Ex Parte Eaton et al

Board of Patent Appeals and Interferences

Jul 9, 2010

10698648 (B.P.A.I. Jul. 9, 2010)

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.
10/698,648 10/31/2003 Steven Louis Eaton LDC100A US 3752
21133 7590 07/09/2010
VAN OPHEM & VANOPHEM, PC
REMY J VANOPHEM, PC
51543 VAN DYKE
SHELBY TOWNSHIP, MI 48316-4447
EXAMINER
VIG, NARESH
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
07/09/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte STEVEN LOUIS EATON, WILLIAM EDWARD SHANNON II,
KAREN LINDA KARAM, and DAVID OWEN DEREES
____________________
Appeal 2009-005792
Application 10/698,648
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, JOESPH A. FISCHETTI, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 begins to run from the “MAIL
DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic
delivery mode) shown on the PTOL-90A cover letter attached to this
decision.

Appeal 2009-005792
Application 10/698,648

2

STATEMENT OF THE CASE
Appellants request that we reconsider the Panel’s Decision of
February 22, 2010 (“Decision”), wherein we affirmed the Examiner’s
Rejection of claims 1-6, 8-26, 28-46, and 48-60 under 35 U.S.C. § 103(a) as
obvious over Raveis, Jr. and Watanabe. (Req. for Reh’g 1).
We have reconsidered the Panel’s Decision in light of Appellants’
arguments in the Request for Rehearing, and we find no error therein.
Accordingly, we decline to make any changes in the prior Decision for the
reasons which follow.

ANALYSIS
The following discussion addresses Appellants’ arguments in the
order in which they are enumerated in the Request for Rehearing:
I.
Appellants argue that the Board’s finding regarding the step of
“prompting a sender of information to input said record identifier into said
fax source,” is inconsistent with the full, clear and concise disclosure of
Appellants’ Specification. (Req. for Reh’g 4). We are not persuaded by
Appellants’ argument and find that as stated in the Decision, the
combination of Raveis, Jr. and Watanabe makes obvious the step of
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Application 10/698,648

3
“prompting a sender of information to input said record identifier into said
fax source.” In the decision, we stated that:
. . . the Examiner cited to Watanabe which teaches the
ability to fax a document into a server, and through the
use of a receiver ID, the document is directed to the
appropriate storage location. (FF 14, 15). We interpret
this receiver ID to be equivalent to Appellants’ record
identifier since both the receiver ID and the record
identifier are used to associate the faxed document with
the appropriate record or storage location. Additionally,
with regard to the prompting step, we find that a user is
always prompted to initiate a fax transmission. Thus,
when transmitting a fax, a user using the system taught
by Watanabe would contemporaneously be transmitting
the information and the record identifier.
(Decision 17).
Here, Appellants’ independent claims merely require a sender to input
a record identifier into a fax source when prompted, and we need not read a
particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. Superguide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Therefore, we
find no mischaracterization of the language in the body of Appellants’
independent claims.

II.
Additionally, Appellants argue that there must be some “suggestion,
inference or implication” to modify the real estate transaction system of
Raveis, Jr. with the electronic facsimile-based filing system of Watanabe to
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Application 10/698,648

4
arrive at Appellants’ claimed subject matter. (Req. for Reh’g 6). We are not
persuaded by Appellants arguments and find that as stated in the Decision:
[t]he Examiner has provided an articulated reasoning
with rational underpinning for why a person with
ordinary skill in the art would modify the real estate
transaction system of Raveis, Jr. to incorporate the
electronic facsimile-based filing system of Watanabe (FF
14). Specifically, the Examiner articulates a rationale
based on a party being able to electronically file
documents in a transaction. (Ans. 5). Thus, a person
with ordinary skill in the art would know from Watanabe
to apply this faxing technique to Raveis, Jr. since both
system are able to transmit information to a server over a
communications network.

(Decision 15).
Therefore, since an explicit suggestion or motivation in the reference
itself is no longer the law in view of KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007), and the Examiner provided an articulated reasoning with
rational underpinning for why a person in the art would combine Raveis, Jr.
and Watanabe, we are not persuaded that the Board has erroneously
mischaracterized or misapprehended a point of law regarding Appellants’
claims.

III.
Lastly, Appellants argue that the Examiner and the Board are using
impermissible hindsight reconstruction to arrive at Appellants’ claimed
invention. (Req. for Reh’g 7). We are not persuaded by Appellants’
argument and find the Examiner’s modification of Raveis, Jr. and Watanabe
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Application 10/698,648

5
was not based on impermissible hindsight. Specifically, the Examiner
modified the real estate transaction system of Raveis, Jr. to incorporate the
electronic facsimile-based filing system of Watanabe which through the use
of a receiver ID, directs a document to an appropriate storage location.
(Decision 15). Accordingly, we find this to be the combination of familiar
elements according to known methods, and thus obvious since the
combination of Raveis, Jr. and Watanabe would yield predictable results.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 416. As such, we cannot agree
with Appellants that both the Examiner and Board engaged in impermissible
hindsight, and thus find no error.

CONCLUSION
Based on the analysis above, we discern no error in our conclusion
that the claimed subject matter would have been obvious based on the
combination of Raveis, Jr. and Watanabe. Accordingly, we decline to
modify our Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED
ack

cc:

VAN OPHEM & VANOPHEM, PC
Remy J Vanophem, Pc
51543 Van Dyke
Shelby Township, MI 48316-4447