Ex Parte 7489423 et alDownload PDFPatent Trial and Appeal BoardJul 18, 201690013207 (P.T.A.B. Jul. 18, 2016) 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. 90/013,207 04/10/2014 7489423 105413-0007-505 1192 7590 07/19/2016 MARVIN J. NACHMAN 315 SAYBROOK ROAD VILLANOVA, PA 19085 EXAMINER WASSUM, LUKE S ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 07/19/2016 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) MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. EXAMINER ART UNIT PAPER NUMBER DELIVERY MODE 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte INFINITY COMPUTER PRODUCTS, INC. Patent Owner and Appellant ____________ Appeal 2016-004436 Reexamination Control 90/013,207 United States Patent 7,489,423 B2 Technology Center 3900 ____________ Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s decision to reject claims 1, 3, and 4. Claims 2, 5, and 6 have been indicated as containing patentable subject matter as noted on page 1 of the Advisory Action mailed May 7, 2015.1 Accord Ans. 3 (omitting claims 2, 5, and 6 1 Throughout this opinion, we refer to (1) the Final Rejection mailed February 11, 2015 (“Final Act.”); (2) the Advisory Action mailed May 7, 2015 (“Adv. Act.”); (3) the Appeal Brief filed September 14, 2015 (“App. Br.”); (4) the Examiner’s Answer mailed December 7, 2015 (“Ans.”); and (5) the Reply Brief filed February 8, 2016 (supplemented February 25, 2016) (“Reply Br.”). Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 2 from the grounds of rejection to be reviewed on appeal). We have jurisdiction under 35 U.S.C. §§ 134 and 306.2 We reverse. STATEMENT OF THE CASE This proceeding arose from a request for ex parte reexamination filed on April 10, 2014 of United States Patent 7,489,423 (“the ’423 patent”), issued to Nachman on February 10, 2009. The ’423 patent describes an apparatus for interfacing a facsimile (fax) machine with a personal computer (PC) to enable the fax machine to be used as a scanner or printer. See generally Abstract. Claim 1 is illustrative of the invention and reproduced below: 1. A method of transferring digital image data signals between a computer equipped with send/receive driver communications software and a facsimile machine to cause said facsimile machine to operate as a printing device, comprising the steps of: (a) coupling the facsimile machine to the computer through a bi- directional direct connection via a passive link; (b) conditioning the facsimile machine to receive print image data from the computer; (c) conditioning the computer for initiating transmission of print image digital data to said facsimile machine of a document to be printed by said facsimile machine; (d) upon activating the send driver communications software of the computer the print image digital data from the computer is transferred without interruption through a receiving port of the 2 On June 21, 2016, Appellant waived an oral hearing scheduled for this appeal. Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 3 facsimile machine, whereby the print image digital signals of the computer are processed by the facsimile machine into signals for printing. RELATED PROCEEDINGS This appeal is said to be related to three pending ex parte reexamination proceedings that have all been appealed, namely Control Numbers (1) 90/013,208 (Appeal No. 2016-004437); (2) 90/013,209 (Appeal No. 2016-004464); and (3) 90/013,210 (Appeal No. 2016-005018). App. Br. 4. The first appeal has not been decided. In the latter two appeals, however, we reversed the Examiner’s decision to reject the claims because the cited Kenmochi reference did not qualify as prior art. See Ex parte Infinity Computer Products, Inc., No. 2016-004464 (PTAB June 8, 2016); see also Ex parte Infinity Computer Products, Inc., No. 2016-005018 (PTAB June 15, 2016). THE REJECTION The Examiner rejected claims 1, 3, and 4 under 35 U.S.C. § 102(e) as anticipated by Kenmochi (US 5,900,947; May 4, 1999). Adv. Act. 13; Final Act. 26–28, 30–31. CONTENTIONS The Examiner finds that Kenmochi discloses every recited element of claims 1, 3, and 4. Final Act. 26–28, 30–31. Appellant argues that Kenmochi does not qualify as prior art to the ’423 patent because Kenmochi’s effective filing date of August 25, 1994 is Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 4 after the ’423 patent’s priority date of April 11, 1994—the filing date of the ’423 patent’s earliest parent Application No. 08/226,278 (“the ’278 application”). App. Br. 28–29. The Examiner, however, finds that each rejected claim of the ’423 patent includes subject matter relating to transmitting digital signals— subject matter that was not supported in the ’278 application, but rather is said to have been first disclosed in continuation-in-part Application 08/669,056 (“the ’056 application”) that was filed June 24, 1996—a date after Kenmochi’s effective filing date. Ans. 4–5. Because the ’278 application is said to support only analog—not digital—signal transmission, the Examiner concludes that Kenmochi qualifies as prior art for the recited digital signal transmission limitations. Id. ISSUE Has the Examiner erred in rejecting the appealed claims based on Kenmochi? This issue turns on whether Kenmochi qualifies as prior art under § 102. ANALYSIS We begin by noting, as does the Examiner (Ans. 4), that Kenmochi’s qualification as prior art hinges on whether the ’574 patent’s claims are entitled to either (1) the April 11, 1994 filing date of the ’278 application, or (2) the June 24, 1996 filing date of the ’056 continuation-in-part application. Nor is it disputed that the original ’278 application supports analog signal Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 5 transmission to show possession of that feature. Ans. 6 (acknowledging this fact). Rather, this dispute turns on whether the original ’278 application supports the recited digital signal transmission in the rejected claims to show possession of that feature. On this record, we find that it does. To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Although the description requirement under § 112 does not demand (1) any particular form of disclosure, or (2) the Specification recite the claimed invention verbatim, a description that merely renders the invention obvious does not satisfy the requirement. Id. at 1352 (citations omitted). Turning to the claims, independent claim 1, from which rejected claims 3 and 4 depend, recites, in pertinent part, coupling a fax machine to a computer over a bi-directional direct connection via a passive link. As Dr. Marc E. Levitt indicates in his Declaration filed November 3, 2014 (“Levitt Decl.”), the term “passive link” is defined as: [O]ne where the initiation of data flow is activated from a set- up procedure within the PC and/or the facsimile machine, and said data is transferred, with no intervening apparatus or signal interception by a processing element or any active component, along the path of an unbroken direct connection between the PC and the facsimile machine. Levitt Decl. ¶ 28 (emphasis added). Dr. Levitt further notes that these connections are shown in Figures 2b through 2d of the ’558 patent that Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 6 correspond to those figures in the underlying ’278 application.3 Notably absent from Dr. Levitt’s discussion in this regard is Figure 2e of the ’278 application. Although Dr. Levitt notes that Figure 2e shows digital signals being transmitted and received by a fax machine in paragraph 18 of his declaration, he omits Figure 2e in connection with the passive link discussion. Dr. Levitt likewise omits Figure 2e in paragraph 21 in connection with Figures 2b to 2d showing digital signals or digital data being modulated onto a carrier and sent over the connection between the fax machine and computer, and vice-versa. These omissions are telling, for they render Appellant’s reliance on the functionality of Figure 2e and its digital capabilities (e.g., via ISDN) throughout the briefs of little relevance to the issue before us, namely whether the ’278 application supports the recited digital signal transmission using a bi-directional connection via a passive link. As shown in Figure 2e, (1) a fax machine 30 is connected to an external fax modem through circuitry 10 via an RJ-11 telephone cable, and (2) computer 40 is coupled to the external modem circuitry 41 via an RS-232 cable. ’278 Appl’n 13:6–11. 3 Although the Examiner, Appellant, and Dr. Levitt refer to disclosure in the ’558 patent, we nonetheless refer to the corresponding ’278 application because the patent may not necessarily reflect the disclosure as originally filed. Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 7 Figure 2e of the ’278 application In short, the fax machine is connected to the computer via the fax modem in Figure 2e. Therefore, there is no passive link shown between the fax machine and the computer under Dr. Levitt’s definition because there is an intervening component between the fax machine and computer, namely the modem. That Dr. Levitt omits Figure 2e from his findings regarding what the ’558 patent discloses in connection with a passive link in paragraph 29 of his declaration only further bolsters this conclusion. To the extent that Appellant contends that Figure 2e discloses a bi-directional direct connection via a passive link,4 the evidence on this record does not support such a contention. 4 See App. Br. 4 (referring to Figure 2e in connection with the recited bi- directional direct connection passive link limitations of claim 1); see also Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 8 Nevertheless, Figures 2b to 2d of the ’278 application show a passive link, namely via the RJ-11 telephone cable connecting the fax machine directly to the computer. Accord Levitt Decl. ¶ 29. A key aspect of this configuration that is said to support digital signal transmission is that the fax machine is a “Group III” machine that, unlike Group I and II machines, can (1) operate over digital communications links using digital formats, and (2) provide “optimum document resolution.” App. Br. 9–10; Reply Br. 3–7. Accord ’278 Appl’n 10:12–15. According to Appellant, the evidence of record, including various standards such as the ITU-T T.30 Standard referenced by Dr. Marc E. Levitt in paragraphs 19 and 20 of his declaration, shows that the digital signal transmission capability of Group III machines was well known when the ’278 application was filed. App. Br. 14–19. Nor does the Examiner dispute these known capabilities. Accord Reply Br. 12. The Examiner, however, finds that implementing these capabilities to transmit digital signals, such as a possible ISDN implementation, merely represents a hypothetical configuration that is not supported by the ’278 application disclosure. Ans. 28–30. Although the Examiner acknowledges that it is possible for the disclosed Group III fax machines to transfer digital signals, there is nevertheless no written description support implementing such a possibility. See id. Reply Br. 8 (“Clearly, digital transmission of print and scan data would have been achieved between a facsimile machine and PC in at least Fig. 2e of the ’558 patent.”) (emphasis added). Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 9 At first blush, the Examiner’s position seems plausible, for the ’278 application is indeed silent regarding digital transmission between the computer and fax machine—unlike the ’056 continuation-in-part application. Ans. 24 (noting ISDN interface 60 in Figure 2h of that application). But the ’278 application is also silent as to analog transmission. Therefore, the Examiner’s position that the ’278 application supports only analog signal transmission—but not digital signal transmission—is inconsistent, particularly in light of the undisputed digital and analog transmission capabilities of Group III fax machines as Appellant indicates. Reply Br. 5–6. Nevertheless, the evidence on this record favors Appellant’s position at least to the extent that, for a Group III fax machine in the system of Figures 2b to 2d, the signals sent between the fax machine and the computer could either be analog or digital. This digital capability is the very essence of a Group III machine that distinguishes it from Group I and II machines. App. Br. 3; Reply Br. 1 (emphasizing this point). Therefore, to say that a Group III machine is limited to analog transmission in Figures 2b to 2d as the Examiner seems to suggest (see Ans. 7–11) ignores the inherent digital transmission capabilities of those machines. That Group III machines are inherently capable of digital signal transmission as evidenced by the associated standards made of record in this proceeding supports the notion that skilled artisans would understand that such communication would be an option to transfer data at least from the fax machine to the fax modem in Figures 2b to 2d. To say that a particular undisclosed digital interface, such as an ISDN interface, is necessary to Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 10 operate the devices in Figure 2e in an ISDN mode as the Examiner suggests (Ans. 24) not only has marginal relevance to Figures 2b to 2d which, unlike Figure 2e, use a bi-directional direct connection via a passive link as noted previously, but the Examiner’s assertion is also overstated. That is, skilled artisans would understand that some sort of digital interface enabling serial or parallel data transmission—not necessarily the particular digital signal processing interface 60 in Figure 2h of the ’056 continuation-in-part application as the Examiner contends (Ans. 24)—is an inherent aspect of digital signal transmission, and would be used to that end in the system of Figures 2b to 2d. It is well settled that a patent specification is written for a person of skill in the art, and such a person comes to the patent with the knowledge of what has come before. LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Therefore, it is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation. Id. Here, the option to transmit digital signals in Figures 2b to 2d is inherent to that disclosed functionality given the previously noted digital signal transmission capabilities of Group III fax machines. Moreover, Dr. Levitt emphasizes that digital signals modulated on a carrier and sent over a connection between a fax machine and computer are still considered to be digital signals. Levitt Decl. ¶¶ 21–23. This testimony only further weighs in Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 11 favor of Appellant’s position that digital signals are transmitted from the fax machine to the computer in Figures 2b to 2d—even if modulated. We credit Dr. Levitt’s testimony despite the Examiner’s allegation that Dr. Levitt conflates digital signals and digital data. Ans. 20. Notwithstanding the Examiner’s distinction between digital data and the signals by which the data is communicated (Ans. 6–7, 20), we nonetheless agree with Dr. Levitt’s statements that binary signals that represent digital data are nonetheless digital signals. See Levitt Decl. ¶ 20. Lastly, we find unavailing the Examiner’s allegation that statements made during prosecution of the ’056 continuation-in-part application to overcome a rejection based on the Perkins reference (US 5,452,106) allegedly conflict with those made in the present proceeding. Ans. 21–33. As Appellant indicates, Perkins’ configuration required converting digital signals into analog signals and, therefore, limited its disclosed RJ-11 connector to solely analog transmission. App. Br. 21–25; Reply Br. 8–9. As such, Appellant’s arguments in the ’056 application that Perkins did not teach or suggest a direct transfer of digital signals in light of its analog-only configuration to overcome a prior art rejection has little relevance to the question of whether the ’278 application supports digital signal transmission to show possession of that feature. To be sure, the ’278 application is not a model of clarity regarding transmitting digital signals between the fax machine and the computer. To glean such a transmission requires the reader to understand the inherent capabilities of Group III fax machines and their associated standards— details that are lacking in the ’278 application. And we recognize that a Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 12 disclosure that merely renders the invention obvious does not satisfy the written description requirement as the Examiner correctly indicates. Ans. 6. Accord Ariad, 598 F.3d at 1351. But as noted above, the ’278 application need not explain such inherent capabilities and associated standards, for its disclosure is written for those of ordinary skill in the art, LizardTech, 424 F.3d at 1345, namely those with at least an electrical engineering degree, or at least three years of experience in the field of designing telecommunications systems or drivers and embedded software. Levitt Decl. ¶ 11. In short, those of ordinary skill in this art are presumed to be familiar with Group III fax machine digital transmission capabilities and associated standards. Given this relatively high skill level, the undisputed digital signal transmission capabilities of Group III fax machines as configured in the system of Figures 2b to 2d are sufficient to support the recited digital transmissions. For the foregoing reasons, we find that the evidence on this record weighs in favor of Appellant’s position that ’278 application reasonably supports the limitations in claims 1, 3, and 4 to show possession of those features. Therefore, Kenmochi does not qualify as prior art under § 102 and, as such, we are persuaded that the Examiner erred in rejecting the claims based on this reference. CONCLUSION The Examiner erred in rejecting claims 1, 3, and 4 under § 102. Appeal 2016-004436 Reexamination Control 90/013,207 Patent US 7,489,423 B2 13 DECISION The Examiner’s decision rejecting claims 1, 3, and 4 is reversed. REVERSED cc: Third Party Requester ROPES & GRAY LLP PRUDENTIAL TOWER 800 BOLYSTON STREET IPRM-FLOOR 43 BOSTON, MA 02199-3600 Copy with citationCopy as parenthetical citation