Ex Parte 5819172 et al

Board of Patent Appeals and Interferences

Dec 20, 2011

90006493 (B.P.A.I. Dec. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/007,735 09/28/2005 5819172 6082.003 2498
803 7590 12/21/2011
STURM & FIX LLP
206 SIXTH AVENUE
SUITE 1213
DES MOINES, IA 50309-4076
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/21/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/006,680 06/24/2003 5819172 5439
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.
90/006,493 12/26/2002 5819172 9467
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 2008-004602
Reexamination Control 90/006,493, 90/006,680 and 90/007,735
Patent No. 5,819,1721
Technology Center 3900
________________

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 November 10, 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 5,819,172 under reexamination in the United States Patent and
Trademark Office, appealed to the Board from a final rejection of claims 1-
223 and 295-317. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(b).

1 Based on Application 08/844,957, filed on April 23, 1997.
Appeal No. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

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 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 In re 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. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

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 processors. In re NTP, 654
F.3d at 1290. The court stated 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 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.
Given our reviewing court’s conclusions and instructions, we have
reviewed the 2009 Board Decision3 and adopt it and incorporate it by
reference except for:
1. Its incorrect claim interpretations of “electronic
mail,” “electronic mail message,” and “electronic mail system,”
and the discussion and conclusions relying on them.

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 2008-004605.
Appeal No. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

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2. Its concluding section titled: “ORDER AND
SUMMARY OF DECISION.”
Telenor
With regard to claims 213, 218, and 221-223, 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 37 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
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 34, line 3, to page 35, 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).

Appeal No. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

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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
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).

The 2009 Board Decision treated 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 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, the 2009 Board Decision determined on page 28, lines 19-24:
Appeal No. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

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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).

The fixed terminals associated with each MDX form the required plurality of
originating processors in an electronic mail system. In that connection, the
2009 Board Decision stated on page 39, lines 16-21:
That part of the MDN represented by the network of
MDXs, including each MDX’s assigned fixed terminal[s], is
an electronic mail system because the messages transferred
from one terminal to another in the MDN are electronic mail
messages. (Emphasis added.)

In any event, each MDX together with its own plurality of associated
fixed terminals also constitutes an electronic mail system because the
plurality of fixed terminals 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 specified by the Federal Circuit. Thus, Telenor
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.
With regard to claims which include the requirement of deleting
information from electronic mail, the Federal Circuit ruled that substantial
evidence does not support a finding that Telenor’s disclosure of message
Appeal No. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

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forwarding requires removal of previously added information. In re NTP,
654 F.3d at 1302. While the claims in this case about deleting information
from electronic mail do not specify that the deleted information is that
previously added by the electronic mail system, that is of no moment
because the basis of the Federal Circuit’s ruling is reflected in its explicit
statement that: “Telenor is silent about removal of information.” Id.
Accordingly, we understand that the anticipation rejection based on
Telenor, of dependent claims which require deleting a header from the
electronic mail message, has already been reversed by the Federal Circuit.
They are claims 222 and 223.
Perkins
We found 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 56, line 26 to Page
57, line 1). We also found in the 2009 Board Decision that Perkins discloses
that a type of message sent from a remote user in the wired network to a
mobile unit is mail. (Page 60, lines 6-7). In that regard, we further stated in
the 2009 Board Decision (Page 60, lines 8-10):
In that context, the remote user is not sending paper mail with
messages written in ink to mobile unit 10, but electronic 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
Appeal No. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

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message content such as text or attachment, and a subject, Perkins’
electronic mail is understood to include each of those components4.
With regard to the Federal Circuit’s determination that an “electronic
mail system” must include a plurality of originating processors, Perkins’
wired network includes a plurality of remote users. (Perkins 3:20-29). The
2009 Board Decision determined (Page 60, lines 17-21; Page 64, lines 3-7)
that the device used by each remote user is an originating processor. Thus,
the wired network of Perkins is an electronic mail system including a
plurality of originating processors. In the alternative, the collection of
originating processors, one per remote user, together constitutes the
electronic mail system. Global gateway 18 still forms the claimed interface.
Verjinski
With respect to the requirement of the sending of electronic mail, the
2009 Board Decision determined (Page 86, 20-23):
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 87, lines 7-15):
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 [Simple Mail Transfer

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. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

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Protocol] 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).

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, one with ordinary skill would have understood Verjinski’s
described mail, email, and email message 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 processors configured to permit communication by
electronic mail messages among recognized users of the system, the 2009
Board Decision determined (Page 86, lines 12-19):
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).

5 SMTP was known to be capable of including a sender, destination,
subject, and text. See, e.g Comer, pp. 245 et seq.
Appeal No. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

10

When discussing the embodiment of a commanding officer in a
military scenario, the 2009 Board Decision determined (Page 86, lines 22-
24):
It is understood that there may be multiple such remote hosts
wanting to send a message to the 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 87, lines 20-23):
[E]ach remote host on the internet also constitutes an
originating processor insofar as the sending of electronic mail
to a portable host is concerned. Thus, Verjinski discloses a
plurality of originating processors contained in at least one
electronic mail system.

ORDER AND SUMMARY OF DECISION
It is ORDERED that:
1. The rejection of claims 213, 218, and 221 under 35 U.S.C.
§ 102(b) as anticipated by Telenor ’89 is affirmed.
2. The rejection of claims 1-13, 23-50, 60-92, 94-98, 160-163,
188, 189, 192-194, 199-202, 207-213, 218-223, and 295-298 under
35 U.S.C. § 102(e) as anticipated by Perkins is affirmed.
Appeal No. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

11
3. The rejection of claims 99-114, 117-142, 146, and 151-159
under 35 U.S.C. § 103 as unpatentable over Perkins and Garbee is affirmed.
4. The rejection of claims 14-22, 51-59, 93, 164-187, 190, 191,
195-198, 203-206, and 214-217 under 35 U.S.C. § 103 over Perkins and
Riddle is affirmed.
5. The rejection of claims 299-317 under 35 U.S.C. § 103 as
unpatentable over Perkins, Garbee, and Hortensius is affirmed.
6. The rejection of claims 1-4, 23, 26, 27, 32-41, 60, 63, 68-76,
83, 86-88, 94, 97, and 98 under 35 U.S.C. § 102(b) as anticipated by
Verjinski is affirmed.
7. The rejection of claims 5, 6, 9, 12, 13, 42, 43, 46, 49, 50, 79,
80, 83, 91, 92, and 160-163 under 35 U.S.C. § 103 as unpatentable over
Verjinski and the inventors’ own admitted prior art is affirmed.
8. The rejection of claims 24, 25, 28, 29, 61, 62, 64, 65, 77, 78,
84, 85, 95, 96, 188, 189, 193, 194, 201, 202, 211, 212, 213, 219, 220, 222,
and 223 under 35 U.S.C. § 103 as unpatentable over Verjinski and DeVaney
is affirmed.
9. The rejection of claims 16, 17, 19, 53, 54, 56, 57, 165, 171.
177, 179, 180, 183, 190, 191, 195-198, 203-206, and 214-217 under 35
U.S.C. § 103 as unpatentable over Verjinski, Riddle, and DeVaney is
affirmed.
10. The rejection of claims 7, 8, 10, 11, 44, 45, 47, 48, 81, and 82
under 35 U.S.C. § 103 as unpatentable over Verjinski, DeVaney, and the
inventors’ own admitted prior art is affirmed.
Appeal No. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

12
11. The rejection of claims 14, 15, 18, 20-22, 51, 52, 55, 58, 59, 93,
164, 167, 168, 170, 173, 174, 176, 182, 185, and 186 under 35 U.S.C. § 103
as unpatentable over Verjinski and Riddle is affirmed.
12. The rejection of claims 99-101, 104, 107, 117, 120, 123-128,
131, 134, 151, 154, and 157-159 under 35 U.S.C. § 103 as unpatentable over
Verjinski and Garbee is affirmed.
13. The rejection of claims 102, 103, 105, 106, 118, 119, 121, 122,
124, 125, 129, 130, 132, 133, 152, 153, 155, and 156 under 35 U.S.C. § 103
as unpatentable over Verjinski, Garbee, and DeVaney is affirmed.
14. The rejection of claims 108, 109, 114, 135, 136, 139, 142, and
146 under 35 U.S.C. § 103 as unpatentable over Verjinski, Garbee, and the
inventors’ own admitted prior art is affirmed.
15. The rejection of claims 110-113, 137, 138, 140, and 141 under
35 U.S.C. § 103 as unpatentable over Verjinski, Garbee, the inventors’ own
admitted prior art, and DeVaney is affirmed.
16. The rejection of claims 115, 116, 143, 144, 147, and 150 under
35 U.S.C. § 103 as unpatentable over Verjinski, Garbee, and Riddle is
affirmed.
17. The rejection of claims 145, 148, and 149 under 35 U.S.C.
§ 103 as unpatentable over Verjinski, Garbee, Riddle, and DeVaney is
affirmed.
18. The rejection of claims 297-317 under 35 U.S.C. § 112, first
paragraph, as without written description in the specification is affirmed.
Appeal No. 2008-004602
Reexamination Control 90/006,493, 90/006,680, 90/007,735
Patent No. 5,819,172

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19. The rejection of claim 309 under 35 U.S.C. § 305 as violating
the prohibition against enlargement of the scope of a patent claim under
reexamination is affirmed.
Claims 1-223, and 295-317, all claims on appeal, stand rejected.

AFFIRMED

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cc:

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William H. Wright
Sturm & Fix LLP
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Hunton & Williams LLP
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