Ex Parte Migimatsu

Patent Trial and Appeal Board

May 28, 2013

10047374 (P.T.A.B. May. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TAKA MIGIMATSU
____________________

Appeal 2010-008428
Application 10/047,374
Technology Center 2400
____________________

Before: ROBERT E. NAPPI, DEBRA K. STEPHENS, and PATRICK M.
BOUCHER, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 4, 5, 31, 38, 45, 50, 53-55, 57, 58, and 62-70. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 3, 6-30, 32-37, 39-44, 46-49,
51, 52, 56, and 59-61 have been canceled.
We AFFIRM.

Introduction
According to Appellant, the invention is directed to a system and
method for transmitting voice messages from a caller location to a receiver
location using computers coupled to each other through the Internet
(Abstract).

STATEMENT OF THE CASE
Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for transmitting voice messages from a caller to a
recipient over a network, said system comprising:

a first access device coupled to a network, said first access
device comprising:

a voice encoding device configured to receive a first
voice signal and generate a digital message file, wherein
said digital message file comprises a complete caller
communication;

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a first storage device capable of storing said digital
message file; and

a transmission device configured to transmit said digital
message file through said network; wherein said
transmission device transmits said digital message file
through said network after said voice encoding device
completes the generation of said digital message file, and
wherein said transmission of said digital message file is
responsive to a caller indication;

a second access device coupled to said network, said second
access device comprising:

a receiving device configured to receive said digital
message file from said transmission device, responsive to
said caller indication;

a second storage device capable of storing said digital
message file;

a delivery notification device configured to notify of the
receipt of said digital message file, said delivery
notification device being responsive to said caller
indication; and

a voice decoding device configured to decode said digital
message file and generate a second voice signal, wherein
said voice decoding device decodes said digital message
file after said receiving device completes the reception of
said digital message file.

REFERENCE
Gordon US 5,608,786 Mar. 4, 1997
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REJECTIONS
The Examiner made the following rejections:
(1) Claims 1 and 4 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement (Ans. 3).
(2) Claims 1, 2, 4, 5, 31, 38, 45, 50, 53-55, 57, 58, and 62-70 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Gordon (Ans. 4).1

We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii)(2011).

ISSUE 1
35 U.S.C. § 112, first paragraph: Claims 1 and 4
Appellant argues the Examiner erred in stating the claims contain
subject matter not described in the Specification in such a way as to enable
an ordinarily skilled artisan to make and/or use the invention since
“complete caller communication” is not disclosed (App. Br. 9). According
to Appellant, a “complete caller communication” includes a voice message,
and the voice message is complete since it is part of an asynchronous rather
than real-time interaction (App. Br. 9). Appellant also argues the
Specification provides numerous references to support the ordinary
interpretation of the phrase (App. Br. 9). Since a complete caller
communication is clearly and repeatedly described in the Specification as

1 The objections to claims 4 and 69 are not before us.
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voice mail and voice mail messages, according to Appellant, “‘complete
caller communication’ includes a voice mail message” (Reply Br. 2).
Appellant argues “message” is used “to more clearly distinguish real-
time voice communication (e.g., a single packet of real-time voice
communication is clearly not a complete caller communication, but a packet
is sometimes referred to as a message)” (Reply Br. 2). Therefore, Appellant
asserts, these numerous references would lead an ordinarily skilled artisan to
understand the plain and ordinary meaning, and thus, claims 1 and 4 are
enabled and definite (App. Br. 12; Reply Br. 2).

Issue 1: Has the Examiner erred in rejecting claims 1 and 4 as failing
to comply with the enablement requirement due to the inclusion of the
recited “complete caller communication” subject matter?

ANALYSIS
The test for compliance with the enablement requirement in the first
paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). “Enablement is not precluded by the
necessity for some experimentation .... However, experimentation needed to
practice the invention must not be undue experimentation. The key word is
‘undue,’ not ‘experimentation.’” Id. at 736-737.
Here, we determine that an ordinarily skilled artisan could implement
the invention without undue experimentation. Although we agree with the
Examiner that “complete caller communication” is not explicitly defined,
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taking a broad, but reasonable interpretation of the term, we find an
ordinarily skilled artisan could implement the invention as recited.
Accordingly, the Examiner erred in determining the invention as recited in
claims 1 and 4 fails to comply with the enablement requirement.

ISSUE 2
35 U.S.C. § 102(e):
Claims 1, 2, 4, 5, 31, 38, 45, 50, 53-55, 57, 58, 62-67, and 69

Claim 1
Appellant argues in contrast to Gordon, the present invention involves
recording a complete caller communication prior to transmission over a
network (App. Br. 14). According to Appellant, Gordon’s voice packet is
not a complete caller communication (App. Br. 15). Further, Appellant
argues “Gordon discloses a process by which an ongoing communication is
established, not the creation of a complete caller communication followed by
a transmission of the communication over a network” (App. Br. 15). In
Gordon, subscribers access their voice mailbox when convenient; therefore,
Appellant argues, no transmission or reception of messages responsive to a
caller indication is described (App. Br. 15).

Issue 2: Has the Examiner erred in finding Gordon discloses
“generate . . . said digital message file comprises a complete caller
communication;” “a transmission device configured to transmit said digital
message file through said network . . . after said voice encoding device
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completes the generation of said digital message file;” “said transmission of
said digital message file is responsive to a caller indication;” and receiving
“said digital message file from said transmission device, responsive to said
caller indication” as recited in claim 1?

ANALYSIS
Initially we note Appellant has not explicitly defined “complete caller
communication” or “caller indication” in the Specification. Thus, taking
broad, but reasonable interpretations in light of the Specification, we are not
persuaded of error in the Examiner’s findings. Specifically, we find Gordon
discloses the invention as recited in claim 1. We find Gordon discloses
generating a digital message file wherein the digital message file comprises
a complete caller communication (col. 4, ll. 51-52 and 63-65; col. 5, ll. 8-10
and 35-50; col. 9, ll. 5-9; Ans. 4 and 8-9). We additionally agree with the
Examiner that Gordon discloses “a transmission device configured to
transmit said digital message file through said network . . . after said voice
encoding device completes the generation of said digital message file” and
“said transmission of said digital message file is responsive to a caller
indication” (Ans. 4-5 and 8-9). Indeed, Gordon discloses a voice message
which can be retrieved by a subscriber (col. 2, ll. 55-65; col. 5, ll. 17-31 and
50-60; col. 9, ll. 35-60). Further, we find transmission of the digital message
file may be responsive to a caller indication (id.). As Appellant has not
explicitly defined “caller indication,” taking a broad, but reasonable
interpretation, we determine transmission may occur in response to the user
receiving the summary which indicates a caller called (caller indication) or
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automatic transmission in response to a caller indication (alert) that is
received (id.).
We find Gordon discloses a second access device that receives the
digital message file from the transmission device, responsive to said caller
indication (Ans. 5-6). Appellant argues Gordon does not transmit voice
messages after recording and before playback, however, we find the
Examiner has shown Gordon discloses this feature (Ans. 4-5 and 8-9).
Gordon discloses transfer between two UniPost Access Nodes (see e.g.,
Figs. 1 and 2). Gordon describes this feature in more detail in the example
of a subscriber traveling to Japan (col. 10, ll. 31-35) which we further note.
Specifically, Gordon describes that the Tokyo Unipost Access node permits
a Toronto-based subscriber travelling to Japan to access their mailbox
contents (col. 3, ll. 9-16; col. 10, ll. 31-63). The subscriber can select
individual messages from the Summary, for downloading or forwarding (col.
10, ll. 64-65). “By delivering all message types into the PC, the subscriber
is able to save voice, fax, …..and other message types under any
subdirectory within his PC” (col. 10, l. 65 – col. 11, l. 14). Thus,
Appellant’s arguments that Gordon does not transmit a complete caller
communication after recording and before playback (Reply Br. 3) is not
persuasive. Nor are we persuaded the claims recite messaging being
“pushed” over the network (Reply Br. 4).
Accordingly, the Examiner did not err in finding Gordon discloses the
invention as recited in independent claim 1 and commensurately recited, and
argued, claim 4. Dependent claims 2, 5, 31, 38, 45, 50, 53-55, 57, 58, 62-67,
and 69 are not separately argued and thus fall with their respective
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independent claims. Therefore, the Examiner did not err in rejecting claims
1, 2, 4, 5, 31, 38, 45, 50, 53-55, 57, 58, 62-67, and 69 under
35 U.S.C. § 102(e) for anticipation by Gordon.

ISSUE 3
35 U.S.C. § 102(e): Claims 68 and 70
Appellant asserts the invention is not anticipated by Gordon (App. Br.
16-17). Specifically, Appellant contends Gordon does not disclose the use
of destination information to select the destination of a voice message prior
to transmission of that voice message (App. Br. 17). In particular, according
to Appellant, Gordon’s disclosure cited by the Examiner relates to retrieval
of voice messages by playing them back over the Internet (App. Br. 17).
Appellant thus argues the Examiner has failed to identify specifically what is
considered to be destination information and fails to identify how such
information is used to select the second access device. Therefore, Appellant
contends Gordon does not disclose the invention as recited.

Issue 3: Has the Examiner erred in finding Gordon discloses the
destination information is used to select the second access device as recited
in claims 68 and 70?

ANALYSIS
We agree with the Examiner’s findings and adopt them as our own
(Ans. 7 and 10). Appellant has not presented sufficient evidence or
argument to persuade us the Examiner’s findings are in error. Accordingly,
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the Examiner did not err in finding Gordon describes the invention as recited
in claims 68 and 70. Therefore, the Examiner did not err in rejecting claims
68 and 70 under 35 U.S.C. § 102(e) for anticipation by Gordon.

DECISION
The Examiner’s rejection of claims 1 and 4 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement is
reversed.
The Examiner’s rejection of claims 1, 2, 4, 5, 31, 38, 45, 50, 53-55,
57, 58, and 62-70 under 35 U.S.C. § 102(e) as being anticipated by Gordon
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)(iv).

AFFIRMED

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