teaches icons which overlay an live
video image (FF 15-16). Howell, Ludwig, and Palmer each teach the
presence of remote participants who may be shown on the teleconference
(FF 3, 7, 10-13) and Howell teaches inclusion of icons in this context (FF 2,
4). Keller, 642 F.2d at 425.
Conclusions of Law
The evidence of record supports the Examiner’s conclusion that
Howell, Ludwig, Smith, Palmer, and Castles render claims 21, 27, and 38
obvious.
The evidence of record does not support the Examiner’s conclusion
that Howell, Ludwig, Smith, Palmer, and Castles render claims 24, 25, 35,
and 36 obvious.
SUMMARY
In summary, we affirm the rejection of claims 18-20, 22, 23, 26, 28-
34, 37, and 39-41 under 35 U.S.C. § 103(a) as obvious over Howell,
Ludwig, Smith, and Palmer.
We affirm the rejection of claims 21, 27, and 38 under 35 U.S.C. §
103(a) as obvious over Howell, Ludwig, Smith, Palmer, and Castles.
We reverse the rejection of claims 24, 25, 35, and 36 under 35 U.S.C.
§ 103(a) as obvious over Howell, Ludwig, Smith, Palmer, and Castles.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

cdc