STEELCASE INC.

Patent Trials and Appeals Board

Dec 1, 2021

2020004820 (P.T.A.B. Dec. 1, 2021)

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.
15/837,658 12/11/2017 Lewis Epstein 871462.01248.PA13187214US 3690
113018 7590 12/01/2021
Steelcase/ Quarles & Brady LLP
Attn: IP Docket
411 E. Wisconsin Ave.
Ste. 2400
Milwaukee, WI 53202-4428
EXAMINER
BILGRAMI, ASGHAR H
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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):
pat-dept@quarles.com
patents@steelcase.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEWIS EPSTEIN, BRETT KINCAID, HYUN YOO, SUZANNE
STAGE, LUKAS SCHERRER, and LARRY CHENG

Appeal 2020-004820
Application 15/837,658
Technology Center 2600

Before JEAN R. HOMERE, CHRISTA P. ZADO, and
PHILLIP A. BENNETT, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1–28, all of the pending claims.2 Claims
App. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We refer to the Specification filed Dec. 11, 2017 (“Spec.”); the Final
Office Action, mailed Aug. 19, 2019 (“Final Act.”); the Appeal Brief, filed
Jan. 21, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed Apr. 24, 2020
(“Ans.”); and the Reply Brief, filed June 11, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies Steelcase Inc., as the real party-in-interest. Appeal Br. 1.
Appeal 2020-004820
Application 15/837,658

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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system for presenting audiovisual information via a common
display screen in a collaborative workspace using a controller, which allows
meeting participants with a laptop computer to control the presentation of
laptop information on the common display. Spec. ¶ 3. Fig. 1, reproduced
and discussed below, is useful for understanding the claimed subject matter:

Figure 1 above illustrates collaborative workspace configuration 10
including common display 12 configured to display content selected from
display 69 of user laptop 10 via controller 48. Id ¶ 72.

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Application 15/837,658

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Claims 1, 15, and 27 are independent. Claim 1, reproduced below
with disputed limitations emphasized, is illustrative:
1. A method of selecting content from a content source
to be displayed in at least one common presentation space that
is presented by a common display screen in a collaborative
workspace, the method for use with a plurality of content
source devices, each content source device including a device
display screen and presenting content on the device display
screen, the method comprising the steps of:
providing a separate control interface for each of the
plurality of device display screens, each control interface
including at least one selectable control for providing content
on the at least one common presentation space presented on the
common display; and
for each of the control interfaces, when a selectable
control is selected, simultaneously with presenting content on
the device display screen, replicating the content from the
device display screen in the common presentation space
presented on the at least one common display; and
wherein, each source device provides content to the
common display screen upon selection of an associated
selectable control via one of wireless transmission of the
content from the source device and transmission through a
cable linked to the source device.

Appeal Br. 12 (Claims App.) (emphasis added).
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Iwasaki US 2006/0003825 A1 Jan. 5, 2006

3 All reference citations are to the first named inventor only.
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IV. REJECTION
The Examiner rejects claims 1–28 on appeal under 35 U.S.C.
§ 102(a)(2) as being anticipated by Iwasaki. Final Act. 2–10.
V. ANALYSIS
We consider Appellant’s arguments, as they are presented in the
Appeal Brief, pages 5–11 and the Reply Brief, pages 1–6.4 We are
persuaded by Appellant’s contentions as discussed below.
Appellant argues, inter alia, that the Examiner errs in finding that
Iwasaki describes “providing a separate control interface for each of the
plurality of device display screens, each control interface including at least
one selectable control for providing content on the at least one common
presentation space presented on the common display”, as recited in
independent claim 1. Appeal Br. 9–10. In particular, Appellant argues that
the Examiner erroneously combines disparate embodiments of Iwasaki to
support the anticipation rejection. Id. at Reply Br. 2 (citing Iwasaki ¶¶ 5, 6,
122).
In response the Examiner finds the following:
Iwasaki at least in paragraphs 5, 6, 122 and figure 9
teaches this limitation where in a video game scenario like race
car game and golf game data from each player playing the game
is collected, integrated data (common display screen) is
generated and distributed to be displayed at each user game
terminal.

Ans. 4, 7, 10.

4 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are waived. See
37 C.F.R. § 41.37(c)(1)(iv).
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Appellant’s arguments are persuasive of reversible Examiner error.
As an initial matter, Appellant’s argues that the Examiner’s reliance upon
different portions of Iwasaki in the Answer constitutes a new ground of
rejection. Reply Br. 1. Appellant is reminded that concern about a new
ground of rejection is a petitionable, not an appealable matter and is,
therefore, not properly raised before us. See MPEP § 1201 (“The Board will
not ordinarily hear a question that should be decided by the Director on
petition . . . .”). See 37 C.F.R. § 1.181. Accordingly, we do not reach the
issue regarding the Examiner’s alleged new ground of rejection.
As correctly noted by Appellant, paragraphs 5 and 6 relied upon by
the Examiner in Answer pertain to an embodiment in the prior art, whereas
paragraph 122 pertains to an embodiment describing the operation of the
Iwasaki’s match game system (each relied on by the Examiner in making the
anticipation rejection as reproduced above). Reply Br. 2. These multiple
embodiments cannot be combined in making a prima facie case of
anticipation.5 Id. We are constrained by the record before us to find that the
Examiner erred in rejecting claims 1 and 19 based on the Examiner’s

5 In an anticipation rejection, “it is not enough that the prior art reference . . .
includes multiple, distinct teachings that [an ordinary] artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference
must “clearly and unequivocally disclose the claimed [invention] or direct
those skilled in the art to the [invention] without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.” Id. (quoting In re Arkley, 455
F.2d 586, 587 (CCPA 1972)). Thus, while “[s]uch picking and choosing
may be entirely proper in the making of a 103, obviousness rejection . . . it
has no place in the making of a 102, anticipation rejection.” Arkley, 455
F.2d at 587–88.
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reliance on a plurality of different embodiments of Iwasaki to support the
anticipation rejection. Because Appellant shows at least one reversible error
in the Examiner’s obviousness rejection of independent claim 1, we do not
reach Appellant’s remaining arguments. Accordingly, we do not sustain the
Examiner’s rejection of independent claim 1 anticipated by Iwasaki.
Similarly, we do not sustain the rejection of claims 2–28, which also recite
the disputed limitations.
VI. CONCLUSION
We reverse the Examiner’s rejection of claims 1–28.
VII. DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–28 102(a)(2) Iwasaki 1–28

REVERSED