Ex Parte 7,221,745 et al

Patent Trial and Appeal Board

Jun 24, 2014

95001895 (P.T.A.B. Jun. 24, 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.
95/001,895 02/16/2012 7,221,745 3566.007USX 2254
30827 7590 06/24/2014
MCKENNA LONG & ALDRIDGE LLP
1900 K STREET, NW
WASHINGTON, DC 20006
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/24/2014 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 2014-002498
Reexamination Control 95/001,895
Patent 7,221,745 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
Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
rejections of claims 1-3, 6, and 10. We have jurisdiction under 35 U.S.C.
§§ 134 and 315. Patent Owner waived an Oral Hearing scheduled for
June 11, 2014.

Appeal 2014-002498
Reexamination Control 95/001,895
Patent 7,221,745 B2

2
STATEMENT OF THE CASE
1

This proceeding arose from a request by Skype Technologies, SA
and Skype, Inc. (“Requester”) for an inter partes reexamination of U.S.
Patent 7,221,745 B2, titled “Telephonic Voice Message Transmission
Control Method” and issued to Paul F. Finnigan, on May 22, 2007 (the
’745 patent).
The ’745 patent describes a method of controlling transmission of
telephonic voice message data in telephonic voice message systems (col. 1,
ll. 21-24).
Claim 1 reads as follows:
1. A method for controlling a message in a message system,
the method comprising the steps of:
acquiring and storing a message from a sender;
acquiring and storing a destination address;
acquiring and storing a sender delivery command; and
processing the message according to a recipient instruction and
the sender delivery command, the recipient instruction taking priority
over the sender delivery command, the recipient instruction
corresponding to the destination address and an identity of the sender,
wherein the recipient instruction includes an instruction that controls a
transmission of the message from an origination address of the sender
of the message.

The cited references are as follows:

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

1
This case is related to Reexamination Control 95/001,897 and 95/008,898
(Appeal Nos. 2013-11062 and 2014-00121, respectively).
Appeal 2014-002498
Reexamination Control 95/001,895
Patent 7,221,745 B2

3
Patent Owner appeals the Examiner’s rejections as follows:
Claims 1-3 and 6 under 35 U.S.C. § 102(e) as anticipated by any one
of Pepe, Harkins, Theimer, or Neustein;
Claim 10 under 35 U.S.C. § 102(e) as anticipated by any one of
Harkins, Theimer, or Neustein;
Claims 2, 3, and 10 under 35 U.S.C. § 103(a) as unpatentable over
Pepe and Neustein.

ISSUE

Did the Examiner err in rejecting claims 1-3, 6, and 10?

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).
Appeal 2014-002498
Reexamination Control 95/001,895
Patent 7,221,745 B2

4

ANALYSIS

Patent Owner disputes the Examiner’s refusal to enter Patent Owner’s
expert declaration (Dr. Kevin Jaffray). PO App. Br. 11-12. Patent Owner’s
argument is directed to a petitionable matter -- not an appealable matter. See
MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to
objections and formal matters which are not properly before the Board.”);
see also MPEP § 1201 (“The Board will not ordinarily hear a question that
should be decided by the Director on petition….”). “There are a host of
various kinds of decisions an examiner makes . . . mostly matters of a
discretionary, procedural or nonsubstantive nature . . . which have not been
and are not now appealable to the board . . . when they are not directly
connected with the merits of issues involving rejections of claims, but
traditionally have been settled by petition . . . .” In re Hengehold, 440 F.2d
1395, 1403 (CCPA 1971).
We therefore do not consider this issue.

Pepe Reference

As described above, claim 1 recites a recipient instruction that
includes an instruction that controls a transmission of the message from an
origination address of the sender of the message. The Examiner states that
Pepe discloses this feature. Patent Owner disagrees.
Pepe discloses “a CallCommand call” that arrives “at the PCI
server 48” that uses “the PCI database 44 to determine how to handle the
call” (col. 10, l. 66 – col. 11, l. 5). The “PCI Database 44 maintains the
Appeal 2014-002498
Reexamination Control 95/001,895
Patent 7,221,745 B2

5
subscriber profile [and] controls the Call Command functions” (col. 11,
ll. 56-57). The subscriber profile stores “message routing and delivery
instructions” from the subscriber (col. 6, ll. 22-23). Hence, Pepe discloses
an instruction that controls a transmission of the message (i.e., message
routing and delivery instructions) from an origination address of the sender
(i.e., the call originates from the caller – or “sender of the message” – the
transmission of which is controlled by the message routing and delivery
instructions), as recited in claim 1.
Patent Owner argues that the PCI of Pepe “is not associated with the
sender’s system” (PO App. Br. 13). Hence, Patent Owner argues that Pepe
fails to disclose an instruction that controls a transmission of the message
from a component associated with the sender’s system. We agree with the
Examiner that claim 1 does not require controlling a transmission of the
message from a component associated with the sender’s system. Rather,
claim 1 merely recites an instruction that controls a transmission of the
message from an origination address of the sender of the message.
In any event, even assuming that an “origination address” must be a
component that is “associated with” a sender, we note that Pepe discloses
that the “Personal Communications Internetworking network (‘PCI’) . . . is
connected between the wireless . . . and wireline networks” and “permits the
mobile communications subscriber to send and receive messages” (col. 5,
ll. 54-57). Patent Owner does not demonstrate persuasively that a
component (i.e., the “PCI” of Pepe) that is connected with a user’s system
(i.e., the user’s system presumably within the wireless network or wireline
network) is not “associated with” the user’s (or “sender’s”) system. One of
Appeal 2014-002498
Reexamination Control 95/001,895
Patent 7,221,745 B2

6
ordinary skill in the art would have understood that a first component that is
connected to, in communication with, and exchanging messages with a
second component would have been “associated with” the second
component.
Patent Owner argues that the “network 29 or 39” of Pepe is “where
the message is initially stored” and is, therefore, “the ‘origination address’”
(PO App. Br. 13). Hence, Patent Owner argues that Pepe fails to disclose an
instruction that controls a transmission of the message from a place where
the message is initially stored. We agree with the Examiner that claim 1
does not require an instruction that controls a transmission of the message
from a place where the message is initially stored. Rather, claim 1 merely
recites an instruction that controls a transmission of the message from an
origination address of the sender of the message. Thus, even assuming that
Pepe fails to disclose controlling a transmission of a message from a place
where the message is initially stored, as Patent Owner contends, we are still
not persuaded by Patent Owner’s argument.
Patent Owner argues that the “origination address” as recited in
claim 1 must be “a location physically corresponding to the sender where the
message is initially stored prior to transmission to the recipient” (PO App.
Br. 9). Hence, Patent Owner argues that Pepe fails to disclose an instruction
that controls a transmission of the message from an origination address of
the sender of the message where the “origination address” represents a
location where the message is initially stored prior to transmission to the
recipient. However, Patent Owner does not point to a specific definition in
the Specification in support of this claim construction, and does not indicate
Appeal 2014-002498
Reexamination Control 95/001,895
Patent 7,221,745 B2

7
why one of ordinary skill in the art would have understood that an
“origination address” must be a location where a message is initially stored.
Patent Owner argues that “[t]he specification clearly supports this
construction [that the message must be stored at an “origination address”]”
(PO App. Br. 10, citing Spec. at col. 9, ll. 43-47). The Specification
discloses that “[t]he alternative instructions and confirmation are then
transmitted across telecommunication channel 64 to network interface
device 60 to substitute the message delivery instructions of user Y for those
of user X” (col. 9, ll. 43-47). We disagree with Patent Owner that the cited
passage from the Specification supports Patent Owner’s contention that the
“origination address” as recited in claim 1, must be a location where a
message is stored. Indeed, the cited passage from the Specification merely
discusses transmitting instructions and confirmations across a channel and
does not refer to storage of data at all or why storage of data would be
required at an “origination address.”
Given the terms “origination” and “address,” one of ordinary skill in
the art would have understood an “origination address” to include any
location or address from where something may originate. Patent Owner
does not provide sufficient support for the contention that a location from
where a thing originates must also store the thing or why one of ordinary
skill in the art would have understood a location that originates a thing must
also store the thing, given that claim 1 merely requires an “origination
address” and not an “origination address that must store the message.”
Patent Owner argues that “the receipt and delivery options in Pepe
are not received, and thereafter stored at an origination address or any other
Appeal 2014-002498
Reexamination Control 95/001,895
Patent 7,221,745 B2

8
address associated with the sender” (PO App. Br. 14). Hence, Patent Owner
contends that Pepe fails to disclose an instruction that controls a recipient
instruction that is received and thereafter stored at an origination address or
any other address associated with the sender. We agree with the Examiner
that claim 1 does not require an instruction that controls a recipient
instruction that is received and thereafter stored at an origination address or
any other address associated with the sender. Rather, claim 1 merely recites
a recipient instruction that includes an instruction that controls a
transmission of the message from an origination address of the sender of the
message.
Patent Owner argues that “[t]he Examiner’s interpretation that the
claims do not require the control to occur on the sender’s system . . . where
the message resides prior to transmission is exceedingly broad and
unreasonable” (PO App. Br. 10). Hence, Patent Owner argues that Pepe
fails to disclose an instruction that controls a transmission of the message
from an origination address of the sender of the message, wherein the
control occurs on the sender’s system where the message resides prior to
transmission. We agree with the Examiner that claim 1 does not require that
the control of the transmission of the message must occur on the sender’s
system where the message resides prior to transmission. Rather claim 1
merely recites an instruction that controls a transmission of the message
from an origination address of the sender of the message.
Patent Owner does not provide additional arguments in support of
claims 2, 3, 6, or 10 with respect to the Pepe reference or the combination of
Pepe and Neustein.
Appeal 2014-002498
Reexamination Control 95/001,895
Patent 7,221,745 B2

9
Affirmance of the rejection(s) for the above-referenced claims based
on Pepe and the combination of Pepe and Neustein 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 1-3, 6, and 10.
DECISION
We affirm the Examiner’s decision to reject claims 1-3 and 6 under
35 U.S.C. § 102(e) as anticipated by Pepe and claims 2, 3, and 10 under
35 U.S.C. § 103(a) as unpatentable over Pepe and Neustein.
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.

AFFIRMED

McKenna Long & Aldridge, LLP
1900 K Street, NW
Washington, DC 20006

Third Party Requester:

Schwegman, Lundberg & Woessner/ Reexams
P.O. Box 2938
Minneapolis, MN 55402