Unify Patente GmbH & Co. KG

Patent Trials and Appeals Board

Mar 22, 2022

2022000559 (P.T.A.B. Mar. 22, 2022)

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. 16/697,813 11/27/2019 Jürgen Brieskorn 2019P00073US-1162 3835 88087 7590 03/22/2022 Unify c/o Buchanan Ingersoll & Rooney PC (SEN) 1737 King Street, Suite 500 Alexandria, VA 22314-2727 EXAMINER VU, VIET D ART UNIT PAPER NUMBER 2448 NOTIFICATION DATE DELIVERY MODE 03/22/2022 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JÜRGEN BRIESKORN, CHARALAMPOS GRIGOROPOULOS, and BRUCE M. SKELDON ________________ Appeal 2022-000559 Application 16/697,813 Technology Center 2400 ________________ Before JAMES R. HUGHES, JOHNNY A. KUMAR, and JOHN A. EVANS, Administrative Patent Judges. KUMAR Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the final rejection of claims 1-17. On March 9, 2022, there was an Oral Hearing. We will add a transcript to the record in due course. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. INVENTION The claimed invention relates to a method of performing a communication and collaboration session, wherein a plurality of participants 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, Unify Patente GmbH & Co. KG, which is an affiliate of Atos SE., is the real party in interest. Appeal Br. 1. Appeal 2022-000559 Application 16/697,813 2 communicate with each other via a WebRTC communication and collaboration system comprising a communication server connected to a plurality of clients used by the participants. Spec. 2, ll. 29-32. Claim 1 is illustrative of the invention and is reproduced below: 1. A computer-implemented method of performing a communication and collaboration session, wherein a plurality of participants communicate with each other via a WebRTC communication and collaboration system comprising a communication server via which a plurality of clients used by the participants are connected to each other, the method comprising the following steps: during the communication session, maintaining a plurality of communication lines between each client of the plurality of clients and a communication server, selecting, during the ongoing communication and collaboration session, by a first participant, a second participant of the communication session, with whom a follow-up conversation needs to be held after the termination of the ongoing communication and collaboration session, sending, during the ongoing communication and collaboration session, a notification about the follow-up conversation to the second participant; terminating the communication and collaboration session by separating all communication lines between each client of the plurality of clients and the communication server, and automatically establishing a communication line between the first participant and the second participant for the follow-up conversation in response to the terminating of the communication and collaboration session. Appeal Br. 24 (Claims App.). REJECTIONS and REFERENCES 1. Claims 1-6, 8, 10-12, 15, and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Plain (US 9,741,257 B1, issued Aug. 22, Appeal 2022-000559 Application 16/697,813 3 2017) in view of Christensen (US 2014/0181696 A1, published June 26, 2014). Final Act. 2-4. 2. Claims 7 and 13-14 are rejected under 35 U.S.C. § 103 as being unpatentable over Plain, Christensen in view of Chatterjee (US 2018/0359207 A1, published Dec. 13, 2018). Final Act. 4. 3. Claims 9 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Plain and Christensen, and further in view of Dhara (US 2012/0079099 A1, published Mar, 29, 2012). Final Act. 4-5. ANALYSIS2 We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2020). We adopt the findings of facts made by the Examiner in the Final Office Action and Examiner’s Answer as our own. We concur with the decision reached by the Examiner in the Examiner’s Answer for the specific reasons discussed below. We highlight the following for emphasis. Independent Claim 1 2 Separate patentability is not argued for claims 2-8, and 10-17. Although separate headings are provided for numerous claims (e.g., claims 15 and 16 referencing claims 17 and 9, respectively), the discussions therein merely repeat or reference the arguments directed to claims 1 and 9. The rejection of these claims turns on our decision as to claims 1 and 9. Except for our ultimate decision, these claims are not discussed further herein. Appeal 2022-000559 Application 16/697,813 4 The Examiner finds that the combination of Plain and Christensen teaches all of the limitations of claim 1. Final Act. 2, 3; Ans. 7-10. Independent claim 1 recites, inter alia, “automatically establishing a communication line between the first participant and the second participant for the follow-up conversation in response to the terminating of the communication and collaboration session.” (hereinafter disputed automatically establishing limitation). Appellant contends that the combination of Plain and Christensen fail to teach “any notification being sent during a session for an automatic establishment of a follow-up session to occur after that session is terminated in response to termination of the session.” Reply Br. 2. Of relevance to the disputed automatically establishing limitation, the Examiner finds in Plain and Christensen: Christensen discloses auto-detecting a participant need or desire to have a (new) conversation or a follow-up conversation based on the user input (see Christensen, par 0044, 0062), wherein the user input could be part of ongoing conversation of a collaborative communication (see Christensen, par 0021, 0026), wherein the (new) conversation or the follow-up conversation would be established automatically after termination of the current conversation (see Christensen, par 0062). Thus, in this case Christensen teaching supports the modification because it would have relieved the user from having to manually schedule the collaboration or conversation session. Ans. 7. Paragraph 62 of Christensen discloses: In some instances, after a conversation is terminated, one or more of the participants, or the originating user, may determine that another conversation is desired. Accordingly, user inputs by the originating user and/or participants can be monitored, in real time, to automatically determine whether Appeal 2022-000559 Application 16/697,813 5 another (e.g., follow-up) conversation is desired, and implement the processes described herein to initiate the other conversation when it is presently appropriate for the other conversation to take place. In this regard, certain participants who opt out of the initial conversation (e.g., participants who were not mandatory to the conversation), can indicate, for example when they opt out of the initial conversation, their availability for one or more later conversations. In doing so, they can specify, via user inputs, any conditions, such as those previously described. The indication of their availability for one or more future conversations, and the conditions, can be processed as contextual information by the conversation module 150 when scheduling any other conversations. Christensen ¶ 62 (emphasis added). In other words, the Examiner equates Christensen’s follow-up conversation feature to the claimed automatically establishing limitation. As an initial matter of claim construction, we turn to the Specification for context, and find no explicit definition for the claim terms “automatically establishing.” Claim 1 (emphasis added). Page 10, lines 14 through 22 of Appellant’s Specification discloses: According to a third option, the participant who has been selected by another participant during a communication and collaboration session for a follow-up one-on-one call right after the ongoing communication and collaboration session will be automatically called as soon as the multi-participant communication and collaboration session has terminated. At the time of terminating the conference when all of the participants are saying goodbyes to one another, as soon as the requestor asks another participant selected for a follow-up one-on-one call and in case this participant does not respond to this request, then, after the conference is over, a call back will be placed immediately and automatically. (emphasis added). Appeal 2022-000559 Application 16/697,813 6 We are guided that, although claim terms are interpreted in light of the specification, we do not read limitations from the specification into the claims. See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571-72 (Fed. Cir. 1988), cert. denied, 488 U.S. 892 (1988) (various limitations on which appellant relied were not stated in the claims; the specification did not provide evidence indicating these limitations must be read into the claims to give meaning to the disputed terms); see also In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In addition, proper claim construction requires a broadest reasonable interpretation consistent with the specification. In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990); see also Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005). Applying the guidance above, we determine “immediately and automatically” are features disclosed in Appellant’s Specification, but are not commensurate with the scope of claim 1. In particular, we determine that “automatically” does not mean “immediately.” Thus, given the absence of a limiting definition in the claim or Specification regarding the disputed automatically establishing limitation, on this record, we are not persuaded the Examiner’s reading is overly broad, unreasonable, or inconsistent with the Specification.5 Based on our review of Christensen and consistent with the Examiner’s stated position (Ans. 7), we interpret the disputed automatically establishing limitation using the broadest reasonable 5 We emphasize that, because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Appeal 2022-000559 Application 16/697,813 7 interpretation consistent with Appellant’s disclosure - to be met by Christensen’s follow-up conversation feature. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). For the reasons discussed above, Appellant’s arguments do not apprise us of error with respect to the Examiner’s findings that the combination of Plain and Christensen teaches the claimed disputed limitation of “automatically establishing a communication line . . . for the follow-up conversation” (claim 1). Appellant’s arguments also focus on the Examiner’s rationale for combining (or modifying) the references. See Appeal Br. 13-16; Reply Br. 1-5. Appellant contends that the references themselves do not include a teaching or suggestion to combine the references and that the Examiner relies on hindsight reconstruction for the motivation to modify the references. See Appeal Br. 13-16; Reply Br. 1-5. But the Supreme Court has rejected such a narrow inquiry in determining obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.”). Rather, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim[s], for a court can take account of the interferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. It is well settled that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. Appeal 2022-000559 Application 16/697,813 8 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). As to Appellant’s arguments to the sufficiency of the Examiner’s rationale for the combination, a rejection based on obviousness need only be supported by “some articulated reasoning with some rational underpinning” to combine known elements in the manner required by the claim. KSR, 550 U.S. at 418. Here, the Examiner found, and we agree: It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Plain with Christensen teachings because it would have enabled a user to initiate a conversation and/or a follow-up conversation with another user without having to setup or schedule the session, i.e., collaboration session will be scheduled in an automatic manner (see Christensen, pars 0044-0045, 0062). Final Act. 3. Appellant has not presented evidence sufficient to persuade us that combining the respective familiar elements of the cited references in the manner proffered by the Examiner would have been “uniquely challenging or difficult for one of ordinary skill in the art” at the time of Appellant’s invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Thus, we are not persuaded that the Examiner erred in combining the cited teachings of Plain and Christensen. The Examiner provided “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appellant has not identified any knowledge relied upon by the Examiner that Appeal 2022-000559 Application 16/697,813 9 was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill in the art at the time of invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Nor has Appellant provided objective evidence of secondary considerations, which “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Based on the foregoing reasons, Appellant has not persuasively demonstrated that the Examiner erred in the obviousness rejection of claim 1. Dependent claim 9 Dependent Claim 9 recites, inter alia, “wherein a predetermined time period at the end of the communication and collaboration session is recorded and transcribed so as to be presented as an agenda in the follow-up conversation.” Appeal Br. 26 (Claims App.) (emphasis added). The Examiner determines and we agree that Plain teaches the recorded and transcribed features of dependent claim 9: [R]ecording the collaborative session as a saved document for later use or sharing by participants (see Plain, col 13, ln 62-66). It would have been obvious to one skilled to recognize that the saved document could have been used in any applicable instances including as a shared document or part of the agenda in the next meeting. The mere fact that the saved file could have been used in a specific application that was not expressly described in Plain does not in any way make it a patentable distinction. It is important to note that other than its content, the saved document provide no “function” to the system or to the agenda which comprises a list of items/topics and documents. Moreover, neither the present claims nor present disclosure describe a specific transcription technique that would allow a saved session to be used as an agenda that prior art transcription couldn’t do. Appeal 2022-000559 Application 16/697,813 10 Ans. 10, 11. Appellant contends that there is no suggestion in the references (Plain and Dhara) “that any portion of the session be recorded to function as an agenda for a follow-up conversation” (Appeal Br. 16) or “any transcription of a portion of a session for use as an agenda” (Appeal Br. 17). As pointed out by the Examiner, however, the intended purpose or result of the recorded and transcribed session of claim 9 does not distinguish the claim from the prior art. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); see also In re Anderson, 662 F. App’x 958, 963 (Fed. Cir. 2016) (“We also agree with the Board that the ‘for use’ claim language is a statement of intended use. The ‘for use’ language does not add a structural limitation to the claimed system or method.”). Accordingly, Appellant has not persuasively demonstrated that the Examiner erred in the obviousness rejection of claim 9. Accordingly, we sustain the Examiner’s rejection of claims 1-17 under 35 U.S.C. § 103(a). Arguments not presented are waived. See 37 C.F.R. § 41.37(c)(1)(iv); see also 37 C.F.R. § 41.41(b)(2). CONCLUSION The Examiner did not err in rejecting claims 1-17 under 35 U.S.C. § 103 over the combined teachings and suggestions of the cited references. Appeal 2022-000559 Application 16/697,813 11 DECISION SUMMARY In summary: TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 8, 10-12, 15, 17 103 Plain, Christensen 1-6, 8, 10- 12, 15, 17 7, 13, 14 103 Plain, Christensen, Chatterjee 7, 13, 14 9, 16 103 Plain, Christensen, Dhara 9, 16 Overall Outcome 1-17