Ex Parte 5388101 et al

Board of Patent Appeals and Interferences

Feb 22, 2012

90010383 (B.P.A.I. Feb. 22, 2012)

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.
90/010,383 01/09/2009 5388101 5822-00100 9465
35617 7590 02/23/2012
DAFFER MCDANIEL LLP
P.O. BOX 684908
AUSTIN, TX 78768
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/23/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EON Corp. IP Holdings, LLC1,
Appellant and Patent Owner
____________

Appeal 2011-008301
Reexamination Control No. 90/010,383
Patent 5,388,1012
Technology Center 3900
____________

Before JAMESON LEE, SCOTT R. BOALICK, and KEVIN F. TURNER,
Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL
EON Corp. IP Holdings, LLC, Appellant, appeals under 35 U.S.C. §§
134(b) and 306 from a final rejection of claims 19 and 20. Claims 1-20 are
pending, with claims 1-18 confirmed. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We REVERSE.

1 EON Corp. IP Holdings, LLC is the Patent Owner and the real party in
interest (App. Br. 1).
2 Issued February 7, 1995, to Gilbert M. Dinkins.
Appeal 2011-008301
Reexamination Control No. 90/010,383
United States Patent 5,388,101

2
STATEMENT OF THE CASE3
This proceeding arose from a request for ex parte reexamination filed
by Robert Greene Sterne and Jonathan Tuminaro on behalf of an unknown
third party requester on January 9, 2009 of United States Patent 5,388,101
(the '101 Patent), based on U.S. Patent Application 07/966,414, filed
October 26, 1992.
The '101 Patent was asserted in cases styled EON Corp. IP Holdings,
LLC v. Sensus USA Inc. et al., CA No. 6:09-cv-00116 (E.D. Tex.
2009)(hereinafter “Sensus case”); and EON Corp. IP Holdings, LLC v.
Verizon Clinton Center Drive Corp. et al., Civil Action No. 6:08-cv-00385
(E.D. Tex. 2008)(hereinafter “Verizon case”) (App. Br. 22), where the
former case is apparently ongoing and the latter case is settled. The '101
Patent was also asserted in, at least, cases styled Verizon Clinton Center
Drive Corp. v. EON Corp., CA No. 1:09-cv-0823 (D. Del. 2009); and
Verizon Clinton Center Drive Corp. v. EON Corp., CA No. 1:10-cv-0179
(D. Del. 2010), where the Office was not notified of those proceedings.
Appellant is reminded on their ongoing duty to keep the Office abreast of
related proceedings.
We heard oral arguments from a representative of Appellant on
August 3, 2011, a transcript4 of which is part of the record.

3 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 7, 2010), Supplemental Appeal Brief (“Supp. Br.,”
filed September 13, 2010), and Reply Brief (“Reply Br.,” filed February 14,
2010), and the Examiner’s Answer (“Ans.,” mailed December 14, 2011).
Appeal 2011-008301
Reexamination Control No. 90/010,383
United States Patent 5,388,101

3
CLAIMED INVENTION
Appellant’s invention relates to an interactive two-way data service
network for conveying synchronously timed digital messages point to point
throughout a network (col. 1, ll. 8-10).
Independent claims 19 and 20 are the only claims rejected in the
instant reexamination:
19. An interactive video data system comprising:
subscribers with portable subscriber units and facilities
for communicating from the subscriber units when moved
through different geographic zones, and
a set of subscriber units limited to digital processing
facilities comprising digital transducers and means for
transmitting digital data derived by said transducers.

20. An interactive video data system comprising:
subscribers with portable subscriber units and facilities
for communicating from the subscriber units when moved
through different geographic zones,
a base station of defined geographic area for serving a
set of said subscriber units, said area is subdivided into a
plurality of zones, and receive only stations located in said
zones for reception of transmissions from subscriber units
located in the respective zones, and
facilities in said base station and subscriber units for
handing off communications between zones when
communicated signals deteriorate below a given threshold.

4 Record of Oral Hearing (hereinafter Oral Hr’g Tr.)
Appeal 2011-008301
Reexamination Control No. 90/010,383
United States Patent 5,388,101

4
REJECTION
Based on the rejection maintained in the Answer5, the prior art
references relied upon by the Examiner in rejecting the claims are:
Cunningham 4,144,496 Mar. 13, 1979
Martinez 4,928,177 May 22, 1990

The Examiner rejected the claims on the following basis, which was
maintained in the Answer:
 Claims 19 and 20 under 35 U.S.C. § 103(a) as being unpatentable
over Martinez and Cunningham (Ans. 5).
Appellant relies upon the following evidence in rebuttal to the
Examiner’s rejections:
 Declaration of Dr. Jay Kesan, dated October 7, 2009, (App. Br.,
Evidence Appx., Exhibit 2).
 Declaration of Dr. Jay Kesan, dated July 9, 2010, (App. Br., Evidence
Appx., Exhibit 3).
 The New IEEE Standard Dictionary Of Electrical and Electronics
Terms 1392 (Inst. of Elec. and Elec. Eng’r, Inc. 5th ed. 1993) (App.
Br., Evidence Appx., Exhibit 1).
 Memorandum Opinion & Order, dated August 11, 2010 from the
Verizon case (Supp. Br., Evidence Appx., Exhibit 4).
 Order, dated May 17, 2010 from the Verizon case (Supp. Br.,
Evidence Appx., Exhibit 5).
 Memorandum Opinion & Order, dated August 11, 2010 from the
Sensus case (Supp. Br., Evidence Appx., Exhibit 6).

5 In the Final Office Action, the Examiner also rejected the claims in
additional rejections, which were subsequently withdrawn in the Answer
(Ans. 3-4).
Appeal 2011-008301
Reexamination Control No. 90/010,383
United States Patent 5,388,101

5
ISSUE
Appellant raises numerous arguments as to whether Martinez and
Cunningham render the instant claims obvious (App. Br. 9-15; Reply Br. 2-
12), some of which we discuss below. We have considered in this decision
only those arguments that Appellant actually raised in the Briefs.
Arguments which Appellant could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
The issue arising from the respective positions of Appellant and the
Examiner is:
Did the Examiner err in finding that claims 19 and 20 were rendered
obvious over Martinez and Cunningham under 35 U.S.C. § 103?

FINDINGS OF FACT
1. The '101 Patent discloses an interactive two-way data service
network for conveying synchronously timed digital messages point
to point throughout the network (col. 1, ll. 8-10).
2. The Specification of the '101 Patent provides that a set of local
remote stationary receivers (20A-20N) are positioned each into
locations within cell areas (22A-22X), to serve mobile units (4, 4',
4'', 4'''), with each local remote stationary receiver connected to the
base station repeater (3) to provide interactive video a reduced
transmission power levels (col. 5, l. 54 – col. 6, l. 4; Fig. 2).
3. The Specification of the '101 Patent provides that the software
control data processor (54) performs a set-up algorithm to establish
Appeal 2011-008301
Reexamination Control No. 90/010,383
United States Patent 5,388,101

6
communications between the mobile units (4, 4', 4'', 4'''), the local
base station repeater (3), and the local remote stationary receivers
(20A-20N) (col. 8, ll. 16-62; col. 9, ll. 14-25; Figs. 2, 6B, 9A).
4. In the '101 Patent, the setup procedure is important for hand-off of
the portable unit from one site to another as fringe areas are
encountered (col. 8, ll. 63-67). The signal strength measurement
serves as a criterion for hand-off, with the cell directing the
subscriber into a set-up routine when signals fall below a threshold
(col. 9, ll. 7-10).
5. Martinez is directed to two-way data broadcast networks utilizing a
conventional broadcast signal and a narrow band return link
communication (Abs.). The network is also applicable to mobile
terminals (54), where those terminals communicate in range of a
radio net central receiver (28) (col. 3, 53-58, col. 6, ll. 59-64; Fig.
1).
6. Cunningham is directed to a mobile communication system which
allows for communication with multiple mobile stations (160) in
sectionalized geographical service areas, or sectors (A1-A3, B1-
B3) (Abs.; Fig. 2). When a mobile station passes from one sector
to another, and suffers a loss of communication, and the
communication must be reestablished in the new sector (col. 24, ll.
44-48). After it has been determined that the mobile unit is
moving into a particular sector, a channel is assigned to the
Appeal 2011-008301
Reexamination Control No. 90/010,383
United States Patent 5,388,101

7
established call in that sector, on the same or different channel
(col. 26, ll. 14-20, 31-34).

PRINCIPLES OF LAW
“To render a later invention unpatentable for obviousness, the prior art
must enable a person of ordinary skill in the field to make and use the later
invention.” In re Kumar, 418 F.3d 1361, 1369 (Fed. Cir. 2005) (citing
Beckman Inst., Inc., v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir.
1989) and In re Payne, 606 F.2d 303, 314-15 (CCPA 1979)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

ANALYSIS
While the Examiner acknowledges the Supplemental Appeal Brief
(Ans. 2), the Examiner does not appear to address the content therein, nor
some of the specific arguments in the Appeal Brief. Appellant has argued
that the “facilities for” limitations in claims 19 and 20 should be interpreted
as means-plus-function limitations (Supp. Br. 8). Appellant also cited the
claim construction of those limitations by the District Court, which found
that “the use of ‘facilities’ here is inadequate to connote structure capable of
Appeal 2011-008301
Reexamination Control No. 90/010,383
United States Patent 5,388,101

8
performing the claim function” (Supp. Br. 6), and argues that we should treat
those limitations as means-plus-function limitations (App. Br. 13-14; Reply
Br. 11-12). We agree.
“[C]laim elements without express step-plus-function language may
nevertheless fall within 112 6 if they merely claim the underlying function
without recitation of acts for performing that function.” Seal-Flex, Inc. v.
Athletic Track and Court Constr., 172 F.3d 836, 850 (Fed. Cir. 1999)
(Radar, J., concurring). We find that the claims limitations reciting
“facilities for” in claims 19 and 20 recite functions without reciting acts or
structure for performing those functions. We acknowledge that M.P.E.P.
§ 2181 relieves the Examiner of the duty of pronouncing that § 112, sixth
paragraph, has not been invoked; however, we find it incumbent on the
Examiner to respond to the arguments recited in the Briefs.
To the extent that the Examiner responds to arguments in the Appeal
Brief, the Examiner finds Appellant’s interpretation of the “facilities for”
limitation to be unduly narrow, and that interpreting those limitations to
involve set-up and response associated with a broadcast and acknowledge
mechanism “is not required to reasonably interpret the claims” (Ans. 8).
However, as we find those limitations to be means-plus-function limitations,
that is exactly what we must do, as discussed below.
With respect to “facilities for communicating from the subscriber
units when moved through different geographic zones,” from claim 19, we
find that the corresponding structure is the mobile units, including software
which provides a set-up algorithm as disclosed in Fig. 6B (FF 3-4). With
Appeal 2011-008301
Reexamination Control No. 90/010,383
United States Patent 5,388,101

9
respect to “facilities in said base station and subscriber units for handing off
communications between zones when communicated signals deteriorate
below a given threshold,” from claim 20, we find that the corresponding
structures are the local base station repeater and the mobile units, including
software which allows for hand-off based on the criterion of signal strength
and which provides a set-up algorithm as disclosed in Fig. 6B (FF 3-4).
Appellant has also admitted that the “facilities for” limitations in claims 19
and 20 require a “setup and response sequence associated with a broadcast
and acknowledge mechanism,” and that the combination of Martinez and
Cunningham would have to teach or suggest such a limitation to render the
claims obvious (Oral Hr’g Tr. 5-6). We do not find that the combination, as
asserted in the rejection, does so.
As Appellant argues, Martinez does not disclose mobile subscriber
units which communicate in different zones or which provide for
communication when passing between zones (App. Br. 12, FF 5).
Cunningham provides for zones and mobile units passing between zones (FF
6), but does not disclose a set-up and response from the mobile units when a
changeover occurs. Instead, Cunningham provides that when a sector
change occurs, the call is reestablished without subscriber intervention, and
a central control unit tunes the moved mobile unit to the same or different
channel within the new sector (id.). As such, we agree with Appellant that
“[b]oth Martinez and Cunningham fail to suggest any type of set-up and
response sequence or associated broadcast and acknowledge mechanism”
Appeal 2011-008301
Reexamination Control No. 90/010,383
United States Patent 5,388,101

10
(App. Br. 13), and cannot teach or suggest all of the elements of claims 19
and 20.

CONCLUSION
We conclude that the Examiner erred in finding that claims 19 and 20
were rendered obvious over Martinez and Cunningham under 35 U.S.C.
§ 103.

DECISION
We reverse the Examiner’s decision to reject claims 19 and20.

REVERSED

ack

cc:

FOR PATENT OWNER:
DAFFER MCDANIEL LLP
P.O. BOX 684908
AUSTIN TX 78768

FOR THE THIRD PARTY REQUESTOR:
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, NW
WASHINGTON, DC 20005