Ex Parte HochmanDownload PDFBoard of Patent Appeals and InterferencesNov 12, 201011057853 (B.P.A.I. Nov. 12, 2010) Copy Citation 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. 11/057,853 02/15/2005 Gary Hochman 2222.007REI0 4400 26111 7590 11/12/2010 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER HO, CHUONG T ART UNIT PAPER NUMBER 2476 MAIL DATE DELIVERY MODE 11/12/2010 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 GARY HOCHMAN ________________ Appeal 2010-004382 Application 11/057,853 Reissue Patent 5,838,685 Technology Center 2400 ____________________________ Before THOMAS S. HAHN, ELENI MANTIS MERCADER, and CARL W. WHITEHEAD, JR. Administrative Patent Judges. HAHN, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, 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 2010-004382 Application 11/057,853 Reissue Patent 5,838,685 Appellant invokes our review under 35 U.S.C. § 134(a) from the final rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm the Examiner’s rejection of these claims. STATEMENT OF THE CASE2 Appellant claims a method for transmission of data files. A message is composed using a chosen data format, e.g., a graphic, facsimile, audio, video, or text data format. An identifier code, corresponding to the data format, is annexed to the message, and the message is sent to a reception host facility (see generally Abstract). Claim 1, with disputed limitations (Br. 17) emphasized, is illustrative: 1. A method for transmission of a message over a network, comprising: an original composer composing an original message body of an identified data format for an intended recipient; the original composer annexing to said original message body a unique identifier corresponding to the data format of the original message body; transmitting the identifier and original message body through the network for reception by a host facility; inspecting the identifier at the host facility to identify the data format of the message body; and advising the recipient of the receipt of the message and its data format. 2 This appeal is for a reissue application for US Patent 5,838,685. Accordingly, the Specification is the printed patent. See 37 C.F.R. § 1.173(a)(1). 2 Appeal 2010-004382 Application 11/057,853 Reissue Patent 5,838,685 The Examiner relies on the following prior art references to show unpatentability:3 Bobo US 5,675,507 Oct. 7, 1997 Marshall US 6,396,597 B1 May 28, 2002 Claims 1-26 stand rejected under § 103(a) as being unpatentable over Marshall and Bobo (Ans. 3-21). Throughout this decision, we make reference to the Appeal Brief (“Br.,” filed Sept. 10, 2009), and the Examiner’s Answer (“Ans.,” mailed Oct. 14, 2009) for their respective details. APPELLANT’S CONTENTION4 Appellant does not separately argue any claim, but, instead, collectively argues disputed independent claim limitations (see Br. 18-21). The arguments are that the cited references fail to teach or suggest a recited “original composer” limitation (independent claims 1 and 5) and “original sender” limitation (independent claims 7 and 26), which limitations, we understand, Appellant inferentially contends are equivalent (Br. 18). Relying on these arguments, Appellant further asserts that because of their dependencies the other claims also are patentable (Br. 22). Accordingly, we select independent claim 1 as representative, pursuant to our authority under 37 C.F.R. § 41.37 (c)(1)(vii). 3 Effective filing dates for these documents precede Appellant’s earliest effective filing date and are not at issue. 4 Arguments that Appellant did not make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii). 3 Appeal 2010-004382 Application 11/057,853 Reissue Patent 5,838,685 Appellant argues that the Examiner improperly finds the Marshall described service computer as teaching or suggesting the disputed limitations (Br. 19). In accord with this argument, Appellant identifies that the Examiner does not find Bobo teaching or suggesting the disputed limitations, and Appellant then asserts that the argued Marshall deficiencies are not overcome by Bobo (Br. 21). ISSUE Did the Examiner err under § 103(a) by finding that Marshall and Bobo, alone or in combination, teach or suggest the “original composer” as recited in representative claim 1? PRINCIPLES OF LAW The scope of claimed limitations is determined by giving the terms in claims their ordinary and accustomed meaning while interpreting the claims as broadly as is reasonable and consistent with the specification. See In re Thrift, 298 F.3d 1357, 1364 (Fed. Cir. 2002). ANALYSIS For the following reasons, Appellant’s argument that the Examiner erred in rejecting the independent claims is not persuasive. Appellant identifies the disputed limitations of representative method claim 1 as “an original composer composing an original message body of an identified data format for an intended recipient; [and] the original composer 4 Appeal 2010-004382 Application 11/057,853 Reissue Patent 5,838,685 annexing to said original message body a unique identifier corresponding to the data format of the original message body” (Br. 17). The Examiner finds Marshall’s described service computer (50) teaches or suggests the recited “original composer” of the disputed limitations (Ans. 4-5). Appellant argues Marshall is deficient because: (i) Marshall’s service computer (50) receives messages for subsequent storage and forwarding, and does not originate the messages; (ii) “Marshall repeatedly emphasizes that the messages originate elsewhere, e.g., computer (60) or fax machine (62);” and (iii) “Marshall makes clear that the actual originators of the messages may be completely unaware of the existence of service computer (50)” (Br. 21). Appellant does not contend that the Marshall taught service computer (50) fails to annex a unique identifier corresponding to the data format of a message body as recited in the disputed limitations. Appellant asserts as a conclusion that the disputed limitations recite that a message originates at the “original composer” and therefore a message is not received at the “original composer” (Br. 20). Appellant does not address why this is the exclusive or even a correct interpretation. What we find, however, from ordinary and accustomed meanings of the recited terms is that the “original composer” puts an original message body together in an identified data format, which does not exclude receipt of a message for data formatting. Besides being supported by ordinary and accustomed meanings for the recited terms, we also find this interpretation is supported by the Specification. See Thrift, 298 F.3d at 1364. In particular, we find disclosure of a data transmission system having a front end apparatus 114, which can 5 Appeal 2010-004382 Application 11/057,853 Reissue Patent 5,838,685 be a microprocessor-driven data-acquisition device, [i.e., an original composer] capable of accepting text or other data files that “converts them to an appropriate digital format which can be transmitted over a network” (Spec., col. 6, lines 6-15). In addressing Appellant’s argument, the Examiner also relies on the Specification. Specifically, the Examiner cites Specification disclosures at page 8, lines 10-15 (i.e., col. 4, lines 17-22) that we find to be in accord with those identified above, namely: “The sender constructs an E-Mail message body at 16 [see Fig. 3] in the desired format, whether as a facsimile image, conventional text, audio or video file or the like. At 18 conventional header material is entered, along with the appropriate coding to classify the type of E-mail body” (Ans. 32). Thus, consistent with the Specification the disputed limitations encompass an original composer that “converts [E-mail messages] to an appropriate digital format” or otherwise said “constructs an E-Mail message body . . . in the desired format.” We do not find any recitation in the disputed limitations that excludes receipt by the original composer of a message for data formatting. We, therefore, are not persuaded by Appellant’s argument that disputed limitations fail to read on Marshall’s service computer 50 because it receives messages. Consistent with this interpretation, the Examiner finds Marshall teaches a service computer 50 for “composing an original message body (figure 4, original message body having data format 154) of an identified format for the recipient . . .” (Ans. 32). We agree. In particular, we find Marshall teaches that “the service computer [50] manipulates the [received] facsimile data to the desired format” (Spec., col. 7, lines 34-39). 6 Appeal 2010-004382 Application 11/057,853 Reissue Patent 5,838,685 For the foregoing reasons, we will sustain the rejection of representative claim 1, and also the rejection of the other independent claims 5, 7, and 26 along with the respective dependent claims that fall with their base independent claims. ORDER The Examiner’s decision rejecting claims 1-26 is affirmed. 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)(v). 7 Appeal 2010-004382 Application 11/057,853 Reissue Patent 5,838,685 AFFIRMED ELD STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 8 Copy with citationCopy as parenthetical citation