Ex Parte 7409428 et al

Patent Trial and Appeal Board

Jan 13, 2014

95001425 (P.T.A.B. Jan. 13, 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.
95/001,425 08/26/2010 7409428 45906.4 7688
59081 7590 01/13/2014
KING & SPALDING, LLP
1100 LOUISIANA ST., STE. 4000
ATTN.: IP Docketing
HOUSTON, TX 77002-5213
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/13/2014 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
____________

EVERBRIDGE INC., FEDERAL SIGNAL CORP., AND TWITTER INC.
Third Party Requesters, Appellants, and Cross-Respondents
v.

COOPER NOTIFICATION, INC.
Patent Owner, Respondent, and Cross-Appellant
____________

Appeal 2013-007396
Inter partes Reexamination Control 95/001,425
United States Patent 7,409,428 B1
Technology Center 3900
____________

Before STEPHEN C. SIU, STANLEY M. WEINBERG,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Third Party Requesters Everbridge Inc., Federal Signal Corp., and
Twitter Inc. (“Requesters”) appeal under 35 U.S.C. §§ 134(c) and 315(b)(1)
the Examiner’s decision not to reject claims 1-18. See Req. App. Br. 3.1

1 Throughout this opinion, we refer to the Right of Appeal Notice mailed
March 20, 2012 (“RAN”), Requesters’ Appeal Brief filed June 18, 2012
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Patent Owner Cooper Notification, Inc. (“Owner”) is a party to the appeal
under 35 U.S.C. § 315(a)(2) and disputes Requesters’ contentions. Owner
cross appeals under 35 U.S.C. §§ 134(b) and 315(a)(1) the Examiner’s
decision to reject claims 1-3, 5, and 8-11. See O. App. Br. 2. Requesters are
parties to the appeal under 35 U.S.C. § 315(b)(2) and dispute Owner’s
contentions.
An oral hearing was held on October 23, 2013. A transcript of the
hearing will be made of record in due course.
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm.

STATEMENT OF THE CASE
This proceeding arose from a Request (“Req.”) for inter partes
reexamination filed on behalf of Requesters, on August 26, 2010, of United
States Patent 7,409,428 B1 (“the ’428 patent”), issued to Frantisek Brabec,
et al., on August 5, 2008, based on United States Application 10/829,181,
filed Apr. 22, 2004. Claims 1-18 of the ’428 patent are subject to
reexamination. Claims 1-18 were issued with the ’428 patent. See O. App.
Br. 2-3. The Examiner chose to adopt certain rejections of claims 1-3, 5,
and 8-11 proffered by Requesters and not to adopt Requesters’ proposed
rejections of claims 4, 6, 7, and 12-18. See RAN 2. The Examiner further
declined to adopt additional rejections of claims 1-18. See RAN 14-17.

(“Req. App. Br.”), Requesters’ Respondent Brief filed July 19, 2012 (Req.
Resp. Br.), Requesters’ Rebuttal Brief filed October 31, 2012 (Req. Reb.
Br.), Owner’s Appeal Brief filed June 20, 2012 (O. App. Br.), and Owner’s
Respondent Brief filed July 18, 2012 (O. Resp. Br.).
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The parties have informed us that as of the filing dates of their
respective briefs, the’428 patent had been the subject of litigation in Cooper
Notification Inc. v. Twitter Inc., No. 1:09-cv-00865 (D. Del.), filed
November 13, 2009. See Req. App. Br. 1; O. App. Br. 2. The Delaware
District Court dismissed claims 1-11 from the litigation and found
noninfringement of claims 12-18 on summary judgment; both of those
rulings were affirmed by the Federal Circuit. See Cooper Notification, Inc.
v. Twitter, Inc., No. 2012-1615, 2013 WL 4611752 (Fed. Cir. Aug. 30,
2013). The parties have also informed us that the ’428 patent had been the
subject of a declaratory judgment complaint in MyStateUSA, Inc. v. Roam
Secure, Inc., No. 1:09-cv-00143 (D. Idaho), filed March 31, 2009, which
was dismissed for lack of jurisdiction. See Req. App. Br. 1; O. App. Br. 2.

THE INVENTION
The invention of the ’428 patent relates to providing non-voice
message delivery to recipients among multiple communication gateways.
See ’428 patent, Abstract. For example, the ’428 patent describes sending
emergency alert messages to first responders’ wireless devices over data or
control channels when voice traffic channels are overloaded. ’428 patent,
col. 5, ll. 52-62. Claim 1, which is illustrative of the invention, reads as
follows:
1. A communication method comprising:
registering a plurality of users for receiving messages;
determining, in response to receiving a first message
from at least one alert originator, one or more user
terminals to receive a second message
corresponding to the received first message, each
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of the one or more user terminals being associated
with at least one registered user;
converting the first message to one or more gateway
messages; and
transferring each of the one or more gateway messages to
one or more corresponding communication
gateways for distribution of the second message by
the one or more communication gateways to each
of the registered users associated with at least one
message group, wherein the transfer is performed
using a non-voice channel;
wherein converting further comprises reformatting, for
each of the one or more gateway messages, the
first message received from the alert originator to a
format in which the communication gateway
associated with the gateway message will accept
and perform operations in response to the
incoming gateway message and forming an
address for each of the one or more gateway
messages to include the domain name information
associated with the communication gateway or the
user identification information associated with the
registered user receiving the second message.

THE REJECTIONS
The prior art references of record include:
Moussavian US 2003/0172077 A1 Sept. 11, 2003
(filed Mar. 8, 2002)
Zimmers US 6,816,878 B1 Nov. 9, 2004
(filed Feb. 11, 2000)
Bryan US 7,133,869 B2 Nov. 7, 2006
(filed Dec. 14, 2001)
Piccioni WO 01/73664 A2 Oct. 4, 2001
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Rejections adopted by the Examiner:
The Examiner adopts Requesters’ proposed rejection of claims 1, 5,
and 9 under 35 U.S.C. § 102(e) as anticipated by Zimmers. See RAN 13.
The Examiner adopts Requesters’ proposed rejection of claim 8 under
35 U.S.C. § 103(a) as obvious over Zimmers. See RAN 13.2
The Examiner adopts Requesters’ proposed rejection of claims 2, 3,
10, and 11 under 35 U.S.C. § 103(a) as obvious over Zimmers and Bryan.
See RAN 14.

Rejections not adopted by the Examiner:
The Examiner chose not to adopt Requester’s proposed rejection of
claims 8 and 17 under 35 U.S.C. § 102(e) as anticipated by Zimmers. See
RAN 17-18. Although Requester’s Notice of Appeal states that it is
appealing the Examiner’s refusal to adopt this ground of rejection,
Requester’s briefs do not challenge this decision. Accordingly, we
summarily affirm the Examiner’s decision not to adopt this rejection.
The Examiner chose not to adopt Requester’s proposed rejection of
claims 4, 6, 7, 12-14, and 18 under 35 U.S.C. § 102(e) as anticipated by
Zimmers. See RAN 18-21.
The Examiner chose not to adopt Requester’s proposed rejection of
claim 17 under 35 U.S.C. § 103(a) as obvious over Zimmers. See RAN 21-
22.

2 Owner asserts that the Examiner rejected claim 8 as obvious over Zimmers
“and the alleged knowledge in the art.” O. Br. 5.
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The Examiner chose not to adopt Requester’s proposed rejection of
claims 15 and 16 under 35 U.S.C. § 103(a) as obvious over Zimmers and
Bryan. See RAN 22.
The Examiner chose not to adopt Requester’s proposed rejection of
claims 1, 4-14, and 17 under 35 U.S.C. § 102(e) as anticipated by
Moussavian. See RAN 14-15.
The Examiner chose not to adopt Requester’s proposed rejection of
claims 2, 3, 15, 16, and 18 under 35 U.S.C. § 103(a) as obvious over
Moussavian and Bryan. See RAN 15.
The Examiner chose not to adopt Requester’s proposed rejection of
claims 1-5, 9-16, and 18 under 35 U.S.C. § 102(b) as anticipated by Piccioni.
See RAN 16-17.
The Examiner chose not to adopt Requester’s proposed rejection of
claims 6-8 and 17 under 35 U.S.C. § 103(a) as obvious over Piccioni and
Bryan. See RAN 17.

ISSUES
The issues arising from the respective positions of Requesters, Owner,
and the Examiner, which we consider herein, are:
1. Whether the Examiner erred in finding that claims 1, 5, and 9 of
the ’428 patent are anticipated by Zimmers;
2. Whether the Examiner erred in concluding that claim 8 of the
’428 patent would have been obvious over Zimmers;
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3. Whether the Examiner erred in concluding that claims 2, 3, 10,
and 11 of the ’428 patent would have been obvious over Zimmers and
Bryan;
4. Whether the Examiner erred in finding that claims 4, 6, 7, 12-
14, and 18 are not anticipated by Zimmers;
5. Whether the Examiner erred in concluding that claim 17 would
not have been obvious over Zimmers;
6. Whether the Examiner erred in concluding that claims 15 and
16 would have been obvious over Zimmers and Bryan;
7. Whether the Examiner erred in finding that claims 1, 4-14, and
17 are not anticipated by Moussavian;
8. Whether the Examiner erred in concluding that claims 2, 3, 15,
16, and 18 would not have been obvious over Moussavian and Bryan;
9. Whether the Examiner erred in finding that claims 1-5, 9-16,
and 18 are not anticipated by Piccioni;
10. Whether the Examiner erred in concluding that claims 6-8 and
17 would not have been obvious over Piccioni and Bryan; and
11. Whether the ’428 patent is entitled to an invention date that
predates Bryan.
PRINCIPLES OF LAW
In order to show anticipation, the Examiner must show that a
reference discloses, expressly or inherently, within its four corners, each
limitation of a challenged claim, arranged or combined in the same way as in
the claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369-71
(Fed. Cir. 2008).
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An invention is obvious when it “‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 282 (1976)). On the other hand, “[a] reference may be said to
teach away [from an invention] when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). However, “just because better alternatives exist in the prior art does
not mean that an inferior combination is inapt for obviousness purposes.”
In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012).
Also in evaluating the obviousness of an invention, we must consider,
if present, secondary considerations of non-obviousness such as commercial
success, long-felt but unresolved needs, and copying. See Geo. M. Martin
Co. v. Alliance Machine Sys. Int’l LLC, 618 F.3d 1294, 1304 (Fed. Cir.
2010). However, “[t]he commercial success of a product is relevant to the
non-obviousness of a claim only insofar as the success of the product is due
to the claimed invention.” Id. Moreover, evidence of copying is only
equivocal evidence of non-obviousness in the absence of more compelling
evidence of other secondary considerations. See id. at 1305.
To disqualify a reference as prior art, an inventor can attempt to show
invention earlier than the date of the reference through an affidavit filed
under 37 C.F.R. § 1.131. Such “antedating affidavits must contain facts
showing a completion of ‘the invention’ commensurate with the extent the
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invention is shown in the reference, whether or not it be a showing of the
identical disclosure of the reference.” Application of Clarke, 356 F.2d 987,
992 (CCPA 1966). Importantly, “[t]he requirement is for facts and not
conclusions alone.” Id. at 993; accord MPEP § 715.07(I). “[A] declaration
by the inventor to the effect that his or her invention was conceived or
reduced to practice prior to the reference date, without a statement of facts
demonstrating the correctness of this conclusion, is insufficient to satisfy 37
CFR 1.131.” MPEP § 715.07(I).

ANALYSIS
OWNER’S APPEAL OF ADOPTED REJECTIONS
Anticipation Rejection of Claims 1, 5, and 9
The Examiner finds that Zimmers discloses each limitation of claim 1,
essentially adopting Requesters’ proposed rejection. See RAN 13. Zimmers
describes an alert notification system for providing telephone, text, email, or
Internet alert notifications to multiple recipients. See Zimmers, Abstract. In
one embodiment, a notification parsing system 106 receives a data feed from
a satellite, converts the data into packets in the format shown in Table I, and
sends the packets to a database query system 112. See Zimmers, col. 6, l.
46-col. 7, l. 28. The database query system 112 generates packets in the
format shown in Table III, which are transferred to a switch host 130 and a
web server 114 to cause alerts to be delivered to recipients. See Zimmers,
col. 12, ll. 33-66.
Claim 1 recites “converting the first message to one or more gateway
messages,” wherein “converting further comprises reformatting, for each of
the one or more gateway messages, the first message . . . to a format in
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which the communication gateway associated with the gateway message will
accept.” The Examiner adopts the rejection proposed by Requestors (RAN
13), which includes the finding that a Table I packet is a first message and a
Table III packet is a gateway message. See Req., Ex. CC, at 8-10.
Owner first contends that Zimmers fails to disclose reformatting a first
message into a gateway message. See O. App. Br. 12-13. Owner argues that
the Delaware District Court construed “reformat” to mean “rearranging the
information provided within the first message, which may include arranging
differently, parsing, extracting, dissecting, and/or stripping.” O. App. Br. 12
and Ex. X.A., at 2. Owner asserts that the District Court’s construction is
consistent with dictionary definitions. See O. App. Br. 12-13 and Exs. IX.G,
IX.H. From this, Owner concludes that “the reformatting step of claim 1
requires that the message content in the first message . . . be included in the
gateway message in rearranged form.” See O. App. Br. 13. At the hearing,
Owner further identified column 22, line 29, through column 23, line 40, of
the ’428 patent as supporting this construction. See Transcript of Oct. 23,
2013, Hearing (“Tr.”) at 28:19-29:13.
Owner argues that the Table III packet is an entirely new message
rather than a reformatted message and that “the incoming [Table I] message
is discarded entirely, not reformatted as recited in claim 1.” O. App. Br. 12-
13. Owner also argues that because the Table III packet includes new
information not provided in its corresponding Table I packet, the Table III
packet is a new message that contains different information from the Table I
packet and thus is not a rearrangement or reformatting of the Table I packet.
See O. App. Br. 13.
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Requesters respond that Zimmers discloses that the Table III packet
does include information from the Table I packet, namely the “Notification
Event” and “Priority Level” fields. Req. Resp. Br. 6-7. Requesters further
note that a construction of “reformatting” that requires identical, but
rearranged, information in the Table I and Table III packets would be
inconsistent with the language of claim 1, which recites “forming an address
for each of the one or more gateway messages to include the domain name
information associated with the communication gateway or the user
identification information associated with the registered user receiving the
second message.” See Req. Resp. Br. 7. According to Requesters, the
address for each gateway is additional information in a gateway message not
in the first message. See id.
We agree with Requesters. The plain language of claim 1 does not
require that the gateway message and first message contain identical content
after reformatting; rather, the claimed gateway message may contain some
of the same content along with additional information particular to the
gateway receiving the gateway message. Such a broad but reasonable
interpretation of the claimed reformatting is consistent with the District
Court’s construction and with the portion of the Specification Owner cites.
For example, the Specification explains that the described “converting
method” includes “retrieving parameters from a database that are associated
with the communication gateway to which the gateway alert message is
intended.” ’428 patent, col. 22, ll. 33-36. After those parameters are
retrieved, the first message is reformatted to a format that can be accepted by
the gateway, and an address is formed for the gateway message. See ’428
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patent, col. 22, ll. 50-62. This portion of the ’428 patent does not specify
whether the entire content of the first message is included in the gateway
message. However, as Requesters point out (Req. Resp. Br. 7), another
portion of the Specification provides that in one embodiment, only some
portions of a parsed first message (e.g., “only the actual textual part of the e-
mail”) are included in the gateway messages. ’428 patent, col. 11, ll. 4-11.
Similar to the ’428 patent, Zimmers discloses receiving a first (Table
I) message, querying a database for information particular to a receiving
gateway, and generating a message in Table III format that includes some of
the information from the first message along with the queried information
particular to the recipient gateway. Zimmers, col. 6, l. 46-col. 7, l. 28, col.
11, ll. 28-34. Comparison of Zimmers’ Table I and Table III show that
Table I packets and Table III packets have fields in common, although in
different places within the respective tables. Compare Zimmers, col. 7, ll. 8-
28 with id. at col. 12, ll. 37-48. Thus, Table I and Table III packets have
some overlapping information rearranged or in different formats. Table I
messages are not “discarded entirely” (O. App. Br. 12). Rather, some of
their information is incorporated into Table III packets. Table III packets are
not “entirely new message[s]” (O. App. Br. 13), as they incorporate
information from Table I messages. Thus, Zimmers discloses reformatting a
first message.
Owner next contends that Zimmers fails to disclose reformatting a
first message into “a format in which the communication gateway associated
with the gateway message will accept and perform operations,” as recited in
claim 1. See O. App. Br. 13-14. Owner argues that none of the fields or
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values in Table III enables a packet to be accepted and processed by a
communication gateway. See id. However, as Requesters note, Zimmers
discloses that Table III “illustrates the format of packets transferred from
database query system 112 to switch host 130 and web server 114 to cause
an alert to be delivered.” Req. Resp. Br. 7 (quoting Zimmers, col. 12, ll. 33-
36). Table III messages are not rejected by their recipients. Rather, the
Table III packet format is one that a switch host or a web server will accept
and use to generate an alert (i.e., process the Table III packet). We note that
Owner does not challenge persuasively that a switch host and a web server
are communication gateways.
Owner also argues that the format of Table III packets is the same
regardless of the gateway that receives it. See O. App. Br. 14. However,
assuming this is true, we agree with Requesters (Req. Resp. Br. 7-8) that
Owner’s argument is not commensurate in scope with the claim language.
Owner further contends that Zimmers does not disclose “transferring
each of the one or more gateway messages to one or more corresponding
communication gateways for distribution of the second message by the one
or more communication gateways to each of the registered users associated
with at least one message group,” as recited in claim 1. O. App. Br. 15
(emphasis Owner’s). The Examiner finds that Zimmers’ Table III packets
are gateway messages and the alerts ultimately sent to the recipients are the
second messages. See RAN 11, 13.
According to Owner, “claim 1 is directed to a method where a single
gateway message is used to generate a second message that is distributed to
multiple users associated with a message group.” O. App. Br. 15. Owner
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argues that a single Table III packet of Zimmers is not distributed to more
than one registered user; instead, Owner argues that each Table III packet
contains a single station identifier. See id. Thus, Owner contends that “in
Zimmers, when the information in the Table III packet (the alleged gateway
message) is used to generate an alert notification (the alleged second
message), the alleged second message is delivered to only one of the
registered users because there is only one station identifier contained
therein.” Id. Owner characterizes this as part of a loop function in Zimmers,
in which messages are sent one at a time to registered users. See O. App.
Br. 16.
Requesters respond that Owner reads claim 1’s language too
narrowly. Requesters point out that claim 1 recites “determining . . . one or
more user terminals to receive a second message,” converting the first
message “to one or more gateway messages,” and transferring “each of the
one or more gateway messages to one or more corresponding
communication gateways for distribution of the second message by the one
or more communication gateways.” Req. Resp. Br. 8. According to
Requesters, this claim language, taken together, is broad enough to
encompass delivery of one second message to one user and to one user
terminal as well as using multiple gateway messages to deliver multiple
second messages to multiple users. See id. Requesters further note that
claim 1 recites “the registered user receiving the second message” rather
than registered users. See id.
We agree with Requesters. The plain language of claim 1
encompasses determining one user terminal to receive a second message,
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that terminal being associated with one registered user. In that case, the first
message is converted to one gateway message. That gateway message is
transferred to one corresponding communication gateway for distribution of
the second message by the one communication gateway to the one registered
user associated with at least one message group. Owner does not dispute
that Zimmers discloses transferring one Table III message to one
communication gateway for distribution of one alert by the gateway to one
user associated with a message group. See O. App. Br. 15. Thus, we are not
persuaded that the Examiner erred in rejecting claim 1.
Accordingly we sustain the rejection of independent claim 1 and
dependent claims 5 and 9, which are not argued separately with particularity.

Obviousness Rejection of Claim 8
Claim 8 depends on claim 1 and adds “in which the elapsed time from
the first message being initiated by the alert originator to the time that at
least one intended user terminal receives a corresponding second message is
within two seconds.” The Examiner essentially adopts the rejection
proposed by Requesters. See RAN 13. According to the Request, Zimmers
describes a system that provides notifications “quickly and accurately,” and
teaches communication technology that is understood to be nearly
immediate, such as email and TCP/IP. Req., Ex. CC, at 38 (quoting
Zimmers, col. 14, ll. 15-17). According to the Request, Zimmers recognizes
that “[s]ubstantial increases in lead-time detection should contribute to more
effective notification and ultimately more lives saved.” Req., Ex. CC, at 38-
39 (quoting Zimmers, col. 1, ll. 43-45). The Request argues that such
concerns, highlighted in Zimmers, would have motivated a skilled artisan to
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provide Zimmers’ notifications within about two seconds of initiation.
See Req., Ex. CC, at 38-39.
Relying on a Declaration from Dr. Richard Taylor, a Professor of
Information and Computer Sciences at the University of California, Irvine
(“Taylor Decl.”), Owner argues that Zimmers teaches an inefficient
approach to notification that serially generates messages rather than
delivering messages to users in parallel. See O. App. Br. 18 (citing Taylor
Decl. ¶ 10). However, claim 8 recites only the elapsed time from when a
first message is initiated and a second message ultimately is received by at
least one intended user terminal. Claim 8 does not recite that the elapsed
time for all intended user terminals to receive the second message is within
two seconds. Thus, an argument that Zimmers is inefficient because it takes
longer than two seconds to deliver serially all messages is not persuasive.
Owner also argues that Zimmers is inefficient in that “a message sent
to an end user using the system disclosed in Zimmers is processed several
times and proceeds through several steps from the time when the notification
is initiated to when at least one end user receives the alert message.”
O. App. Br. 19. Specifically, Owner argues that in Zimmers, a notification
is received from a satellite, telephone, or web server (col. 6, ll. 47-52; col. 7,
ll. 2-6); processed by a parser and a database query system (col. 7, ll. 2-6;
col. 11, ll. 27-29); sent to a web server or switch host computer (col. 12, ll.
32-35; col. 13, ll. 20-33); and then sent to a recipient over the Internet or a
telephone network (id.). See O. App. Br. 19. However, Zimmers’
notification system is similar in complexity to the ’428 patent’s preferred
embodiment, which also receives an alert over the Internet (col. 4, ll. 40-43,
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55-56); processes the alert using a message engine, which includes a parser
and a database system (col. 9, ll. 35-39; col. 10, ll. 20-33); sends a message
to a gateway, which can be an access point to the Internet or a telephone
network (col. 5, ll. 16-36; col. 7, ll. 11-18); and then sends a message to a
recipient over the Internet or telephone network (id.). Thus, Zimmers is not
significantly more complex such that a person of ordinary skill would expect
Zimmers to be slower than the ’428 patent’s preferred embodiment, at least
as to the delivery one message to a user terminal.
Owner further contends that Zimmers does not indicate that its system
is capable of delivering messages within two seconds, and in fact recognizes
that its system is not capable of doing so. See O. App. Br. 19. Specifically,
Owner refers to Zimmers’ priority scheme for notifying some users before
others. See id. (citing Zimmers, col. 14, l. 25-col. 15, l. 53; col. 22, l. 60-col.
23, l. 4; col. 23, ll. 15-26). Requesters respond by arguing that
“[p]rioritizing the order in which messages are delivered is unrelated to the
time required to begin delivering them.” Req. Resp. Br. 10. Owner’s
argument again focuses on Zimmers’ delivery of all messages in a serial
fashion, when claim 8 only recites delivery of at least one second message.
Thus, Owner’s argument is unpersuasive.
Requesters argue that delivering a message within two seconds would
have been the obvious result of routine experimentation to determine an
optimum or workable delivery time. See Req. Resp. Br. 9. We agree.
“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.” Application of Aller, 220 F.2d 454, 456 (CCPA 1955);
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accord Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322
(Fed. Cir. 2004) (Where ‘the difference between the claimed invention and
the prior art is some range or other variable within the claims . . . , the
[patentee] must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results.’” (quoting In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)). Because Zimmers
describes a system that is very similar to that of the ’498 patent and also
specifically states the importance of fast delivery of messages, a person of
ordinary skill in the art using routine experimentation to optimize the system
taught in Zimmers would have arrived at a system capable of initiating alerts
and delivering corresponding alert notifications within two seconds.
Accordingly, we sustain the rejection of claim 8.

Obviousness Rejection of Claims 2, 3, 10, and 11
Claims 2, 3, 10, and 11 depend directly or indirectly on claim 1. The
Examiner rejects claims 2, 3, 10, and 11 essentially for the reasons stated in
the Request. See RAN 14 (citing Req. 14-16; Ex. CC, at 40-55). Like
Zimmers, Bryan teaches an alert distribution system that collects enrollment
information from users seeking to receive alerts. See Req., Ex. CC, at 42-43.
According to Bryan, “[i]ntended recipients for the alerts are presented with
templates that allow the individuals to input contact and schedule
information for receiving the information alerts.” Bryan, Abstract; col. 5, ll.
37-47. The templates are defined by an administrator. See Bryan, col. 5, ll.
59-64.
Owner argues that Bryan’s use of a template does not teach collecting
information “in response to questions” defined by an administrator. O. App.
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Br. 29. Owner cites to the Taylor Declaration, which states that this claim
limitation is not met by Bryan and that “[a]t most, Bryan can ‘allow the
users to select information sources, keywords for searching the
sources, and spoken vocabulary words for accessing the search results.’”
Taylor Decl. ¶15 (quoting Bryan, col. 5, ll. 44-47). Requester responds that,
to the extent Owner seeks to construe “question” restrictively to exclude
Bryan’s templates requesting information from users, Owner has not pointed
to anything in the Specification warranting such a construction. See Req.
Resp. Br. 14. We agree with Requesters. Owner has not shown any
definition or restrictive usage of “question” in the Specification that suggests
this claim term should be read restrictively.
Owner also contends that Bryan teaches away from a combination
with Zimmers. See O. App. Br. 27-28. According to Owner, Bryan’s
disclosure of end users configuring and customizing the alerts they receive
teaches away from Zimmers’ technique of creating alerts straight from data
feeds and sending system-determined, pre-stored text to recipients. See id.
(citing Taylor Decl. ¶ 14). We are not persuaded. Although there are
differences between Zimmers and Bryan, Owner has not shown persuasively
that a person of ordinary skill, upon reading Bryan or Zimmers, “would be
discouraged from following the path set out in the reference[s], or would be
led in a direction divergent from the path that was taken by the applicant.”
Gurley, 27 F.3d at 553. Moreover, as Requesters point out (Req. Resp.
Br. 13), Zimmers teaches allowing subscribers to specify preferences
regarding which notifications they receive. See Zimmers, col. 16, l. 57-col.
17, l. 11. This aspect of Zimmers, for example, predictably could be
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improved through Bryan’s teaching to “collect[] information from each user
in response to questions defined by an administrator associated with the
message group,” as recited in claim 2.
In sum, we are not persuaded that the Examiner erred in concluding
that claim 2 would have been obvious over Zimmers and Bryan.
Accordingly, we sustain the rejection of claim 2 and claims 3, 10, and 11,
which are not argued separately with particularity.

Invention Date of the ’428 Patent
Owner seeks to disqualify Bryan as prior art by establishing an
invention date earlier than the ’428 patent’s filing date. An owner of a
patent under reexamination “may submit an appropriate oath or declaration
to establish invention of the subject matter of the rejected claim prior to the
effective date of the reference or activity on which the rejection is based.”
37 C.F.R. § 1.131(a). To establish an earlier invention date, Owner offers
declarations of Messrs. Brabec, Park, and Tiene, three inventors named on
the ’428 patent, each of which attaches the same white paper describing a
“REACT” product. See O. App. Br. 24-26
Requesters argue that the white paper does not show any disclosure of
the claimed gateways or gateway messages. See Req. Resp. Br. 12. Owner
admits that the white paper itself does not disclose all of the limitations of
the ’428 patent’s claims but argues that the declarations together with the
white paper do. See O. App. Br. 24-26.
Owner contends that an “accompanying exhibit need not support all
claimed limitations, provided that any missing limitation is supported by the
declaration itself.” O. App. Br. 25 (quoting MPEP § 715.07(I)). However,
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“a declaration by the inventor to the effect that his or her invention was
conceived or reduced to practice prior to the reference date, without a
statement of facts demonstrating the correctness of this conclusion, is
insufficient to satisfy 37 CFR 1.131.” MPEP § 715.07(I) (citing In re
Borkowski, 505 F.2d 713, 718 (CCPA 1974) (“The affidavits for the most
part consist of vague and general statements in the broadest terms as to what
the exhibits show along with the assertion that the exhibits describe a
reduction to practice. This amounts essentially to mere pleading,
unsupported by proof or showing of facts.”)).
Owner argues that the white paper describes “a flexible mass
notification system capable of reaching users through multiple devices and
accounts, that can scale to tens of thousands of users” and “formatting
messages for specific end user devices.” O. App. Br. 25-26 (citing white
paper at 2-3). However, Owner does not cite to any disclosure in the white
paper evidencing (or corroborating) possession of the claimed gateways or
gateway messages. The declarations themselves also do not contain
sufficient facts that persuasively support possession of gateways or gateway
messages. Rather, the declarations merely recite general conclusions that
the inventors conceived of the invention by December 3, 2001, and state that
these general conclusions are corroborated by the white paper. See Brabec
Decl. ¶¶ 3, 7; Park Decl. ¶¶ 4, 6; Tiene Decl. ¶¶4, 6. Thus, Owner has not
shown sufficient facts that persuasively support a conclusion that the
inventors possessed the claimed gateway or gateway messages prior to the
date of the Bryan reference.
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Accordingly, Owner has not shown conception of the invention of the
’428 patent prior to the date of Bryan.
Because we conclude that Owner has not established an earlier
conception date for the ’428 patent, we do not reach the question whether
the inventors were diligent in reducing the invention to practice.

Secondary Considerations
Owner contends that secondary considerations, including commercial
success, long-felt need, and copying, evidence non-obviousness of claims 2,
3, 8, 10, and 11. See O. App. Br. 21-23, 29. None of these arguments is
persuasive.

Commercial Success
Owner contends that commercial embodiments of the ’428 patent, in
particular the REACT product, have generated millions of dollars in
revenue, citing to one paragraph of a declaration of named inventor Rick A.
Tiene. See O. App. Br. 21 (citing Tiene Decl. ¶ 15). Owner argues that
there is a nexus between this revenue and the claims of the ’428 patent
because claim 1 is directed to a mass notification method that is both flexible
and efficient and the REACT product fulfilled such a need. See O. App.
Br. 21.
Owner’s argument is unpersuasive for two reasons. First, as
Requesters argue (Req. Resp. Br. 10-11), the single paragraph of Mr.
Tiene’s declaration lacks evidentiary support to substantiate the claim that
the REACT product generated substantial revenue. See MPEP §
716.03(b)(IV) (“Gross sales figures do not show commercial success absent
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evidence as to market share, or as to the time period during which the
product was sold, or as to what sales would normally be expected in the
market.” (citing Cable Electric Prods., Inc. v. Genmark, Inc., 770 F.2d 1015
(Fed. Cir. 1985) (internal citations omitted)).
Second, as Requesters point out (Req. Resp. Br. 11), Mr. Tiene’s
declaration does not show a nexus between the alleged commercial success
and the claims of the ’428 patent. Owner’s arguments that the REACT
product furthered the ’428 patent’s general goals of flexibility and efficiency
are insufficient to show that any commercial success was due to the
particular features recited in the claims of the ’428 patent. See Western
Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1372-73 (Fed.
Cir. 2010).

Long-felt Need
“Establishing long-felt need requires objective evidence that an art
recognized problem existed in the art for a long period of time without
solution.” MPEP § 716.04(I). Owner contends that prior to the ’428 patent
and the REACT product, it was difficult to send alerts quickly to large
numbers of people, a problem that was highlighted during the September 11,
2001, terrorist attacks. See O. App. Br. 22. Owner supports this argument
with declarations from three of the named inventors. See id. (citing Tiene
Decl. ¶ 5; Brabec Decl. ¶ 5; Park Decl. ¶ 5). As Requesters point out (Req.
Resp. Br. 11), none of these declarations establishes a recognized problem
that existed in the art for a long period of time. Instead, the declarations
simply assert, without supporting evidence, that there was a market need
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during the September 11 terrorist attacks for a product that allowed someone
to alert quickly a large number of people. See Tiene Decl. ¶ 5; Brabec Decl.
¶ 5; Park Decl. ¶ 5. This does not show a long-felt need satisfied by the ’428
patent. See Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1332-33 (Fed. Cir. 2009).

Copying
Owner contends that copying of the invention of the ’428 patent is
evidenced by the infringement of Requesters and others accused in the
Delaware district court action. See O. App. Br. 23. Owner admits that the
District Court found non-infringement on summary judgment but argues that
it asked the District Court to reconsider its ruling. See id. n. 2. The District
Court’s ruling has since been affirmed by the Federal Circuit. See Cooper
Notification, 2013 WL 4611752, supra.
Even assuming the District Court’s ruling was incorrect, the Federal
Circuit has made clear that
[n]ot every competing product that arguably fails within the
scope of a patent is evidence of copying. . . . Rather, copying
requires the replication of a specific product. This may be
demonstrated either through internal documents; direct
evidence such as disassembling a patented prototype,
photographing its features, and using the photograph as a
blueprint to build a virtually identical replica; or access to, and
substantial similarity to, the patented product (as opposed to the
patent).
Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed.
Cir. 2004) (internal citations omitted); accord Wyers v. Master Lock Co.,
616 F.3d 1231, 1246 (Fed. Cir. 2010). Owner has offered no such evidence.
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REQUESTERS’ APPEAL OF NON-ADOPTED REJECTIONS
At the hearing, Requesters stated that, for various reasons, they now
agree with the Examiner’s interpretation of claim 12, they concede their
appeal, and they ask the Board to enter a summary affirmance of the
Examiner’s decisions as to their appeal. Tr. 18:14-15; 18:20-19:1; 19:4-6,
10-12, 18-21; 32:19 (“our position is that the examiner was correct.”).3
Given that Requesters no longer assert that the Examiner erred in
declining to adopt Requesters’ proposed rejections initially challenged in
Requesters’ Appeal Brief, we summarily sustain the Examiner’s decision not
to reject (1) claims 1, 4-14, and 17 as anticipated by Moussavian; (2) claims
2, 3, 15, 16, and 18 as obvious over Moussavian and Bryan; (3) claims 1-5,
9-16, and 18 as anticipated by Piccioni; (4) claims 6-8 and 17 as obvious
over Piccioni and Bryan; (5) claims 4, 6, 7, 12-14, and 18 as anticipated by
Zimmers; (6) claim 17 as obvious over Zimmers; and (7) claims 15 and 16
as obvious over Zimmers and Bryan.

3 Despite Requesters’ repeated requests for the Board to summarily affirm
the Examiner, Requesters at some points in the hearing seemed to condition
their request for summary affirmance on the Board “affirming the
examiner’s rulings and interpretations with respect to those claims.”
Tr. 19:22-20:2. See also, Tr. 32:13-16. Because “requesters concede their
appeal and ask that the Board enter a summary affirmance” (Tr. 18:14-15),
there is no reason for the Board to decide whether or not the Examiner’s
claim interpretations are correct because Requesters’ concession renders
moot any issues regarding the Examiner’s actions (Tr. 19:10-11) and we
therefore decline to render any decision regarding the Examiner’s claim
interpretations.
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DECISION
The Examiner’s decision to adopt Requesters’ proposed rejection of
claims 1, 5, and 9 under 35 U.S.C. § 102(e) as anticipated by Zimmers is
affirmed;
The Examiner’s decision to adopt Requesters’ proposed rejection of
claim 8 under 35 U.S.C. § 103(a) as obvious over Zimmers is affirmed;
The Examiner’s decision to adopt Requesters’ proposed rejection of
claims 2, 3, 10, and 11 under 35 U.S.C. § 103(a) as obvious over Zimmers
and Bryan is affirmed;
The Examiner’s decision not to adopt Requesters’ proposed rejection
of claims 8 and 17 under 35 U.S.C. § 102(e) as anticipated by Zimmers is
affirmed;
The Examiner’s decision not to adopt Requesters’ proposed rejection
of claims 4, 6, 7, 12-14, and 18 under 35 U.S.C. § 102(e) as anticipated by
Zimmers is affirmed;
The Examiner’s decision not to adopt Requesters’ proposed rejection
of claim 17 under 35 U.S.C. § 103(a) as obvious over Zimmers is affirmed;
The Examiner’s decision not to adopt Requesters’ proposed rejection
of claims 15 and 16 under 35 U.S.C. § 103(a) as obvious over Zimmers and
Bryan is affirmed;
The Examiner’s decision not to adopt Requesters’ proposed rejection
of claims 1, 4-14, and 17 under 35 U.S.C. § 102(e) as anticipated by
Moussavian is affirmed;
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The Examiner’s decision not to adopt Requesters’ proposed rejection
of claims 2, 3, 15, 16, and 18 under 35 U.S.C. § 103(a) as obvious over
Moussavian and Bryan is affirmed;
The Examiner’s decision not to adopt Requesters’ proposed rejection
of claims 1-5, 9-16, and 18 under 35 U.S.C. § 102(b) as anticipated by
Piccioni is affirmed; and
The Examiner’s decision not to adopt Requesters’ proposed rejection
of claims 6-8 and 17 under 35 U.S.C. § 103(a) as obvious over Piccioni and
Bryan is affirmed.
Requests for extensions of time in this proceeding are governed by
37 C.F.R. §§ 1.956 and 41.79(e).

AFFIRMED

cc:
PATENT OWNER:

Rajesh D. Patel
King & Spalding LLP
1100 Louisiana Street, Ste. 4000
Houston, TX 77002-5213

THIRD PARTY REQUESTERS:

David L. McCombs
Haynes and Boone, LLP
IP Section,
2323 Victory Avenue, Suite 700
Dallas, TX 75219

peb