90013210 (P.T.A.B. Jun. 15, 2016)

Ex Parte 8294915 et al

Patent Trial and Appeal BoardJun 15, 2016

90013210 (P.T.A.B. Jun. 15, 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. 90/013,210 04/10/2014 8294915 105413-0007-508 9877 7590 06/15/2016 MARVIN J. NACHMAN 315 SAYBROOK ROAD VILLANOVA, PA 19085 EXAMINER YIGDALL, MICHAEL J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/15/2016 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 2016-005018 Reexamination Control 90/013,210 United States Patent 8,294,915 B2 Technology Center 3900 ____________ Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. Appeal 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 2 DECISION ON APPEAL Appellant appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s decision to reject claims 1–4, 6–12, 14, and 15. Claims 5 and 13 have been cancelled. Ans. 2.1 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 8,294,915 (“the ’915 patent”), issued to Nachman on October 23, 2012. The ’915 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 printing in a facsimile machine when the facsimile machine is connected to a computer by a bi-directional direct passive link, comprising: providing a digital serial communications port in the facsimile machine; receiving an instruction at the digital serial communications port from the computer to place the facsimile machine into a print mode, the instruction being received using a standard protocol of the facsimile machine; receiving digital image data at the digital serial communications port from the 1 Throughout this opinion, we refer to (1) the Final Rejection mailed February 11, 2015 (“Final Act.”); (2) the Appeal Brief filed September 14, 2015 (“App. Br.”); (3) the Examiner’s Answer mailed December 7, 2015 (“Ans.”); and (4) the Reply Brief filed February 8, 2016 (supplemented February 25, 2016) (“Reply Br.”). Appeal 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 3 computer via the bi-directional direct passive link, the digital image data being transmitted in a standard facsimile machine format and being representative of content to be printed onto media by the facsimile machine; and processing the digital image data substantially as it is received at the digital serial communications port to print the content onto the media at the facsimile machine, wherein the receiving the instruction at the digital serial communications port from the computer further comprises receiving the instruction from generic send/receive driver communications software. 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) 90/013,209 (Appeal No. 2016-004464). Only the latter appeal has been decided. See Ex parte Infinity Computer Products, Inc., No. 2016-004464 (PTAB June 8, 2016) (reversing the Examiner’s rejections). THE REJECTIONS The Examiner rejected claims 1, 6–9, 14, and 15 under 35 U.S.C. § 102(e) as anticipated by Kenmochi (US 5,900,947; May 4, 1999). Final Act. 22–25. The Examiner rejected claims 2–4 and 10–12 under 35 U.S.C. § 103(a) as unpatentable over Kenmochi and Chang (US 4,802,204; Jan. 31, 1989). Final Act. 26–29. Appeal 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 4 THE ANTICIPATION REJECTION The Examiner finds that Kenmochi discloses every recited element of claims 1, 6–9, 14, and 15. Final Act. 19–23. Appellant argues that Kenmochi does not qualify as prior art to the ’915 patent because Kenmochi’s effective filing date of August 25, 1994, is after the ’915 patent’s priority date of April 11, 1994—the filing date of the ’915 patent’s earliest parent Application No. 08/226,278 (“the ’278 application”). App. Br. 27–28. The Examiner, however, finds that each rejected claim of the ’915 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. Appeal 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 5 ANALYSIS We begin by noting, as does the Examiner (Ans. 3), that Kenmochi’s qualification as prior art hinges on whether the ’915 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. Nor is it disputed 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 banc). Although the description requirement under § 112 does not demand (1) any particular form of disclosure, or (2) that 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 recites, in pertinent part, a fax machine connected to a computer over a bi-directional direct passive link, and receiving digital image data at a digital serial communications port from the computer via the bi-directional direct passive link. Rejected independent claim 9 similarly recites providing digital image data to a digital Appeal 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 6 serial communications port for communication to the computer via a bi- directional direct passive link between the fax machine and computer. As Dr. Marc E. Levitt indicates in his Declaration filed November 10, 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 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 correspond to those figures in the underlying ’278 application.2 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) 2 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 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 7 throughout the briefs of little relevance to the issue before us, namely 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 modem circuitry 41 via an RS-232 cable. ’278 Appl’n 13:6–11. 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 Appeal 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 8 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 passive link,3 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 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. 8–9; 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. 13–18. 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 3 See App. Br. 4–5 (referring to Figure 2e in connection with the bi-directional passive link limitations of claims 1 and 9); 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). Appeal 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 9 application disclosure. Ans. 15–18, 21–24. 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 Ans. 23–25. At first blush, the Examiner’s position seems plausible, for the ’278 application is silent regarding digital signal transmission between the computer and fax machine—unlike the ’056 continuation-in-part application. Ans. 23 (noting ISDN interface 60 in Figure 2h of that application). But the ’278 application is also silent as to analog signal 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. 8; 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. 5–8) 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 Appeal 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 10 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 operate the devices in Figure 2e in an ISDN mode as the Examiner suggests (Ans. 17–18) 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. 17–18)—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 Appeal 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 11 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 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 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. 21–24. 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. 20–24; 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 Appeal 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 12 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 disclosure that merely renders the invention obvious does not satisfy the written description requirement as the Examiner correctly indicates. Ans. 4. 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, 6–9, 14, and 15 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. Appeal 2016-005018 Reexamination Control 90/013,210 Patent US 8,294,915 B2 13 THE OBVIOUSNESS REJECTION Because Kenmochi does not qualify as prior art, we likewise will not sustain the Examiner’s obviousness rejection of claims 2–4 and 10–12 over Kenmochi and Chang (Final Act. 26–29) for similar reasons. CONCLUSION The Examiner erred in rejecting (1) claims 1, 6–9, 14, and 15 under § 102, and (2) claims 2–4 and 10–12 under § 103. DECISION The Examiner’s decision rejecting claims 1–4, 6–12, 14, and 15 is reversed. REVERSED Patent Owner: Marvin J. Nachman 315 Saybrook Road Villanova, PA 19085 Third-Party Requester: Ropes & Gray LLP IPRM Docketing - Floor 43 Prudential Tower 800 Boylston Street Boston, MA 02199-3600