Ex Parte Calloway et al

Board of Patent Appeals and Interferences

Apr 30, 2009

09708235 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte KEVIN CALLOWAY, JASON MCNAMARA, ERGON COPELAND,
ANTHONY FRANCO, ZVULUN HALFON, SCOTT JOHNSON,
RONALD KEWISH, and RICHARD WILSON
___________

Appeal 2009-0171
Application 09/708,235
Technology Center 3600
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Decided: 1 May 1, 2009
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

23 FETTING, Administrative Patent Judge.
1 The two month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this
page of the decision. The time period does not run from the Mail Date (paper
delivery) or Notification Date (electronic delivery).

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Application 09/708,235

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DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin Calloway, Jason McNamara, Ergon Copeland, Anthony Franco,
Zvulun Halfon, Scott Johnson, Ronald Kewish, and Richard Wilson (Appellants)
seek review under 35 U.S.C. § 134 of a non-final rejection of claims 1-63 and 71-
78, the only claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).

We REVERSE.
The Appellants invented a way for automated creation and distribution of
individualized multimedia messages and content over a network. (Specification 2:
7-8).
An understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below [bracketed matter and some paragraphing
added].
1. A system for creating and distributing a series of individualized
multimedia messages over a computer network to a plurality of
recipients, comprising:
(a) a recipient information repository with unique recipient
information for at least a first and second recipient;
(b) a multimedia content repository with computer files
comprising at least one of text and graphics files,
and further comprising at least one of audio and video files; and
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(c) means for creating and delivering individualized multimedia
content over said computer network to each of the plurality of
recipients,
wherein said multimedia content is assembled from selected
elements within the multimedia content repository
which are selected in response to individual information
about each of said recipients
whose individual information is extracted from the
recipient information repository.

This appeal arises from the Examiner’s Non-Final Rejection, mailed August
16, 2006. The Appellants filed an Appeal Brief in support of the appeal on
October 29, 2007. An Examiner’s Answer to the Appeal Brief was mailed on
February 15, 2008. A Reply Brief was filed on March 20, 2008.
PRIOR ART
The Examiner relies upon the following prior art:
Hibbeler US 6,067,348 May 23, 2000
Smith US 6,725,381 B1 Apr. 20, 2004
REJECTIONS 17
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Claims 1-15, 18-33, 35-63, and 71-78 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hibbeler and Official Notice.
Claims 16, 17, 34, 35, and 75-78 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hibbeler, Smith, and Official Notice.2

2 The Examiner did not explicitly include Official Notice in this rejection. These
claims depend from the claims in the prior rejection that is based on Official
Notice, and therefore this rejection must implicitly be similarly based on Official
Notice at least as to the subject matter incorporated from the parent claims.
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ISSUES
The issues pertinent to this appeal are
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 1-15, 18-33, 35-63, and 71-78 under
35 U.S.C. § 103(a) as unpatentable over Hibbeler and Official Notice.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 16, 17, 34, 35, and 75-78 under 35 U.S.C.
§ 103(a) as unpatentable over Hibbeler, Smith, and Official Notice.
These issues turn primarily on whether Hibbeler describes distributing
multimedia.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “multimedia.”
02. The ordinary and customary meaning of “multimedia” as a noun is the
combined use of media.3
Hibbeler
03. Hibbeler is directed to personalization of an outbound audio message
(Hibbeler 1:6-8).

3 American Heritage Dictionary of the English Language (4th ed. 2000).
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04. Hibbeler describes personalizing a message by storing a message
body, a plurality of greeting segments, assigning a unique index number
to each greeting segment, recalling the message body, recalling a
greeting segment using the unique index number, and combining the
greeting segment and the message body to form a personalized message
(Hibbeler 2:4-12).
05. Hibbeler describes its distribution of its messages using a message
controller, a telecommunications card, and a communication link. In the
preferred embodiment, the communication link is a telephone line. The
telecommunications card is capable of handling communications over
multiple phone lines and hence able to rapidly transmit outbound
messages. In the preferred embodiment, the telecommunications card is
a telephony card capable of transmitting telephone messages over a
telephone line. In an alternative embodiment, the telecommunications
card is an Internet card capable of transmitting messages in a digital
format over the Internet (Hibbeler 6:15-40).
Smith
06. Smith is directed to a mechanism by which a specific intended
recipient of a delivered document can be authenticated without prior
participation by the intended recipient (Smith 1:6-10).
Facts Related To Differences Between The Claimed Subject Matter And The
Prior Art
07. Neither reference describes distributing multimedia.
Facts Related To The Level Of Skill In The Art
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08. Neither the Examiner nor the Appellants has addressed the level of
ordinary skill in the pertinent arts of systems analysis and programming,
multimedia data design and processing, and data communications. We
will therefore consider the cited prior art as representative of the level of
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill
in the art does not give rise to reversible error ‘where the prior art itself
reflects an appropriate level and a need for testimony is not shown’”)
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d
158, 163 (Fed. Cir. 1985).
PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003) (claims must be interpreted “in view of the specification” without
importing limitations from the specification into the claims unnecessarily)
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to be
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construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
an inventor is free to define the specific terms used to describe the invention, this
must be done with reasonable clarity, deliberateness, and precision; where an
inventor chooses to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to give
one of ordinary skill in the art notice of the change).
Obviousness

A claimed invention is unpatentable if the differences between it and the
prior art are “such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the art.”
35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1729-30
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR, 127 S.Ct. at 1734. “The combination of familiar
elements according to known methods is likely to be obvious when it does no
more than yield predictable results.” Id. at 1739.
“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.” Id. at 1740.
“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
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similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
“Under the correct analysis, 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 1742.
ANALYSIS
Claims 1-15, 18-33, 35-63, and 71-78 rejected under 35 U.S.C. § 103(a) as
unpatentable over Hibbeler and Official Notice.
The Examiner found that Hibbeler described the limitations of claim 1 except
for messages in graphic and video format. The Examiner took official notice that it
is old and well known to deliver messages in graphic and video format in order to
provide a visual representation of the data received. The Examiner concluded that
it would have been obvious to a person of ordinary skill in the art at the time of
Applicants’ invention to have included the messages being graphic or video in
order to achieve the above mentioned advantage.
The Appellants contend that (1) in Hibbeler, the message is merely audio, and
thus is not "multimedia," as defined by the claim; (2) in Hibbeler, the message
body does not vary from recipient to recipient, an audio of the recipient's first name
is a "greeting segment" and is simply placed before the message body; (3) in
Hibbeler, there is no selection of message content based on (but different from
just) the individual recipient information; (4) in Hibbeler, the message is sent and
is not changed when sent, whether digital or not (Br. 11).
We disagree with the Appellants as to the last three arguments. In each case
the argument is not commensurate with the scope of the claim. Claim 1 does not
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distinguish between the message body and greeting, but refers to content which
necessarily includes both greetings and body. Claim 1 does not further limit
the manner of individualizing content, and in particular does not exclude
individualization by the individual recipient information. Claim 1 does not use
the term “change” but instead requires that content is assembled from selected
elements within the content repository which are selected in response to individual
information about each of said recipients whose individual information is extracted
from the recipient information repository. Clearly Hibbeler’s selection of a
greeting segment and adding that to a body is an assembly of content.
This is where we must depart from the Examiner. The Examiner found that
Hibbeler describes a means for creating and delivering multimedia content over the
network (Answer 3). This finding is in error. Hibbeler describes its distribution of
its messages using a message controller, a telecommunications card, and a
communication link. In the preferred embodiment, the communication link is
a telephone line. The telecommunications card is capable of handling
communications over multiple phone lines and hence able to rapidly transmit
outbound messages. In the preferred embodiment, the telecommunications card is
a telephony card capable of transmitting telephone messages over a telephone line
(FF 05).
Thus, the Appellants correctly contend that Hibbeler does not describe any
device distributing multimedia, i.e. combined media (FF 01 & 02). In fact,
Hibbeler only describes apparatus for distributing audio content. Neither reference
describes distributing multimedia (FF 08).
Although the Examiner took official notice that it is old and well known to
deliver messages in graphic and video format in order to provide a visual
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representation of the data received, nothing in Hibbeler suggests, or would even
have the capacity to distribute such content. The Examiner has simply placed no
evidence that one of ordinary skill knew to distribute multimedia content from a
messaging service in the rejection. Accordingly the Examiner has failed to present
a prima facie case. Each of the remaining independent claims, included within this
rejection, contains a similar limitation regarding distribution of multimedia. Each
of the dependent claims necessarily includes such a limitation by virtue of
incorporating the limitations from the independent claims.
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 1-15, 18-33, 35-63, and 71-78 under 35 U.S.C. § 103(a) as
unpatentable over Hibbeler and Official Notice.
Claims 16, 17, 34, 35, and 75-78 rejected under 35 U.S.C. § 103(a) as
unpatentable over Hibbeler, Smith, and Official Notice.
Each of these claims depends from the independent claims in the prior
rejection. Smith provides no evidence to overcome the deficiencies in the
independent claim rejections. Accordingly, the Appellants have sustained their
burden of showing that the Examiner erred in rejecting claims 16, 17, 34, 35, and
75-78 under 35 U.S.C. § 103(a) as unpatentable over Hibbeler, Smith, and Official
Notice.
CONCLUSIONS OF LAW
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 1-63 and 71-78 under 35 U.S.C. § 103(a) as unpatentable over
the prior art.
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DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-15, 18-33, 35-63, and 71-78 under 35 U.S.C.
§ 103(a) as unpatentable over Hibbeler and Official Notice is not sustained.
• The rejection of claims 16, 17, 34, 35, and 75-78 under 35 U.S.C. § 103(a)
as unpatentable over Hibbeler, Smith, and Official Notice is not sustained.

REVERSED 8
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JRG

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