Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardMay 31, 201612877965 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/877,965 09/08/2010 98440 7590 06/01/2016 Otterstedt, Ellenbogen & Kammer, LLP P.O. Box 98 East Northport, NY 11731 FIRST NAMED INVENTOR XimingChen 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. L09-0642US1 4132 EXAMINER RILEY, MARCUS T ART UNIT PAPER NUMBER 2677 MAILDATE DELIVERY MODE 06/01/2016 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 Ex parte XIMING CHEN, HERBERT B. COHEN, and JAMES M. GURNA V AGE Appeal2014-009087 Application 12/877,965 Technology Center 2600 Before THU A. DANG, JOHN P. PINKERTON, and SCOTT B. HOWARD, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-009087 Application 12/877,965 I. STATEivIENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1--4 and 8-21. Claims 5-7 have been allowed. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. A. INVENTION According to Appellants, the invention pertains to "facsimile communications" (Spec. 1, 11. 4--5). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A facsimile apparatus, comprising: a user interface operative to facilitate communications between the apparatus and at least one user application in operative communication with the apparatus; a network interface operative to facilitate communications between the apparatus and at least one of a plurality of communications networks coupled to the apparatus; and a controller connected to the user interface and network interface, the controller being operative in a first mode to communicate with a first one of the communications networks using a first facsimile protocol and being operative in at least a second mode to communicate with a second one of the communications networks using a second facsimile protocol. 2 Appeal2014-009087 Application 12/877,965 C. REJECTIONS 1. Claims 1, 2, 8-10, 12-18, 20, and 21 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Fujiwara (U.S. Publication No. 2001/0013946 Al, published Aug. 16, 2001). 2. Claims 3, 4, 11, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Fujiwara and Maei (U.S. Publication No. 2004/0184110 Al, published Sept. 23, 2004). II. ISSUES The principal issues before us are whether the Examiner erred in finding that Fujiwara teaches the claimed "controller" being operative in a "first mode" to communicate with "a first one of the communications networks using afirstfacsimile protocol," and in a "second mode to communicate with a second one of the communications networks using a second facsimile protocol" (claim 1 ). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Fujiwara Fujiwara discloses a facsimile system, wherein Figure 1 is reproduced below: 3 Appeal2014-009087 Application 12/877,965 Fig. 1 Figure 1 shows facsimile apparatus 10 connected with a remote facsimile apparatus 12 through an exchange 13 by telephone lines 11 and with a personal computer 14 which has a RS232C interface through communication cable 15 (i-f 24). IV. ANALYSIS As for claims 1, 8-10, 12, 13, 15-18, and 20, Appellants contend "a facsimile protocol is a set of rules or procedures governing the transmission of facsimile data between electronic devices" and"[ n ]owhere in Fujiwara is there any disclosure or suggestion of at least two of these elements of FIG. 2 communicating via two different facsimile protocols, as explicitly required by claim 1" (App. Br. 10). Accordingly, Appellants contend "Fujiwara does not describe a first and a second facsimile protocol, and furthermore is not capable of supporting communications with multiple networks using multiple facsimile protocols" (App. Br. 11) We consider all of Appellants' arguments and evidence presented, and disagree with Appellants' contentions regarding the Examiner's rejections of the claims. We adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the 4 Appeal2014-009087 Application 12/877,965 reasons set forth by the Examiner in the Answer in response to arguments made in Appellants' Appeal Brief. As an initial matter of claim construction, we give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, "limitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Although Appellants contend Fujiwara does not disclose "at least two of these elements of FIG. 2 communicating via two different facsimile protocols, as explicitly required by claim 1" (App. Br. 10, emphasis added), claim 1 does not require "at least two elements" communicating with two different facsimile protocols. Similarly, although Appellants also contend "the presently claimed invention beneficially supports multiple fax protocols (e.g., implementing functionalities of an analog fax engine and an IP-aware fax engine) ... for faxing over an analog PSTN and an IP network, respectively" (App. Br. 11 ), we note claim 1 does not recite any such implemented functionalities or even any "faxing" over a network. Rather, claim 1 merely requires "a controller" operative to "communicate" via a first facsimile protocol and a second facsimile protocol (claim 1, emphasis added). 1 Fujiwara discloses a facsimile apparatus communicating with a personal computer 14 through communication cable 15 and with a remote 1 We also note that Appellants' contention that Fujiwara does not disclose "communicating via two different facsimile protocols ... "(App. Br. 10, emphasis added) is also not commensurate with the scope of claim 1. That is, claim 1 does not recite that "first facsimile protocol" and "second facsimile protocol" are "two different" facsimile protocols (id.). 5 Appeal2014-009087 Application 12/877,965 facsimile apparatus 12 through a PSTI'-J (FF). We agree with the Examiner's finding that Fujiwara discloses a controller "being operative in a first mode (Group 3 Protocol) to communicate with a first one of the communication networks using a first facsimile protocol" (Ans. 13). Even Appellants concede that Group 3 (G3) standard is a "facsimile protocol disclosed by Fujiwara" which is used for communications between "the facsimile application running on the personal computer and the facsimile apparatus" (Reply Br. 2-3). Thus, we agree with the Examiner's reliance on Fujiwara for disclosing a "first mode" to communicate with "a first one of the communications networks using a first facsimile protocol," as recited by claim 1. Furthermore, we find no error with the Examiner's finding that Fujiwara also discloses a controller "being operative in at least a second mode (Public Switched Telephone Network Protocol) to communicate with a second one of the communications networks using a second facsimile protocol" (Ans. 14, emphasis added). Even Appellants concede "providing fax transmission over a standard PSTN is known (as taught by Fujiwara)" (App. Br. 11 ). Further, Appellants also concede, "[i]t is well-known that standard analog facsimile devices communicate over a PSTN using a T.30 communications protocol" whereas "the PSTN supports other protocols as well, such as telephony protocols" (Reply Br. 2). That is, Appellants concede that Fujiwara discloses providing fax transmission over a PSTN, wherein a communication protocol is used, although not necessarily the T.30 protocol (App. Br. 11; Reply Br. 2). In other words, a communication protocol is used in providing fax transmission over the PSTN, whether it is the T.30 protocol or another telephony protocol (id.). 6 Appeal2014-009087 Application 12/877,965 Giving the claim its broadest reasonable interpretation, we conclude "facsimile protocol" encompasses a protocol used in providing fax transmission over a PSTN. Thus, we agree with the Examiner's reliance on Fujiwara for also disclosing "second mode" to communicate with a second one of the communication networks using a second facsimile protocol," as recited in claim 1. On this record, we find no error in the Examiner's rejection of claim 1, independent claims 12, 13, and 20 falling therewith (App. Br. 12), and claims 8-10 and 15-18 depending respectively from claims 1 and 13, as being anticipated by Fujiwara. As for claims 2 and 14, Appellants contend "[the cited portion of] Fujiwara does not describe converting data received in a first facsimile protocol into a second facsimile protocol" but rather "merely teaches converting an analog signal received from the remote terminal into a digital signal" (App. Br. 13). As for claim 21, Appellants contend that although the claim requires "a first facsimile protocol for faxing over an analog network and ... a second facsimile protocol for faxing over an internet protocol (IP) network," these features "are nowhere taught by Fujiwara" (App. Br. 14). Based on the record before us, we agree with Appellants. We note the Examiner does not address Appellants' contention regarding claims 2, 14, and 21 in the "Examiner's Response," but merely finds that "[ c ]laim 21 contains substantially the same subject matter as claim 1" (Ans. 15). We find the preponderance of evidence on this record fails to support the Examiner's finding that claims 2, 14, and 21 are anticipated by Fujiwara. We are of the view that the Examiner has not fully developed the record to show express or inherent anticipation regarding the disputed 7 Appeal2014-009087 Application 12/877,965 limitations of these claims pursuant to 35 U.S.C. § 102(b). Therefore, we are constrained to reverse the Examiner's rejection of claims 2, 14, and 21. Appellants do not provide additional substantive argument regarding claims 3, 4, 11, and 19 (App. Br. 15). For the reasons discussed above, we also affirm the rejections of claims 3, 4, 11, and 19 over Fujiwara in further view of Maei. V. CONCLUSION AND DECISION We affirm the Examiner's rejections of claims 1, 8-10, 12, 13, 15-18, and 20 under 35 U.S.C. § 102(b) and claims 3, 4, 11, and 19 under 35 U.S.C. § 103(a). We reverse the Examiner's rejections of claims 2, 14, and 21 under 35 U.S.C. § 102(b) No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation