Ex Parte 7804823 et al

Patent Trial and Appeal Board

Dec 16, 2016

95001680 (P.T.A.B. Dec. 16, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,680 07/08/2011 7804823 096933.000014 1267
KING & SPALDING
1180 PEACHTREE STREET , NE
ATLANTA, GA 30309-3521
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/16/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
J2 GLOBAL COMMUNICATIONS, INC.
Requester
XPEDITE SYSTEMS, LLC
Patent Owner
Appeal 2015-007820
Reexamination Control No. 95/001,680
Patent 7,804,823 B2
Technology Center 3900
Before STEPHEN C. SIU, DAVID M. KOHUT, and
JENNIFER L. McKEOWN, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION UNDER 37 C.F.R. § 41.77(f)
Appeal 2015-007820
Reexamination Control No. 95/001,680
Patent 7,804,823 B2
This is a Decision under 37 C.F.R. § 41.77(f). On October 15, 2013,
we issued a Decision on Appeal (Appeal No. 2013-007883, “Dec. on
App.”), whereby we affirmed the Examiner’s refusal to adopt the rejections
of claims 10-13 under 35 U.S.C. § 102(b) as anticipated by Saito,
Kuwahara, or Tanimoto, respectively, and reversed the Examiner’s refusal to
adopt the rejection of claims 1—9 and 14—19 under 35 U.S.C. § 102(b) as
anticipated by Saito, which we designated a new ground of rejection
pursuant to 37 C.F.R. § 41.77(b). Dec. on App. 9-10. On November 12,
2013, Patent Owner exercised its option under 37 C.F.R. § 41.77(b)(1) to file
a response requesting reopening of prosecution (Request to Reopen
Prosecution, “Req. to Reopen”), including amendments to claims 1 and 14,
which are the independent claims subject to the new ground of rejection.
Req. to Reopen 2, 5. Requester opted not to submit comments on Patent
Owner’s response pursuant to 37 C.F.R. § 41.77(c).
On January 27, 2014, we issued an Order under 37 C.F.R. § 41.77(d)
granting Patent Owner’s request to reopen prosecution and remanding the
inter partes reexamination to the Examiner. The Examiner issued a
Determination under 37 C.F.R. § 41.77(d) (“Ex. Det.”) on June 6, 2014. The
Examiner determined that the Patent Owner’s response overcomes the new
ground of rejection. Ex. Det. 7. Neither Patent Owner nor Requester filed
comments in response to the Examiner’s Determination pursuant to 37
C.F.R. §41.77(e).
In accordance with 37 C.F.R. § 41.77(f), this proceeding has returned
to us to reconsider the matter and issue a new decision. This Decision under
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Appeal 2015-007820
Reexamination Control No. 95/001,680
Patent 7,804,823 B2
37 C.F.R. § 41.77(f) is deemed to incorporate our earlier decisions, except as
indicated.
DISCUSSION
Claims 1—9
In the Decision on Appeal, we determined that Saito discloses a “data
network” as recited in claim 1 because “a ‘data network,’ construed broadly
but reasonably in light of the Specification,” reads on Saito’s parallel bus,
which transfers data from one component to another component. Dec. on
App. 4. Patent Owner amended independent claim 1 to specifically recite
“wherein the data network is outside the structure of the multi-function
peripheral device.” Req. to Reopen 2. The Examiner determines that this
amendment is akin to the data network described in the Specification (Ex.
Det. 8, citing Spec., Fig. 1, col. 2,11. 40—55) and that the amendment
overcomes the new grounds of rejection as to claim 1 and claims 2—9
dependent thereon (id.). As set forth above, neither Patent Owner nor
Requester filed comments in response to the Examiner’s Determination.
We agree with the Examiner that Saito fails to disclose a data network
outside the multi-function peripheral (MFP) device, as now recited in claim
1, because Saito’s parallel bus (Pb) is an internal component of
multifunction copy machine (MF1). See Saito, Fig. 2, col. 6,11. 21—23.
Thus, we agree with the Examiner that the amendments to independent
claim 1 set forth in the Patent Owner’s response overcome the new ground
of rejection as to claims 1—9.
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Reexamination Control No. 95/001,680
Patent 7,804,823 B2
Claims 14—19
In the Decision on Appeal, we determined that the limitation in claim
14 reciting “accepting image information via commands in hypertext
transfer protocol from the multiple-function peripheral device” does not
require that the commands be in hypertext transfer protocol (HTTP), but
rather requires using commands to accept image information in HTTP. Dec.
on App. 7. Given the Examiner’s finding that Saito discloses acquiring
image information via HTTP, we found that Saito discloses this limitation.
Id. (citing RAN 15—16).
Patent Owner amended independent claim 14 to specifically recite
“wherein the commands are in hypertext transfer protocol.” Req. to Reopen
5. The Examiner determines this amendment overcomes the new grounds of
rejection as to claim 14 and claims 15—19 dependent thereon. Ex. Det. 8.
As set forth above, neither Patent Owner nor Requester filed comments in
response to the Examiner’s Determination.
We agree with the Examiner. As the Examiner points out, although
Saito discloses a “Net application” that uses HTTP protocol to transfer
text/image information over the World Wide Web, Saito does not disclose
accepting image information by way of HTTP commands from the MFP
device. See RAN 15—16 (citing Saito, col. 17,1. 14—col. 18,1. 62). Absent
evidence or argument to the contrary, we agree with the Examiner that the
amendments to independent claim 14 set forth in the Patent Owner’s
response overcome the new ground of rejection as to claims 14—19.
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Reexamination Control No. 95/001,680
Patent 7,804,823 B2
CONCLUSION
Accordingly, the current status of the claims is that claims 1—19 are
not rejected.
In accordance with 37 C.F.R. § 41.79(a)(4), the “[pjarties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request
for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments
in opposition to the request and additional requests for rehearing must be in
accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R.
§ 41.79(e), the times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (d) of this section,
and for submitting comments under paragraph (c) of this section may not be
extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141—144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
AFFIRMED:37 C.F.R, $ 41.77(f)
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Appeal 2015-007820
Reexamination Control No. 95/001,680
Patent 7,804,823 B2
Patent Owner:
KING & SPALDING LLP
1180 PEACHTREE STREET NE
ATLANTA, GA 30309-4530
Third Party Requester:
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE. N.W.
WASHINGTON, DC 20036-5304
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