Ex Parte 7804823 et alDownload PDFPatent Trial and Appeal BoardOct 15, 201395001680 (P.T.A.B. Oct. 15, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,680 07/08/2011 7804823 096933.000014 1267 20786 7590 10/15/2013 KING & SPALDING 1180 PEACHTREE STREET , NE ATLANTA, GA 30309-3521 EXAMINER CRAVER, CHARLES R ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/15/2013 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 ____________ J2 GLOBAL COMMUNICATIONS, INC. Requester v. XPEDITE SYSTEMS, LLC Patent Owner ____________ Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 Technology Center 3900 ____________ Before STEPHEN C. SIU, DAVID M. KOHUT, and JENNIFER L. McKEOWN, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 2 Requester j2 Global Communications, Inc. appeals under 35 U.S.C. §§ 134 and 315 (2002) the Examiner’s decision not to reject claims 1-19 under certain grounds as discussed below. We have jurisdiction under 35 U.S.C. §§ 134 and 315 (2002). Both the Requester and Patent Owner withdrew their requests for an oral hearing on August 7, 2013. STATEMENT OF THE CASE This proceeding arose from a request by j2 Global Communications, Inc. for an inter partes reexamination of U.S. Patent 7,804,823 B2, titled “Systems and Methods for Communicating Documents via an Autonomous Multiple-Function Peripheral Device,” and issued to Francis Toscano, Samuel Nathan Kamens, and Joachim Braun on September 28, 2010 (the ’823 patent). The ’823 patent describes communicating “documents to and from a multiple-function peripheral (MFP) via an autonomous application programming interface and a data network.” Col. 2, ll. 28-31. Claim 1 on appeal reads as follows: 1. A multiple-function peripheral device, comprising: a packet-switched network interface communicatively coupled to a translator via a data network; and an autonomous application programming interface configured to periodically communicate with the translator to request image information in the form of stored facsimile format messages from a remote server via the packet-switched network interface in a first mode of operation. Appellant/Requester proposes rejections of the claims over the following prior art references: Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 3 Tanimoto U.S. 2005/0134903 A1 June 23, 2005 Kuwahara U.S. 2006/0291453 A1 Dec. 28, 2006 Saito U.S. 7,904,811 B2 Mar. 8, 2011 Requester appeals the Examiner’s confirmation of the claims over the following proposed rejections: Claims 1-19 under 35 U.S.C. § 102(b) as being anticipated by Saito. Claims 1-19 under 35 U.S.C. § 102(b) as being anticipated by Kuwahara. Claims 1-19 under 35 U.S.C. § 102(b) as being anticipated by Tanimoto. ISSUE Did the Examiner err in refusing to reject claims 1-19 over any one of the cited references? PRINCIPLES OF LAW In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted). ANALYSIS 35 U.S.C. § 102(b) – Saito Reference - Claims 1-19 (Requester’s Appeal) Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 4 A. Claims 1-9 - (Requester’s Appeal) The Examiner finds that Saito fails to disclose “a packet-switched network interface communicatively coupled to a translator via a data network,” as recited in claim 1, because the network interface (8) is not connected to the facsimile control unit (FCU), i.e., translator, via a data network. RAN 13. Instead, the Examiner finds that the connection is made through the parallel bus, which is not a data network. RAN 13. Patent Owner agrees with the Examiner’s findings and adds that the parallel bus cannot be a data network because the bus and the image memory access controller (IMAC) are internal components of the multi-function copy machine (MF1). PO Resp. Br. 14. We disagree. Requester argues that since data is transferred from the IPP to the FCU via the parallel bus, the parallel bus must be considered a data network. 3PR App. Br. 20. We agree. There is nothing in the body of the Patent that specifically defines the term “data network.” As such, we agree with Requester that a data network, construed broadly but reasonably in light of the Specification, would include multiple components “connected together” with the capability to “communicate . . . information to/from each other” (3PR App. Br. 20). Saito discloses a data network since data is transferred from one component to another component via a specific connection; in this case, the parallel bus. The Examiner next finds that Saito fails to disclose the limitation in claim 1 requiring periodic communication because Saito only teaches communicating on an “as needed” basis. RAN 14. The Examiner finds that Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 5 “as needed” is interpreted to mean “in general.” RAN 14. Therefore, Saito only discloses communicating in general. We disagree. Requester argues that the Specification does not provide an explicit or specialized definition of the term “periodically” and that a broad but reasonable construction of the term in light of the Specification of communicating “periodically” includes communicating “at intervals having no specific cycle time.” 3PR App. Br. 13. The Examiner failed to address this broad but reasonable construction of the term “periodically.” Based on this construction of the term “periodically,” Requester argues that Saito’s disclosure of communicating “as needed” is the same as “communicating periodically”. 3PR App. Br. 20-21. Therefore, since communicating “as needed” is done without a specific interval, Saito discloses the disputed limitation. We agree with Requester. Patent Owner agrees with the Examiner’s findings and additionally argues that the claim requires “periodically communicat[ing] with the translator.” PO Resp. Br. 15. Patent Owner contends that this limitation is not disclosed by Saito because the “when needed” communication occurs with the IMAC and not with what Requester indicates is the translator in Saito, the FCU. PO Resp. Br. 15. We disagree. In Saito, when a facsimile is being transmitted, the image data is “needed” and will be transferred to the FCU through the CDIC via the parallel bus. See Saito, col. 7, ll. 28-41. Thus, we agree with Requester (3PR App. Br. 20-21) that the FCU, i.e., translator, is being communicated with on an “as needed” basis and, therefore, periodically (i.e., “at intervals having no specific cycle time). Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 6 For the reasons discussed supra, we reverse the Examiner’s decision not to adopt the rejection of claim 1 and claims 2-9 that depend from claim 1. B. Claims 10-13 – (Requester’s Appeal) The Examiner finds that Saito does not disclose all of the elements of claim 10. RAN 14. Specifically, Patent Owner argues that Saito fails to disclose “when enabled in accordance [with] a user preference stored in the user profile, identifying a second destination identifier associated with an information recording feature; and forwarding the facsimile format message intended for the multiple-function device to the second destination,” as required by claim 10. PO Resp. Br. 18. Patent Owner contends that Saito fails to even mention a second destination and a forwarding step. PO Resp. Br. 18. We agree. Thus, we conclude that the Examiner did not err in refusing to reject claims 10-13 as anticipated by Saito under 35 U.S.C. § 103. C. Claims 14-19 – (Requester’s Appeal) The Examiner finds that Saito fails to disclose “storing personal information of an operator of the multiple-function peripheral device in a register of a translator,” as recited in claim 14. RAN 15. The reason the Examiner makes this finding is because Saito merely discloses login information, not personal information that is stored in the FCU. RAN 15. Patent Owner agrees with the Examiner and contends that Requester is attempting to eliminate an express requirement of the claim. PO Resp. Br. 18. We disagree. Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 7 Requester argues that because the FCU is integrated into the MF1, the FCU shares the same memory as the MF1. 3PR App. Br. 23. Therefore, Requester contends that since the login information is stored in the memory, it is stored in a register of the translator, i.e., the FCU. 3PR App. Br. 23. We agree with, and adopt, the Requester’s interpretation. The Examiner additionally finds that Saito fails to disclose commands in hypertext transfer protocol (HTTP), but rather teaches access to files in HTTP. RAN 15-16. We do not agree with the Examiner because these arguments are not commensurate in scope with the claim. Claim 14 recites “accepting image information via commands in hypertext transfer protocol from the multiple-function peripheral device.” We interpret the claim to require using commands to accept image information in HTTP, not requiring the commands to be in HTTP. As such, and as admitted by the Examiner (RAN 15-16), Saito discloses acquiring image information via HTTP and thus discloses that which is claimed. For the reasons discussed supra, we reverse the Examiner’s decision not to adopt the rejection of claim 14 and claims 15-19 that depend from claim 14. Claims 1-9 and 14-19 – Other rejections and proposed rejections Our conclusion that the Examiner erred in refusing to reject claims 1-9 and 14-19 as anticipated over the Saito reference renders it unnecessary to reach the propriety of the Examiner’s decision not to adopt the proposed rejections of those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338 Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 8 (Fed. Cir. 2009). As such, we need not reach the propriety of the proposed anticipation rejection of claims 1-9 and 14-19 over Tanimoto or Kuwahara. 35 U.S.C. § 102(b) – Kuwahara Reference - Claims 10-13 (Requester’s Appeal) The Examiner finds that Kuwahara does not disclose “upon receipt of a request from the multiple-function peripheral device, communicating the facsimile format message,” as required by claim 10,because Kuwahara does not disclose receiving any type of request from the MFP. RAN 18. Instead, the Examiner finds that Kuwahara’s communicating step occurs when the message is received at the MFP from a remote source rather than from the MFP, as claimed. RAN 18. Patent Owner agrees with and reiterates the Examiner’s findings. PO Resp. Br. 10. Requester argues that the Examiner is misreading the claim (3PR App. Br. 14), but does not address the Examiner’s finding that Kuwahara does not disclose communicating the message after a request is received from the MFP. We agree with the Examiner (RAN 18) that the communicating step in Kuwahara occurs when the message is received at the MFP and not upon a request from the MFP. As such, we conclude that the Examiner did not err in refusing to reject claims 10-13 as anticipated by Kuwahara under 35 U.S.C. § 102. 35 U.S.C. § 102(b) – Tanimoto Reference - Claims 10-13 (Requester’s Appeal)1 1 Requester argues that the Examiner could have combined Saito and Kuwahara with Tanimoto in order to teach any limitations not anticipated by Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 9 The Examiner finds that Tanimoto does not disclose “receipt of a request from the multiple-function peripheral device,” as recited in claim 10. RAN 22. Instead, the Examiner finds that Tanimoto discloses receipt of a request from the PC client. RAN 22 (citing Tanimoto, ¶ [1016]). Requester does not address the Examiner’s specific finding, but indicates that Tanimoto’s communication device (1) acts as the claimed MFP and receives a message from a facsimile machine (6) and stores it in a remote server (3). 3PR App. Br. 29. This supports the Examiner’s finding that the communication of the message does not occur upon the request from an MFP. As such, we conclude that the Examiner did not err in refusing to reject claims 10-13 as anticipated by Tanimoto under 35 U.S.C. § 102. CONCLUSION The Examiner erred in not adopting the rejection of claims 1-9 and 14-19 over Saito and did not err in not adopting the rejection of claims 10-13 over Saito, Kuwahara, and Tanimoto. DECISION We reverse the Examiner’s refusal to adopt the rejection of claims 1-9 and 14-19 under 35 U.S.C. § 102 as anticipated by Saito and affirm the the Tanimoto reference. 3PR App. Br. 30. However, Requester, not the Examiner, is required to “present an explanation of how the cited patents or printed publications are applied to all claims which the requester considers to merit reexamination based on patents or printed publications.” MPEP § 2617. Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 10 Examiner’s refusal to adopt the rejection of claims 10-13 under 35 U.S.C. § 102 as anticipated by Saito, Kuwahara, and Tanimoto. Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal of the Examiner’s refusal to adopt the rejection of claims 1-9 and 14-19 under 35 U.S.C. § 102 as anticipated by Saito constitutes a new ground of rejection and is hereby designated as such. Section 41.77(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” That section also provides that Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal proceeding as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under § 41.77(a).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 11 must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (d) of this section, and for submitting comments under paragraph (c) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g). AFFIRMED-IN-PART 37 C.F.R. § 41.77(b) Appeal 2013-007883 Reexamination Control No. 95/001,680 Patent 7,804,823 B2 12 PATENT OWNER: KING & SPALDING LLP 1180 PEACHTREE STREET NE ATLANTA, GA 30309-4530 THIRD PARTY REQUESTER: BAKER & HOSTETLER LLP WASHINGTON SQUARE, SUITE 1100 1050 CONNECTICUT AVE. N.W. WASHINGTON, DC 20036-5304 cu Copy with citationCopy as parenthetical citation