UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/931,391 06/28/2013
48500 7590 07/27/2018
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
THIRUNAVUKKARASU ARJUNAN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4366CSM- l 70 1098
EXAMINER
KELLER, MICHAEL A
ART UNIT PAPER NUMBER
2446
NOTIFICATION DATE DELIVERY MODE
07/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THIRUNA VUKKARASU ARJUNAN, VINOD SULLERI
PUTTASW AMY, and RAMANUJAN S. KASHI
Appeal2018-000766
Application 13/931,391
Technology Center 2400
Before JOHN A. JEFFERY, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' invention sends real-time messages to recipients by using
a pre-existing communication system in communication with a paging
server. See generally Abstract; Spec. 5-9; Fig. 1. Claim 1 is illustrative:
1 Appellants identify the real party in interest as Avaya Inc. App. Br. 2.
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Application 13/931,391
1. A method, comprising:
composing, by a microprocessor of a paging server,
messages in real time;
sending, by the microprocessor, the messages in the real
time to at least one recipient,
wherein the sending is accomplished by the
microprocessor using a pre-existing communication system in
communication with the paging server.
THE REJECTIONS
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 20-21. 2
The Examiner rejected claim 2 under 35 U.S.C. § 112, first paragraph
as failing to comply with the written description requirement. Final Act. 22.
The Examiner rejected claims 1, 2, 4, 7, 8, 10-13, and 16 under
35 U.S.C. § 103 as unpatentable over Fulton (US 2005/0041793 Al;
Feb. 24, 2005) and Hassing (US 2010/0019910 Al; Jan. 28, 2010). Final
Act. 23-28.
The Examiner rejected claim 3 under 35 U.S.C. § 103 as unpatentable
over Fulton, Hassing, and Kugler (US 8,447,016 Bl; May 21, 2013). Final
Act. 28-29.
The Examiner rejected claim 5 under 35 U.S.C. § 103 as unpatentable
over Fulton, Hassing, and Vendrow (US 2010/0099390 Al; Apr. 22, 2010).
Final Act. 29-30.
2 Throughout this opinion, we refer to (1) the Final Rejection mailed January
30, 2017 ("Final Act."); (2) the Appeal Brief filed July 7, 2017 ("App. Br.");
(3) the Examiner's Answer mailed August 31, 2017 ("Ans."); and (4) the
Reply Brief filed October 31, 2017 ("Reply Br.").
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The Examiner rejected claims 6 and 9 under 35 U.S.C. § 103 as
unpatentable over Fulton, Hassing, and Wang (US 2010/0161771 A 1;
June 24, 2010). Final Act. 30-32.
The Examiner rejected claim 14 under 35 U.S.C. § 103 as
unpatentable over Fulton, Hassing, and Akbar (US 2008/0084878 Al;
Apr. 10, 2008). Final Act. 32-33.
The Examiner rejected claim 15 under 35 U.S.C. § 103 as
unpatentable over Fulton, Hassing, and Nair (US 2009/0254589 Al;
Oct. 8, 2009). Final Act. 34.
The Examiner rejected claim 17 under 35 U.S.C. § 103 as
unpatentable over Fulton, Hassing, Reddy (US 2007 /0083394 Al;
Apr. 12, 2007), Iyer (US 2011/0282969 Al; Nov. 17, 2011 ), Wolff (US
6,833,848 Bl; Dec. 21, 2004), and Vion-Dury (US 2010/0275117 Al;
Oct. 28, 2010). Final Act. 35-37.
The Examiner rejected claim 18 under 35 U.S.C. § 103 as
unpatentable over Fulton, Hassing, Reddy, Iyer, Wolff, Vion-Dury, and
Kline (US 2008/0288770 Al; Nov. 20, 2008). Final Act. 37.
The Examiner rejected claim 19 under 35 U.S.C. § 103 as
unpatentable over Fulton, Hassing, Reddy, Iyer, Wolff, Vion-Dury, and
Gupta (US 2011/0093637 Al; Apr. 21, 2011). Final Act. 38.
The Examiner rejected claim 20 under 35 U.S.C. § 103 as
unpatentable over Fulton, Hassing, and Kreiner (US 2012/0151561 Al;
June 14, 2012). Final Act. 39--40.
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THE INELIGIBILITY REJECTION
The Examiner finds that the claimed invention is directed to an
abstract idea, namely communicating in real time. Final Act. 20. According
to the Examiner, the claimed elements do not add significantly more to the
abstract idea to render the claimed invention patent-eligible. Final
Act. 20-22.
Appellants argue that the Examiner not only failed to make a prima
facie case of ineligibility, the claims are not directed to an abstract idea
because, among other things, sending a message using a communication
system is an activity necessarily rooted in computer technology, and the
claimed invention improves the way computers operate. App. Br. 9-13;
Reply Br. 2---6. Appellants add that even if the claimed invention was
directed to an abstract idea, the claims nevertheless recite additional
elements that add significantly more to the abstract idea by, among other
things, reciting a technology-based solution to communicate in real time and
improve communication performance. App. Br. 13-15; Reply Br. 6-7.
ISSUE
Has the Examiner erred in rejecting claim 1 by concluding that it is
directed to ineligible subject matter under § 101? This issue turns on
whether the claimed invention is directed to a patent-ineligible abstract idea
and, if so, whether the claim's elements----considered individually and as an
ordered combination-transform the nature of the claim into a patent-
eligible application of that abstract idea.
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ANALYSIS
Claim 1
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of nature,
natural phenomena, and abstract ideas. Id. at 2354--55. If so, we then
proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
Applying Alice step one, we agree with the Examiner that the claimed
invention is directed to an abstract idea, namely communicating in real time.
Final Act. 20-21; Ans. 3-10. Independent claim 1 recites a method where a
paging server's microprocessor (1) composes messages in real time, and (2)
sends the messages in the real time to at least one recipient using a pre-
existing communication system in communication with the paging server.
Our emphasis underscores a key aspect of the claimed invention,
namely that messages are composed and sent in "real time." Notably,
Appellants' Specification does not define the term "real time," unlike other
terms whose concrete definitions leave no doubt as to their meaning. See,
e.g., Spec. 2--4 ( defining various terms).
We, therefore, construe the term "real time" with its plain meaning as
understood in the art. The term "real-time" is defined in a communications
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context as "that which occurs without a discernable delay. For instance,
telephonic voice conversations, real-time chats, or real-time broadcasts."
Steven M. Kaplan, WILEY ELECTRICAL & ELECTRONICS ENGINEERING
DICTIONARY 639 (2004) ("the Wiley definition"). Another special-purpose
dictionary defines the term "real-time processing" as follows:
A method of using a computer where the time at which the
output is produced is of importance. The computer must be
able to respond to some external event (for example, some
movement in the physical world) and be able to perform
calculations and control functions with a specified and usually
very brief time limit. This response time, i.e. the lag between
input and output time, can range from a few seconds to less
than a microsecond.
John Daintith & Edmund Wright, THE FACTS ON FILE DICTIONARY OF
COMPUTER SCIENCE 187 (Revised ed. 2006) ("the Facts on File definition").
Although real-time communications occur without a discernable delay under
the Wiley definition, the Facts on File definition acknowledges that real-time
processing is not instantaneous, but rather can be a few seconds. In short,
even real-time processes incur delays, albeit indiscernible.
Nevertheless, according to the Specification, existing paging
systems-systems that message or notify a user at an endpoint (see
Spec. 4}--cannot send real-time messages, including audio messages with
text, image, or video attachments. Spec. 1. Appellants' disclosed invention
is said to overcome this drawback by using a "paging engine" 102, namely
an encapsulated block of hardware and/or software, with paging
functionality that can configure and transmit audio, text, images, video,
and/or other data messages in real time to one or more "endpoints" or
receivers, such as pagers, telephones, and mobile devices. Spec. 5; Fig. 1.
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The paging engine can interface with pre-existing communication
equipment, such as servers and broadcast systems to, among other things,
make audio announcements in real time that are broadcast on an equipment's
speaker using a one-way speech path. Spec. 6. For example, the sender can
send a message by speaking into a mobile device, and the recipients will
hear the message via their respective receiving-device speakers. See
Spec. 16-17.
In essence, the claimed invention uses a server to communicate with a
recipient in real time using a pre-existing communication system. Despite
Appellants' arguments to the contrary (App. Br. 10-13; Reply Br. 2-7), we
agree with the Examiner that claim 1 is directed to an abstract idea that, in
essence, is a fundamental communication activity. See Ans. 3 (noting that a
phone conversation or video conference is real-time communication between
humans using a pre-existing communication system); Ans. 4 (noting that it is
long-prevalent practice for a car salesman to communicate with potential
customers in real time using a pre-existing communication system such as
email, phone, text messaging service, etc.); Ans. 8 (noting that humans have
long communicated in real time by, for example, face-to-face verbal
communication messages). 3
Although claim 1 recites that a paging server's microprocessor is used
to compose and send messages, where the messages are sent using a pre-
3 Even smoke signals----one of the oldest forms of long-distance
communication-involves composing and sending messages in real time to
recipients using a pre-existing communication system, namely fire and air.
See THE WORDSWORTH CONCISE ENGLISH DICTIONARY 941 (G.W. Davidson
et al. eds. 1994) ( defining "smoke signal" as "a signal or message conveyed
by means of patterns of smoke").
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existing communication system, the claim does not specify how these
generic computer components achieve these functional results in a non-
abstract way. Cf Two-Way Media Ltd. v. Comcast Cable Comm 'ns, LLC,
874 F.3d 1329, 1337-38 (Fed. Cir. 2017) (noting that claim reciting
functional results of "converting," "routing," "controlling," "monitoring,"
and "accumulating records" did not describe sufficiently how to achieve
these results in a non-abstract way); Easyweb Innovations, LLC v. Twitter,
Inc., 689 F. App'x 969, 970-71 (Fed. Cir. 2017) (unpublished) (holding
ineligible claims directed to publishing format-converted portions of
received messages as directed to an abstract idea of receiving,
authenticating, and publishing data); Fair Warning IP, LLC v. Iatric Systems,
Inc., 839 F.3d 1089, 1092-98 (Fed. Cir. 2016) (holding ineligible claim
reciting, in pertinent part, using a microprocessor to notify if an event
occurs); Affinity Labs of Texas, LLC v. DirectTV, LLC, 838 F.3d 1253,
1255---63 (Fed. Cir. 2016) (holding ineligible claims directed to out-of-region
delivery of broadcast content via conventional devices without offering any
technological means of effecting that concept).
That the recited microprocessor composes and sends messages in real
time does not render the claims non-abstract. See Two-Way Media, 874 F.3d
at 1340 (holding claims directed to monitoring delivery of real-time
information to users or measuring such delivery as directed to an abstract
idea); see also id. (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1351-53 (Fed. Cir. 2016) (noting that collecting information,
analyzing it, and displaying results is an abstract idea, even when undertaken
in real time)). That the recited server is used for paging does not change our
conclusion, for it is well settled that merely limiting the field of use of an
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abstract idea does not render the claims any less abstract. See Affinity, 838
F.3d at 1259.
Nor are we persuaded that the claimed invention improves the
computer components' functionality or efficiency, or otherwise changes the
way those devices function, at least in the sense contemplated by the Federal
Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir.
2016), despite Appellants' arguments to the contrary (App. Br. 11-12; Reply
Br. 3--4). The claimed self-referential table in Enfish was a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory. Enfish, 822 F.3d at 1339. To the extent Appellants
contend that the claimed invention uses such a data structure to improve a
computer's functionality or efficiency, or otherwise change the way that
device functions (see Reply Br. 3--4), there is no persuasive evidence on this
record to substantiate such a contention.
Appellants' reliance on DDR Holdings, LLC v. Hotels.Com, L.P., 773
F.3d 1245 (Fed. Cir. 2014) on pages 10 and 11 of the Appeal Brief is
unavailing. There, instead of a computer network operating in its normal,
expected manner by sending a website visitor to a third-party website
apparently connected with a clicked advertisement, the claimed invention in
DDR generated and directed the visitor to a hybrid page that presented (1)
product information from the third party, and (2) visual "look and feel"
elements from the host website. DDR, 773 F.3d at 1258-59. Given this
particular Internet-based solution, the court held that the claimed invention
did not merely use the Internet to perform a business practice known from
the pre-Internet world, but rather was necessarily rooted in computer
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technology to overcome a problem specifically arising in computer
networks. Id. at 1257.
That is not the case here. As noted previously, Appellants' claimed
invention, in essence, uses a server to communicate with a recipient in real
time using a pre-existing communication system. In short, the claimed
invention does not focus on an improvement in computers as tools, but
rather certain independently abstract ideas that use computers as tools. See
In re Chorna, 656 F. App'x 1016, 1022 (Fed. Cir. 2016) (unpublished)
(quoting Elec. Power, 830 F.3d at 1354).
Nor do we find Appellant's reliance on McRO, Inc. v. Bandai Namco
Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (Reply Br. 1--4)
persuasive. There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques-an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike McRO, the claimed invention here uses a server to
communicate with a recipient in real time using a pre-existing
communication system. Although the claimed invention requires computer
components, it is the incorporation of those components-not a claimed
rule-that purportedly improves the existing technological process. Cf
FairWarning, 839 F.3d at 1095.
Appellants' reliance on Visual Memory LLC v. NVIDIA Corp., 867
F.3d 1253 (Fed. Cir. 2017) is likewise unavailing. There, the court held
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eligible claims directed to a computer memory system with a main memory
connected to a bus with a cache connected thereto, where the system's
programmable operational characteristics determined the type of data stored
by the cache. Visual Memory, 867 F.3d at 1257---62. Notably, the court
emphasized the recited improvement in computer capabilities in that case,
namely by using programmable operational characteristics that were
configurable based on the processor's type. Id. at 1259---60.
That is not the case here. To the extent that Appellants contend that
the claimed invention is directed to such improvements in computer
capabilities (see Reply Br. 2-3), there is no persuasive evidence on this
record to substantiate such a contention.
We, therefore, agree with the Examiner that the claimed invention is
directed to an abstract idea.
Alice Step Two
Nor do the recited elements----considered individually and as an
ordered combination-transform the nature of claim 1 into a patent-eligible
application of the abstract idea to ensure that the claim amounts to
significantly more than that idea. See Alice, 134 S. Ct. at 2357.
That the recited method includes a microprocessor and a paging server
does not change our conclusion. As the Examiner indicates, the claimed
invention merely uses generic computing components to perform the recited
abstract idea, namely communicate in real time. Final Act. 21; Ans. 3--4, 6-
10. Merely reciting these generic computing components cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. Id. at 2358.
In other words, merely reciting an abstract idea while adding the words
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"apply it with a computer" does not render an abstract idea non-abstract:
there must be more. See Alice, 134 S. Ct. at 2359; see also Mortgage
Grader Inc. v. First Choice Loan Services, Inc., 811 F .3 d 1314, 13 24--25
(Fed. Cir. 2016) (noting that components such an "interface," "network,"
and "database" are generic computer components that do not satisfy the
inventive concept requirement); buySAFE v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) ("That a computer receives and sends the information
over a network-with no further specification-is not even arguably
inventive.").
Nevertheless, even assuming, without deciding, that the recited
components add efficiency, any speed increase comes from the capabilities
of the generic computer components-not the recited process itself. See
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.")). Like the claims in
Fair Warning, the focus of claim 1 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
( citations and quotation marks omitted).
Appellants' reliance on BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016) on pages 13 to
15 of the Appeal Brief is unavailing. There, the court held eligible claims
directed to a technology-based solution to filter Internet content that
overcame existing problems with other Internet filtering systems by making
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a known filtering solution-namely a "one-size-fits-all" filter at an Internet
Service Provider (ISP}--more dynamic and efficient via individualized
filtering at the ISP. BASCOM, 827 F.3d at 1351. This customizable filtering
solution improved the computer system's performance and, therefore, was
patent-eligible. See id.
But unlike the filtering system improvements in BASCOM that added
significantly more to the abstract idea in that case, the claimed invention
here uses a server to communicate with a recipient in real time using a pre-
existing communication system. That claim 1 does not specify how the
microprocessor composes messages in real time, let alone specify how it
uses the pre-existing communication system to send those messages, only
further undercuts Appellants' arguments in this regard.
Lastly, we find unavailing Appellants' contention that the claims do
not preempt all ways for sending messages in real time. App. Br. 15.
Where, as here, the claims cover a patent-ineligible concept, preemption
concerns "are fully addressed and made moot" by an analysis under the
Alice framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015).
For the foregoing reasons, then, the recited elements----considered
both individually and as an ordered combination----do not contain an
"inventive concept" sufficient to transform the claimed abstract idea into a
patent-eligible application. Therefore, we are not persuaded that the
Examiner erred in rejecting claim 1.
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Claims 2-20
We also sustain the Examiner's ineligibility rejection of claims 2-20.
Although Appellant contends that the Examiner failed to address each
element of the independent and dependent claims and, therefore, purportedly
failed to establish a prima facie case of ineligibility (App. Br. 10), the
Examiner nonetheless addressed the claims by finding that (1) the
ineligibility analysis for claim 1 also applies to independent claims 11 and
12 due to their similarity, and (2) the additional elements recited in
dependent claims 2-10 and 13-20 did not add significantly more to the
abstract idea in their respective base claims. Final Act. 21.
Apart from Appellants' bare allegation that the Examiner did not
address each recited element (App. Br. 10), Appellants do not persuasively
rebut the Examiner's findings and conclusions regarding these claims in the
Appeal Brief. Although Appellants argue for the first time on pages 6 and 7
of the Reply Brief that other claims purportedly recite additional specific
improvements in the way computer systems operate and/or non-abstract
elements, and specifically quote various recited limitations that are said to be
eligible for these reasons, Appellants did not make these particular
arguments in the Appeal Brief. Compare Reply Br. 6-7 with App.
Br. 10-15. Because there is no good cause for presenting these arguments in
the first instance in the Reply Brief, these new arguments are waived as
untimely. See 37 C.F.R. § 4I.41(b)(2) (2012).
THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that Appellants' Specification does not support
the recited equipment not having an ability to send messages in real time
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prior to the pre-existing communication system communicating with the
paging server. Final Act. 22; Ans. 11-12.
Appellants argue that not only is this limitation supported by the
Specification's Background and Summary sections, but also various other
passages in the Specification describing that a pre-existing communication
system may not have had an ability to send a real-time message, and that
embodiments of the present invention can send such messages using those
systems. App. Br. 15-16; Reply Br. 8-9.
ISSUE
Has the Examiner erred in rejecting claim 2 under§ 112, first
paragraph by finding that the original disclosure fails to convey with
reasonable clarity to skilled artisans that Appellants possessed the claimed
invention as of the filing date?
ANALYSIS
We begin by noting that dependent claim 2 recites, in pertinent part,
that at least one message is sent to a "specific type of equipment," where that
equipment type did not have an ability to send the messages in real time
before the pre-existing communication system communicates with the
paging server. Our emphasis underscores that the message is not only sent
to the unspecified equipment type, but that this equipment type could not
also send messages in real time before the pre-existing communication
system communicates with the paging server.
In other words, claim 2 recites limitations regarding the equipment
type's ability to receive the message and its inability to send messages in
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real time under before a certain time, namely before the pre-existing
communication system communicates with the paging server.
Despite Appellants' arguments to the contrary (App. Br. 15-16; Reply
Br. 8-9), we see no error in the Examiner's finding that Appellants' original
disclosure does not convey with reasonable clarity to ordinarily skilled
artisans that Appellants possessed the limitations of claim 2 as of the filing
date. Leaving aside the fact that neither claim 2 nor the Specification
specifies the specific equipment type claimed, Appellants' reliance on the
Specification's Background and Summary sections is unavailing in this
regard. Although the Specification's Background section on page 1 explains
that previously-existing paging systems (1) cannot send real time messages,
including those with attached text, image, or video; (2) cannot send
messages using certain groups and/or priorities; and (3) have problems in
integrating existing messaging capabilities with messaging needs, this
section says nothing about a specific equipment type's ability to receive
messages, let alone that this equipment type could not also send messages
before a pre-existing communication system communicates with the paging
server, as claimed.
Appellants' reliance on the ten additional cited portions of the
disclosure (App. Br. 16; Reply Br. 8-9) is likewise unavailing. Notably,
these additional cited portions of the disclosure are not explained with
particularity, let alone tied to the particular limitations of claim 2 to show
support for those limitations. This omission renders our task all the more
difficult given that one of these portions spans thirteen figures, another
nearly six pages, and another nearly three pages. See, e.g., App. Br. 8 (citing
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Figs. 1-13, Spec. 10: 11-16:7, and Spec. 20:27-23:24); Reply Br. 8-9
(same).
Nevertheless, even assuming, without deciding, that these cited
portions support the notion that a pre-existing communication system may
have been incapable of sending a real time message, and that disclosed
embodiments can send such messages using those systems as Appellants
contend (App. Br. 16; Reply Br. 9), this disclosure does not convey with
reasonable clarity to ordinarily skilled artisans that Appellants possessed the
particular limitations of claim 2 as of the filing date. As noted above,
claim 2 recites that the message is not only sent to the unspecified equipment
type, but that this equipment type could not also send messages in real time
before the pre-existing communication system communicates with the
pagmg server.
To the extent Appellants contend that these particular limitations
would have been obvious from the cited passages from Appellants'
disclosure, such a contention is unavailing, for it is well settled that a
description that merely renders the invention obvious does not satisfy the
written description requirement. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010) (en bane) (citations omitted).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 2 as failing to satisfy the written description requirement.
THE OBVIOUSNESS REJECTION OVER FULTON AND HASSING
The Examiner finds that Fulton's voice Instant Messaging (IM)
functionality in Figure 21 teaches a server-based microprocessor that (1)
composes messages in real time, and (2) sends the messages in real time to
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at least one recipient using a pre-existing communication system
communicating with the server. Final Act. 23-24; Ans. 12-13. Although
the Examiner acknowledges that Fulton's messages are not composed by a
paging server, the Examiner cites Hassing as teaching this feature in
concluding that the claim would have been obvious. Final Act. 24; Ans. 13.
Appellants argue that the cited prior art does not teach or suggest a
paging server microprocessor that composes and sends messages in real time
using a pre-existing communication system. App. Br. 16-17; Reply Br. 9-
10. According to Appellants, the Examiner's reliance on Fulton and Hassing
in this regard is misplaced because Fulton's client and facilitator application
does not relate to a pre-existing communication system, and Hassing does
not send paging events or generate messages in real time. Reply Br. 10.
Appellants argue other recited limitations summarized below.
ISSUES
I. Under § 103, has the Examiner erred by finding that Fulton and
Hassing collectively would have taught or suggested (1) the real-time
composing and sending steps recited in claim 1, and (2) the limitations of
claims 2-20?
II. Is the Examiner's proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion?
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ANALYSIS
Claims 1, 11, and 12
As noted previously, a key aspect of claim 1 is that messages are
composed and sent in real time using a pre-existing communication system
that communicates with a paging server. As we noted in connection with the
eligibility rejection, the ordinary and customary meaning of "real-time" in a
data processing and communications context does not require that events
occur instantaneously, but rather that they occur without a discernable delay
which, as noted previously, can be a few seconds.
Given this construction, we see no error in the Examiner's reliance on
Fulton's voice IM functionality in Figure 21 for at least suggesting
composing and sending messages in real time to a recipient. Final Act. 23-
24; Ans. 12-13. Fulton's Figure 21 is a flow diagram for sending a voice
IM to a recipient who enables a Public Address (PA) communications mode.
As shown in that figure, a voice IM is sent from an originator to a recipient
via a server or "facilitator." As explained in Fulton's paragraph 139, upon
receiving a voice IM request from an originator's handset, the facilitator
forwards an alert message to a selected contact's handset, where the alert
message provides an interface to listen to the voice message. Notably, the
voice IM is played immediately if the recipient's handset has the PA mode
enabled. Fulton ,r,r 13 6, 13 9; Fig. 21 ("In this case [ when the recipient
enables the PA mode] the voice message is played over the handset speaker
immediately.") ( emphasis added).
Given this functionality, we see no error in the Examiner's reliance on
Fulton's voice IM functionality for at least suggesting composing and
sending messages in real time to a recipient. That these messages are
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labeled as instant in Fulton's paragraph 132 only bolsters the Examiner's
findings in this regard. And as the Examiner indicates, Fulton's Figures 3
and 21 at least suggest sending these real-time messages using a pre-existing
communication system that communicates with the server. See Final Act. 24
(noting that Fulton's Figure 3 teaches multiple networks connected to
Internet 104a).
Nor do we see error in the Examiner's reliance on Hassing merely to
show that paging servers conventionally generate messages that are
delivered to recipients in paragraphs 25 and 26, and that using a paging
server to compose messages in connection with Fulton's real-time
messaging functionality would have been obvious. Final Act. 24; Ans. 13.
To be sure, the Examiner also maps the recited paging server to Fulton's
voice IM server (Final Act. 24; Ans. 12}-a mapping that reasonably
comports with Appellants' definition of "paging," namely "messaging or
notifying a user at an endpoint." See Spec. 4: 17-19. That is, Fulton's voice
IM server or "facilitator" fully meets a "paging server" under its broadest
reasonable interpretation.
Although Hassing is technically cumulative to Fulton in this regard
given the Examiner's mapping, we nevertheless see no error in the
Examiner's additional reliance on Hassing merely to show that it is known
in the art to use paging servers to compose messages that are delivered to
recipients, and that using paging servers in connection with Fulton's voice
IM functionality would have been obvious. Such an enhancement uses prior
art elements predictably according to their established functions-an
obvious improvement. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,417
(2007). Appellants' arguments regarding Fulton's and Hassing's individual
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shortcomings in this regard (App. Br. 9-10; Reply Br. 17) do not show
nonobviousness where, as here, the rejection is based on the cited
references' collective teachings. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
Appellants' contention that Hassing does not send paging events or
generate messages in real time is likewise unavailing. See Reply Br. 10.
Not only does Fulton at least suggest real-time communications as noted
previously, but Hassing does as well, particularly given the paging system's
notifications of alarm conditions, such as patient emergencies. See Hassing
,r,r 2, 4.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 11 and 12 not argued separately with particularity.
Claim 2
We also sustain the Examiner's rejection of claim 2 reciting, in
pertinent part, that at least one message is sent to a "specific type of
equipment," where that equipment type did not have an ability to send the
messages in real time before the pre-existing communication system
communicates with the paging server. Despite Appellants' arguments to the
contrary (App. Br. 17-18; Reply Br. 10-11), we see no error in the
Examiner's reliance on Hassing for at least suggesting this inability given
the interconnection of various types of equipment that communicate via a
real-time clinical network in paragraph 25. Final Act. 24--25; Ans. 15. This
network-based interconnection at least suggests that messages could not be
sent before this pre-existing communication system communicates with the
server, at least with respect to that particular interconnection.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 2.
Claim 4
We also sustain the Examiner's rejection of claim 4 reciting that at
least two of the messages are sent to the recipient at the same time using a
same communications modality, where at least two of the messages each has
a priority, and the microprocessor determines one of those messages to send
to the recipient in real time based on the priorities. Despite Appellants'
arguments to the contrary (App. Br. 17-18; Reply Br. 10-11), we see no
error in the Examiner's reliance on Fulton for at least suggesting these
limitations, particularly in view of Fulton's paragraph 13 8 whose
( 1) selective transmission of voice IMs to groups at least suggests sending
messages to each member of the group simultaneously, and (2) selecting
priorities for messages at least suggests that at least one of these messages is
sent based at least partly on these priorities. See Final Act. 25; Ans. 15-16.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 4.
Claim 7
We also sustain the Examiner's rejection of claim 7 reciting, in
pertinent part, sending one message with a high priority either after or at the
same time as a second message with a low priority, where the
microprocessor configures the sending to ensure that the recipient receives
the one message before the second message. Despite Appellants' arguments
to the contrary (App. Br. 18; Reply Br. 12), we see no error in the
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Examiner's reliance on Fulton for at least suggesting these limitations,
particularly in view of the functionality in Fulton's paragraph 138 whose (1)
selective transmission of voice IMs to groups at least suggests sending
messages to each member of the group simultaneously, and (2) selecting
priorities for messages at least suggests that these messages are sent based at
least partly on these priorities. See Final Act. 25-26.
This priority-based voice IM request, which includes three priority
levels ("normal," "important," and "critical"), at least suggests configuring
sending the associated voice IM to reflect these levels to ensure that the
recipient receives higher priority messages before lower priority messages,
particularly given the user's ability to filter messages based on those priority
levels. See Fulton ,r 88 (noting that selecting the priority filter indicates the
minimum level for which the user wants to receive message notifications).
That is, Fulton at least suggests that unfiltered messages, such as those
designated "Important" and "Critical" in the example in Fulton's paragraph
88, would be received before those that are filtered, namely "Normal"
messages. Accord Final Act. 26; Ans. 17 (finding that Fulton's unblocked
messages are received before blocked messages). Appellants' arguments to
the contrary (App. Br. 18; Reply Br. 12) are unavailing and not
commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 7.
Claim 8
We also sustain the Examiner's rejection of claim 8 reciting that the
microprocessor is notified of the recipient ( 1) receiving the messages in real
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time, and (2) choosing not to view the messages in real time. Despite
Appellants' arguments to the contrary (App. Br. 18; Reply Br. 12), we see
no error in the Examiner's reliance on Fulton's paragraphs 112 and 75 for at
least suggesting these limitations. See Final Act. 26; Ans. 17 (noting that a
caller will receive delivery confirmation once a message is delivered, and
later may receive an indication that a voice IM has not been listened to).
Although this "no listen" indication may be due to various factors other than
the recipient's affirmative choice to not listen to those messages (and view
their associated alert messages in paragraph 139) in real time, such a choice
would nevertheless result in receiving the "no-listen" indication in that
scenario.
Appellants' arguments are unavailing. Notably, Appellants'
arguments regarding Fulton's paragraph 105 (App. Br. 19) fail to squarely
address-let alone persuasively rebut-the Examiner's reliance on a
different paragraph from Fulton in the rejection, namely paragraph 112.
Compare App. Br. 19 with Final Act. 26. Nevertheless, to the extent that
Appellants attempt to address the Examiner's relied-upon passages from
Fulton on pages 13 and 14 of the Reply Brief, such arguments are unavailing
and not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 8.
Claim 10
We also sustain the Examiner's rejection of claim 10 reciting the pre-
existing communication system can use audio and/or visual communications
to send the messages in real time, where at least two messages require one of
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a visual and audio privacy requirement, and where one pre-existing
communication system is chosen based on the visual privacy requirements,
and another pre-existing communication system is chosen based on the
audio privacy requirement.
Apart from summarily asserting that the cited prior art fails to disclose
the recited features of claim 10 (App. Br. 19), Appellants do not particularly
show error in the Examiner's findings and conclusions in rejecting these
claims. See 37 C.F.R. § 4I.37(c)(l)(vii) (noting that an argument that
merely points out what a claim recites is unpersuasive). Accord In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted
Rule 41.3 7 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.").
Although Appellants add substantive arguments regarding Hassing' s
alleged shortcomings on page 13 of the Reply Brief, these arguments were
raised for the first time in the Reply Brief and are, therefore, waived as
untimely. See 37 C.F.R. § 4I.41(b)(2) (2012). Nor has good cause been
shown to raise these new arguments in the first instance in the Reply Brief,
particularly given the striking similarity between the Examiner's response to
arguments in the Answer for claim 10 and the rejection. Compare Final Act.
26 with Ans. 17.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 10.
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Claim 13
We also sustain the Examiner's rejection of claim 13 reciting that the
recipient is a group where at least one message is a real-time paging message
using multicast routing. Apart from summarily asserting that the cited prior
art fails to disclose the recited features of claim 13 (App. Br. 19; Reply Br.
14), Appellants do not particularly show error in the Examiner's findings
and conclusions in rejecting these claims. See 37 C.F.R. § 4I.37(c)(l)(vii)
(noting that an argument that merely points out what a claim recites is
unpersuasive). Accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[T]he Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
Although Appellants add substantive arguments regarding Hassing's
alleged shortcomings on page 14 of the Reply Brief, these arguments were
raised for the first time in the Reply Brief and are, therefore, waived as
untimely. See 37 C.F.R. § 4I.41(b)(2) (2012). Nor has good cause been
shown to raise these new arguments in the first instance in the Reply Brief,
particularly given the striking similarity between the Examiner's response to
arguments in the Answer for claim 14 and the rejection. Compare Final Act.
27-28 with Ans. 20-21.
Claim 16
We do not sustain the Examiner's rejection of claim 16 reciting, in
pertinent part, the microprocessor determines that (1) a presence of a first
recipient is at the first desktop computer, and (2) a presence of a second
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recipient is away from the second desktop computer and in a room having a
speaker that enables only a one-way speech path, where the microprocessor
sends messages to the first desktop computer and to the speaker, but not to
the second desktop computer based on this determination.
To be sure, Fulton's communication devices can be personal
computers, and Fulton determines a target device's presence and availability
state in paragraph 266. And we also acknowledge that Fulton delivers voice
IMs depending on the recipient's availability state and a communications
mode enabled on a handset in paragraph 133 as the Examiner indicates.
Final Act. 28. But we fail to see-nor has the Examiner shown-how
Fulton determines that a second recipient is ( 1) away from a second desktop
computer, and (2) in a room having a speaker enabling only a one-way
speech path, let alone that messages are sent to this speaker and not the
second computer based on this determination.
Notably, Fulton's voice IM messages are sent to handsets where the
receiver is available and the PA mode is enabled, and the PA mode includes
external speakers in paragraph 133. This functionality at least suggests
sending messages to a room having a speaker that enables only a one-way
speech path, particularly given Fulton's teaching that voice IMs are one-way
messages that do not necessitate a response in paragraph 132.
But we cannot say that this functionality that sends voice IMs to a
handset depending on the recipient's availability and communications mode
enabled on that handset in paragraphs 133 and 136 further determines that
the recipient is also away from a desktop computer such that these voice IMs
are not sent to that computer, but rather to the room-based speaker as
claimed. To the extent that the Examiner finds that the recipient has both a
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handset and a desktop computer for which the recipient's presence is
determined and used as a basis for sending messages to different devices in
the manner claimed, there is insufficient evidence on this record to
substantiate such a finding.
The Examiner's reliance on Fulton's paragraph 138 and Figure 21 on
page 20 of the Answer fares no better in this regard. As Appellants indicate
(Reply Br. 14), Fulton's voice IM prioritization scheme does not teach or
suggest the particular recited determination involving presence of recipients
at both desktop computers and in rooms with speakers, let alone sending
messages to those particular devices based on that determination as claimed.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 16.
THE REJECTION OVER FULTON, HASSING, AND KUGLER
We sustain the Examiner's rejection of claim 3 reciting, in pertinent
part, the pre-existing communication system's infrastructure accomplishes
the sending without adding an application to a receiving device, where at
least one message is broadcast on a speaker using a one-way speech path.
Despite Appellants' arguments to the contrary (App. Br. 20; Reply Br. 14--
15), we see no error in the Examiner's reliance on the cited prior art for at
least suggesting the recited limitations for the reasons noted above and by
the Examiner. Final Act. 28-29; Ans. 21-22 (citing Fulton
,r,r 73, 79, 275-277, 286-287, 299, 133).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 3.
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THE REJECTION OVER FULTON, HASSING, AND VEND ROW
We also sustain the Examiner's rejection of claim 5 reciting that each
priority is based on a job function or membership of the recipient, where the
microprocessor receives a status of each message after sending that
dynamically updates when the recipient listens to first and second message
portions, respectively. Despite Appellants' arguments to the contrary (App.
Br. 21-22; Reply Br. 15), we see no error in the Examiner's reliance on the
cited prior art for at least suggesting the recited limitations for the reasons
noted above and by the Examiner. Final Act. 29-30; Ans. 22-23 ( citing
Fulton ,r 138; Fig. 10; Vendrow ,r 64).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 5.
THE REJECTION OVER FULTON, HASSING, AND WANG
We also sustain the Examiner's rejection of claims 6 and 9. Claim 6
recites that the microprocessor uses a virtual IP address assigned to the
paging server to enable hosting for multiple applications with only one
logical IP address, where the paging server fails during sending and the
virtual IP address uses an alternative computer or network interface card to
complete the sending. Claim 9 adds that at least one message is delayed
such that the recipient does not receive that message in real time, and the
microprocessor is notified of recipients that do and do not receive the
messages in real time.
Despite Appellants' arguments to the contrary (App. Br. 22-23; Reply
Br. 16), we see no error in the Examiner's reliance on the cited prior art for
at least suggesting the recited limitations for the reasons noted above and by
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the Examiner. Final Act. 30-32; Ans. 24--25 (citing Wang ,r,r 2, 6 (claim 6)
and Fulton ,r 105 (claim 9)).
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 6 and 9.
THE REJECTION OVER FULTON, HASSING, AND AKBAR
We also sustain the Examiner's rejection of claim 14 reciting the
group comprises (1) a multicast audio transmitter or receiver, and (2) types
of endpoints comprising multicast IP addresses and phone numbers, where
the microprocessor chooses endpoints that include a recipient's endpoint to
determine different multicast addresses for different messaging sessions in
real time, and where the microprocessor sends a join request to the endpoint.
Despite Appellants' arguments to the contrary (App. Br. 23-24; Reply Br.
17), we see no error in the Examiner's reliance on the cited prior art for at
least suggesting the recited limitations for the reasons noted above and by
the Examiner. Final Act. 32-33; Ans. 25-28 (citing Fulton ,r,r 304, 138;
Hassing ,r,r 3, 26, 29-30; Akbar ,r 49).
Although Appellants add substantive arguments regarding Hassing's
alleged shortcomings on page 1 7 of the Reply Brief, these arguments were
raised for the first time in the Reply Brief and are, therefore, waived as
untimely. See 37 C.F.R. § 4I.41(b)(2) (2012). Nor has good cause been
shown to raise these new arguments in the first instance in the Reply Brief,
particularly given the striking similarity between the Examiner's response to
arguments in the Answer for claim 14 and the rejection. Compare Final Act.
32-33 with Ans. 25-28.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 14.
THE REJECTION OVER FULTON, HASSING, AND NAIR
We also sustain the Examiner's rejection of claim 15 reciting that
prior to sending at least one message, the microprocessor (1) determines
existing paging sessions, (2) determines whether to override any of the
existing paging sessions based on their priorities and those of the messages,
(3) sends a HTTP notification feature to inquire a database to receive
endpoint details, and ( 4) formulates at least one message as a push message
based on the endpoint details. Despite Appellants' arguments to the contrary
(App. Br. 24--25; Reply Br. 18), we see no error in the Examiner's reliance
on the cited prior art for at least suggesting the recited limitations for the
reasons noted above and by the Examiner. Final Act. 34; Ans. 28-29 ( citing
Hassing ,r 30; Nair ,r 71).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 15.
THE REJECTION OVER FULTON, HASSING, REDDY, IYER, WOLFF,
AND VION-DURY
We also sustain the Examiner's rejection of claim 17 reciting prior to
sending at least one message, the microprocessor transmits a push message
to the recipient comprising a valid XML file comprising a valid
tag where the valid tag comprises a valid
