BPAI finds "single unitary computer program" reads on two programs in reference based on Applicant's minimal description of claimed program

Takeaway: On appeal, the Applicant argued that the reference's teleconferencing feature did not anticipate the limitation "single unitrary conference program" because the reference required two separate programs in order to provide the teleconferencing feature. The BPAI found that "single unitary computer program" read on two programs in the reference because the Applicant had almost no description of the program: merely a single rectangle in a figure. "Absent a description of the details of what might be contained in [Applicant's] rectangle 106, we do not see how the present limitations might distinguish over Nakayama ... We fail to see how, for example, the combination of programs depicted in two rectangles (e.g., 100A, 120A) [in the reference] cannot be considered a “single unitary” or “integral” computer conferencing program adapted to real-time communication." (Ex parte Ditzik , BPAI 2012.)

Details:

Ex parte Ditzik
Appeal 2009014097; Appl. No. 11/023,361; Tech. Center 2600
Original Decision:  November 30, 2011
Decision on Rehearing: April 30, 2012

A representative claim on appeal read:

23. A data conferencing system comprising:
a first conferencing computer
...
wherein the first conferencing computer is configured to a personal computer configured to run an operating system, a single unitary computer conferencing program adapted to real-time communication, and a plurality of personal computer application programs ...
(Emphasis added.)

 The Examiner rejected the independent claims as being anticipated by Nakayama. The Applicant amended to add the qualifier "single unitary," and argued that the conferencing function in Nakayama required two programs on a computer: an interlocution object program and an interloction conrol program. Thus, Nakayama did not satisfy the "single unitary" limitation, according to the Applicant.

The Examiner maintained the rejection and disagreed with the Applicant's characterization of the reference. The Examiner asserted that "the only functionality required of Applicants conferencing program is to achieve real-time communication," which Nakayama achieved with the interlocution control program alone. Thus, the "interlocution object program is not necessary for real-time communication."

The Applicant repeated the argument on appeal. The Examiner maintained his position and elaborated on it, explaining that while the did recite a "single unitary computer conferencing program," it did not require that the entire conferencing operation be accomplished with a single program -- only that it be "adapted to real-time communication". The Examiner again asserted that Nakayama's control program performed real-time communication, cited to several specific sections of the reference.

The Board affirmed the rejection, focusing on what "single unitary computer conferencing program" meant in the context of Applicant's disclosure. The Board noted that the claimed program was barely described at all:

The only description of the "realtime tele-writing conferencing program 106" in the written description consists of the words "realtime tele-writing conferencing program 106."
...
Appellant’s disclosure does not describe the actual components that make up the “conferencing
program” 106. A practical application of the “conferencing program” might include various other “programs” that make up the overall conferencing program (e.g., a program for data acquisition and a program for data transfer). Absent a description of the details of what might be contained in rectangle 106, we do not see how the present limitations might distinguish over Nakayama, even if we were to accept all of Appellant’s arguments concerning the operation of the interlocution “control” and “object”
programs of the reference.

The Board further noted that the phrase "single unitary" did not appear at all in the specification, and the Applicant relied solely on one of the figures as the basis for the limitation.

Appellant’s argument reduces to the contention that instant Figure 4B shows one rectangle for program 106 and Nakayama shows two separate rectangles [designated Interlocution Control Program and Interlocution Object Program]. ... [W]e fail to see how, for example, the combination of programs depicted in two rectangles (e.g., 100A, 120A) cannot be considered a “single unitary” or “integral” computer conferencing program adapted to real-time communication.

My two cents: The argument between the Applicant and the Examiner boils down to a "where do you draw the box" argument. The Examiner drew a box around the control program and mapped that to the claimed "conferencing program," then said the reference anticipates because the box meets the limitation "single unitary". The Applicant drew a box around the control program AND the interlocution program and mapped that to the claimed "conferencing program," and said no anticipation because the box does not meet "single unitary."

The Board refused to play this game and said: It doesn't matter where you draw the box in this case. The Applicant did nothing more than label a box with the text "conferencing program." Doing so doesn't give the program a "single unitary" structure.

The Board essentially ignored found the "single unitary" qualifier meaningless given the lack of detail in the Applicant's disclosure.

I see "where do you draw the box" issues in mechanical cases too, but there is usually a lot less room for maneuvering by either side. And I've definitely seen the Board reverse when the Examiner drew the box in a completely arbitrary or nonsensical way. Many computer cases are definitely vulnerable to this sort of rejection.