Ex Parte 5625670 et alDownload PDFBoard of Patent Appeals and InterferencesDec 20, 201190007723 (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. 90/006,491 12/26/2002 5625670 9464 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. 90/006,678 06/24/2003 5625670 5441 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. 90/007,723 09/16/2005 5625670 6082.003 5019 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 2008-004605 Reexamination Control 90/007,723, 90/006,678 and 90/006,491 Patent No. 5,625,6701 Technology Center 2600 ________________ Before JAMES T. MOORE, Vice Chief Administrative Patent Judge, JAMESON LEE and SALLY C. MEDLEY, Administrative Patent Judges. Per Curiam DECISION ON REMAND On August 1, 2011, the Court of Appeals for the Federal Circuit vacated-in-part and reversed-in-part our decision of December 11, 2009 (“2009 Board Decision”) 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 remand. The case initially arose when NTP, Inc. (“NTP”), the assignee of Patent 5,625,670 under reexamination in the United States Patent and Trademark Office, appealed to the Board from a final rejection of claims 1-276 and 555-606. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(b). 1 Based on Application 08/443,430, filed on May 18, 1995. Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 2 The Federal Circuit (1) ruled that the Board’s interpretation of the claim term “electronic mail” or “electronic mail message” was incorrect,2 (2) ruled that the Board’s interpretation of the claim term “electronic mail system” was incorrect, (3) stated the broadest reasonable interpretation of the claim terms, and (4) instructed the Board to apply the correct claim construction to the prior art. The Federal Circuit held that the broadest reasonable construction of “electronic mail” or “electronic mail message” is “a message that has a destination address and also the capability for entry of message content, an identification of an originating processor, and a subject.” In re NTP, 654 F.3d at 1288. The Federal Circuit determined that the inventors did not act as their own lexicographers when discussing what constitutes a message from an electronic mail system. In re NTP. 654 F.3d at1289. The Federal Circuit held 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. The same is true for “electronic mail” which the Federal Circuit regarded as the same as “electronic mail message.” Thus, it is law of the case that one of ordinary skill in the art would have understood electronic mail as including a destination address and 2 The Federal Circuit regarded the terms “electronic mail” and “electronic mail message” to be the same. The Federal Circuit referred to them jointly as “this term” See NTP at 1287. The Federal Circuit noted that the claim terms at issue are “electronic mail” or “electronic mail message,” and “electronic mail system,” id., and limited its discussion to “electronic mail message” and not both “electronic mail message” and “electronic mail.” Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 3 having the capacity to include an address of an originating processor, a message content such as text or attachment, and a subject. The Federal Circuit interpreted “electronic mail system” and determined that it “must” contain a plurality of “originating processors.” In re NTP, 654 F.3d at 1290. The court also stated more generally that the broadest reasonable construction of “electronic mail system” is: [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. Id. Our understanding is that the above-noted interpretation by the Federal Circuit does not require the plurality of originating processors to send electronic mail to each other, so long as they are configured to permit communication by electronic mail between users on those processors and other recognized users of the system. The Federal Circuit further concluded: (1) substantial evidence does not support the Board’s finding that Telenor discloses what is required by certain dependent claims-- that the interface “assembles the originated information with other originated information received from a plurality of the originating processors . . . into a packet,” see In re NTP, 654 F.3d at 1301-02; and (2) substantial evidence does not support the Board’s finding that Telenor discloses what is required by certain Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 4 dependent claims – that the interface “[remove] from the originated information information added by the electronic mail system . . . .” See In re NTP, 654 F.3d at 1302. We understand that for the above-stated reasons, the rejection of claims 5, 19, 25, 29, 30, 33, 35, 39, 61, 81, 85, 89, 91, 95, 117, 123, 129, 135, 137, 140, 143, 146, 149, 152, 155, 158, 161, 164, 167, 170, 175, 179, 183, 187, 189, 192, 195, 198, 201, 204, 207, 210, 213, 216, 219, and 222 under 35 U.S.C. § 102(b) as anticipated by Telenor has been reversed by the Federal Circuit. Given our reviewing court’s conclusions and instructions, we have reviewed the 2009 Board Decision3 and herein adopt it and incorporate it by reference except for: 1. Its incorrect claim interpretations of “electronic mail,” “electronic mail message,” and “electronic mail system.” 2. Its discussion specifically relying on the incorrect claim interpretation of “electronic mail,” “electronic mail message,” and “electronic mail system.” 3. Its discussion in the context of rejections based at least in part on Verjinski, with regard to the claim feature of also sending other originated information from an originating processor to a destination processor without using the RF information transmission network, in support of the conclusion 3 We also incorporate by reference each of the decisions on rehearing, mailed on even date herewith, in related Appeal Nos. 2008-004601, 2008- 004603, 2008-004587, 2008-001116, 2008-004594, and 2008-004602. Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 5 that the claimed invention as a whole would have been prima facie obvious even without a reference teaching that feature. 4. Its concluding section titled: “ORDER AND SUMMARY OF DECISION.” 5. Its discussion in support of the rejections which have been reversed by the Federal Circuit, i.e., (1) the rejection of claims 1-276 under 35 U.S.C. § 103 for obviousness over Appellant’s own admitted prior art, Harrison, and Shoch, and (2) the rejection of claims 5, 19, 25, 29, 30, 33, 35, 39, 61, 81, 85, 89, 91, 95, 117, 123, 129, 135, 137, 140, 143, 146, 149, 152, 155, 158, 161, 164, 167, 170, 175, 179, 183, 187, 189, 192, 195, 198, 201, 204, 207, 210, 213, 216, 219, and 222 under 35 U.S.C. § 102(b) as anticipated by Telenor ’89. We assume that the reader is familiar with the 2009 Board Decision, and merely cite to certain parts thereof. For underlying support of the cited portions, attention is directed to the original 2009 Board Decision. Admitted Prior Art, Harrison, and Shoch We understand that our affirmance of the Examiner’s rejection of claims 1-276 under 35 U.S.C. § 103 over Appellant’s own admitted prior art, Harrison, and Shoch was reversed by the Federal Circuit. Perkins We determined in the 2009 Board Decision that Perkins discloses information transmission between a wired network and mobile units in wireless communication with the wired network. (Page 100, lines 22-25). We also determined in the 2009 Board Decision that Perkins discloses that a Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 6 type of message sent from a user to a mobile unit is mail. (Page 104, lines 4- 5). We stated in the 2009 Board Decision (Page 104, lines 6-14): In that context, the remote user is not sending paper mail with messages written in ink to mobile unit 10, but electronic mail. Consequently, the reference to “mail” refers to electronic mail. It is implicit that the electronic device that the remote user employs to send the electronic mail has sufficient processing power to send electronic mail messages according to the protocols described in Perkins. If not, Perkins could not reasonably state, with respect to its disclosed communication system and protocols, that the remote user is enabled to send messages such as mail. (Emphasis added.) Because the Federal Circuit determined that one of ordinary skill would have understood “electronic mail” as including a destination address and having the capacity to include an address of an originating processor, a message content such as text or attachment, and a subject, Perkins’ electronic mail is understood to include each of those components.4 With regard to the Federal Circuit’s determination that an “electronic mail system” must include a plurality of originating processors, the 2009 Board Decision included a determination that there are a plurality of remote users in Perkins’ wired network and accounted for the plurality of originating processors in an electronic mail system (Page 104, line 20 to Page 105, line 3): Because each originating processor enables and provides for the creation or putting together of an electronic mail message and sending the message for routing to an intended recipient, the collection of originating processors, one per remote user, 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 No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 7 together constitutes an electronic mail system. (Emphasis in original.) In that regard, the 2009 Board Decision (Page 109, lines 19-21) also stated: As we have explained in the findings above, the processor used by each remote user in Perkins constitutes an originating processor and there is a plurality of originating processors because there is a plurality of remote users. (Perkins Figure 2). The electronic mail sent by the originating processor constitutes originated information. Furthermore, as is explained in the findings above, the plurality of originating processors together constitute an electronic mail system. Whatever programming is used by the originating processors to send electronic mail to a user of the system is all the electronic mail programming required. Beyond that, as we have determined in the 2009 Board Decision (Page 112, lines 22-23), no “specialized” programming is necessary on the originating processors to meet the claim feature of an electronic mail system. The 2009 Board Decision (Page 100, lines 22-25) determined that Perkins discloses bidirectional communication between the remote users in the wired network and the mobile units in wireless communication with the wired network. Each of the mobile units is not only a destination processor but also an originating processor. In that regard, the 2009 Board Decision determined (Page 107, lines 13-18): The collection of mobile units 10 associated with each header station together with the associated header station constitutes an electronic mail system. Alternatively, all of the header stations and mobile units served by each LAN together constitute an electronic mail system. (Emphasis in original). Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 8 That addressed the requirement of independent claims 1 and 57 that the destination processors are contained in an electronic mail system. Claims 173, 174, 177, 178, 181, 182, 185, 186, 189, 198, 207, and 216 all require the originating processor from which the originated information is transmitted to be contained in any one of “a plurality of electronic mail systems.” That limitation is met by Perkins because there are at least two electronic mail systems, one formed by the wired network including the processors of the remote users and one formed by the mobile units and the header stations. The originating processor is contained in one of a plurality of electronic mail systems. Verjinski With respect to the requirement of the sending of electronic mail, the 2009 Board Decision determined (Page 77, 17-29): Verjinski discusses the sending of electronic mail by a military commanding officer as a remote user on the internet to a field officer as a portable host. (Verjinski 0809:1-25). The 2009 Board Decision further determined (Page 78, lines 3-11): When the commanding officer decides to send an email message to the field officer, the commanding officer’s computer sends a query to the DDNS for the current IP address of the field officer’s portable PC and the DDNS returns the temporary IP address of the portable PC. (Verjinski 0809:9- 12). Then the commanding officer’s SMTP [Simple Mail Transfer Protocol] implementation connects to the portable host and communicates with the SMTP on the portable host for sending the email in a SMTP mail session. (Verjinski 0809:12- 14). Once the SMTP mail session is complete, the field officer reads the email. (Verjinski 0809:14-16). Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 9 Because the Federal Circuit determined that one of ordinary skill would have understood “electronic mail” or “electronic mail message” as including a destination address and having the capacity to include an address of an originating processor, a message content such as text or attachment, and a subject, Verjinski’s described mail, email, and email message would have been understood by one with ordinary skill as including such components. Verjinski is not concerned with paper mail but electronic mail. Even the transfer protocol used is that for electronic mail, i.e., SMTP which stands for Simple Mail Transfer Protocol.5 With regard to the requirement that an “electronic mail system” must include a plurality of originating processors configured to permit communication by electronic mail messages among recognized users of the system, the 2009 Board Decision determined (Page 76, lines 16-23): Similarly, although only one remote host is illustrated in Figure 1, it is understood that there are a plurality of remote hosts on the internet which may desire sending a message to the portable host. Verjinski describes that as a result of its technology, remote hosts can initiate connections to portable hosts (Verjinski 0806 1:16-17), that the PHAC routes packets between remote hosts on the internet and portable hosts (Verjinski 0807:1:12-14), and that domain name queries for portable hosts come from remote hosts through the local gateway to the DDNS. (Verjinski 0807:1:21-23). When discussing the embodiment of a commanding officer in a military scenario, the 2009 Board Decision determined (Page 77, lines 19-22): It is understood that there may be multiple such persons [commanding officer] on a plurality of remote hosts wanting to 5 Which was known to be capable of including a sender, destination, subject, and text. See, e.g Comer, pp. 245 et seq. Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 10 send an electronic mail message to the field officer on a portable host. Thus, the plurality of remote hosts are a plurality of originating processors configured with the necessary programming to permit communication by electronic mail message from the remote hosts connected via internet and serving commanding officers to a portable host serving a field officer. Collectively, the interconnected remote hosts constitute an electronic mail system. In that regard, the 2009 Board Decision determined (Page 78, lines 17-21): [B]ecause the commanding officer’s SMTP mail program implementation on a computer enables the composition and sending of an electronic mail message to a portable host, a number of such computers together constitute an electronic mail system containing a plurality of originating processors. Independent claims 1 and 57 and claims dependent thereon each require a plurality of destination processors contained in an electronic mail system. Claims 116, 122, 128, and 134 do not depend on either claim 1 or claim 57 but also require the destination processors to be contained in an electronic mail system, and one that is different from an electronic mail system containing a plurality of originating processors. The portable hosts in Verjinski, however, are not described as having a capability of sending electronic mail. Instead, they make connection through a PHAC only to receive electronic mail sent from a remote host. The portable hosts as destination processors are not themselves originating processors. Thus, Verjinski does not describe a plurality of destination processors contained in an electronic mail system. If they are a part of an Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 11 electronic mail system it would be the same one containing the remote hosts, but the claims require an interface which connects the electronic mail system containing the originating processors to the RF information transmission network. That arrangement cannot be met by regarding the one electronic mail system as also containing the portable hosts. Claims 116, 122, 128, and 134 further require the electronic mail system containing the destination processors to be different from that containing the originating processors. Accordingly, the rejection of claims 3, 5, 9, 13, 17, 25, 34, 35, 36, 38, 39, 59, 61, 65, 69, 73, 81, 90, 91, 92, 94, 95, 116, 122, 128, and 134, based on Verjinski, cannot be sustained. Claims 175, 179, 183, 187, 190, 191, 196, 197, 199, 200, 205, 206, 208, 209, 214, 215, 217, 218, 223 and 224 all require the originating processor from which the originated information is transmitted to be contained in any one of “a plurality of electronic mail systems.” That limitation is not met by Verjinski. Given our reviewing court’s ruling on what constitutes an electronic mail system, the portable hosts do not form an electronic mail system and the remote hosts are not described as belonging to a plurality of electronic mail systems. The rejection of those claims based on Verjinski cannot be sustained. Finally, with regard to all of the claims rejected for obviousness at least in part over Verjinski, we note the Federal Circuit’s determination (Slip Op. at 32-33) that without an additional prior art reference teaching the sending of other originated information by wireline from an originating processor to a destination processor without using the RF transmission network, a conclusion of obviousness is incorrect. All of the claims on Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 12 appeal includes such a feature and none of the obviousness rejections based at least in part on Verjinski includes a prior art reference teaching the feature. Accordingly, none of the obviousness rejections based in part on Verjinski can be sustained. Telenor Each of claims 19, 29, 30, 33, 39, 85, 89, 95, 137, 140, 143, 146, 149, 152, 155, 158, 161, 164, 167, 170, 189, 192, 195, 198, 201, 204, 207, 210, 213, 216, 219, and 222 requires an interface which removes from the originated information information added by the electronic mail system. It is our understanding that our affirmance in the 2009 Board Decision of the Examiner’s rejection of these dependent claims under 35 U.S.C. § 102(b) as anticipated by Telenor was reversed by the Federal Circuit. Each of claims 5, 25, 35, 61, 81, 91, 117, 123, 129, 135, 175, 179, 183, and 187 requires an interface which assembles the originated information with originated information received from a plurality of the originating processors into a packet. It is our understanding that our affirmance in the 2009 Board Decision of the Examiner’s rejection of these claims was reversed by the Federal Circuit. With regard to the rest of the claims which were rejected by the Examiner under 35 U.S.C. § 102(b) as anticipated by Telenor, the 2009 Board Decision had determined, in the alternative, that Telenor discloses transmission of electronic mail messages which include a destination address, an originating address, a subject, and message content. In lines 1-7 on page 52 of the 2009 Board Decision, it is stated: In any event, at least some messages handled by the MDN, when considered as including both the mandatory and Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 13 optional header, contain all four parts of what NTP asserts must be included in an electronic mail message. For instance, the PDU from a FT to an MDX has (1) a content portion, (2) a mandatory header including a Unique Message identifier and (3) the Originator Address, and (4) an optional header which includes the Recipient Address. (Telenor ’89, Vol. 3, p. 31, ll. 1-21). The 2009 Board Decision, from page 49, line 3, to page 50, line 24, includes the following findings: Telenor ’89 discloses that the PDU from an MDX to a FT has a content portion and has a mandatory header including a Unique Message Identifier, the Originator address, and the Recipient Address. (Telenor ’89, Vol. 3, p. 30, ll. 6-19). Telenor ’89 discloses that the PDU from a FT to an MDX has a content portion, has a mandatory header including a Unique Message identifier and the Originator Address, and an optional header which includes the Recipient Address. (Telenor ’89, Vol. 3, p. 31, ll. 1-21). Telenor ’89 discloses that the PDU from an MDX to a NA has a content portion and a mandatory header including a Unique Message identifier, the originator Address, and the Recipient Terminal’s Address. (Telenor ’89, Vol. 3, p. 32, ll. 1- 32). Telenor ’89 discloses that the PDU from a NA to an MDX has a content portion, a mandatory header including a Unique Message Identifier and Originator’s Terminal Address, and an optional header including the Recipient Address. (Telenor ’89, Vol. 3, p. 33, ll. 1-30). Telenor ’89 discloses that the PDU between the MDXs and between an MDX and a MIWU has a content portion, a mandatory header including a Unique Message Identifier and Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 14 the Originator Address, and an optional header including the Recipient Address. (Telenor ’89, Vol. 3, p. 37, ll. 1-26). Messages originating from an MHS and passed through to the MDN through a MIWU contain an envelope portion and a content portion. (Telenor ’89, Vol. 8, p. 6, sec. 2.4.). The envelope information are data such as originator, recipient, content type, content length, and message identifier. (Telenor ’89, Vol. 8, pp. 33-37, sec. 7.2). And on page 65, lines 9-14, the 2009 Board Decision stated: The messages passing through a MIWU to the MDN from the MHS constitute electronic mail messages because they contain an envelope portion and a content portion. (Telenor ’89, Vol. 8, p. 6, sec. 2.4). The envelope information are data such as originator, recipient, content type, content length, and message identifier. (Telenor, Vol. 8, pp. 33-37, sec. 7.2). The 2009 Board Decision regarded a message identifier as an indicator of the subject of the message. NTP had not argued otherwise. With regard to the Federal Circuit’s claim interpretation that an “electronic mail system” must include a plurality of originating processors running electronic mail programming to permit communication by way of electronic mail messages among recognized users of the electronic mail system, the 2009 Board Decision determined on page 44, lines 1-6: In the MDN architecture, the terminals are up to 100,000 mobile stations (MS) and up to 5,000 fixed terminals (FT), and the network nodes are: 1 Operation and Management Center (OMC), up to 50 Mobile Data Exchanges (MDX), up to 500 Network Adapters (NA) each of which controls up to 50 Base Stations (BS), and up to 20 MHS Interworking Units (MIWU). (Telenor ’89, Vol. 1, p. 2). Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 15 The 2009 Board decision also determined (page 55, lines 4-7) that an MDX together with its plurality of associated fixed terminals (FT) constitute an electronic mail system because the plurality of fixed terminals as originating processors within the same MDX can send electronic mail messages to each other through the common MDX. In that regard, we have noted above how a message from a FT to an MDX and vice versa can include all four elements that are required in an electronic mail message per the claim interpretation adopted by the Federal Circuit. Thus, Telenor also meets the electronic mail system recitation of the claims. Whatever programming used to enable sending of electronic mail messages to and from the fixed terminals is all the programming necessary for the claims. Beyond that, as we stated in the 2009 Board Decision (page 55, lines 7-10), the Examiner need not establish “special” programming. The MHS also constitutes an electronic mail system. There are multiple users in the MHS, each of which can send a message through a connected MIWU to a recipient in the MDN. (Telenor Vol. 1, Pages 45-47). Thus, an MHS includes a plurality of originating processors and either with or without the connecting MIWU constitutes an electronic mail system. Telenor discloses bidirectional communication between the fixed terminals and the mobile stations (Vol. 1, Figure 2; 6:6-7, 25:2-3). Thus, each of the mobile stations MS is not only a destination processor but also an originating processor. The collection of mobile stations communicating with an associated base station constitutes an electronic mail system. Alternatively, all of the mobile stations associated with all of the base stations together constitute an electronic mail system. That addresses the Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 16 requirement of independent claims 1 and 57 and claims dependent thereon, as well as claims 116, 122, 128, and 134, that the destination processors are contained in an electronic mail system. Claims 173-189, 192, 195, 198, 201, 204, 207, 210, 213, 216, 219, 222, and 224-276 all require the originating processor from which the originated information is transmitted to be contained in any one of “a plurality of electronic mail systems.” That limitation is met by Telenor because each MDX together with its associated fixed terminals constitutes an electronic mail system, thus forming a plurality of electronic mail systems. Also, there is at least an additional electronic mail system formed by the mobile stations and their associated base stations. The originating processor is contained in one of a plurality of electronic mail systems. Cole In light of the Federal Circuit’s remand order, we have reviewed the 2009 Board Decision with regard to the anticipation rejection of claims 1-4, 8, 24, 28, 34, 38, 57-60, 64, 80, 84, 90, 95, 113-116, 119-122, 125-128, 131- 134, 173, 174, 177, 181, 182, 185, and 186, while keeping in mind our reviewing court’s claim interpretation of electronic mail message and electronic mail system. No change to our discussion and analysis in the 2009 Board Decision of the anticipation rejection over Cole is required. Before the Board, NTP did not assert that Cole does not disclose the sending and receiving of electronic mail messages. NTP did not contend that the messages relied on by the Examiner in meeting the electronic mail message recitation in the claims do not constitute electronic mail messages. In the context of the rejection over Cole, what constitutes an electronic mail Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 17 message was a non-issue. In any event, in the Introduction section (Cole 249:1:28-30), Cole states: “We are concentrating on electronic mail as a representative application because the standards are well established.” Cole further notes that there are many types of messages and that mail is just one type of message. (Cole 251:2:13-15). In that regard, the Federal Circuit stated that one of ordinary skill in the art would have understood electronic mail as including a destination address and must have the capacity to include an address of an originating processor, a message content such as text or attachment, and a subject. That is what Cole discloses. With regard to the Federal Circuit’s claim interpretation that an “electronic mail system” must include a plurality of originating processors running electronic mail programming to permit communication by way of electronic mail messages among recognized users of the electronic mail system, the 2009 Board Decision accounted for a plurality of such originating processors in each electronic mail system relied on in Cole. For instance, on page 35, lines 1-5, the 2009 Board Decision determined: The left-most MTA with its own UAs constitutes an electronic mail system including a plurality of originating processors. The UAs in that MTA can send electronic mail to each other through that MTA. Therefore, the MTA and its local UAs constitute an electronic mail system, and the UAs are originating processors contained in that electronic mail system. The 2009 Board Decision further determined (Page 31, lines 9-12) that Cole discloses that a UA both sends and receives messages. Accordingly, each UA is not only a destination processor but also an originating processor. The portable destination processors associated with the right-most MTA in Cole’s Figure 1 thus are contained in an electronic Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 18 mail system including the right-most MTA, satisfying the requirement of independent claims 1 and 57 and claims dependent thereon, as well as claims 116, 122, 128, and 134, that the plurality of destination processors are contained in an electronic mail system. Claims 173, 174, 177, 181, 182, 185 and 186 all require the originating processor from which the originated information is transmitted to be contained in any one of “a plurality of electronic mail systems.” That limitation is met by Cole. The 2009 Board Decision determined (Page 39, line 8 to Page 40, line 8): As is earlier discussed, the originating processor is one of the UAs in the left-most MTA, and the left-most MTA together with its attached UAs collectively constitute one electronic mail system. There was no occasion to discuss the middle MTA. However, in the context of the requirement in independent claims 173, 17[7], 181, and 185 of a second electronic mail system, it is noted that the middle MTA together with its attached UAs constitutes a second electronic mail system just like the left-most MTA with its attached UAs. Although Figure 1 illustrates no UAs attached to the middle MTA, their existence is implied in light of the description in Cole, discussed above, that “[a] number of User Agents will be attached to one MTA.” (Cole 250:1:21-22). In any event, the right-most MTA together with its attached UAs also constitutes an electronic mail system, as is the case with the left-most MTA with its attached UAs. Thus, either the left-most MTA and the middle MTA, together with their attached UAs, constitute a plurality of electronic mail systems, or the left-most MTA and the right-most MTA, together with their attached UAs, constitute a plurality of electronic mail systems. In either case, a plurality of originating processors is contained in one of the plurality of electronic mail systems, as claimed, and the right-most MTA is Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 19 still an interface between an electronic mail system and an RF information transmission system, as claimed. ORDER AND SUMMARY OF DECISION It is ORDERED that: 1. The rejection of claims 1, 19, 21-23, 29, 31-33, 57, 75, 77-79, 85, 87-89, 95, 97-99, 113, 114, 119, 120, 125, 126, 131, 132, 137, 146, 155, 164, 173, 174, 177, 178, 181, 182, 185, 186, 189, 198, 207, and 216 under 35 U.S.C. § 103 as obvious over Perkins and Hortensius is affirmed. 2. The rejection of claims 3, 9, 17, 34, 36, 38, 39, 59, 65, 73, 90, 92, 94, 95, 116, 122, 128, and 134 under 35 U.S.C. § 103 as obvious over Verjinski is reversed. 3. The rejection of claims 5, 25, 35, 61, 81, 91, 175, 179, 183, and 187 under 35 U.S.C. § 103 as obvious over Verjinski and the inventors’ own admitted prior art is reversed. 4. The rejection of claims 117, 123, 129, and 135 under 35 U.S.C. § 103 as obvious over Verjinski and the inventors’ own admitted prior art is reversed. 5. The rejection of claims 13 and 69 under 35 U.S.C. § 103 as obvious over Verjinski, Gehlot, and Rodriguez is reversed. 6. The rejection of claims 190, 191, 196, 197, 199, 200, 205, 206, 208, 209, 214, 215, 217, 218, 223, and 224 under 35 U.S.C. § 103 as obvious over Verjinski and DeVaney is reversed. 7. The rejection of claims 138, 139, 144, 145, 148, 153, 154, 157, 162, 163, 165, 166, 171, and 172 under 35 U.S.C. § 103 as obvious over Verjinski and DeVaney is reversed. Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 20 8. The rejection of 1-4, 8, 24, 28, 34, 38, 57-60, 64, 80, 84, 90, 95, 113-116, 119-122, 125-128, 131-134, 173, 174, 177, 181, 182, 185, and 186 under 35 U.S.C. § 102(b) as anticipated by Cole is affirmed. 9. The rejection of claims 1-4, 6, 8-18, 23-24, 26, 28, 34, 36, 38, 43-60, 62, 64-75, 79-80, 82, 84, 90, 92, 94, 99-116, 118-122, 124-128, 130- 134, 136, 144, 173, 174, 176-178, 180-182, 184-186, 188, and 224-276, 555-566, and 571-606 under 35 U.S.C. § 102(b) as anticipated by Telenor ’89 is affirmed. 10. The rejection of claims 555, 557-562, 577-580, 597, and 598 under 35 U.S.C. § 112, first paragraph, as without written description in the specification is affirmed. Claims 1-4, 6, 8-19, 21-24, 26, 28, 29, 31-34, 36, 38, 43-60, 62, 64- 75, 77-80, 82, 84, 85, 87-90, 94, 95, 97-116, 118-122, 124-128, 130-134, 136, 137, 144, 146, 155, 164, 173, 174, 176-178, 180-182, 184-186, 188, 189, 198, 207, 216, 224-276, 555-566, and 571-606 stand rejected. Claims 5, 7, 20, 25, 27, 30, 35, 37, 39-42, 61, 63, 76, 81, 83, 86, 91- 93, 96, 117, 123, 129, 135,138-143, 145, 147, 148-154, 156-163, 165, 166- 172, 175, 179, 183, 187, 190-197, 199-206, 208-215, 217-223, and 567-570 stand not rejected. AFFIRMED-IN-PART ack Appeal No. 2008-004605 Reexamination Control 90/007,723, 90/006,678, 90/006,491 Patent No. 5,625,670 21 cc: COUNSEL FOR PATENT OWNER: William H. Wright Sturm & Fix LLP 206 Sixth Avenue Suite 1213 Des Moines, IA 50309-1109 Brian M. 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