Ex Parte Rosenberg

Patent Trial and Appeal Board

Aug 21, 2017

13231122 (P.T.A.B. Aug. 21, 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.
13/231,122 09/13/2011 KOBY ROSENBERG 199-0781US 8494
29855 7590 08/23/2017
Blank Rome LLP - Houston General
717 Texas Avenue, Suite 1400
Houston, TX 77002
EXAMINER
ZENATI, AMAL S
ART UNIT PAPER NUMBER
2656
NOTIFICATION DATE DELIVERY MODE
08/23/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
hou stonpatents @ blankrome .com
mbrininger @ blankrome. com
smcdermott@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOBY ROSENBERG
Appeal 2015-005630
Application 13/231,122
Technology Center 2600
Before JOHNNY A. KUMAR, JOHN P. PINKERTON, and
JOYCE CRAIG, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-005630
Application 13/231,122
STATEMENT OF CASE
Introduction
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—39. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (bracketed matter
added):
1. A method comprising:
[a] receiving a request from a caller at a first
videoconferencing endpoint for an unscheduled video call to
a callee;
[b] determining a location of the callee based on biometric
data collected by at least one endpoint in a plurality of other
endpoints;
[c] acquiring information of a second videoconferencing
endpoint at which the callee is determined to be located; and
[d] initiating a videoconferencing session between the first
and second videoconferencing endpoints using the acquired
information.
Rejections
Claims 1, 3—6, 8—15, 17—21, 23—33, 35, and 37—39 are rejected under
35 U.S.C. § 103(a) as unpatentable over Even (US 7,174,365 Bl, iss. Feb. 6,
2007), Comaniciu (US 2002/0064314 Al, pub. May 30, 2002), and Hicks
(US 2009/0061872 Al, pub. Mar. 5, 2009).
Claims 2, 7, 16, 22, 34, and 36 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Even, Comaniciu, Hicks, and Strubbe (US
2003/0090564 Al, pub. May 15, 2003).
1 Appellant identifies Polycom, Inc. as the real party in interest (App. Br. 3).
2
Appeal 2015-005630
Application 13/231,122
ANALYSIS2
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions the Examiner erred.
We disagree with Appellant’s contentions. To the extent consistent
with the analysis below, we adopt as our own (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief. Ans. 2—7. We concur with the
conclusions reached by the Examiner. We highlight and address specific
findings and arguments for emphasis as follows.
Appellant contends “Even, Comaniciu, and Hicks do not teach
determining a callee’s locations based on biometric data collected by
endpoints.” App. Br. 6—7 (emphasis omitted). Further, Appellant contends
“Comaniciu’s system still does not determine a callee’s location based on
that video data, as the term ‘location’ is used in the claims.” Reply Br. 3
(emphasis omitted).
The Examiner finds that Even teaches elements [a], [c], and [d] of
claim 1 (Final Act. 2—5; Ans. 2-6). For claim element [b], the Examiner
relies upon the combined teachings of Comaniciu and Hicks. Id. In
particular, the Examiner relies upon Hicks’s presence server 102 (Fig. 1) for
the claimed element “location of the callee,” and Comaniciu’s biometric
identification technique (Ans. 4-5, citing Comaniciu Tflf 35, 36, 39, and 40)
for the claimed “biometric data.”
The Examiner also finds,
2 Separate patentability is not argued for claims 2—39. Except for our
ultimate decision, these claims are not discussed further herein.
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Appeal 2015-005630
Application 13/231,122
Hicks teaches an incoming call placed by a caller, and a video
conference is started after determining the location of a callee.
Hicks teaches a callee has plurality of communication devices,
and a presence server 102 can determine a current location of
callee. and then establishing a video conference with callee’s
communication device that the callee is located nearby
(paragraph 0043-0044). ... Comaniciu clearly teaches the
limitation “determining a callee's locations based on biometric
data collected by at least one endpoint in a plurality of other
endpoints” as shown above. Therefore, it would have been
obvious to a person of ordinary skill in the art at the time the
invention was made to incorporate the teaching of Comaniciu
into teaching of Hicks for the purpose of using biometric data
for tracking and determining a location of the callee/target
person; moreover, Comaniciu suggests that his invention can be
used for a purpose of video conference (Comaniciu:
paragraph 0005).
Ans. 6 (emphasis omitted, italics added).
We agree with the Examiner’s findings, and conclude that Appellant’s
arguments ignore the actual reasoning of the Examiner’s rejection. Instead,
Appellant attacks a reference singly for lacking a teaching that the Examiner
relied on a combination of references to show. It is well established that one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). The effect of Appellant’s argument is to raise and then knock
down a straw man rejection of claim 1 that was never made by the Examiner
in that the Examiner did not rely solely on the one reference as argued. In
other words, Appellant argues against findings that were never made by the
Examiner. This form of argument is inherently unpersuasive to show
Examiner error. Our reviewing court requires that references must be read,
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Appeal 2015-005630
Application 13/231,122
not in isolation, but for what they fairly teach in combination with the prior
art as a whole. Merck, 800 F.2d at 1097.
In particular, Appellant’s arguments regarding Comaniciu’s alleged
shortcomings (Reply Br. 3) do not show nonobviousness where, as here, the
rejection is based on the cited references’ collective teachings of Even,
Comaniciu, and Hicks (Final Act. 2—5; Ans. 2—6).
As to Appellant’s contention “Comaniciu’s endpoints do not perform
any sort of biometric analysis” (App. Br. 8), Appellant’s argument is not
commensurate in scope with the claim because claim 1 does not recite
“perform any sort of biometric analysis.”
Consequently, we conclude there is no reversible error in the
Examiner’s rejections of claims 1—39.
DECISION
We affirm the Examiner’s rejections of claims 1—39.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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