Ex Parte Ramakesavan

Board of Patent Appeals and Interferences

Apr 9, 2008

10945659 (B.P.A.I. Apr. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SUNDARAM RAMAKESAVAN
____________

Appeal 2007-3657
Application 10/945,659
Technology Center 2600
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Decided: April 9, 2008
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Before KENNETH W. HAIRSTON, ROBERT E. NAPPI,
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL
We affirm.
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 21 to 26. We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).
Appeal 2007-3657
Application 10/945,659

BACKGROUND
The claims are directed to a system having a transmitter to
electronically transmit in a non-fax format, information in a fax received by
a first device, the first device including the ability to determine the intended
addressee of the fax transmission.1 (Spec. 4: 4-11; 4:27 to 5: 3; 5: 12-27).
Claim 21 is illustrative of the claims on appeal:

21. A fax forwarding system comprising:
a first device to receive a fax transmission, said device including the
ability to determine the intended addressee of said fax transmission; and
a transmitter to electronically transmit the information in the fax
received by said first device in a non-fax format for receipt by the intended
addressee.
References
Handelman US 5,414,773 May 9, 1995

Rejections Appealed
Claims 21-26 stand rejected under 35 U.S.C. § 102 (b) as being
anticipated by Handelman.

Appellant does not separately argue dependent claims 22-26. Thus,
we group claims 21-26 together. We take claim 21 as representative of the
claims on appeal. See 37 C.F.R. § 41.37(c) (1) (vii).

1We interpret “fax” to be a short-hand form for facsimile. The term fax is
defined as “1. A fax machine. 2. A printed page image transmitted or
received by a fax machine. In both senses also called facsimile.” The
American Heritage Dictionary of the English Language (4th. Ed. 2000) avail.
at http://www.bartleby.com/61/75/F0057500.html.
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Issue
The issue is whether Handelman anticipates claim 21.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). However, “[t]he law of anticipation does not
require that the reference ‘teach’ what the subject patent teaches. Assuming
that a reference is properly ‘prior art,’ it is only necessary that the claims
under attack, as construed by the court, ‘read on’ something disclosed in the
reference, i.e., all limitations of the claim are found in the reference, or ‘fully
met’ by it.” Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir.
1983).
“Implicit in our review of the [Examiner’s] anticipation analysis is
that the claim must first have been correctly construed to define the scope
and meaning of each contested limitation.” Gechter v. Davidson, 116 F.3d
1454, 1457 (Fed. Cir. 1997). During examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Although claims are to be interpreted in light of the
specification, limitations from the specification are not to be read into the
claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). The
scope of a disputed term is not limited by the preferred embodiments absent
an express disclaimer by Appellant of a broader definition. See In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004).
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FINDINGS OF FACT (FF)
1. Appellant’s disclosed system allows a user to view a fax on a
television that ordinarily does not have fax reception capability. Appellant’s
transmitter provides the fax information in a form that is compatible with a
receiver 20. (Fig. 1, Spec. 4:27 to 5: 36, 6: 1-11, 24-26).
2. Handelman’s system also allows a viewer to view a fax on a
television display 16 that ordinarily does not have fax reception capability.
Handelman’s system provides fax reception capability on a designated
channel (Fig. 2; col. 6, l. 67 to col. 7, l. 7). That is, Handelman describes an
OSD unit 44 that transforms fax data to a non-fax format:
Stored faxes, E-mail, voice-mail and mail data are provided by either
of the memories 36 and 38 to processor 34 via memory controller 40
and, in the case that the data was previously compressed by
compression/decompression unit 32, via unit 32. The stored data may
be then provided to an on-screen-display (OSD) unit 44. OSD unit 44
prepares the fax data, the E-mail data, the voice-mail data and the mail
data in a format suitable for reception by a TV receiver and provides it
to CATV tuner and receiver unit 30.

(Col. 6, ll. 46-55; Fig. 2).

3. Handelman’s system includes a coded addressed information
generator 22 that comprises a fax machine that receives and transmits fax
information. Handelman’s generator provides the transmitted fax
information in an encrypted form together with the address of the intended
recipient:
Coded addressed information generator 22 may comprise a fax
generator, E-mail generator, voice mail generator, mail generator, or
any other suitable information generator which is capable of providing
information suitable for broadcast via the CATV system to
subscribers. Generator 22 may include a scanner for inputting written
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Application 10/945,659

or printed material and may receive information for broadcast directly
form [sic] a computer or other data source. Generator 22 may
comprise a facsimile machine. Generator 22 preferably provides the
information in an encrypted form together with an address or
addresses which identify one or more subscribers who are the
intended recipients of the information.

(Col. 5, ll. 15-27; Fig. 1) (emphasis supplied).

4. Handelman’s system also includes a transmitter 11 that receives
fax transmissions from generator 22 (Fig. 1, col. 4, ll. 56-60, see FF 2-3)
and/or a data supplier (col. 7, ll. 15-21), and transmits the information in a
fax format. (See Figs. 1-2, col. 6, ll. 21-27, col. 7, ll. 37-57). Data “is
preferably encrypted at the transmitter [11] such that only the addressee is
able to decrypt the data.” (Handelman col. 7, ll. 18-19).

ANALYSIS
Appellant argues that because Handelman’s fax generator 22 does not
receive a fax, it does not include the ability to determine the intended
addressee. (Reply Br. 2). Appellant also argues that Handelman’s OSD unit
44 does not meet the claim limitation of a transmitter transmitting non-fax
formatted information “for receipt by the intended addressee” by implying
that the OSD unit is part of the intended addressee, to wit: “[b]y the time the
information reaches the intended addressee, one can no longer send it to the
intended addressee” (Reply Br. 4).
We are not persuaded by Appellant’s arguments. Appellant’s first
argument is premised on the unsupported contention that Handelman’s
generator does not receive a fax. As the Examiner noted: “Generator 22
may… receive information for broadcast directly form [sic] a computer or
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other data source. Generator 22 may comprise a facsimile machine.” (Final
Office Action 2-3 (mailed Dec. 9, 2005) quoting Handelman - also quoted
supra at FF 3, emphasis supplied). Appellant does not challenge the
Examiner’s finding that the generator 22 comprises a facsimile machine. A
facsimile machine both receives and transmits data.2 Therefore, we find that
Handelman’s fax generator receives a fax transmission since the generator is
specifically disclosed as comprising a fax machine – and the specific
disclosure immediately follows a generic disclosure indicating that the fax
generator receives data from other sources (FF 3).
Appellant’s related argument that “[t]here is no suggestion anywhere
that the fax generator actually receives a fax and then must face the
troublesome problem of extracting the addressee from the received fax”
(Reply Br. 2) not only must fail because of the unsupported contention noted
above, but also because the argument is not commensurate in scope with the
claim. That is, the claim does not require the addressee to be extracted from
the fax.
Consequently, we concur with the Examiner’s determination (Ans. 4-
5) that because Handelman’s generator receives a fax (FF 3) and “preferably
provides the information in an encrypted form together with an address or
addresses which identify one or more subscribers who are the intended
recipients of the information” (FF 3), that Handelman’s generator meets the
limitation of “a first device to receive a fax transmission, said device

2 A “fax machine” is defined as “[a] device that sends and receives printed
pages or images over telephone lines by converting them to and from
electronic signals.” The American Heritage Dictionary of the English
Language (4th. Ed. 2000) avail. at
http://www.bartleby.com/61/75/F0057525.html.
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including the ability to determine the intended addressee of said fax
transmission.”3 In other words, the generator, and/or transmitter (supra n.
3), at a minimum, controls, decides, or fixes the intended addressee, either
by encrypting the address or providing or transmitting it.
We turn next to Appellant’s second argument noted supra that
Handelman’s OSD unit 44 does not meet the claim limitation of “a
transmitter to electronically transmit the information in the fax received by
said first device in a non-fax format for receipt by the intended addressee.”
(Emphasis supplied). We are not persuaded by Appellant’s implied
reasoning that the OSD unit 44 does not transmit fax information to the
intended addressee because the OSD unit is, or is part of, the “intended
addressee” (see Reply Br. 4). We determine that the “intended addressee” is
met by the CATV tuner/receiver unit 30 at Figure 2, because unit 30 is a
separate component from the OSD unit 44.4 Our interpretation is consistent
with Appellant’s disclosure, because Appellant’s intended addressee is also
a receiver that is a separate component from the transmitter (Spec. 6: 12-15,
Fig. 1). Moreover, Handelman’s disclosure implies that the CATV
tuner/receiver 30 (alternatively including processor 34, and/or memory units

3 The Examiner also determined: “Thus the generator 22 must determine the
intended addressee if it is to encrypt a message with the address.” (Ans. 5).
Appellant does not challenge this determination in a manner arising to an
argument asserting an error. Alternatively, the transmitter 11 also receives
and transmits fax information, and similarly determines the intended
addressee by encrypting data to enable reception only by said intended
addressee - thereby also meeting the claimed “first device” (see FF 4).
4“In a preferred embodiment…OSD unit 44 may be part of the CATV tuner
and receiver unit 30.” (Handelman, col. 6, ll. 55-57) (emphasis supplied).
This quotation and Figure 2 indicates that the OSD unit is not part of the
CATV unit for all embodiments.
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40, 46) constitute(s) the only component(s) in the interface unit 18 of
subscriber unit 14 able to perform decryption5 - similar to Appellant’s
disclosed receiver/intended addressee which performs decryption (Spec. 6:
12-15).
After Handelman’s tuner/receiver 30 receives fax data from
communications link 12 and stores it to memory 36 and 38, the OSD unit 44
(i.e., “a transmitter”)6 reformats the fax data into a non-fax format, and then
“transmits the information in the fax received by the first device” (i.e.,
generator 22, or transmitter 11, see n. 3 supra) “for receipt by the intended
addressee” (i.e., tuner/receiver 30), as claimed, for viewing on the television
display unit 16. (See Figs. 1-2; col. 6, ll. 24-60, FF 2-3). Thus, we agree
with the Examiner’s determination that the OSD unit meets the claimed
transmitter (Ans.6).7

5 Handelman states that “the CATV interface unit 18 at each subscriber unit
14 includes an information decoder which is operative to decrypt only that
information from generator 22 which is addressed thereto” (col. 5, ll. 29-32).
The only components in the CATV unit 18 disclosed in Figure 2 capable of
such decryption are as we described since all received information is
processed first in the CATV tuner/receiver (Fig. 2). See also Column 6 at
lines 14-30, 59-66 – the CATV unit 30 decrypts encrypted audio and video
from the communications link 12 – implying addressee decryption.
6 The OSD unit 44 provides information to the CATV tuner/receiver unit 30
(col. 6, ll. 50-55). We determine the OSD unit to meet the claim limitation
“a transmitter to electronically transmit the information” (emphasis
supplied), where Handelman refers to a similar internal electronic
information transfer as a transmission: “[t]he information is transmitted
directly or via unit 32 to processor 34” (col. 6, ll. 29-30) (emphasis
supplied).
7 On the other hand, we do not agree with the Examiner’s determination that
the “hand-shake” procedure evidences the modem 119 as constituting a first
device as claimed (Ans. 5), because, based on our understanding of normal
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As an alternative interpretation of the claim, Handelman’s subscriber
14 or interface 18 units constitute the “intended addressee.” The limitation
“transmitter to electronically transmit…for receipt by the intended
addressee” does not preclude both transmission (from transmitter OSD unit
44) and reception (in tuner/receiver unit 30) from occurring within the
intended addressee 14 or 18. Appellant’s argument does not state why such
an interpretation is unreasonable (see Reply Br. 4). Further, expanding on
our discussion supra, we note that the OSD transmitter operates (in
conjunction with the tuner/receiver unit 30) “to electronically transmit” the
signal both inside and outside of the system 18 (i.e., inside and outside
intended addressee unit 18 under this interpretation) to the television display
unit 16 (i.e., “for” additional “receipt by the intended addressee” albeit at the
tuner/receiver portion 30 therein).

CONCLUSION
Appellant failed to meet the burden of asserting error in the
Examiner’s rejection as to claim 21. See In re Kahn, 441 F.3d 977, 987-88
(Fed. Cir. 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick, Co., 464 F.3d 1356, 1360-61 (Fed. Cir. 2006). Accordingly, we
sustain the Examiner’s rejection of claim 21 and claims 22 through 26,

wire telephone switching systems and absent more evidence put forth by the
Examiner, that procedure only establishes protocols after the intended
addressee has been linked with the transmitting fax machine, as determined
by a switching action occurring upstream in the communication channel.
(Compare Reply Br. 3). We also do not agree with the Examiner’s “Music
Argument” and adopt Appellant’s refutation thereof (Ans. 6, Reply Br. 3).
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which ultimately depend from claim 21, and which have not been separately
argued.

DECISION
The Examiner’s decision rejecting claims 21 to 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)(iv) (2006).

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Appeal 2007-3657
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AFFIRMED

eld

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