Ex Parte 7489423 et al

Patent Trial and Appeal Board

Jul 18, 2016

90013207 (P.T.A.B. Jul. 18, 2016)

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