Ex Parte 6,735,614 et alDownload PDFPatent Trials and Appeals BoardJan 14, 201595000631 - (R) (P.T.A.B. Jan. 14, 2015) 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. 95/000,631 05/03/2011 6,735,614 S057-P11333 9591 33356 7590 01/14/2015 SoCAL IP LAW GROUP LLP 310 N. WESTLAKE BLVD. STE 120 WESTLAKE VILLAGE, CA 91362 EXAMINER HENEGHAN, MATTHEW E ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/14/2015 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 PATENT TRIAL AND APPEAL BOARD ____________ RESEARCH IN MOTION LIMITED, Third Party Requester, v. SIMPLEAIR, INC., Patent Owner and Appellant. ____________ Appeal 2013-008777 Reexamination Control 95/000,631 Patent 6,735,614 B1 Technology Center 3900 ____________ Before KEVIN F. TURNER, STANLEY M. WEINBERG, and DAVID C. MCKONE, Administrative Patent Judges. MCKONE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2013-008777 Reexamination Control 95/000,631 Patent 6,735,614 B1 2 Patent Owner SimpleAir, Inc. (“Appellant”), pursuant to 37 C.F.R. § 41.79(a)(1), has submitted a Request for Rehearing (“Req. Reh’g.”), requesting rehearing of our original decision (“Dec.”) affirming the Examiner’s decision to reject claims 1–6 and 10–12 of U.S. Patent No. 6,735,614 B1 (“the ’614 patent”). The Decision affirmed an obviousness rejection of claims 1–6 and 10–12 over Jonsson (WO 93/16564, published Aug. 19, 1993) and Foladare (US 6,343,115 B1, issued Jan. 29, 2002, filed Feb. 13, 1996). Dec. 8–18. After consideration of Appellant’s comments in the Request, we find no errors in our prior Decision. We therefore decline to change our prior decision for the following reasons. ANALYSIS In the Right of Appeal Notice (“RAN”), the Examiner adopted the reasons given in the Inter Partes Reexamination Request (“Reexam. Req.”) for rejecting claims 1–6 and 10–12 over Jonsson and Foladare. RAN 6–7 (citing Reexam. Req. 50–60). The Reexamination Request, in turn, identified in Jonsson a “paging central” on which a user could register and argued that it corresponded to “providing an address service connected to the first communication network on which a user may register . . . an associated address on a second communication network,” as recited in claim 1. Reexam. Req. 50–51 (citing Jonsson, 19:27–36). The Reexamination Request acknowledged that Jonsson did not explicitly disclose registering a “name.” Id. at 51. Rather, the Reexamination Request argued that Foladare described registering a subscriber name and contended that a skilled artisan Appeal 2013-008777 Reexamination Control 95/000,631 Patent 6,735,614 B1 3 would have predictably applied Foladare’s teaching to Jonsson, resulting in claim 1. Id. In our Decision, we agreed with the Examiner and the Reexamination Request. Dec. 9, 12–13. A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Appellant points to two instances in which it alleges we erred. First, Appellant argues that we misapprehended the proper scope of the claims by giving an improper construction to the term “address service,” as recited in claim 1. Req. Reh’g. 1–3. Second, Appellant argues that we misapprehended the teachings of the prior art by concluding that a person of ordinary skill in the art would have had reason to combine Jonsson and Foladare. Id. at 3–4. Neither of these arguments is persuasive. Construction of “address service” In its Rebuttal Brief, Appellant argued that the paging central described in Jonsson actually would have been implemented such that humans would have performed key parts of Jonsson’s alerting service in a manual process. Reb. Br. 5–6. Appellant argued that, today, such a method would be performed automatically, but that “[b]ack then, it was new.” Id. Appellant continued that “one of ordinary skill in the art would see Jonsson’s human-based system and understand that employees of the alerting service enter subscriber data into the database – not the users.” Id. at 7. Appellant, however, did not tie this argument to the language of Appeal 2013-008777 Reexamination Control 95/000,631 Patent 6,735,614 B1 4 claim 1 or otherwise explain how this purported aspect of Jonsson distinguished Jonsson from claim 1. Nevertheless, we considered Appellant’s argument and concluded that claim 1 recited “providing an address service connected to the first communications network” broadly, without limiting the address service to particular structure. Dec. 12. Specifically, we concluded that the claim language did not limit an address service to automatic software agents to the exclusion of human agents collecting information and entering it into a database. Id. In the Request for Rehearing, Appellant now contends that “address service” should be limited to “software in a computer system,” arguing that passages from the specification of the ’614 patent make this clear. Req. Reh’g. 1–3. Appellant did not make this argument in the Appeal Brief or the Rebuttal Brief. Accordingly, we could not have misapprehended it. See 37 C.F.R. § 41.79(b)(1) (“Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing,” except in circumstances not present here.). Moreover, even if we consider Appellant’s argument, we are not persuaded that “address service” should be restricted to software in a computer system to the exclusion of human actors. In construing claims of an unexpired patent in reexamination, we give claims their broadest reasonable interpretation consistent with the specification. See In re Am. Academy of Science Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellant points to examples in which the address service is described variously as hosted on a computer, “on line,” part of an “information Appeal 2013-008777 Reexamination Control 95/000,631 Patent 6,735,614 B1 5 provider,” and as a website having hyperlinks. Req. Reh’g. 2–3 (citing ’614 patent, Abstract, 2:3–11, 3:1–7, 4:26–32). According to Appellant, “these excerpts clearly define to one of ordinary skill in the art that the ‘address service’ is software on a computer system.” Req. Reh’g. 3. We disagree. None of the passages cited by Appellant constitutes a definition of “address service.” Nor do they expressly or implicitly disavow address services that include human components. Rather, they are examples to which we will not limit the claim language. See Am. Academy, 367 F.3d at 1369 (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). Under a broadest reasonable interpretation, an address service, as recited in claim 1, is not limited to software on a computer system and can include human agents. Accordingly, Appellant has not persuaded us that we misapprehended the construction of “address service.” Reason to Combine Jonsson and Foladare In the Decision, we concluded that a skilled artisan would have had reason to combine Jonsson’s teaching of an address service in which users are registered with Foladare’s teaching of organizing a database of user information by user name. Dec. 9. Specifically, we agreed with the Examiner that “an address service . . . on which a user may register a name and an associated address,” as recited in claim 1, would have been a predictable result of a combination of those features and would have made a caller’s designation of a subscriber easier and more accurate. Id. Appeal 2013-008777 Reexamination Control 95/000,631 Patent 6,735,614 B1 6 Appellant argues that our reasoning was hindsight-driven, “improperly substituted [our] own conjecture about predictability with the legal requirement for motivation,” and “conflate[d] predictability with motivation.” Req. Reh’g. 4. According to Appellant, “if this were obvious, one must wonder why Jonsson does not disclose it.” Id. We are not persuaded by Appellant’s argument. In KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 407 (2007), the Supreme Court rejected the notion that a claim is obvious only after a showing of a motivation or suggestion to combine the prior art teachings in the prior art itself, the nature of the problem, or the knowledge of a person of ordinary skill in the art. Instead, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420. Specifically, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416; accord id. at 417 (“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). In this case, we agreed with the Examiner that combining the familiar elements of Jonsson and Foladare would have yielded predictable results, and, thus, would have been obvious. Dec. 9. We did not conflate motivation and predictability. Rather, predictability was a reason a skilled artisan would have combined Jonsson and Foladare. Improving Jonsson by making a caller’s designation of a subscriber easier and more accurate was Appeal 2013-008777 Reexamination Control 95/000,631 Patent 6,735,614 B1 7 another. Id. We are still of the view that the Examiner stated multiple reasons, with rational underpinning, for combining Jonsson and Foladare. See In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Accordingly, Appellant has not persuaded us that we misapprehended the teachings of Jonsson and Foladare. CONCLUSION We have considered the arguments raised by Appellants in the Request, but the arguments do not persuade us that the original Decision was in error. Based on the record before us now and in the original appeal, we are still of the view that the Examiner did not err in rejecting claims 1–6 and 10–12 under § 103. Accordingly, we deny the Request for Rehearing. REHEARING DENIED Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. peb Appeal 2013-008777 Reexamination Control 95/000,631 Patent 6,735,614 B1 8 For PATENT OWNER: SOCAL IP LAW GROUP LLP 310 N. Westlake Blvd. Ste 120 Westlake Village, CA 91362 For THIRD PARTY REQUESTOR: OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P 1940 Duke Street Alexandria, VA 22314 Copy with citationCopy as parenthetical citation