Ex Parte 7221744 et al

Patent Trial and Appeal Board

Apr 8, 2014

95001897 (P.T.A.B. Apr. 8, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,897 02/16/2012 7221744 3566.006USX 7670
7590 04/09/2014
Song K. Jung
MCKENNA LONG & ALDRIDGE LLP
1900 K STREET, NW
WASHINGTON, DC 20006
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/09/2014 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
____________

SKYPE TECHNOLOGIES, SA and SKYPE, INC.
Requester

v.

EIDOS COMMUNICATIONS, LLC
Patent Owner
____________

Appeal 2013-011062
Reexamination Control 95/001,897
Patent 7,221,744 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, STEPHEN C. SIU, and STANLEY M.
WEINBERG, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
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Reexamination Control 95/001,897
Patent 7,221,744 B2

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Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
rejections of claims 15, 17, 21, 23, 24, 34, and 35. We have jurisdiction
under 35 U.S.C. §§ 134 and 315. An Oral Hearing was conducted on
January 29, 2014.

STATEMENT OF THE CASE
This proceeding arose from a February 16, 2012 request by Skype
Technologies, SA and Skype, Inc. (“Requester”) for an inter partes
reexamination of claims 15, 17, 21, 23, 24, 34, and 35 of U.S. Patent
7,221,744 B2, titled “Telephonic Voice Message Transmission Control
Method” and issued to Paul F. Finnigan, on May 22, 2007 (the ’744 patent).
Claims 1-14, 16, 18-20, 22, and 25-33 are not subject to reexamination.
RAN 1. An oral hearing was conducted on January 29, 2014. A transcript
of the hearing will be made of record in due course.
The ’744 patent describes a method of controlling transmission of
telephonic voice message data in telephonic voice message systems (col. 1,
ll. 18-21).
Claim 15 reads as follows:

15. A method of controlling transmission of electronic
message data from a sender having an origination address to a
recipient having a first destination address, comprising:
receiving at least one specific instruction from a plurality
of instructions for storage in a storage medium for controlling
an initial transmission of the electronic message data to an
address associated with the recipient; and
processing the electronic message data in accordance
with the at least one specific instruction provided by the
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recipient for controlling the initial transmission of the electronic
message data directed to the recipient.

The cited references are as follows:

Neustein US 5,473,667 Dec. 5, 1995
Theimer US 5,493,692 Feb. 20, 1996
Harkins US 5,513,126 Apr. 30, 1996
Pepe US 5,742,905 Apr. 21, 1998

Patent Owner appeals the Examiner’s rejections as follows:
Claims 15, 17, 21, 23, 24, 34, and 35 under 35 U.S.C. § 102(e) as
anticipated by any one of Pepe, Harkins, or Theimer;
Claims 15, 17, 23, 24, 34, and 35 under 35 U.S.C. § 102(e) as
anticipated by Neustein1; and
Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Neustein and
Pepe.

ISSUE

Did the Examiner err in rejecting claims 15, 17, 21, 23, 24, 34, and
35?

1 Although the Examiner’s statement of the rejection over Neustein includes
claim 21 (RAN 36), the RAN’s discussion of the Neustein anticipation
rejections does not include claim 21.
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PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Pepe Reference

Patent Owner contends that Pepe discloses “an interface” (or PCI
server) that is “an intermediary, or an interface between two other networks”
(PO App. Br. 12, citing Pepe, col. 4, ll. 31-36 and col. 5, ll. 54-67) and that
the “PCI [of Pepe] is not associated with the sender’s system” (PO App. Br.
12). Hence, Patent Owner argues that Pepe fails to disclose an interface that
is associated with the sender’s system. We agree with the Examiner that
claim 15 fails to require an interface that is associated with the sender’s
system. Hence, even assuming that the PCI interface of Pepe is not
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“associated with” the sender’s system, we cannot agree with Patent Owner
that the alleged lack of such a disclosure demonstrates that Pepe fails to
disclose the invention as recited in claim 15.
Patent Owner argues that Pepe discloses controlling data transmission
only “after the ‘initial’ transmission of the message data” because Pepe’s
data transmission “is not from the point of origin of the message data” (PO
App. Br. 12). Hence, Patent Owner argues that Pepe fails to disclose
“controlling an initial transmission of . . . message data,” as recited in claim
15 because, according to Patent Owner, the “initial transmission” of message
data, as recited in claim 15, must occur only “prior to the message data’s
arrival at the PCI [of Pepe]” (PO App. Br. 13).
Patent Owner does not specify an explicit definition of the term
“initial transmission” in the Specification. In construing the term “initial
transmission,” we first turn to claim 15 itself. Claim 15 recites “controlling
an initial transmission of the electronic message data to an address
associated with the recipient.” Claim 15 does not recite that the “initial
transmission” must be from any specific location much less from the
sender’s location. Thus, as the Examiner explains, based on the explicitly
recited claim limitations of claim 15 and the lack of any specific
requirements in claim 15 that the “initial transmission” of the message data
must be from the sender’s location, we disagree with Patent Owner’s
assertion that claim 15 imposes such a requirement.
Not having observed any requirement of a specific location where an
“initial transmission” must originate from claim 15 itself, we turn to the
Specification to construe (in light of the Specification) the term “initial
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transmission” (and “controlling” the initial transmission). Patent Owner
does not specify that the Specification provides an explicit definition of the
term “initial transmission.” However, the Specification discloses a “voice
message system 10” in which “user A sends user B a voice message by
telephoning voice message system 10 from telephone 12 and speaking into it
to create a voice message” (col. 4, ll. 14-17; Fig. 1). The voice message
system 10 stores the message data and sender delivery commands (col. 4, ll.
28-31, 63-65; Figs. 1-2). Either “users A and B, as well as any others of the
many system users, “can control the transmission of voice messages or
information directed to their message addresses” (col. 4, ll. 38-41). Control
of the transmission of the voice message is performed in accordance with
stored “associated specified voice message transmission instructions” stored
in the voice message system 10 (col. 5, ll. 29-30, 33-34). Of note is that the
“voice message system 10” (and, hence, the storage medium) as disclosed in
the Specification is not disclosed as being located at “a location physically
corresponding to the sender” (see e.g., Fig. 1 illustrating the “voice message
system 10” at a location that is remote from the sender).
The Specification also discloses an embodiment including
“[t]elephonic voice message systems 50 and 52 [that] are . . . similar to voice
message system 10 [of Fig. 1]” (col. 6, ll. 39-40; Fig. 3) in which
“[t]elephones 56 and 58 provide substantially the same access to respective
voice message systems 50 and 52 that telephones 12 and 14 provide to voice
message system 10” (col. 6, ll. 49-52; Figs. 1 and 3). Because the
embodiment disclosed in Fig. 3 of the Specification is “substantially the
same” as the embodiment disclosed in Fig. 1 of the Specification, one of
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ordinary skill in the art would have understood that, as in the embodiment
illustrated in Fig. 1 of the Specification, control of transmission of voice
messages is performed in accordance with stored instructions in a voice
message system (e.g., voice message system 50 or 52 of Fig. 3, both of
which are disclosed as being substantially similar to voice message system
10 of Fig. 1) and that the voice message system (e.g., voice message system
50 or 52 of Fig. 3 or voice message system 10 of Fig. 1) is located at a
location that is remote from the sender (see e.g., Figs. 1 and 3).
Hence, in construing the meaning of “initial transmission” of message
data in light of the Specification (and in the absence of an explicit definition
in the Specification), controlling the “initial transmission” of message data
includes controlling the transmission of a voice message from a “voice
message system 10” (or the “substantially similar” (col. 6, l. 40) voice
message system 50 illustrated in Fig. 3 of the Specification, for example)
that stores the voice message, but that is not disclosed as being located at “a
location physically corresponding to the sender.” In fact, the Specification
discloses the opposite – i.e., the voice message system 10 (or “substantially
similar” voice message system 50) as disclosed in the Specification is
located remote from the location of the sender (see, e.g., Fig. 1 illustrating
the “voice message system 10” as being remote from both the sender’s
system and the recipient’s system or Fig. 3 illustrating the “voice message
system 50” as being remote from both the sender’s and recipient’s systems).
Given that the Specification explicitly discloses controlling the
transmission of message data from a location that is remote from the
location of the sender, we disagree with Patent Owner that claim 15, when
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construed in light of the Specification requires the opposite, i.e., controlling
the transmission of message data from “a location physically corresponding
to the sender.” Rather, based on the Specification, one of ordinary skill in
the art would have understood that controlling an “initial transmission”
includes controlling the transmission of a voice message from a “voice
message system 10” (or “substantially similar” “voice message system 50”)
to a recipient’s system, the “voice message system 10” (or “substantially
similar” “voice message system 50”) being a component that stores message
data and instructions and is located remote from a sender’s system. Such a
construction of the term “initial transmission” comports with limitations
explicitly recited in claim 15 (i.e., storage of an instruction in a storage
medium and controlling an initial transmission of message data to an address
associated with the recipient).
Patent Owner also argues that claim 15, “when read . . . in view of the
specification” (PO App. Br. 9) requires that the message data must be stored
at “a location physically corresponding to the sender” (PO App. Br. 8) and
that “the location of the storage medium . . . must be in the sender’s system”
(PO App. Br. 9-10). For at least the above stated reasons and reasons set
forth by the Examiner, we cannot agree with Patent Owner. As described
above and as explained by the Examiner, claim 15 does not require and the
Specification does not support Patent Owner’s purported requirements that
data must be stored at a location physically corresponding to the sender, that
the location of the storage medium must be in the sender’s system or that
controlling of the initial transmission of a message must be prior to
transmission from the origination address (or sender’s address). On the
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contrary, the Specification explicitly discloses storing message data and
controlling a transmission of a message at a “voice message system 10” (or
“substantially similar” “voice message system 50”) that is remote from the
sender’s system location (see, e.g., col. 4, ll. 62-63; Fig. 1; Fig. 3).
Patent Owner does not provide additional arguments in support of
claims 15,17, 21, 23, 24, 34, or 35 with respect to Pepe.
The Examiner did not err in rejecting claims 15, 17, 21, 23, 24, 34,
and 35 as anticipated by Pepe.
Affirmance of the rejection of claims 15, 17, 21, 23, 24, 34, and 35 as
anticipated by Pepe renders it unnecessary to reach the propriety of the
Examiner’s decision to reject those claims on a different basis. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach
the propriety of the rejection of those claims over Harkins, Theimer, or
Neustein.

CONCLUSION
The Examiner did not err in rejecting claims 15, 17, 21, 23, 24, 34,
and 35.
DECISION
We affirm the Examiner’s decision to reject claims 15, 17, 21, 23, 24,
34, and 35 under 35 U.S.C. § 102(e) as anticipated by Pepe.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
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appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

FOR PATENT OWNER:
McKenna Long & Aldridge LLP
1900 K Street, NW
Washington, DC 20006

FOR THIRD-PARTY REQUESTER:
Schwegman, Lundberg & Woessner/Reexams
PO Box 2938
Minneapolis, MN 55402

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