Ex Parte 6879691 et al

Patent Trial and Appeal Board

May 31, 2016

95001892 (P.T.A.B. May. 31, 2016)

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.
95/002,203 09/12/2012 6,879,691 B1 115191-010RX2 2457
27189 7590 05/31/2016
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
EXAMINER
CAMPBELL, JOSHUA D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/31/2016 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
____________
MicroStrategy, Inc.
‘1892 Requester1 and Respondent

and

Facebook, Inc.
‘2203 Requester and Respondent

v.

Auto-Completion Solutions, LLC
Patent Owner and Appellant
____________________

Appeal 2016-001855
Inter partes Reexamination Control 95/001,892 & 95/002,2032
Patent US 6,879,691 B1
Technology Center 3900
__________

Before JOHN A. JEFFERY, STEPHEN C. SIU, and ANDREW J.DILLON,
Administrative Patent Judges.

DILLON, Administrative Patent Judge

1 Because this appeal involves two different requesters from respective inter
partes reexamination proceedings that were merged, we refer to (1)
MicroStrategy, Inc., the Requester in the 95/001,892 proceeding as “the
‘1892 Requester,” and (2) Facebook, Inc., the Requester from the
95/002,203 proceeding as “the ‘2203 Requester.”
2 These two reexamination proceedings were merged on July 18, 2013.
Appeal 2016-001855
Reexamination Control 95/001,892 & 95/002,203 (merged)
Patent US 6,879,691 B1

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DECISION ON APPEAL
Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
decision to reject claims 2, 3, 6-10, 15-18, 21, 25, 29-31, and 33. Claims 4,
5, 11-14, 19, 20, 22-24, 26-28, and 32 were not subject to reexamination.
Claims 1 and 34-60 were cancelled.
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm.
STATEMENT OF THE CASE
This proceeding arose from a first request for inter partes
reexamination filed on behalf of the ‘1892 Requester, on February 14, 2012,
os United States Patent 6,879,691 B1 (“the ‘691 patent”) issued to Koretz on
April 12, 2005. This proceeding was assigned Control No. 95/001,892.
A second request for inter partes reexamination was filed on behalf of
the ‘2203 Requester on September 12, 2012 and was assigned Control No.
95/002,203. These two proceedings were merged on July 18, 2013.

Invention
The '691 patent describes a system which provides a list of contacts in
a central contact database and displays the list in a form that allows a user to
view the list while accessing a plurality of communication, information, and
collaboration applications. Clicking on one of the contacts automatically
fills in the recipient’s contact information in a field enabled in accordance
with the teaching of the invention. ‘691 patent, col. 1, ll. 26-50.

Claims
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Reexamination Control 95/001,892 & 95/002,203 (merged)
Patent US 6,879,691 B1

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Claims 2, 3, 6-10, 15-18, 21, 25, 29-31, and 33 were subject to
reexamination and have been rejected. Claims 1-33 are original patent
claims. Claims 1 and 34-60 have been canceled. Claims 34-60 were
proposed new claims. Claims 15 and 21 are independent.
Claim 21 is illustrative.
21. A communication system facilitating communication
between information senders and recipients, the system including:

a sender contact database;

a hot-linked contact identifier presented on an application
screen;

a recipient field on the application screen;

a field filler that places recipient information from the contact
database into the recipient field in response to activation of the
hot-linked contact identifier;

a message send initiation object operable by a sender to initiate
sending of information to a recipient associated with the contact
of the contact database and identified in the recipient field.

Prior Art
Capps US 5,666,502 Sep. 9, 1997
Belanger WO l1998/021672 May 22, 1998
Allen WO l1998/037474 Aug. 27, 1998
Schacher WO 98/045770 Oct. 15, 1998

Fox et al., Web Publisher's Construction Kit with HTML 3.2, (1996)
(Hereinafter Fox).

Dale, Introduction to Turbo Pascal and Software (1998)
(Hereinafter Dale).

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Peal, America Online Official Internet Guide (1998)
(Hereinafter Peal).

Eudora Pro Email, Version 4.2 for Windows User Manual (1999)
(Hereinafter Eudora).

Hill, Yahoo! for Dummies (1999)
(Hereinafter Hill).

Owner’s Contentions

Owner contends that the Examiner erred in entering the following
grounds of rejections:
A. The rejections of Claims 21 and 29 under 35 U.S.C. 102(b) as
being anticipated by Int'l Patent Pub. No. WO/1998/045770 by Schacher
("Schacher");
B. The rejection of Claim 25 under 35 U.S.C. 103(a) as being
unpatentable over Schacher in view of Int'l Patent Pub. No.
WO/l1998/037474 by Allen ("Allen");
C. The rejections of Claims 30, 31, and 33 under 35 U.S.C. 103(a) as
being unpatentable over Schacher in view of Int'l Patent Pub. No.
WO/l1998/021672 by Belanger ("Belanger");
D. The rejections of Claims 21, 25, and 29 under 35 U.S.C. 102(a) as
being anticipated by "Eudora Pro Email, Version 4.2 for Windows User
Manual" ("Eudora");
E. The rejections of Claims 21 and 29 under 35 U.S.C. 102(b) as
being anticipated by U.S. Patent No. 5,666,502 to Capps ("Capps");
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F. The rejections of Claims 30, 31, and 33 under 35 U.S.C. 103(a) as
being unpatentable over Capps in view of "Web Publisher's Construction Kit
with HTML 3.2" ("Fox");
G. The rejections of Claims 30, 31, and 33 under 35 U.S.C. 103(a) as
being unpatentable over Eudora in view of Fox;
H. The rejections of Claims 15, 2, 3, 6-10, and 16-20 under 35 U.S.C.
112, first paragraph, as failing to comply with the written description
requirement;
I. The rejections of Claims 15, 7, 8, and 10 under 35 U.S.C. 103(a) as
being unpatentable over Eudora in view of "Introduction to Turbo Pascal
and Software Design" by Dale ("Dale");
J. The rejections of Claims 2, 9, and 16-18 under 35 U.S.C. 103(a) as
being unpatentable over Eudora in view of Dale and "Yahoo! for Dummies"
by Hill ("Hill");
K. The rejections of Claims 3 and 6 under 35 U.S.C. 103(a) as being
unpatentable over Eudora in view of Dale, Hill, and Fox;
L. The rejections of Claims 15, 7, and 10 under 35 U.S.C. 103(a) as
being unpatentable over Capps in view of Dale;
M. The rejections of Claims 2, 3, 6, and 16-18 under 35 U.S.C.
103(a) as being unpatentable over Capps in view of Dale and Fox;
N. The rejections of Claims 8 and 9 under 35 U.S.C. 103(a) as being
unpatentable over Capps in view of Dale and "America Online Official
Internet Guide" by Peal ("Peal"); and
O. The rejection of Claim 25 under 35 U.S.C. 103(a) as being
unpatentable over Capps in view of Eudora.
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ANALYSIS
Rejections Based Upon Eudora
We first turn to those rejections based upon the Eudora reference,
either alone or in combination with secondary references. These include
those grounds of rejections set forth above as grounds D, G, I, J, K, and O,
which address each of the rejected claims appealed herein.
With respect to the rejection of claims 21, 25, and 29 under 35 U.S.C.
102(a) as being anticipated by "Eudora," Patent Owner does not argue that
Eudora fails to disclose any claimed element, but rather, Patent Owner
argues that Eudora does not enable one of ordinary skill in the art to make
the invention without undue experimentation. Patent Owner purports to
conduct an analysis under
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), examining (1) the quantity
of experimentation; (2) the amount of direction or guidance present; (3) the
presence or absence of working examples; (4) the nature of the
invention; (5) the state of the prior art; (6) the relative skill of those in the
art; (7) the predictability or unpredictability of the art; and (8) the breadth of
the claims. App. Br. 8-11.
We have reviewed the analysis provided by Patent Owner and
compared that analysis with the arguments and evidence provided by the
‘2203 Requester. ‘2203 Requester first argues waiver, noting that Patent
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Owner had not previously raised the lack of enablement argument, and
suggesting that argument was waived. Resp. Br. 4-5.
We find ‘2203 Requester’s argument regarding waiver to be
unavailing. The prohibition against raising a new argument applies to
arguments raised for the first time in a Reply Brief, thereby failing to permit
the Examiner an opportunity to respond. We find no such prohibition
against the raising of a new argument in an Appeal Brief.
With respect to Patent Owner’s Wands analysis, ‘2203 Requester
argues that Patent Owner has failed to meet the burden of providing facts
that rebut the presumption of operability. See MPEP § 2121, Part 1. ‘2203
Requester argues that the mere attorney arguments submitted by Patent
Owner fail to overcome the unrebutted evidence of record, including the
Tittel Declaration, which set forth Mr. Tittel’s opinion regarding the level of
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skill of one ordinarily skilled in the art, and what would be necessary to
implement the technology set forth in Eudora. Resp. Br. 5-8.
We find ‘2203 Requester’s arguments persuasive. Patent Owner has
submitted only attorney argument, and has failed to overcome the evidence
of record with regard to the enablement of the Eudora reference.
With regard to claims 30, 31, and 33, Patent Owner provides no
separate arguments for patentability and merely relies upon the lack of
enablement arguments set forth above. App. Br. 13.
Similarly, with respect to claims 15, 7, 8, and 10; 2, 9, and 16-18; and,
3 and 6, Patent Owner provides no new arguments. App. Br. 16-17.
Consequently, in the absence of separate and particular arguments
regarding these claims we find no error on the part of the Examiner.
In view of our conclusion that the Examiner did not err in rejecting
the appealed claims based on Eudora, either alone or in combination with
Fox, Dale, and/or Hill, we do not address any of the other rejections upon
which the Examiner relies or which are asserted by either Requester. See In
re Gleave, 560 F.3d 1331, 138 (Fed. Cir. 2009) (not reaching other
rejections after upholding an anticipation rejection).

DECISION
The Examiner’s decision adverse to the patentability of claims 2, 3, 6-
10, 15-18, 21, 25, 29-31, and 33 is affirmed.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e).
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Patent US 6,879,691 B1

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AFFIRMED

Patent Owner:

PATTRIC J. RAWLINS
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET, SUITE 2200
SAN DIEGO, CA 92101

Third Party Requester:

FISH & RICHARDSON P.C. (DC)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022

HEIDI L. KEEFE
PATENT GROUP
1299 PENNSYLVANIA AVENUE, NW
SUITE 700
WASHINGTON, DC 20001