Ex Parte 7,430,425 et al

Patent Trial and Appeal Board

Apr 15, 2014

95001222 (P.T.A.B. Apr. 15, 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.
95/001,222 08/19/2009 7,430,425 9369-003 8884
93344 7590 04/16/2014
Flachsbart & Greenspoon
333 N. Michigan Avenue
27th Floor
Chicago, IL 60601-3901
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/16/2014 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
________________

SYBASE 365, INC.
Requester

v.

INTERCARRIER COMMUNICATIONS LLC
Real Party In Interest and Appellant
________________

Appeal 2013-007296
Reexamination Control 95/001,222
Patent 7,430,425 B2
1

Technology Center 3900
________________

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

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

1
The patent involved in this reexamination appeal proceeding (the “‟425
Patent”) issued to Chris Knotts on September 30, 2008. InterCarrier
Communications LLC (“Appellant”) states that it is the real party in interest
as the exclusive licensee of title holder TeleCommunications Systems, Inc.
See Appellant‟s June 19, 2012, Appeal Brief (“Appeal Br.”) 1.
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A. STATEMENT OF THE CASE
Introduction
This reexamination proceeding arose from a third-party request for
inter partes reexamination filed on August 19, 2009 (“Request”) by Sybase
365, Inc. (“Requester”). Requester has not participated in the appeal
process. Appellant appeals under 35 U.S.C. §§ 134(b) and 315(a) from the
Examiner‟s rejections of claims 1-31.
2
An oral hearing was conducted on
October 2, 2013. A transcript (“Tr.”) was made of record on January 14,
2014.
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm.
The Invention
The invention relates to digital messaging services provided between
different carriers and/or between subscribers in different air interface
standards. Spec. col. 1, ll. 26-28. Subscriber to subscriber digital messages
containing user data are routed between carriers‟ networks using an Inter-
Carrier messaging module (ICM) with appropriate MIN
3
/carrier/carrier
routing look-up capabilities. Abstract. If the recipient is outside of the
sender‟s carrier network, the ICM determines the appropriate carrier for the
recipient, appends the appropriate syntax to the digital message containing
user data to allow internet protocol or other standardized communication
techniques between message service centers of the two carriers, and routes
the digital message containing user data to the destination carrier. Abstract;

2
Appellant relies on its Appeal Brief filed on June 19, 2012, and its Rebuttal
Brief (“Reb. Br.”) filed on October 17, 2012.
3
A MIN is a Mobile ID Number. Spec. col. 9, ll. 56-57; App. Br. 9.
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Spec. col. 5, l. 63-col. 6, l. 4. Short messages can be sent between networks
of different technologies using only a phone number. Spec. col. 5, ll. 50-53.
Claim 1 is illustrative of the appealed subject matter and is reproduced
below (App. Br. Claims App‟x A-1):
1. In a message distribution center, a system for
processing a digital message with user payload addressed
with a phone number only, comprising:
a database associating subscriber MIN numbers
with servicing carriers;
a database associating carriers with routing syntax;
and
an inter-carrier messaging module to receive a
digital message with user data payload addressed with
only a MIN number, to perform a lookup in said database
associating subscriber MIN numbers and in said database
associating carriers with routing syntax, and to add
routing syntax determined from said lookup to said MIN
number.

The Prior Art
Bennett et al. 7,209,950 B2 April 24, 2007
(“Bennett”) Filed Aug. 2, 2001
The Rejection
Claims 1-31 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Bennett. See March 27, 2012, Right of Appeal Notice (RAN) 15
(incorporating Request 61-69, 187-211), 35.
The Declaration
During reexamination, Appellant submitted a Declaration under
37 C.F.R. § 1.131 by the inventor, Chris Knotts. The Declaration includes
two attachments. The first attachment is an April 6, 2001, e-mail, with its
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own attachment, a PowerPoint display (See Declaration p. 1 and App. Br. 6).
The second attachment is a May 7, 2001, Proposal. Id.
The Contentions
Appellant contends that Bennett is not prior art because the
Declaration and its Attachments show earlier conception, diligence, and
earlier reduction to practice, thus antedating Bennett. App. Br. 6-14.
Bennett‟s filing date is August 2, 2001. Appellant contends that the
Declaration establishes conception and reduction to practice before May 7,
2001, and diligence to the filing of a parent‟s regular Patent Application on
November 1, 2001. App. Br. 1, 7, 13.
Even if Bennett is prior art, Appellant contends that Bennett does not
show the clamed inventions. App. Br. 14-21.
The Examiner contends that the Declaration does not antedate Bennett
because the Declaration does not establish conception or diligence. RAN 7.
B. ISSUES
Are the Declaration and its attachments sufficient to antedate Bennett?
Does Bennett anticipate the claims?
C. ANALYSIS
The Declaration
37 C.F.R. 1.131 (“Rule 131”) provides in pertinent part:
(b) The showing of facts shall be such, in character
and weight, as to establish reduction to practice prior to
the effective date of the reference, or conception of the
invention prior to the effective date of the reference
coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the
application. Original exhibits of drawings or records, or
photocopies thereof, must accompany and form part of
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the affidavit or declaration or their absence must be
satisfactorily explained.

The application that eventually resulted in the ‟425 Patent has an
effective priority filing date of November 1, 2001. RAN 7; App. Br. 1. An
effective Rule 131 Declaration thus must establish reduction to practice prior
to November 1, 2001, or conception of the invention prior to that date
coupled with due diligence to a subsequent reduction to practice or to the
filing of the application.
Appellant’s Declaration Does Not Antedate Bennett

The Declaration, standing alone, is insufficient to
show conception of the claimed invention
“Conception is the formation in the mind of the inventor of a definite
and permanent idea of the complete and operative invention, as it is
therefore to be applied in practice.” Singh v. Brake, 317 F.3d 1334, 1340
(Fed. Cir. 2003) (internal quotation marks omitted) (quoting Kridl v.
McCormick, 105 F.3d 1446, 1449 (Fed. Cir. 1997)).
Appellant contends that the Declaration provides testimony that the
April 6, 2001, PowerPoint and the May 7, 2001, Proposal show Mr. Knotts‟
invention of the claimed subject matter before Bennett‟s August 2, 2001,
date. App. Br. 6. He further contends that because MPEP § 715.07 does not
require corroboration of a Rule 131 Declaration, “Mr. Knotts‟ statement
alone should have been held sufficient.” App. Br. 6-7.
Under Rule 131(b), there must be a showing of facts of such
“character and weight” as to establish conception of the claimed invention.
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The Declaration is a one-page document
4
containing the following
conclusory statements regarding conception:
The April 6, 2001 Email shows that I conceived The
Invention on or prior to April 6, 2001.

The attached “Proposal for Message Distribution Center
Inter-Carrier Messaging Services” (“May 7, 2001
Proposal”), completed by the company that employed
me, on or before May 7, 2001, further evidences my
conception of The Invention before May 7, 2001.

Mr. Knotts‟ general statements about what is shown in the attachments
regarding conception do not establish that the inventor conceived of the
specific structural elements recited in claim 1. As such, in essence, we are
left to interpret the Declaration and the two attachments and to consider how
the device and method purportedly described and illustrated in the two
attachments corresponds to the claimed invention. Without any explanation
of how the description and illustrations in the attachments relate to the
claimed invention, the Declaration standing alone is not of sufficient weight
or character to show conception of the subject matter of claim 1.
The Proposal is insufficient to show conception and reduction
to practice of the claimed invention prior to May 7, 2001
The filing of a patent application is a constructive reduction to
practice of the invention disclosed therein. Frazer v. Schlegel, 498 F.3d
1283, 1288 (Fed. Cir. 2007). In order to establish actual reduction to
practice, an inventor must have (1) constructed an embodiment or performed
a process that met all the claim‟s limitations; and (2) determined that the

4
The second page contains only part of an “under penalty of perjury”
declaration and Mr. Knotts‟ signature.
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invention would work for its intended purpose. Teva Pharmaceutical
Industries Ltd. v. AstraZeneca Pharmaceuticals LP, 661 F.3d 1378, 1383
(Fed. Cir. 2011). The inventor must give a clear explanation of the exhibits
pointing out exactly what facts are established and relied on by the inventor.
In re Borkowski, 505 F.2d 713, 718-19 (CCPA 1974). It is necessary to
identify specific acts and dates. See In re Harry, 333 F.2d 920, 922 (CCPA
1964). (Rule 131 affidavit insufficient because “[i]t asserts that facts exist
but does not tell what they are or when they occurred.”).
Appellant contends that the May 7, 2001, Proposal demonstrates both
earlier conception and earlier reduction to practice. App. Br. 7. More
specifically, Appellant contends that “[t]he Proposal describes a working,
existing Message Distribution Center („MDC‟) that became the exact
preferred embodiment of each of claims 1-31.” Id. Appellant‟s counsel in
the Appeal Brief (at pp. 7-10, 12-13) and at the hearing (Tr. 7-14) advances
some theories with respect to what the Proposal might show. While attorney
arguments are helpful when directing us to evidence in the record, the
arguments themselves do not constitute evidence. Arguments of counsel
cannot take the place of evidence in the record. See, e.g., Meitzner v.
Mindick, 549 F.2d 775, 782 (CCPA 1977); In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974).
An exhibit accompanying a Rule 131 declaration need not support all
claimed limitations, provided that any missing limitation is supported by the
declaration itself. MPEP § 715.07 (citing Ex parte Ovshinsky, 10 USPQ2d
1075 (BPAI 1989). The Knotts Declaration, however, fails to address any
claimed limitations with testimony showing how the Proposal discloses
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conception and/or reduction to practice of the claimed invention. We are left
to speculate how the claims on appeal might have been thought by the
inventor named in the ‟425 Patent to relate to the Proposal that is alleged to
show conception and reduction to practice of some “invention” prior to the
critical date.
In fact, Appellant concedes that a critical part of the Proposal, Figure
3-2 on page 4 of the Proposal, is “difficult to read.” Moreover, page 4 of the
Proposal explicitly states that the flow depicted in Figure 3-2 depicts only a
“proposed” flow. Appellant does not explain when, if ever, the flow
illustrated in Fig. 3-2 was actually reduced to practice, rather than only being
proposed.
Accordingly, Appellant has not demonstrated how the Proposal shows
conception and reduction to practice of the claimed invention.
The April 6, 2001, Email and its attachment are
insufficient to show conception and reduction to practice
of the claimed invention prior to April 6, 2001
Appellant contends that the April 6, 2001, PowerPoint also shows that
“the claimed MDC actually existed and worked for its intended purpose.”
App. Br. 10. Appellant also advances some theories with respect to what the
PowerPoint might show. App. Br. 10-11. But the Declaration fails to
provide requisite testimony. Again, moreover, attorney argument cannot
take the place of evidence in the record.
Accordingly, Appellant has not demonstrated how the Email and its
attachment show conception and reduction to practice of the claimed
invention.
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There is insufficient showing of diligence up
to constructive reduction to practice
“The Patent Office must have such facts as will enable it and its
reviewing courts to judge whether there was construction and when it
occurred, or whether there was diligence.” In re Harry, 333 F.2d at 922.
The Knotts Declaration states the following regarding diligence:
Copies of both the April 6, 2001 Email, and the May 7,
2001 Proposal, were forwarded to outside patent counsel
for preparation into formal patent filings at the U.S.
Patent & Trademark Office.

Outside patent counsel diligently prepared U.S.
Provisional Patent Application No. 60/316,973, and filed
the same on September 5, 2001.

Diligent preparation of the regular patent application
continued, and on or before October 30, 2001, a draft
regular U.S. Patent Application was completed by
outside patent counsel, and forwarded to me for my
review.

I performed a detailed review of a final copy of the draft
regular US Patent Application, and executed the
Declaration on October 30, 2001.

Two days later, on November 1, 2001, U.S. Appl. No.
09/985,032 was filed at the United States Patent and
Trademark Office. The 7,430,425 is a continuation of
this application.

Mr. Knotts does not provide any testimony or evidence about how
diligently the attorney worked on the patent application prior to its
submission to the USPTO as a constructive reduction to practice of the
claimed invention. To establish “diligence” under Rule 131, there must be
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evidence of what activities were undertaken by the attorney to prepare the
application for submission; for example on what days the attorney worked
on the application and whether it was worked on immediately or in the
chronological order in which it was received. Bey v. Kollonitsch, 806 F.2d
1024, 1027-28 (Fed. Cir. 1986). All that is required is “reasonable
diligence” on the part of a patent attorney. Id. However, here the record is
silent on what specific steps the attorney took in preparing the application.
Consequently, it cannot be determined on this record whether the attorney
acted with “due diligence” as required by Rule 131(b).
Moreover, the burden of proof to show diligence rests with Appellant,
not the Examiner or the Board, insofar as Appellant contends under Rule
131 that Bennett is not prior art.
Without citing supporting authority, Appellant contends that “[t]he
Board may additionally take administrative notice of evidence of diligence
in the patent attorney‟s declaration under 37 C.F.R. 1.131 filed in a co-
pending reexamination (Ser. No. 95/001,271 . . . The same declaration was
not formally submitted in the present proceeding because the Examiner did
not argue lack of diligence for the first time until the RAN.” App. Br. 13.
At the hearing, Appellant generally asserted that MPEP § 1211.03 “via
strong implication” gives the Board the power to receive a new declaration.
Tr. 4:13-15. We disagree. Both examples in the MPEP refer to declarations
that are actually filed with the Office before jurisdiction passes to the Board.
In any event, the MPEP “does not have the force of law or the force of the
rules in Title 37 of the Code of Federal Regulations.” MPEP Forward
(2014).
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We decline to take administrative notice of an attorney declaration
filed in another case or to receive a new declaration at this stage of the
present reexamination proceeding at least because the Examiner in the
present reexamination did not have an opportunity to review the attorney‟s
declaration in the first instance and because of the Office‟s statutory
obligation to process reexaminations “with special dispatch.” See 35 U.S.C.
§ 305.
Accordingly, we conclude that Appellant has not shown diligence
from conception to the November 1, 2001, filing date.
For all of the above reasons, Appellant has not persuaded us that the
Knotts Declaration under Rule 131 is sufficient to antedate the Bennett
reference or that the Examiner erred in reaching the same conclusion.
Accordingly, we find that the Bennett reference is prior art available against
Appellant‟s claimed invention.
The Rejection of the Claims as Anticipated By Bennett
Claims 1-15, 23-28
Bennett involves a method for routing a message from a sender in a
first digital mobile network to a receiver in a second different digital mobile
network. Col. 1, ll. 63-66; col. 4, ll. 29-32. “The sender of a message may
identify a destination [associated] with an end user, a corresponding device,
and a user‟s mobile identification number (MIN) or phone number.” Col. 4,
ll. 62-65. That is, “[e]nd point users may be identified, for example, by a
MIN or phone number included, for example, in the message entered via the
web page, or e-mail, or other type of communication which is converted to
an SMS format.” Col. 7, ll. 39-43; col. 26, ll. 21-23(“The sender 20 sends a
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message to the recipient 16, the sender specifies the recipient[‟]s MIN as [a
10 digit number], types his message and sends it to the server 24.”).
As indicated above, the Examiner rejected claim 1 as anticipated by
Bennett for the reasons stated in the Request. According to Appellant,
Bennett discloses three scenarios, two of which teach intra-carrier messaging
instead of the inter-carrier messaging required by claim 1 or the use of the
different carrier required by claims 7 and 15. App. Br. 14-16.
By adopting the reasons stated in the Request, the Examiner finds that
the MO
5
SMS
6
scenario illustrated in Bennett‟s Fig. 3A is an inter-carrier
scenario. See Request 189-190. See also RAN 37 (“the Examiner notes that
the third scenario is clearly inter-carrier”). Appellant refers to the MO SMS
embodiment as the third scenario (App. Br. 16); agrees that the third
scenario “might indeed be inter-carrier” (App. Br. 15) (emphasis omitted);
and concedes that the top example in Figure 3A “is closest to the claims.”
Tr. 15:13-16:4. In fact, Bennett specifically states that the MO SMS
embodiment shown in Figure 3A can be used in an inter-carrier scenario.
See Bennett col. 2, ll. 36-40 (In “Fig. 3 . . . an MO SMS (Mobile originating
SMS) user sends a message to a receiver using an SMS device the receiver
possibly residing on a different network.” (emphasis added)). We therefore
agree with the Examiner that the MO SMS embodiment illustrated at the top
of Bennett‟s Figure 3A is an inter-carrier embodiment.
Again by adopting the Request, the Examiner finds that Bennett
discloses “a digital message with user data payload addressed with only a

5
Mobile Originating. See Bennett col. 3, l. 32.
6
Short Messaging Service. See Bennett col. 1, l. 25.
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MIN number.” See Request 190 referring to Bennett col. 7, ll. 39-43(“End
point users may be identified, for example, by a MIN or phone number
included, for example, in the message entered via the web page, or e-mail, or
other type of communication which is converted to an SMS format.”).
See also Request 187-188 citing Bennett col. 4, ll. 62-65: “The sender of a
message may identify a destination [associated] with an end user, a
corresponding device, and a user‟s mobile identification number (MIN) or
phone number.”
Appellant contends that Bennett fails to disclose a “digital message
with user data payload addressed with only a MIN number” because Bennett
includes the MIN in the formatted text file derived from the SMS BODY
TEXT payload, and not as an address in an address field, thereby sending a
message and MIN, both combined within the SMS BODY TEXT. App.
Br. 18-19, citing Bennett Fig. 3A.
Nevertheless, the Examiner finds that
[t]he message is still addressed to the MIN when it is sent
and the same information exists in the new format, and
the MIN is the addressing data for the payload. That is, a
message addressed by the MIN is sent to the serving
system, even if it‟s wrapped up in a text file, especially
given that the MIN is extracted for making a new
message for the serving system.

RAN 37.

In response, and without providing any supporting evidence,
Appellant contends that Bennett does not disclose addressing a message with
only a MIN because Bennett “does not teach how the SMS BODY TEXT is
addressed at all to get it from a subscriber to the SMSC 26c and server 24.”
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App. Br. 20. Appellant‟s attorney argument, unsupported by evidence, does
not persuasively refute the Examiner‟s finding that Bennett does disclose
addressing a message with only a MIN. See Request 190, citing Bennett,
col. 7, ll. 39-43; Request 62, citing Bennett, col. 26, ll. 59-64: A user
“prepares the message with the recipient‟s number located . . . in the „to field
of the MO SMS device.” That is, Appellant does not persuasively explain
why these specific parts of Bennett fail to disclose the disputed claim
limitation. Instead, as thus shown, Appellant incorrectly asserts that “you
could turn Bennett upside down and sideways and you will not find any
disclosure of what the sending subscriber puts in the . . . address field.”
Tr. 17:2-4.
Accordingly, we are not persuaded that the Examiner erred in finding
that Bennett discloses “user data payload addressed with only a MIN
number” as recited in (1) claim 1; and (2) similar recitations recited in
claims 7 and 15. Putting aside for the moment a final conclusion regarding
claim 15, we therefore conclude that the Examiner did not err in rejecting (1)
claims 1 and 7; and (2) claims 2-6, 8-14, and 23-28 not argued separately
with particularity.
Claims 15-22 and 29-31
Claim 15 also recites, in part:
receiving from a first carrier an initial digital message
containing user data . . .
* * * * * * *
formulating a new digital message containing user data
including a body of said initial digital message . . .

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By incorporating the Request, the Examiner finds that Bennett
discloses these limitations. See Request 204, 206, citing Bennett col. 26, ll.
21-32 (describing a message that is reformatted, whereby the reformatted
message includes “a body” of the initial message). Referring to a different
part of Bennett (col. 27, ll. 33-34), Appellant contends that Bennett fails to
formulate a new digital message that includes a body of the initial digital
message. Appellant does not persuasively explain why Requester‟s specific
citation to column 26 fails to disclose the disputed limitation. Accordingly,
we are not persuaded that the Examiner erred in rejecting (1) claim 15; and
(2) claims 16-22 and 29-31 not argued separately with particularity.
CONCLUSIONS
The Examiner did not err in rejecting claims 1-31 as anticipated by
Bennett.
DECISION
The Examiner‟s rejection of claims 1-31 as anticipated by Bennett is
affirmed.

AFFIRMED
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
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.

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alw

PATENT OWNER:
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333 N. MICHIGAN AVE., 27
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FLOOR
CHICAGO, IL 60601

THIRD PARTY REQUESTER:
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1199 NEW YORK AVENUE, N.W.
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