Ex Parte 5625670 et al

Board of Patent Appeals and Interferences

Dec 20, 2011

90007723 (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.
90/006,491 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.
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Reexamination Control 90/007,723, 90/006,678, 90/006,491
Patent No. 5,625,670

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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.”
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Patent No. 5,625,670

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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
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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.
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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
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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.
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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

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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).

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Reexamination Control 90/007,723, 90/006,678, 90/006,491
Patent No. 5,625,670

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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.
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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
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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
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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
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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
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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).

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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
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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
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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
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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
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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.
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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
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cc:

COUNSEL FOR PATENT OWNER:

William H. Wright
Sturm & Fix LLP
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Des Moines, IA 50309-1109

Brian M. Buroker
Hunton & Williams LLP
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Washington, DC 20006-1109

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Novak Druce Deluca & Quigg
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