Ex Parte Mock et alDownload PDFPatent Trial and Appeal BoardAug 5, 201311405372 (P.T.A.B. Aug. 5, 2013) Copy Citation 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). Appeal 2011-003363 Application 11/405,372 2 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. Appeal 2011-003363 Application 11/405,372 3 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. Appeal 2011-003363 Application 11/405,372 4 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). Appeal 2011-003363 Application 11/405,372 5 “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 Appeal 2011-003363 Application 11/405,372 6 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: Appeal 2011-003363 Application 11/405,372 7 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). Appeal 2011-003363 Application 11/405,372 8 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.) Appeal 2011-003363 Application 11/405,372 9 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 Appeal 2011-003363 Application 11/405,372 10 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 Appeal 2011-003363 Application 11/405,372 11 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). Appeal 2011-003363 Application 11/405,372 12 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 Appeal 2011-003363 Application 11/405,372 13 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 Appeal 2011-003363 Application 11/405,372 14 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 Appeal 2011-003363 Application 11/405,372 15 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 Appeal 2011-003363 Application 11/405,372 16 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 Appeal 2011-003363 Application 11/405,372 17 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 Appeal 2011-003363 Application 11/405,372 18 “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 Appeal 2011-003363 Application 11/405,372 19 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 Appeal 2011-003363 Application 11/405,372 20 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? Appeal 2011-003363 Application 11/405,372 21 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 Appeal 2011-003363 Application 11/405,372 22 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.) Appeal 2011-003363 Application 11/405,372 23 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 Appeal 2011-003363 Application 11/405,372 24 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. Appeal 2011-003363 Application 11/405,372 25 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 Copy with citationCopy as parenthetical citation