Ex Parte 5631953 et al

Patent Trial and Appeal Board

Jul 31, 2014

90012210 (P.T.A.B. Jul. 31, 2014)

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.
90/012,210 04/25/2012 5631953 SAP-0046 3184
96538 7590 07/31/2014
Schmidt LLC
560 Lexington Ave
16th Floor
New York, NY 10022
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/31/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CSB-SYSTEM INTERNATIONAL, INC.
Patent Owner and Appellant
____________

Appeal 2014-003666
Reexamination Control 90/012,210
Patent 5,631,953
Technology Center 3900
____________

Before MAHSHID D. SAADAT, MICHAEL J. STRAUSS, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant CSB-System International, Inc. (“Appellant”) appeals under
35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-8. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306. We heard oral arguments
on June 11, 2014.
We affirm.

STATEMENT OF THE CASE
Introduction
We review the Examiner’s rejections in light of Appellant’s
contentions the Examiner erred. We refer herein to Appellant’s Appeal
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

2
Brief filed August 5, 2013 (“App. Br.”), the Examiner’s Answer mailed
September 18, 2013 (“Ans.”), and Appellant’s Reply Brief filed November
18, 2013 (“Reply Br.”).
U.S. Patent No. 5,631,953 (“the ’953 Patent”) relates to integrating
electronic data processing (“EDP”) systems with telephone systems
connected to a public telephone network (the ’953 Patent 1:7-10).
Claim 1, which is illustrative, reads as follows:
1. A circuit arrangement for integration of EDP
systems in utilization of telephone systems connected to a
public ISDN or Euro ISDN telephone network, the circuit
arrangement comprising a plurality of telephone extensions
which are directly connectable to a telephone network selected
from the group consisting of a public ISDN telephone network
and Euro ISDN telephone network; a first line; an intelligent
telephone system arranged so that said telephone extensions are
connectable with said at least one telephone network through
said first line and said intelligent telephone system; a plurality
of personal computers; an integration element arranged between
said intelligent telephone system and said personal computers,
said integration element receiving signals via at least one
connection element selected from the group consisting of an
SDLC connection element and an ISDN connection element via
a second line from said at least one telephone network via said
intelligent telephone system and sending back signals to said at
least one telephone network, said integration element also
sending a data record assigned an appropriate information via a
third line, via a LAN connected to a LAN server by a fourth
line and via a fifth line to said personal computers and receiving
a data record from said personal computers again; a computing
system; and a software layer arranged so that a conversion of
the signals into a data record and vice versa is carried by said
integration element, by said computing system, by said
software layer and by said at least one connection element with
an internal software.
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

3
Henrik D. Parker (“Third Party Requester”) filed a request for ex
parte reexamination of claims 1-8 of the ’953 Patent on April 24, 2012
(“Request”).1 The real party in interest in this reexamination is Appellant
(App. Br. 1). The ’953 Patent was the subject of litigation styled CSB-Sys.
Int’l, Inc. v. SAP Am., Inc., No. 2:10-cv-2156-RB (E.D. Pa.) (App. Br. 1). In
that litigation, the U.S. District Court for the Eastern District of
Pennsylvania (“District Court”) issued an opinion construing certain claim
terms in the ’953 Patent. See CSB-Sys. Int’l, Inc. v. SAP Am., Inc., No. 2:10-
cv-2156-RB, 2011 WL 3240838 (E.D. Pa. July 28, 2011). The ’953 Patent
expired on May 20, 2014.
Rejections on Appeal
Claim 1 stands rejected under 35 U.S.C. § 102(e) as being anticipated
by Heinzelmann (US 4,866,758; issued Sept. 12, 1989) (see Final Rej. 70-
77).2
Claims 1-6 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Gursahaney (US 5,097,528; issued Mar. 17, 1992) (see Final
Rej. 77-93).
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gursahaney and Dorst (US 5,046,183; issued Sept. 3,
1991) (see Final Rej. 94-95).

1 We do not consider the original request for ex parte reexamination filed by
the Third Party Requester on March 27, 2012, because the replacement
request filed April 24, 2012, supersedes the original request.
2 We note the Final Rejection (Final Rej. 70), Appeal Brief (App. Br. 16),
and Reply Brief (Reply Br. 2) refer to Heinzelmann as U.S. Patent
5,821,877.
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

4
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gursahaney, Dorst, and Okata (US 4,995,073; issued Feb.
19, 1991) (see Final Rej. 96).
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gursahaney, Dorst, and Koshiishi (US 4,652,933; issued
Mar. 24, 1987) (see Final Rej. 96).
Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over IBM CallPath CallCoordinator/2 System Administrator’s
Guide (2d ed. Mar. 1992) (hereinafter “Administrator’s Guide”), IBM
CallPath CallCoordinator/2 User’s Guide (1st ed. July 1992), IBM CallPath
Services Reference for Northern Telecom Meridian 1 PBX Release 1 (1st
ed. Mar. 1992), IBM CallPath Coordinator/2 Server System Administrator’s
Guide (1st ed. July 1992), IBM CallPath Coordinator/2 Archive System
Administrator’s Guide (1st ed. July 1992) (collectively “IBM”), and
Gursahaney (see Final Rej. 96-98).

CLAIM CONSTRUCTION
In reexamination, claims typically are given their broadest reasonable
interpretation consistent with the specification. In re NTP, Inc., 654 F.3d
1279, 1287 (Fed. Cir. 2011). However, in reexamination of an expired
patent, a policy of liberal claim construction favoring validity may be
warranted because the claims of an expired patent cannot be amended. Ex
parte Papst-Motoren, 1 USPQ2d 1655, 1656 (BPAI 1986). Here, the ’953
Patent expired during this appeal, and Appellant had ample opportunity to
amend the claims during the proceedings before the Examiner. Therefore,
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

5
the policy of Papst-Motoren favoring a liberal claim construction of expired
patents did not apply during the proceedings before the Examiner, and
Appellant does not argue such a policy should apply during this appeal
(App. Br. 17 (acknowledging claims are given broadest reasonable
interpretation consistent with the specification)).
Construction of “Directly Connectable”
Appellant argues the term “directly connectable” in claim 1 should be
construed to mean capable of connecting without any intermediary devices
(App. Br. 25). The Examiner finds the term “directly connectable” in claim
1 encompasses devices capable of connecting through an intermediary
device (Ans. 5-7). We note the District Court construed the term “directly
connectable” to mean “can be directly connected,” and thus did not
separately construe the term “directly” in claim 1. CSB-Sys., 2011WL
3240838, at *9.
We agree with the Examiner the phrase “directly connectable” in
claim 1 encompasses devices capable of connecting through an intermediary
device. This construction is supported by the Specification of the ’953
Patent. In particular, the Specification states: “the telephone sets . . . are
directly connected to the public ISDN or Euro ISDN telephone system (1)
via a line (a) and an intelligent telephone installation (3)” (Spec. Abstract
(emphasis added)). The Specification also states: “[w]hen a caller dials a
competent party . . . the connection is made directly through an intelligent
telephone system 3 and a line a to telephone extension 2” (Spec. 4:33-37
(emphasis added)). Thus, the Specification consistently uses the term
“directly” to refer to connections made through an intermediary device,
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

6
thereby indicating the Examiner correctly interpreted the term “directly
connectable” in claim 1. See Phillips v. AWH Corp., 415 F.3d 1303, 1316
(Fed. Cir. 2005) (“The construction that stays true to the claim language and
most naturally aligns with the patent’s description of the invention will be, in
the end, the correct construction.”).
Appellant argues the above-referenced portions of the Specification
are not relevant because they discuss direct connections and claim 1 recites
directly connectable (Reply Br. 18). Appellant’s argument is not persuasive.
Appellant admits the term “directly connectable” in claim 1 refers to the
capability of a direct connection (App. Br. 23). Therefore, the above-
referenced portions of the Specification discussing direct connections are
relevant to construing the term “directly connectable” in claim 1.
Appellant also argues the Examiner’s construction improperly gives
the same meaning to the two different terms, “connectable” and “directly
connectable,” in claim 1 and reads the term “directly” out of the claim (App.
Br. 25). Appellant’s argument is not persuasive. Although different claim
terms are presumed to have different meanings, the presumption can be
overcome based on the written description. See Nystrom v. Trex Co., 424
F.3d 1136, 1143 (Fed. Cir. 2005) (“Different terms or phrases in separate
claims may be construed to cover the same subject matter where the written
description and prosecution history indicate that such a reading of the terms
or phrases is proper.”). Here, the portions of the written description of the
’953 Patent discussed above indicate the Examiner’s construction is
reasonable. Moreover, as the Examiner explains and Appellant does not
persuasively rebut, construing “directly connectable” in claim 1 to
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

7
encompass devices capable of connecting through an intermediary device
does not necessarily result in the terms “directly connectable” and
“connectable” in claim 1 having the same meaning (Ans. 8 (explaining the
term “directly connectable” in claim 1 may require a defined path for the
connection, whereas the term “connectable” in claim 1 may not)).
Construction of “Personal Computer”
Appellant argues the term “personal computer” in claim 1 should be
construed so as to exclude a personal computer operating as a terminal (App.
Br. 27-29). The Examiner finds there is no support for construing the term
“personal computer” in claim 1 to exclude a personal computer operating as
a terminal (Ans. 9-11). We note the District Court construed the term
“personal computer” in claim 1 as follows: “[a] desktop, floor-standing, or
portable microcomputer that usually consists of a system unit, a display
monitor, a keyboard, one or more diskette drives, internal fixed storage, and
an optional printer. A PC is designed to give independent computing power
to a single user.” CSB-Sys., 2011WL 3240838, at *11. The District Court
did not state whether its construction excludes a personal computer
operating as a terminal. Id.
We agree with the Examiner the term “personal computer” in claim 1
encompasses a personal computer operating as a terminal. We conclude
there is no persuasive evidence of record for construing the term “personal
computer” in claim 1 as proposed by Appellant. Appellant argues the
language of claim 1 requires the personal computer to send and receive data
records, and therefore the personal computer cannot be operating as a
terminal (App. Br. 28). However, Appellant points to no evidence indicating
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

8
a personal computer operating as a terminal cannot send and receive data
records. In fact, the prior art of record teaches that a personal computer
operating as a terminal can send and receive data records (see, e.g.,
Gursahaney 6:44-49 (“The gateway 118 will send data from the PBX 120 to
the service representative workstations 100 and 100’ via the local area
network 116. The gateway 118 will receive transfer and conferencing
requests from service representative workstations 100 and 100’ . . . ”
(emphasis added)). Further, the portions of the written description of the
’953 Patent cited by Appellant (App. Br. 28) do not indicate the term
“personal computer” in claim 1 excludes a personal computer operating as a
terminal.
Construction of “LAN Server”
Appellant argues the term “LAN server” in claim 1 should be
construed to mean a computer providing shared services to other
components on the Local Area Network (“LAN”) and responding to requests
from clients (App. Br. 30). The Examiner finds there is no support for
construing the term “LAN server” in claim 1 to include such limitations
(Ans. 11-12). We note the District Court construed the term “server” in
claim 1 as follows: “a computer on the Local Area Network (LAN) that
responds to requests from telephone software and provides shared services
to the personal computers/workstations in response to queries from clients.”
CSB-Sys., 2011WL 3240838, at *14.
For purposes of this appeal, we need not decide whether the term
“LAN server” in claim 1 includes the limitations proposed by Appellant.
Appellant admits the limitations in its proposed construction are all inherent
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

9
features of a server on a LAN (App. Br. 32; Reply Br. 21-22). As such,
Appellant admitted during the oral hearing, if a prior art reference teaches a
server on a LAN, it necessarily teaches all the limitations in Appellant’s
proposed construction (Tr. 12:19-23). As discussed below, we find the
Heinzelmann and Administrator’s Guide references expressly teach a server
on a LAN and thus, by Appellant’s admission, teach the “LAN server”
recited in claim 1. Further, as discussed below, we find Gursahaney teaches
the “LAN server” in claim 1 even under Appellant’s proposed construction,
because the host computer in Gursahaney provides shared services to other
components on the LAN and responds to requests from clients.
Construction of “Data Record”
Appellant argues the term “data record” in claim 1 should be
construed to mean a set of data by which information is electronically sent
from the integration element to the personal computer and back, and by
which information is queried from a database by a client using a personal
computer (App. Br. 33). The Examiner finds the term “data record” in claim
1 means a set of data by which information is electronically sent (Ans. 13),
and identifies where each of the references (i.e., Heinzelmann, Gursahaney,
and the Administrator’s Guide) teach the data record under that construction
(Final Rej. 75, 76, 83, 84, 96). We note Appellant’s proposed construction
is the same as the District Court’s construction of the term “data record” in
claim 1. CSB-Sys., 2011WL 3240838, at *16.
For purposes of this appeal, we need not decide whether the term
“data record” in claim 1 includes the limitations proposed by Appellant.
Appellant does not explain why any of the references relied on by the
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

10
Examiner (i.e., Heinzelmann, Gursahaney, and the Administrator’s Guide)
do not teach the “data record” in claim 1 under the Examiner’s or
Appellant’s proposed construction. Appellant suggests the menu image
taught by Gursahaney is not the “data record” recited in claim 1, but fails to
provide any reasoning or evidence to support that argument (App. Br. 55).
Therefore, we are not persuaded the Examiner erred in finding the
Heinzelmann, Gursahaney, and Administrator’s Guide references teach the
“data record” in claim 1, even under Appellant’s proposed construction.

PRIOR ART REJECTIONS
Anticipation of Claim 1 by Heinzelmann
Appellant argues Heinzelmann does not teach a plurality of telephone
extensions which are directly connectable to a telephone network because
Heinzelmann teaches telephones connected to a telephone network through a
private branch exchange (“PBX”) (App. Br. 37). Appellant’s argument is
not persuasive. As discussed above, we agree with the Examiner the term
“directly connectable” in claim 1 encompasses devices capable of a
connection through an intermediary device. Appellant does not dispute
Heinzelmann teaches the claim limitation at issue under the Examiner’s
construction of “directly connectable” in claim 1.
Appellant argues Heinzelmann does not teach at least one connection
element selected from the group consisting of an SLDC connection element
and an ISDN connection element because Heinzelmann does not teach an
ISDN signaling protocol between the PBX and the phone management
server (App. Br. 44). Appellant’s argument is not persuasive. As the
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

11
Examiner explains (Ans. 18), Heinzelmann teaches, in an ISDN, the Digital
Communications Protocol (“DCP”) signaling protocol is the CCITT-defined
Q.931 protocol (Heinzelmann 6:3-8). As the Examiner also explains (Final
Rej. 74), Heinzelmann teaches the phone management server communicates
with the PBX using the appropriate DCP (Heinzelmann 5:2-4). Therefore,
we agree with the Examiner (Ans. 20) the phone management server
includes an ISDN connection element because Heinzelmann teaches the
phone management server will communicate with the PBX using the
appropriate DCP signaling protocol for an ISDN.
Appellant argues Heinzelmann does not teach a LAN server because
Heinzelmann teaches away from using a LAN server to integrate an EDP
system and a telephone system (App. Br. 47-48). Appellant’s argument is
not persuasive. Heinzelmann indicates a LAN server alone does not
integrate voice transmission capabilities (Heinzelmann 2:4-6). However, as
the Examiner explains (Ans. 24), Heinzelmann explicitly teaches a LAN
server is part of the invention. For example, Heinzelmann states:
The description of the present invention which follows is
directed to the technique of locally associating a telephone
connected to an AT&T System . . . and a personal computer
(PC) or minicomputer connected to a separate AT&T
STARLAN PC Local Area Network (PC-LAN) in order to
provide a phone management server application.
(Heinzelmann 2:59-68). Therefore, we agree with the Examiner that
Heinzelmann teaches a LAN server.3

3 We note, contrary to Appellant’s argument (App. Br. 48), claim 1 does not
require the LAN server to be arranged between the integration element and
the personal computers.
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

12
Appellant argues Heinzelmann does not teach an EDP system because
Heinzelmann does not show a shared database associated with the LAN
server (App. Br. 49). Appellant’s argument is not persuasive. The
Examiner explains (Ans. 26) Heinzelmann teaches an AT&T STARLAN PC
Local Area Network (PC-LAN) allowing personal computers to access
“shared” directories and files (Heinzelmann 1:63-68). As discussed above,
this LAN is part of the invention disclosed in Heinzelmann. Therefore, we
agree with the Examiner that Heinzelmann teaches a shared database
associated with a LAN server.4
Accordingly, we sustain the Examiner’s rejection of claim 1 as being
anticipated by Heinzelmann.
Anticipation of Claims 1-6 by Gursahaney
Appellant argues Gursahaney does not teach a plurality of telephone
extensions which are directly connectable to a telephone network because
Gursahaney teaches telephones connected to a telephone network through a
PBX (App. Br. 51). Appellant’s argument is not persuasive. As discussed
above, we agree with the Examiner the term “directly connectable” in claim
1 encompasses devices capable of a connection through an intermediary
device. Appellant does not dispute Gursahaney teaches the limitation at
issue under the Examiner’s construction of “directly connectable” in claim 1.
Appellant argues Gursahaney does not teach a plurality of personal
computers because the personal computers in Gursahaney are operating as

4 As a result, we need not decide whether the “EDP system” recited in the
preamble of claim 1 is a substantive limitation to be afforded patentable
weight.
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

13
terminals (App. Br. 53-54). Appellant’s argument is not persuasive. As
discussed above, we agree with the Examiner the term “personal computer”
in claim 1 encompasses personal computers operating as terminals.
Appellant does not dispute Gursahaney teaches the claim limitation at issue
under the Examiner’s construction of “personal computer” in claim 1.
Appellant argues Gursahaney does not teach a LAN server because
the host computer in Gursahaney cited by the Examiner is not a server (App.
Br. 64). Appellant’s argument is not persuasive. Although Gursahaney does
not expressly contain the word “server,” Gursahaney teaches a host
computer that performs all the functions Appellant contends are necessary
for a computer to be a server. As the Examiner explains (Final Rej. 84), the
workstations (or clients) on the LAN can request shared services, in the form
of caller-specific information, from the host computer via the LAN
(Gursahaney 4:45-48 (“The workstation 100, under program control,
automatically accesses host applications running on the host 200, to provide
caller-specific information to the service representative.”); id. at Fig. 26A).
Therefore, we agree with the Examiner that Gursahaney teaches the “LAN
server” in claim 1, even under Appellant’s proposed construction.
Accordingly, we sustain the Examiner’s rejection of claims 1-6 as
being anticipated by Gursahaney.
Obviousness of Claims 1-6 over Gursahaney and Dorst
The Examiner cites to Dorst as teaching a telephone capable of
connecting to a telephone network without any intermediary devices (Final
Rej. 95), as required by Appellant’s proposed construction of “directly
connectable” in claim 1. As discussed above, we disagree with Appellant’s
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

14
proposed construction of “directly connectable” in claim 1, and we sustain
the Examiner’s rejection of claims 1-6 as anticipated by Gursahaney.
Nonetheless, we agree with the Examiner’s finding Dorst teaches a
telephone capable of connecting to a telephone network without any
intermediary devices.
Appellant argues Dorst teaches an enhanced telephone, whereas the
“telephone extensions” recited in claim 1 of the ’953 Patent must be simple
telephone extensions without multi-functions (App. Br. 70). Appellant’s
argument is not persuasive. Claim 1 recites “telephone extensions,” and we
are not persuaded the portion of the written description of the ’953 Patent
cited by Appellant (App. Br. 70) requires limiting the term “telephone
extensions” in claim 1 to simple telephone extensions without multi-
functions. Moreover, Appellant’s argument only addresses the references
individually, not the combination cited by the Examiner. See In re Keller,
642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.”). The Examiner cites to Gursahaney as
teaching the “telephone extensions” recited in claim 1 of the ’953 Patent
(Ans. 36-37). The Examiner cites to Dorst only to show it would have been
well-known to one of ordinary skill in the art at the time of the invention that
telephone extensions are capable of being connected to a telephone network
without intermediary devices (Ans. 36-37). Therefore, Appellant’s
argument does not address the combined teachings of the references as they
apply to the disputed claim limitation.
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

15
Appellant argues the Examiner does not show one of ordinary skill in
the art could use the enhanced telephone taught by Dorst in the system
taught by Gursahaney (App. Br. 70-71). However, “[t]o justify combining
reference teachings in support of a rejection it is not necessary that a device
shown in one reference can be physically inserted into the device shown in
the other.” In re Keller, 642 F.2d at 425. “[T]he test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” Id. For at least this reason, Appellant’s argument is not
persuasive.
Accordingly, we sustain the Examiner’s rejection of claims 1-6 as
being unpatentable over Gursahaney and Dorst.
Obviousness of Claims 7-8 over Gursahaney, Dorst, and Okata
Appellant argues the Examiner erred procedurally by not making the
necessary factual findings to support an obviousness rejection (App. Br. 72-
74). Specifically, Appellant argues the Examiner adopted the reasons set
forth by the Third Party Requestor, which are mere conclusions (App. Br.
73). Appellant’s argument is not persuasive. The Examiner adopted the
reasoning of the Third Party Requestor (Ans. 38-39), which explains the
scope and content of Gursahaney, Dorst, and Okata, identifies the teachings
of Okata that compensate for the deficiencies in Gursahaney and Dorst, and
provides support for the conclusion that incorporating the known fax
capabilities of Okata into the system of Gursahaney would yield predictable
results (Request 135-137). Therefore, we find the Examiner provided
articulated reasoning with some rational underpinning that the cited
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

16
combination would have been obvious to one of ordinary skill in the art. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Accordingly, we sustain the Examiner’s rejection of claims 7 and 8 as
being unpatentable over Gursahaney, Dorst, and Okata.
Obviousness of Claims 7-8 over Gursahaney, Dorst, and Koshiishi
With respect to the combination of Gursahaney, Dorst, and Koshiishi,
Appellant presents the same argument addressed above regarding the
combination of Gursahaney, Dorst, and Okata (App. Br. 72-74). For the
reasons discussed above, Appellant’s argument is not persuasive.
Accordingly, we sustain the Examiner’s rejection of claims 7 and 8 as
being unpatentable over Gursahaney, Dorst, and Koshiishi.
Obviousness of Claims 1-8 over IBM and Gursahaney
Appellant argues there is a lack of foundation for the Administrator’s
Guide because the Third Party Requester does not explain where the
document was found or who provided the document and because it is an
incomplete photocopy (App. Br. 75-77). The Administrator’s Guide
indicates it is an IBM document intended to provide information to assist the
person responsible for installing and configuring the CallCoordinator/2
system (Administrator’s Guide iii). Appellant does not provide any
persuasive evidence indicating the Administrator’s Guide is not what it
purports to be on its face. See NTP, 654 F.3d at 1296 (“NTP had the burden
to prove the document was not authentic.”). The copy of the
Administrator’s Guide provided by the Third Party Requestor includes pages
i-xii and 1-10 in their entirety, but lacks the remaining pages (see
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

17
Administrator’s Guide). However, Appellant does not explain why the
missing pages are necessary to understand the available portions of the
reference, nor does Appellant suggest the missing pages contradict the
available portions of the reference. See In re Enhanced Sec. Research, LLC,
739 F.3d 1347, 1356 (Fed. Cir. 2014). Therefore, Appellant’s argument is
not persuasive.
Appellant argues the Examiner does not establish the Administrator’s
Guide is a printed publication because there is no evidence it could have
been accessed by one of ordinary skill in the art (App. Br. 78-81). Appellant
points to electronic searches performed by Appellant purportedly showing
the document could not be located in the IBM Publication Center, the
Library of Congress, or the Public Catalog of the U.S. Copyright Office
(App. Br. 81). Appellant’s argument is not persuasive. As the Examiner
explains (Ans. 40-41), the Administrator’s Guide indicates it was completed
in March 1992, and it would have been available for order through an IBM
representative or local IBM branch (Administrator’s Guide ii). Thus, the
Administrator’s Guide, on its face, indicates one of ordinary skill in the art
in this field would have been able to access a copy by ordering it from IBM.
The Administrator’s Guide also appears to be a bound document, indicating
it was a final version available for ordering, not a draft (see Administrator’s
Guide). Appellant’s evidence that the document could not be located using
three electronic searches performed in 2012 (see App. Br. Ex. 12-14) does
not persuade us that one of ordinary skill in the art could not access the
document, such as by ordering it from IBM, in March 1992.
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

18
Appellant argues the Examiner does not establish when the
Administrator’s Guide was accessible by the public because the March 1992
date on the document may indicate when the document was written, not
when it was available to the public (App. Br. 82). Appellant’s argument is
not persuasive. As discussed above, on its face, the Administrator’s Guide is
a final version marked with the date March 1992, and could have been
ordered from IBM. Appellant’s argument that the document may not have
been publicly available in March 1992 is based on speculation (see, e.g.,
App. Br. 82 (“Beta-testing of the software may have been ongoing or the
software could have been held up for debugging.” (emphasis added)), not
evidence. Cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An
assertion of what seems to follow from common experience is just attorney
argument and not the kind of factual evidence that is required to rebut a
prima facie case of obviousness.” (citations omitted)).
Appellant argues the Administrator’s Guide does not teach a plurality
of personal computers because the personal computers in the
Administrator’s Guide are operating as terminals (App. Br. 87-88).
Appellant’s argument is not persuasive. As discussed above, we agree with
the Examiner the term “personal computer” in claim 1 encompasses personal
computers operating as terminals. Appellant does not dispute the
Administrator’s Guide teaches the claim limitation at issue under the
Examiner’s construction of “personal computer” in claim 1.
Appellant argues the Administrator’s Guide does not teach a LAN
server because a host application may reside on the LAN server disclosed in
the Administrator’s Guide (App. Br. 90-91). According to Appellant, the
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

19
claims make clear the LAN server in the claimed integrated system plays no
part in the control of information (App. Br. 91). Appellant’s argument is not
persuasive. Claim 1 simply recites “a LAN connected to a LAN server.”
Claim 1 does not limit the types of applications that can reside on the LAN
server. As such, we agree with the Examiner (Ans. 47-48) that the
Administrator’s Guide teaches the “LAN server” recited in claim 1
(Administrator’s Guide Fig. 1).
Accordingly, we sustain the Examiner’s rejection of claims 1-8 as
being unpatentable over IBM and Gursahaney.
Proposed Claim Amendments
Appellant explains the Examiner refused to enter certain claim
amendments and argues the claim amendments should be considered on
appeal (App. Br. 92). The issue of whether the Examiner’s refusal to enter
an amendment after final rejection constitutes an abuse of discretion is a
matter remedied by petition, and thus is not before this panel on appeal. In
re Mindick, 371 F.2d 892, 894 (CCPA 1967).

DECISION
The Examiner’s rejection of claim 1 as being anticipated by
Heinzelmann is affirmed.
The Examiner’s rejection of claims 1-6 as being anticipated by
Gursahaney is affirmed.
The Examiner’s rejection of claims 1-6 as being unpatentable over
Gursahaney and Dorst is affirmed.
Appeal 2014-003666
Patent 5,631,953
Reexamination Control 90/012,210

20
The Examiner’s rejection of claims 7 and 8 as being unpatentable over
Gursahaney, Dorst, and Okata is affirmed.
The Examiner’s rejection of claims 7 and 8 as being unpatentable over
Gursahaney, Dorst, and Koshiishi is affirmed.
The Examiner’s rejection of claims 1-8 as being unpatentable over
IBM and Gursahaney is affirmed.

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

msc

For Patent Owner:

SCHMIDT LLC
560 LEXINGTON AVE
16TH FLOOR
NEW YORK, NY 10022

For Third Party Requestor:

WOODCOCK WASHBURN LLP
CIRA CENTRE, 12TH FLOOR
2929 ARCH STREET
PHILADELPHIA, PA 19104