Ex Parte Ditzik

Patent Trial and Appeal Board

Jun 23, 2017

13432775 (P.T.A.B. Jun. 23, 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.
13/432,775 03/28/2012 Richard J. Ditzik 44839 9231
23589 7590 06/27/2017
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
MOON, SEOKYUN
ART UNIT PAPER NUMBER
2694
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
patents @ hovey williams, com
amalik @hovey williams .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD J. DITZIK
Appeal 2017-001848
Application 13/432,775
Technology Center 2600
Before ALLEN R. MACDONALD, JEREMY J. CURCURI, and
JOHN R. KENNY, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 22—27, 29, 30, 33, and 35—37. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
Claims 22—27, 29, 30, 33, and 35—37 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Final Act. 13.
Claims 22, 23, 26, 29, 30, 33, 36, and 37 are rejected under 35 U.S.C.
§ 103(a) as obvious overNakayama (US 5,280,583; Jan. 18, 1994). Final
Act. 14—22.
Appeal 2017-001848
Application 13/432,775
Claims 24, 27, and 35 are rejected under 35 U.S.C. § 103(a) as
obvious over Nakayama and Bown (US 4,414,621; Nov. 8, 1983). Final Act.
22-25.
Claim 25 is rejected under 35 U.S.C. § 103(a) as obvious over
Nakayama, Bown, and Jakobs (US 5,892,509; Apr. 6, 1999). Final Act. 25.
We affirm.
STATEMENT OF THE CASE
Appellant’s invention relates to “communication systems used by
individuals for general tele-writing, sketching and drawing of hand written
information, to be transmitted to other individuals via computer systems.”
Spec. 12. Claim 22 is illustrative and reproduced below:
22. A data conferencing system comprising:
a first conferencing computer including:
a first display device adapted to receive a portion of information
from a first graphic input device, the portion of information including
graphic data that is displayed on the first display device;
a first communication device with the first display device and
configured to connect the first conferencing computer to a conferencing
computer external to the first conferencing computer, wherein the first
conferencing computer is configured to a personal computer configured to
run an operating system, a computer conferencing-application program
adapted to real-time communication, and a plurality of personal computer
application programs, and wherein the operating system, an application
program setup, and the computer conferencing-application program are
configured to initialize sequential, with the operating system initializing
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first, the application program setup initializing after the operating system,
and the computer conferencing-application program initializing after the
operating system and the application program setup;
a first display comprising a display screen configured to display
graphic data entered via the first graphic input device and graphic data
received from the external conferencing computer at a data rate necessary
for natural user input, wherein the data conferencing system is configured
such that data communicated between the first conferencing computer and
the external conferencing computer is communicated at real-time, and
wherein the conferencing system is adapted to a linear program structure
having a sequence starting with a system start and continuing through an
operating system boot, loading of windows environment program,
application program setup, selection and initialization of external device
functions, and then later in sequence the conferencing system is adapted to a
parallel program structure wherein the conferencing-application program
and each of the personal computer application programs is adapted to
optionally load at a specific program flow event time and load in any order
from the number of programs present, and wherein the conferencing-
application program and other application programs are run concurrently and
in parallel, under control of the operating system; and
wherein the external conferencing computer is a same type computer
as the first conferencing computer running both application and processing
programs on the first conferencing computer and the external conferencing
computer.
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Application 13/432,775
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). “And while the description requirement does not
demand any particular form of disclosure, or that the specification recite[s]
the claimed invention in haec verba, a description that merely renders the
invention obvious does not satisfy the requirement.” Id. at 1352 (internal
citations omitted).
ANALYSIS
The Written Description Rejection of Claims 22-27,29,30,33, and
35-37
The Examiner finds claims 22—27, 29, 30, 33, and 35—37 fail to
comply with the written description requirement. Final Act. 13.
In particular, the Examiner finds:
As to claim 22, the claim discloses, “wherein the
conferencing-application program and each of the personal
computer application programs is adapted to optionally load at
a specific program flow event time and load in any order from
the number of programs present”, “wherein the conferencing-
application program and other application programs are run
concurrently and in parallel”, and “wherein the external
conferencing computer is a same type computer as the first
conferencing computer running both application and processing
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programs on the first conferencing computer and the external
conferencing computer”. However, the instant specification
does not support the above mentioned claim limitation.
Final Act. 13.
In particular, the Examiner further finds: “As to claim 29, the claim is
rejected for the same reason provided above. The claim further discloses,
‘the external personal computer that is running the same type conferencing-
application program as the first conferencing computer. ’ However, the
instant specification does not support the above mentioned claim limitation.”
Final Act. 13.
Appellant presents the following principal arguments:
i. Appellant’s Figures 4A and 4B and associated description
provide support for the claim limitations that specify the computer
application programs may “optionally load” in “any order” and
“run concurrently.” See App. Br. 15—21 (citing First Declaration of Tal
Lavian, Ph.D (dated March 30, 2013); Second Declaration of Tal Lavian,
Ph.D (dated March 3, 2015)); see also Reply Br. 4—10.
ii. Appellant’s Specification (for example, 115) provides support
for the claim limitations that specify (claim 22) “same type computer” and
(claim 29) “same type conferencing-application program.” See App. Br. 21—
22; see also Reply Br. 10-12.
Regarding argument (i), Appellant’s Figures 4A and 4B disclose “the
sequence of the stored program events during the operation of the computer
workstation.” Spec. 122; see also Figs. 4A and 4B.
Appellant’s Specification, with a key part emphasized, describes:
Following element 96 of FIG. 4B, the user is given the
opportunity of selecting and initializing the memory and I/O
devices 100, which are available to the workstation. The
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required application program or programs are then loaded into
the workstation memory. A wide variety of application
programs could be loaded, including, but not limited to, a
realtime tele-writing conferencing program 106, CAD/CADD
application programs 108, word processing and/or desktop
publishing programs 110, business/finance application
programs 102, and scientific and engineering application
programs 104. The user can exit from the application program
or go to another application setup 112. The user can also either
exit the operating mode 114 or go to the mode of operation
selection element 66. If the exit from the operating mode is
selected, the system stop and power-off switch can be selected.
Spec. 137 (emphasis added).
Accordingly, the Specification describes that a computer application
program or programs are loaded into the workstation memory, and Figure
4B illustrates examples of such program(s) 102, 104, 106, 108, and 110.
The Specification does not, however, describe that the inventor had
possession of the claimed subject matter (claims 22 and 29) “wherein the
conferencing-application program and other application programs are run
concurrently and in parallel, under control of the operating system.” We
agree with and adopt as our own the Examiner’s explanation that “[Fjigure
4B of the instant Application merely corresponds to a sequence of events
occurred in a computer during the operation of the computer ... but does
NOT correspond to a specific flowchart necessary to implement the claimed
functions.” Ans. 18.
At best, the Specification (| 37) states “[t]he required application
program or programs are then loaded into the workstation memory.” The
Specification (| 37) further states “[t]he user can exit from the application
program or go to another application setup 112.” In short, even if we assume
that because of the flow from block 112 to block 96, in some sense, the
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loading of each program is optional and that programs may be loaded in any
order, there is still no indication that the conferencing-application program
and other application programs are run concurrently and in parallel. Put
another way, the depiction of programs 102, 104, 106, 108, and 110 in
parallel in Fig. 4B does not support the claimed (claims 22 and 29) “wherein
the conferencing-application program and other application programs are
run concurrently and in parallel, under control of the operating system”
because there is no explanation that the programs are actually running
concurrently and actually running in parallel. Nor is there any explanation of
how these features are implemented.
Regarding the First Declaration of Tal Lavian, Ph.D (dated March 30,
2013), we agree with the Examiner that the statements in this declaration are
conclusory. See Ans. 18; see also First Declaration of Tal Lavian, Ph.D
(dated March 30, 2013) H 13—14 (“Fig. 4B clearly depicts these application
programs running concurrently and in parallel with the teleconferencing
program 106 under control of the operating system.”).
Regarding the Second Declaration of Tal Lavian, Ph.D (dated March
3, 2015), we agree with the Examiner that
the mere fact that figure 4B shows a parallel program structure
does not mean the parallel program structure shown on figure
4B must have characteristics (i.e., having programs that execute
in parallel or simultaneously and do not interface and depend
on each other for initiation or exiting, and without impacting
the overall program or process) of a parallel program structure
defined by Dr. Lavian.
Ans. 20; see also Second Declaration of Tal Lavian, Ph.D (dated March 3,
2015) H29-33 (discussing parallel program structure defined by Dr.
Lavian) and H 34^40 (discussing flow charts).
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Regarding argument (ii), Appellant’s Specification (| 15) discloses:
“A still further object of this invention is to provide a workstation with
graphic input and output means integrated with two way telephone voice
means, such that real-time teleconferencing is made possible from the same
workstation herein.”
We find this portion of the Specification as filed reasonably provides
support for the claim limitations that specify (claim 22) “same type
computer” and (claim 29) “same type conferencing-application program”
because real-time teleconferencing necessarily involves two (or more)
computers, and a skilled artisan would have understood that this disclosure
is sufficient to support the disputed claim limitations.
Because we find Appellant’s Specification does not support the claim
limitation (recited in claims 22 and 29) “wherein the conferencing-
application program and other application programs are run concurrently and
in parallel, under control of the operating system,” we, therefore, sustain the
Examiner’s rejection of claims 22—27, 29, 30, 33, and 35—37 for failure to
comply with the written description requirement.
The Remaining Rejections
Because we have affirmed the Examiner’s rejection of all the claims,
we decline to reach the merits of the remaining rejections over the prior art.
See, e.g., In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching
rejections based on obviousness when claims already rejected as
anticipated).
In declining to reach the merits of the remaining rejections, we
emphasize that Appellant principally argues the same claim limitation that
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we find lacks written description support. See App. Br. 30—31 (“The
interlocution object programs are shown in parallel with each other, but not
in parallel with the interlocution control program. Therefore, the parallel
program structure of the instant invention is different from the program
structure of Nakayama. Nakayama discloses that the interlocution control
program is used to initiate and control the interlocution object programs.”);
First Declaration of Tal Lavian, Ph.D (dated March 30, 2013) 16—23
(discussing Nakayama); Second Declaration of Tal Lavian, Ph.D (dated
March 3, 2015) Tflf 41—46 (discussing Nakayama); see also Reply Br. 12—17.
ORDER
The Examiner’s decision rejecting claims 22—27, 29, 30, 33, and 35—
37 is affirmed.
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).
AFFIRMED
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