Ex Parte 5436960 et alDownload PDFBoard of Patent Appeals and InterferencesDec 20, 201190007731 (B.P.A.I. Dec. 20, 2011) Copy Citation 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 Copy with citationCopy as parenthetical citation