Ex parte Marshall

Board of Patent Appeals and Interferences

Sep 13, 2001

08015756 (B.P.A.I. Sep. 13, 2001)

Application for patent filed February 10, 1993. 1
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not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CATHERINE R. MARSHALL
____________
Appeal No. 96-0712
Application No. 08/015,7561
____________
ON BRIEF
____________
Before HAIRSTON, KRASS, and TORCZON, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 13, all of the claims pending in the
application.
Appeal No. 96-0712 Page 2
Application No. 08/015,756
The invention is directed to a facsimile reception system
wherein a LAN server permits a group of users to share a single
modem residing at that server.
Representative independent claim 1 is reproduced as
follows:
1. A method for transmitting a facsimile document from a
facsimile store-and-forward service computer to a networked
computer system and storing the received facsimile documents in
a file that is associated with an intended recipient of the
facsimile document, wherein the facsimile store-and-forward
service computer is of the type that receives and stores
facsimile documents for multiple users and the networked
computer system is of the type that includes one or more linked
computers, one of which is designated as a central server
computer, the method comprising the steps of:
i) transmitting a first code from a first facsimile-
compatible modem coupled to the central server computer to a
second facsimile-compatible modem coupled to the facsimile
store-and-forward service computer, wherein the first code
indicates to the facsimile store-and-forward service computer a
particular user of the networked computer system who is the
intended recipient of the facsimile document;
ii) transmitting a second code from the first
facsimile-compatible modem to the second facsimile-compatible
modem that causes the facsimile store-and-forward service
computer to transmit any facsimile documents that have been
received for the particular user from the facsimile store-and-
forward service computer to the central server computer;
iii) receiving the facsimile documents at the central
server computer that have been transmitted from the facsimile
store-and-forward service computer; and
Appeal No. 96-0712 Page 3
Application No. 08/015,756
iv) opening at the networked computer system a file that
is associated with the particular user of the networked
computer system, the file being a secured file, and storing the
received facsimile documents in the file associated with the
particular user.
Appeal No. 96-0712 Page 4
Application No. 08/015,756
When we refer to the “answer,” we refer to the answer of2
June 8, 1999 (Paper No. 15), issued in response to our remand
of September 16, 1997 (Paper No. 14).
The examiner relies on the following references:
Herbst 4,941,170 Jul. 10,
1990
Chen 5,090,049 Feb.
18, 1992
Gordon et al. [Gordon] 5,291,302 Mar. 1,
1994
(filed Oct. 2, 1992)
Claims 1 through 13 stand rejected under 35 U.S.C. 103.
As evidence of obviousness, the examiner cites Gordon with
regard to claims 1 through 10. The examiner cites Herbst in
view of Chen with regard to claims 12 and 13.
Rather than reiterate the arguments of appellant and the
examiner, reference is made to the brief and answer for the2
respective positions of appellant and the examiner.
OPINION
We affirm.
At the outset, we note that although claim 11 is not
included in the statement of the rejection, we assume that the
examiner meant to include the claim in the rejection of claims
1 through 10 under 35 U.S.C. 103 over Gordon since the examiner
Appeal No. 96-0712 Page 5
Application No. 08/015,756
sets forth reasons for the rejection of claim 11 at the bottom
of page 10 of the answer. Apparently, appellant acquiesces in
this assumption since appellant had the opportunity to file a
reply brief responsive to the answer but chose not to do so.
Turning first to the rejection of claim 1 under 35 U.S.C.
103 over Gordon, the examiner has very clearly and reasonably
set forth the grounds of rejection and the rationale therefor
at pages 4 through 7. The examiner sets forth the application
of Gordon to instant claim 1, identifying corresponding
elements and indicating where there are differences. The
examiner then sets forth reasons as to why the claimed subject
matter as a whole would have been obvious, within the meaning
of 35 U.S.C. 103, despite those differences. Accordingly, in
our view, the examiner has established a prima facie case of
obviousness along the guidelines set forth in Graham v. John
Deere Co., 383 U.S. 1 (1966).
In attempting to overcome this prima facie case, appellant
has made a variety of arguments. First, at page 3 of the
brief, appellant questions the examiner’s refusal to enter an
amendment which would have made it explicit in the claims that
the stored fax messages are delivered directly to the
Appeal No. 96-0712 Page 6
Application No. 08/015,756
individual computers on the networked computer system and not
through additional modems. The argument is irrelevant to the
instant claimed subject matter before us. An examiner’s
refusal of entry of an amendment is a matter petitionable to
the Commissioner of Patents and Trademarks. The examiner’s
decision to refuse such entry is not appealable under 37 CFR
1.191. Thus, we deal with the actual claims, of record, before
us and such claims do not include the proposed amendment.
Appellant argues that Gordon requires a modem for each
terminal and, in addition to extra telephone lines, Gordon’s
system requires “a more complicated method for secure delivery
of facsimile messages.” It is not seen how such an argument
relates to the instant invention, as claimed. We find nothing
in instant claim 1, for example, that precludes a modem for
each terminal and a “complicated method for secure delivery.”
At the top of page 4 of the brief, appellant contends that
the examiner has not cited any reference “which teaches or
suggests this direct and secure delivery of a fax message
through a LAN.” We find nothing in instant claim 1 which
requires a LAN. The claim only recites a “networked computer
Appeal No. 96-0712 Page 7
Application No. 08/015,756
system” and Gordon clearly is dealing with a networked computer
system.
Next, appellant takes issue with the examiner’s references
to the claimed steps by saying that “...some of them are well
known in the art” and “some of” the steps are taught. More
specifically, appellant states, at the bottom of page 4 of the
brief, that “the Examiner’s unsupported statement that ‘...some
of [the claimed steps] are well known in the art.’ is
inadequate to reject Applicants’ specific claims.”
While, of course, it is true that an analysis of the
claims is not to be done piecemeal and that all claims are made
up of a series of elements or steps which may, per se, be well
known, it is our view that the examiner’s rejection of claim 1
and the rationale therefor, at pages 4-7 of the answer is a
well-reasoned analysis with no piecemeal reconstruction of the
claim. Therefore, notwithstanding the examiner’s comments
about “...some of [the claimed steps],” the examiner has set
forth a reasonable basis for rejecting the claims. We also
note that while appellant has criticized the examiner’s
“unsupported statement,” it does not appear that appellant has
Appeal No. 96-0712 Page 8
Application No. 08/015,756
We note that the examiner has apparently inadvertently3
stated that Chen is combined with “Gordon,” rather than
Herbst, at page 13 of the answer.
ever alleged that the examiner’s assertions in this regard are
wrong.
Accordingly, since the examiner has, in our view,
established a prima facie case of obviousness with regard to
the subject matter of independent claim 1, and claims 2 through
11 fall therewith, in accordance with appellant’s grouping of
the claims at page 3 of the brief, we will sustain the
rejection of claims 1 through 11 under 35 U.S.C. 103.
We now turn to the rejection of claims 12 and 13 under 35
U.S.C. 103 over Herbst and Chen. Again, we have reviewed the
examiner’s rationale and application of the references to the
claims, at pages 11-13 of the answer , and we find that the3
examiner’s explanation is reasonable and presents a prima facie
case of obviousness with regard to the subject matter of claims
12 and 13. We will sustain the rejection of claims 12 and 13
under 35 U.S.C. 103.
Appeal No. 96-0712 Page 9
Application No. 08/015,756
Appellant argues that Herbst uses an electronic mail
system and requires a recipient to access a conventional fax
machine, not achieving the level of privacy and confidentiality
reached by the instant invention.
We find nothing in the instant claims which would preclude
the electronic mail system taught by Herbst nor do we find
anything explicit in the claims regarding any particular level
of privacy or confidentiality. Similarly, we find nothing in
the claims which would preclude the use of the special cover
sheet taught by Herbst and argued by appellant at page 6 of the
brief.
Appellant further argues that Herbst uses an “electronic
mail system rather than the claimed telephone system for the
actual transmission of the fax” [brief-top of page 6]. This
argument is not persuasive since the documents are transmitted,
in Herbst, over telephone lines, by using the electronic mail
system. Appellant’s argument would appear to indicate that
electronic mail systems and telephone systems are, somehow,
mutually exclusive, when, in fact, electronic mail systems rely
on telephone systems to transmit the mail over the telephone
Appeal No. 96-0712 Page 10
Application No. 08/015,756
lines via a modem. Clearly, Herbst uses a telephone system for
transmission of a fax.
The examiner employs Chen for the teaching of
communications details between a facsimile store-and-forward
computer and a central server computer. As explained by the
examiner, at page 13 of the answer, the teachings of Herbst and
Chen are combined so that the details of the communication, as
taught by Chen, are applied to the communication between
central server 14 (fax controller) and the facsimile store-and-
forward service computer (4') of Herbst. Thus, it is not
persuasive for appellant to contend [brief-page 6] that Chen
does not disclose a system for transmitting fax documents to a
file associated with a particular user in a networked computer
system such that the fax message can be retrieved from a
computer in the networked computer system because the examiner
relies on Herbst for this teaching.
Appellant takes issue with the examiner’s characterization
of Herbst’s fax controller 14 as a “networked computer system”
as recited in claims 12 and 13. As the examiner explains, at
page 19 of the answer, facsimile controller 14 of Herbst has a
modem, a microprocessor, a RAM and an I/O device connecting bus
Appeal No. 96-0712 Page 11
Application No. 08/015,756
20 to a computer terminal port and there is a source listing
for the computer program used with the microprocessor. The
examiner concludes, therefrom, that “the fax controller can be
a fax computer or according to claims 12 and 13, a central
server computer disposed on the networked computer system.” We
find no fault with the examiner’s reasoning and we have no
reply brief from appellant refuting the examiner’s reasoning.
Appellant’s response, in toto, to the examiner’s allegations is
merely to state that “this is not true” [brief-page 6] and to
point to page 2, lines 3-9 of the instant specification. We
have referred to that portion of the specification which refers
to a typical LAN system. The claims are not specificaly
directed to a LAN system and, to the extent that they are, we
do not understand how a reference in the specification to a LAN
system refutes the examiner’s allegation that the fax
controller of Herbst serves the function of the claimed
“networked computer system.”
Appellant further takes issue with the examiner’s
identification of computer 70 of Herbst as the claimed “first
facsimile-compatible modem coupled to the facsimile
Appeal No. 96-0712 Page 12
Application No. 08/015,756
store-and-forward computer.” As explained by the examiner, at
page 20 of the answer, “the computer 70 connected to the fax
controller receives the fax message, store [sic, stores] them
in the disk storage 76 and transmits it to other local computer
70. Therefore, the computer 70 connected to the fax controller
can represent the facsimile store-and-forward computer as
claimed in claims 12 and 13.” While we may find fault with the
grammar, we find no fault with the examiner’s reasoning. In
response, appellant merely “disagrees” [brief-bottom of page 6]
and refers to column 9, lines 4-14 of Herbst, alleging that the
description therein does not disclose a first facsimile
compatible modem. If appellant is suggesting that no “modem”
is explicitly described therein, we agree with the examiner
that a modem is inherently taught by Herbst since telephone
communication between computers is employed.
While appellant discusses a reference to “Normura” [sic,
Normura] at page 7 of the brief, we note that this reference no
longer forms part of the examiner’s rejection. Insofar as the
argument at page 7 of the brief concerns Herbst, appellant
contends that the reference does not teach a “LAN server to
allow a group of user’s [sic] to share a single fax modem
Appeal No. 96-0712 Page 13
Application No. 08/015,756
residing at that server.” It is not clear what claim language
appellant relies on for this argument since the claims do not
require a “LAN server.”
We have considered each and every one of appellant’s
arguments but do not find them to overcome the examiner’s prima
facie case of obviousness. Accordingly, we will sustain the
examiner’s rejection of claims 1 through 13 under 35 U.S.C.
103.
The examiner’s decision is affirmed.
Appeal No. 96-0712 Page 14
Application No. 08/015,756
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
EAK/jlb
Appeal No. 96-0712 Page 15
Application No. 08/015,756
TIMOTHY R. SCHULTE
U.S. WEST, INC.
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