Ex Parte 5436960 et al

Board of Patent Appeals and Interferences

Dec 20, 2011

90007731 (B.P.A.I. Dec. 20, 2011)

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.
90/007,731 09/27/2005 5436960 6082003 8469
803 7590 12/21/2011
STURM & FIX LLP
206 SIXTH AVENUE
SUITE 1213
DES MOINES, IA 50309-4076
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/21/2011 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
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.
90/006,675 06/24/2003 5436960 5436
803 7590 12/21/2011
STURM & FIX LLP
206 SIXTH AVENUE
SUITE 1213
DES MOINES, IA 50309-4076
EXAMINER
WEAVER, SCOTT LOUIS
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/21/2011 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
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.
90/006,533 01/30/2003 5436960 4340
803 7590 12/21/2011
STURM & FIX LLP
206 SIXTH AVENUE
SUITE 1213
DES MOINES, IA 50309-4076
EXAMINER
WEAVER, SCOTT LOUIS
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/21/2011 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 NTP, Inc.
________________

Appeal 2008-004601
Reexamination Control 90/006,533, 90/006,675 and 90/007,731
Patent No. 5,436,9601
Technology Center 3900
________________

Before JAMES T. MOORE, Vice Chief Administrative Patent Judge, and
JAMESON LEE and SALLY C. MEDLEY, Administrative Patent Judges.

Per Curiam
DECISION ON REMAND
NTP, Inc. (“NTP”), the assignee of Patent 5,436,960 under
reexamination, appealed under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 1-89, 183-193 and 195-233. We affirmed-in-part.
(Board Decision, November 10, 2009; “Board Decision”). NTP appealed
the Board Decision and the Federal Circuit vacated-in-part, reversed-in-part
and remanded. In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011). The appeal
is before the Board for further consideration consistent with the court’s
remand.

1 Based on Application 07/702,939, filed on May 20, 1991.
Appeal 2008-004601
Reexamination Control 90/006,533, 90/006,675 and 90/007,731
Patent No. 5,436,960
2

FEDERAL CIRCUIT DECISION
The Federal Circuit determined that the Board incorrectly interpreted
the term “electronic mail message” or “electronic mail.”2 The Federal
Circuit held that the broadest reasonable construction of “electronic mail
message” is a message that has a destination address and the capability for
entry of message content, an identification of an originating processor and a
subject. (NTP, 654 F.3d at 1289).
The Court arrived at this definition by not determining that NTP was
its own lexicographer. Instead, the court determined that “[e]lectronic mail
messages are prior art to the claimed invention” (Id.) and that “a person of
ordinary skill in the art would have recognized that an electronic mail
message must include a destination address and must have the capacity to
include an address of an originating processor, message content (such as text
or an attachment), and a subject.” (Id.). It is the same for electronic mail
since the court determined these two terms to be interchangeable.
Therefore, it is now the law of the case that one of ordinary skill in the
art at the time of NTP’s invention would have understood electronic mail as
including a destination address and must have the capacity to include an
address of an originating processor, message content (such as text or an
attachment), and a subject.
The Federal Circuit also determined that the Board incorrectly
interpreted the term “electronic mail system” as requiring one originating

2 The Federal Circuit regarded “electronic mail” and “electronic mail
message” to be the same by referring to them together as “this term” (NTP,
654 F.3d at 1287-88), and by referring to the claim terms at issue as
“electronic mail message” or “electronic mail” and “electronic mail system”
(Id. at 1287), and then discussing “electronic mail message” but not
discussing “electronic mail.”
Appeal 2008-004601
Reexamination Control 90/006,533, 90/006,675 and 90/007,731
Patent No. 5,436,960
3

processor. The Federal Circuit held that the broadest reasonable
construction of “electronic mail system” must contain a plurality of
originating processors and that the term is defined as “[a] type of
communication system which includes a plurality of processors running
electronic mail programming wherein the processors and the electronic mail
programming are configured to permit communication by way of electronic
mail messages among recognized users of the electronic mail system.”
(NTP, 654 F.3d at 1290-91).
The Federal Circuit reversed the Board’s decisions in other related
cases with respect to several dependent claims. (Id. at 1298-305). That part
of the Federal Circuit’s decision is not relevant to this case. The only prior
art rejections that were affirmed in the Board Decision were based on the
Perkins reference. (Board Decision at 246-247). Thus, we understand that
the Federal Circuit remanded this case for a determination of whether
Perkins describes “electronic mail” and “electronic mail system” as defined
by the court. We find that Perkins does describe “electronic mail” and
“electronic mail system.”
In light of the Federal Circuit’s decision which vacated-in-part the
Board Decision and remanded the case to consider whether Perkins
describes “electronic mail” and “electronic mail system” as defined by the
court, we adopt and incorporate by reference the Board Decision3, except
these parts: (1) claim interpretation of “electronic mail,” “electronic mail
message,” and “electronic mail system”; (2) discussion in which we relied
on the incorrect claim interpretation of “electronic mail,” “electronic mail

3 We also incorporate by reference each of the decisions on rehearing,
mailed on even date herewith, in related Appeal Nos. 2008-001116, 2008-
004603, 2008-004587, 2008-004594, 2008-004602, and 2008-004605.
Appeal 2008-004601
Reexamination Control 90/006,533, 90/006,675 and 90/007,731
Patent No. 5,436,960
4

message,” and “electronic mail system”; and (3) concluding section titled:
“ORDER AND SUMMARY OF DECISION.”

DISCUSSION
In the Board Decision, the rejections of claims (1) 1-2, 8-10, 12-14,
16, 18-19, 25-27, 29-31, 33, 35-36, 42-44, 46-48, 50, 52-53, 59-61, 63-65,
68-75, 81-82 and 85-89 under 35 U.S.C. § 103(a) as unpatentable over
Perkins and Hortensius; (2) 7, 24, 41, and 58 under 35 U.S.C. § 103(a) as
unpatentable over Perkins, Hortensius, patent owner’s admission of prior art
in the ‘960 patent and Quarterman; and (3) 3, 5, 20, 22, 37, 39, 54, 66, 76,
77, 80, 83 and 84 under 35 U.S.C. § 103(a) as unpatentable over Perkins,
Hortensius, and patent owner’s admission of prior art in the ‘960 patent were
affirmed. In each set of rejections, Perkins was relied on for describing
electronic mail and an electronic mail system.
In light of the court’s remand for us to consider whether the applied
prior art such as Perkins describes electronic mail and an electronic mail
system, given the court’s definition of those terms, we find that Perkins does
describe electronic mail and an electronic mail system.
In its discussion of Perkins, the court recognized that Perkins
describes that “[o]ne of the possible types of communications between the
[mobile units (MUs)] is ‘mail’.” (NTP, 654 at 1303). One of ordinary skill
in the art would have recognized that the reference to “mail” in Perkins is
electronic mail. In particular, in the Board Decision, we made the following
findings:
In operation, and with respect to the elements of claim 1,
if the remote user obtains the pseudo-IP address of a registered
MU 10, [footnote omitted] the remote user is enabled to send
Appeal 2008-004601
Reexamination Control 90/006,533, 90/006,675 and 90/007,731
Patent No. 5,436,960
5

messages, such as mail, to the MU 10 (e.g., destination
processor), even if the MU 10 is inactive. (Perkins 7:37-40).
The remote user has associated with it a remote computer (e.g.,
originating processor). (Perkins 8:33-39). The remote user is
not sending paper mail with messages written in ink to mobile
unit 10, but electronic mail. Consequently, the reference to a
mail message refers to an electronic mail message. (Board
Decision at 51:8-15; emphasis in original).

In its decision, the Federal Circuit determined “that a person of
ordinary skill in the art would have recognized that an electronic mail
message must include a destination address and must have the capacity to
include an address of an originating processor, message content (such as text
or an attachment), and a subject.” (NTP, 654 F.3d at 1289). Because
Perkins describes electronic mail as explained in the Board Decision, it
necessarily follows that one of ordinary skill in the art would have
understood that the Perkins electronic mail must include a destination
address and the capability for entry of message content, an identification of
an originating processor, and a subject. Therefore, Perkins describes
electronic mail as that term has been defined by the court.4
The Federal Circuit also determined that “electronic mail system”
includes a plurality of originating processors. (NTP, 654 F.3d at 1290-91).
Perkins describes a plurality of remote users which are a plurality of
originating processors in an electronic mail system. In particular, Perkins
Fig. 3 refers to remote users. We found each remote user to have associated
with it a remote computer, e.g., an originating processor. (Board Decision at
51). Therefore, Perkins describes a plurality of originating processors as

4 Perkins also references the “SMTP” protocol, which utilizes the TCP/IP
network protocol, and was known to be capable of including a sender,
destination, subject, and text. See, e.g Comer, pp. 245 et seq.
Appeal 2008-004601
Reexamination Control 90/006,533, 90/006,675 and 90/007,731
Patent No. 5,436,960
6

part of its electronic mail system. Moreover, the court in its decision
determined that the Perkins system allows bidirectional communications
between mobile units 10 (NTP, 654 F.3d at 1279), and thus the mobile units
may alternatively be considered as a plurality of processors in an electronic
mail system.
Accordingly, the rejection of claims (1) 1-2, 8-10, 12-14, 16, 18-19,
25-27, 29-31, 33, 35-36, 42-44, 46-48, 50, 52-53, 59-61, 63-65, 68-75, 81-82
and 85-89 under 35 U.S.C. § 103(a) as unpatentable over Perkins and
Hortensius; (2) 7, 24, 41, and 58 under 35 U.S.C. § 103(a) as unpatentable
over Perkins, Hortensius, patent owner’s admission of prior art in the ‘960
patent and Quarterman; and (3) 3, 5, 20, 22, 37, 39, 54, 66, 76, 77, 80, 83
and 84 under 35 U.S.C. § 103(a) as unpatentable over Perkins, Hortensius,
and patent owner’s admission of prior art in the ‘960 patent is affirmed for
the reasons stated in the Board Decision, the court’s decision, and for the
additional reasons provided herein.
ORDER AND SUMMARY OF AFFIRMANCES
It is ORDERED that:
1. The rejection of claims 1-2, 8-10, 12-14, 16, 18-19, 25-27, 29-
31, 33, 35-36, 42-44, 46-48, 50, 52-53, 59-61, 63-65, 68-75, 81-82 and 85-
89 under 35 U.S.C. § 103(a) as unpatentable over Perkins and Hortensius is
affirmed.
2. The rejection of claims 7, 24, 41, and 58 under 35 U.S.C. § 103
as unpatentable over Perkins, Hortensius, patent owner’s admission of prior
art in the ‘960 patent, and Quarterman is affirmed.
3. The rejection of claims 3, 5, 20, 22, 37, 39, 54, 56, 66, 76, 77,
80, 83, and 84 under 35 U.S.C. § 103(a) as unpatentable over Perkins,
Appeal 2008-004601
Reexamination Control 90/006,533, 90/006,675 and 90/007,731
Patent No. 5,436,960
7

Hortensius, and patent owner’s admission of admitted prior art in the ‘960
patent is affirmed.
4. The rejection of claims 183-193, 195-202, 204-226, and 228-
233 under 35 U.S.C. § 112, first paragraph, as without written description in
the specification is affirmed.
5. The rejection of claims 203, 227, 232 and 233 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention is affirmed.
Claims 1-3, 5, 7-10, 12-14, 16, 18-20, 22, 24-27, 29-31, 33, 35-37, 39,
41-44, 46-48, 50, 52-54, 56, 58-61, 63-66, 68-77, 80-89, 183-193 and 195-
233 stand rejected.
Claims 4, 6, 11, 15, 17, 21, 23, 28, 32, 34, 38, 40, 45, 49, 51, 55, 57,
62, 67, 78 and 79 stand not rejected.

AFFIRMED-IN-PART
ack

cc:
COUNSEL FOR PATENT OWNER:

William H. Wright
Sturm & Fix LLP
206 Sixth Avenue
Suite 1213
Des Moines, IA 50309-4076

Brian M. Buroker
Hunton & Williams LLP
1900 K Street, NW
Washington, DC 20006-1109

Appeal 2008-004601
Reexamination Control 90/006,533, 90/006,675 and 90/007,731
Patent No. 5,436,960
8

COUNSEL FOR THIRD PARTY REQUESTER:

Novak Druce Deluca & Quigg
1300 Eye Street, NW
Suite 400 East Tower
Washington, DC 20005