Ex parte Hamada

Board of Patent Appeals and Interferences

Sep 22, 1999

07895467 (B.P.A.I. Sep. 22, 1999)

Application for patent filed June 8, 1992. According to applicant,1
this application is a continuation (CONT) of S. N. 07/627,918, filed 12/17/90;
which is a CONT of S.N. 07/245,268, filed 09/16/88.
1
Paper No. 56
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte HIROSHI HAMADA
______________
Appeal No. 1996-3281
Application 07/895,4671
_______________
HEARD: SEPTEMBER 14, 1999
_______________
Before BARRETT, FLEMING and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 10, 16 through 25 and 31 through 33, all
claims outstanding in this application.
Appeal No. 1996-3281
Application 07/895,467
2
The invention is directed to message processing method
and apparatus. A party sending a message manually designates
the desired transmission time in terms of the local time at
the designated receiving party’s terminal. The time zone
differential (if any) between the local time at the sending
party’s location and the local time at the receiving party’s
location is then automatically calculated. The time
differential is then used to automatically convert the local
transmission starting time entered by the sending party, into
a local transmission starting time in terms of the sending
party’s local time. Transmission will then begin at the
appropriate local transmission starting time at the sending
party’s location, without requiring the user to manually
calculate the time differential and convert the receiving
party’s local time into his own. When the sending party
designates a transmission time that has already passed at the
receiving party’s terminal, an error condition is recognized
and the sending party is so notified. Additionally, when such
an error condition is recognized, the sending party may be
Appeal No. 1996-3281
Application 07/895,467
3
informed of another time which would be capable for
transmission. This enables the sender to correct the
situation as he deems appropriate, rather than letting the
system decide what to do.
In summary, the invention recognizes that a passed
transmission starting time is an error that the sender should
be able to address, rather than taking an automatic, and
possibly undesirable action.
Independent claims 6 is reproduced as follows:
6. A message processing method for performing an
exchange of information between a sending party's terminal
located in one time zone having a respective local time and at
least one receiving party's terminal located in a different
time zone having a respective local time, the two time zones
having a time zone differentially therebetween, comprising the
steps of:
manually designating at the sending party's terminal a
first local transmission starting time in terms of the local
time at the receiving party's location;
automatically calculating the time zone differential
between the local time at the sending party's location and the
local time at the receiving party's location;
automatically converting the first local transmission
starting time into a second local transmission starting time
at the sending party's location, based on the calculated time
zone differential;
Appeal No. 1996-3281
Application 07/895,467
The translation in the application file is being used and references2
are thereto. Translated by the Diplomatic Language Services, Inc. dated April
1994.
4
automatically determining whether transmission is
impossible based on whether the second local information
transmission time at the sending party's location is earlier
than the local time there at which manual designating occurs
taking into account the calculated time zone differential; and
informing the sending party's terminal that transmission
is impossible when transmission is determined to be impossible
in
the determining step.
The references relied on by the Examiner are as follows:
Takenouchi et al. (Takenouchi) 4,506,111 Mar. 19, 1985

Sekiya et al. (Sekiya) JP 58-196754 Nov. 16, 19832
Claims 1 through 10, 16 through 25 and 31 through 33
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Sekiya in view of Takenouchi.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief, reply brief and the
answer for the details thereof.
Appeal No. 1996-3281
Application 07/895,467
5
OPINION
After a careful review of the evidence before us, we
will not sustain the rejection of claims 1 through 10, 16
through 25 and 31 through 33 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the reasonable teachings or suggestions found in
the
prior art, or by a reasonable inference to the artisan
contained in such teachings or suggestions. In re Sernaker,
702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995) (citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983), cert. denied,
469 U.S. 851 (1984)).
Appeal No. 1996-3281
Application 07/895,467
6
Appellant argues:
Both references fail to recognize a passed
transmission starting time as an error and both
simply transmit the message immediately without
notifying the sender. Appellant respectfully
submits that the Examiner is using impermissible
hindsight to read what is only now disclosed in the
present specification into the teachings of both
references. (Brief-page 19.)
The Examiner states;
Sekiya shows all the claimed limitations except
an error indicating means.
At the time that the invention was made,
Takenouchi et al (column 12, line 34) had suggested
an error producing means and in column 5, lines 6-7
had suggested a correction could be made in response
to “an error message”. Hence, the teaching in
Takenouchi et al could have been used in Sekiya to
indicate a message should be re-mailed. (Answer-
page 3.)
At page 3 of the Answer, the Examiner cites various
portions of Takenouchi. The Examiner cites “time-controlled”
as a suggestion that there may be a difference in time zones
to be recognized. We find no such suggestion, “time-
controlled” could mean many things, but in the context of
Takenouchi, it merely means a time for transmission if other
than the current time. Time zones are never mentioned.
Appeal No. 1996-3281
Application 07/895,467
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At page 4 of the Answer, the Examiner notes that F8
(Figure 4) of Takenouchi can indicate an error, and “When the
time to transmit is after time at the receiving station, F8
would obviously indicate an error.”
However, we find that Takenouchi specifically does not
recognize such as an error. According to column 12, lines
50+, when a time to transmit is after the time at the
receiving station, Takenouchi transmits and does not treat
this as an error. Appellant also recognizes this and argues
that Takenouchi does not recognize an elapsed transmission
time as an error. (Brief-page 20.) We agree with the
Appellant.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may
not be established using hindsight or in view of the teachings
Appeal No. 1996-3281
Application 07/895,467
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or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
As pointed out above, Sekiya and Takenouchi do not
recognize a passed message transmission time as an error, both
treat such a situation by immediate transmission. Although
Takenouchi detects and reports various errors, they are of a
different nature than that of Appellant. Thus, the Examiner’s
reason to combine Sekiya and Takenouchi fails, and we will not
sustain the 35 U.S.C. § 103 rejection of claims 1 through 10,
16 through 25 and 31 through 33 as set forth by the Examiner.
NEW GROUND OF REJECTION
Pursuant to the provisions of 37 CFR § 1.196(b), we
hereby enter the following new rejection.
Claims 1, 16 and 33 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sekiya in view of Takenouchi.
Sekiya teaches all the claimed limitations except for
Appeal No. 1996-3281
Application 07/895,467
9
“informing the sending party’s terminal of a time capable of
designation of transmission when the first local information
transmission starting time manually designated already has
passed the local time at the receiving party’s location.”
We note that these particular claims do not indicate such
a situation as an error, but only “inform” the sender of “a
time capable of designation of transmission.”
Sekiya provides for sending messages and calculating time
zone differentials and automatically sending messages at the
designated/calculated times. Takenouchi elaborates on the
various types of messages that may be sent which includes
registered mail which includes a return receipt (column 1,
lines 56 and 57). This registered mail may contain
instructions for a time of delivery (column 3, lines 59-62).
If the designated time for transmission has already lapsed,
Takenouchi immediately transmits the mail (column 12, lines
50+). In this manner, registered mail will be transmitted
later than the original designated time, and when received, a
time of receipt, i.e., a time that was capable of designation
of transmission, will be issued to inform the sender (receipt
Appeal No. 1996-3281
Application 07/895,467
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to sender, column 10, lines 37-40; time of receipt, column 4,
lines 4-6 and 63-63).
Thus, it would have been obvious to one of ordinary skill
in the art at the time of invention to have used the Sekiya
mailing device to transmit common types of mail, such as
registered mail. In sending registered mail, a message would
be issued to inform the sender of receipt as disclosed in
Takenouchi, which message includes the receipt/transmission
time. As taught in Takenouchi, when the actual transmission
time was later than the initially designated transmission
time, the receipt thereby indicates the actual time capable of
designation of transmission.
Appellant’s claims 1, 16 and 33 each recite transmission
of the information, followed by, informing the sending party
of a time capable of designation of transmission. This time
capable of transmission is read to mean a report of the actual
time the system had been capable of transmitting, not a future
transmission time. It would be illogical to inform the sender
of a future transmitting time since the message had already
been transmitted.
Appeal No. 1996-3281
Application 07/895,467
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We have made no determination as to the patentability of
claims dependent from claims 1, 16 and 33 on the above recited
grounds.
The Examiner’s decision rejecting claims 1 through 10, 16
through 25 and 31 through 33 under 35 U.S.C. § 103 is
reversed. A new ground of rejection of claims 1, 16 and 33
under 35 U.S.C. § 103 is entered under 37 CFR § 1.196(b).
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences
based upon the same record must be filed within one month from
the date hereof (37 CFR § 1.197).
With respect to the new rejection under 37 CFR §
1.196(b), should Appellant elect the alternate option under
that rule to prosecute further before the Primary Examiner by
way of amendment or showing of facts, or both, not previously
of record, a shortened statutory period for making such
response is hereby set to expire two months from the date of
this decision.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
Appeal No. 1996-3281
Application 07/895,467
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§ 1.136(a). See the final rule notice, 54 F.R. 29548 (July
13, 1989), 1105 O.G. 5 (August 1, 1989).
Effective August 20, 1989, 37 CFR § 1.196(b) has been
amended to provide that a new ground of rejection pursuant to
the rule is not considered final for the purpose of judicial
review under 35 U.S.C. §§ 141 or 145.
Failure by Appellant to timely request reconsideration by
the Board or to timely seek prosecution before the examiner
with respect to the new rejection as provided for by 37 CFR §
1.196(b) will result in the cancellation of all the claims
subject to the new rejection.
REVERSED
37 CFR § 1.196(b)

Lee E. Barrett )
Administrative Patent Judge )
)
)
)
Michael R. Fleming ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 1996-3281
Application 07/895,467
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)
)
Stuart N. Hecker )
Administrative Patent Judge )

SNH/cam
Appeal No. 1996-3281
Application 07/895,467
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