Ex Parte 8040574 et al

Patent Trial and Appeal Board

Jun 8, 2016

90013209 (P.T.A.B. Jun. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/013,209 04/10/2014
7590
MARVIN J, NACHMAN
315 SAYBROOK ROAD
VILLANOVA, PA 19085
06/08/2016
FIRST NAMED INVENTOR
8040574
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
105413-0007-507 9383
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
06/08/2016 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INFINITY COMPUTER PRODUCTS, INC.
Patent Owner and Appellant
Appeal2016-004464
Reexamination Control 90/013,209
Patent 8,040,57 4 B2
Technology Center 3900
Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
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Reexamination Control 90/013,209
Patent 8,040,574 B2
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. §§ 134 and 306 the Examiner's
decision to reject claims 3-5 and 8. Claims 1, 2, 6, and 7 have been
indicated as containing patentable subject matter as noted on page 1 of the
Advisory Action mailed July 30, 2015. 1 Accord Ans. 2 (omitting claims 1,
2, 6, and 7 from the grounds of rejection to be reviewed on appeal).
We have jurisdiction under 35 U.S.C. §§ 134 and 306. 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 8,040,574 B2 ("the '574 patent"),
issued to Nachman on October 18, 2011.
The '574 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. Claims 1 and 4 are
illustrative of the invention and reproduced below:
1. A Method of using a facsimile machine to facilitate a transfer for
digital image scan data or digital image print data between the facsimile
machine and the computer, the method comprising:
establishing a communication path between the facsimile machine and
the computer using a bi-directional passive link; and
1 Throughout this opinion, we refer to (1) the Final Rejection mailed
February 11, 2015 ("Final Act."); (2) the Advisory Action mailed July 30,
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.").
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Patent 8,040,574 B2
activating the transfer in a first mode to send the digital image scan
data from the facsimile machine directly to the computer, or activating the
transfer in a second mode to receive digital image print data directly from
the computer, the digital image scan data and the digital image print data
being communicated over the bi-directional passive link, and the activating
being initiated using generic send/receive communications software on the
computer; and
in the first mode, storing the digital scan data in a computer readable
medium, for use as needed, and in the second mode, printing the digital
image print data using a facsimile machine printer device.
4. The method of claim 1, including transferring a digital serial data
source signal of a scanned image from said facsimile machine to said
computer.
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) 90/013,207 (Appeal No. 2016-004436); (2) 90/013,208
(Appeal No. 2016-004437); and (3) 90/013,210 (Appeal No. 2016-005018).
These appeals have not been decided.
THE REJECTIONS
The Examiner rejected claims 4, 5, and 8 under 35 U.S.C. § 102(e) as
anticipated by Kenmochi (US 5,900,947; May 4, 1999). Final Act. 19-23.
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Kenmochi and Kochis (US 5,218,458; June 8, 1993).
Final Act. 24--27. 2
2 Although the Examiner includes claims 6 and 7 in this rejection, the
Examiner later indicated that those claims contain patentable subject matter
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Patent 8,040,574 B2
THE ANTICIPATION REJECTION
The Examiner finds that Kenmochi discloses every recited element of
claims 4, 5, and 8. Final Act. 19-23.
Appellant argues that Kenmochi does not qualify as prior art to the
'574 patent because Kenmochi's effective filing date of August 25, 1994 is
after the '574 patent's priority date of April 11, 1994---the filing date of the
'574 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 '574
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. 3-5. 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.
as noted on page 1 of this opinion. Accordingly, we presume that the
Examiner withdrew the rejection of claims 6 and 7 and, therefore, omit those
claims here for clarity.
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ANALYSIS
We begin by noting, as does the Examiner (Ans. 3), 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 26, 1996 filing date of the '056 continuation-in-part application.
It is undisputed that the original '278 application supports analog signal
transmission to show possession of that feature. Ans. 5 (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 bane). 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 4 and 5 depend, recites, in pertinent part, communicating digital
image scan data and digital image print data over a bi-directional passive
link. Rejected independent claim 8 similarly recites enabling scan or print
digital image data to transfer between a fax machine and a computer via a
passive link bi-directional direct connection.
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As Dr. Marc E. Levitt indicates in his Declaration filed November 10,
2014 ("Levitt Deel."), 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 facsimile machine.
Levitt Deel. i-f 28 (emphasis added). Dr. Levitt further notes that these
connections are shown in Figures 2b through 2d of the '558 patent that
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 any mention of Figure 2e in connection with the
passive lirik discussion. Dr. Levitt like\~1ise 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
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.
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whether the '278 application supports the recited digital signal transmission
via a bi-directional passive link.
As shown in Figure 2e, reproduced below, (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 facsimile
modem circuitry 41 via an RS-232 cable. '278 Appl'n 13 :6-11.
fit Lt
"
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
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29 of his declaration only further bolsters this conclusion. To the extent that
Appellant contends that Figure 2e discloses a bi-directional passive link, 4 the
evidence on this record does not support such a contention.
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 Deel. i-f 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; Reply Br. 1-2. 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. 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. 18-19, 22-24. Although the Examiner
4 See App. Br. 4--5 (referring to Figure 2e in connection with the bi-
directional passive link limitations of claims 1 and 8); see also 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).
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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 Ans. 23-25.
At first blush, the Examiner's position seems plausible, for the '278
application is 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.
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. 9; 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. 5-7) 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
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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
operate the devices in Figure 2e in an ISDN mode as the Examiner suggests
(Ans. 18-19) not only has marginal relevance to Figures 2b to 2d which,
unlike Figure 2e, use a bi-directional 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-not necessarily the particular
digital signal processing interface 60 in Figure 2h of the '056 continuation-
in-part application as the Examiner contends (Ans. 18-19}-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 knowing 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 Deel. i-fi-1 21-23. This testimony only further weighs in
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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. 9.
Notwithstanding the Examiner's distinction between digital data and the
signals by which the data is communicated (id.), we nonetheless agree with
Dr. Levitt's statements that binary signals that represent digital data are
nonetheless digital signals. See Levitt Deel. i-f 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, Sept.
19, 1995) allegedly conflict with those made in the present proceeding. Ans.
22-25. 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
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disclosure that merely renders the invention obvious does not satisfy the
written description requirement as the Examiner correctly indicates. Ans. 4.
AccordAriad, 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 Deel.
i-f 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 4, 5, and 8 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.
THE OBVIOUSNESS REJECTION
Because Kenmochi does not qualify as prior art, we likewise will not
sustain the Examiner's obviousness rejection of claim 3 over Kenmochi and
Kochis (Final Act. 24--27) for similar reasons.
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CONCLUSION
The Examiner erred in rejecting ( 1) claims 4, 5, and 8 under § 102,
and (2) claim 3 under§ 103.
DECISION
The Examiner's decision rejecting claims 3-5 and 8 is reversed.
REVERSED
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