STEELCASE INC.Download PDFPatent Trials and Appeals BoardDec 1, 20212020004820 (P.T.A.B. Dec. 1, 2021) Copy Citation 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 2 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. Appeal 2020-004820 Application 15/837,658 3 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. Appeal 2020-004820 Application 15/837,658 4 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). Appeal 2020-004820 Application 15/837,658 5 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. Appeal 2020-004820 Application 15/837,658 6 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 Copy with citationCopy as parenthetical citation