Ex Parte Hochman

Board of Patent Appeals and Interferences

Nov 12, 2010

11057853 (B.P.A.I. Nov. 12, 2010)

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.
11/057,853 02/15/2005 Gary Hochman 2222.007REI0 4400
26111 7590 11/12/2010
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
HO, CHUONG T
ART UNIT PAPER NUMBER
2476
MAIL DATE DELIVERY MODE
11/12/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte GARY HOCHMAN
________________

Appeal 2010-004382
Application 11/057,853
Reissue Patent 5,838,685
Technology Center 2400
____________________________

Before THOMAS S. HAHN, ELENI MANTIS MERCADER, and
CARL W. WHITEHEAD, JR. Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-004382
Application 11/057,853
Reissue Patent 5,838,685

Appellant invokes our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm the Examiner’s rejection of these claims.

STATEMENT OF THE CASE2
Appellant claims a method for transmission of data files. A message
is composed using a chosen data format, e.g., a graphic, facsimile, audio,
video, or text data format. An identifier code, corresponding to the data
format, is annexed to the message, and the message is sent to a reception
host facility (see generally Abstract). Claim 1, with disputed limitations (Br.
17) emphasized, is illustrative:
1. A method for transmission of a message over a network,
comprising:
an original composer composing an original message body of an identified
data format for an intended recipient;
the original composer annexing to said original message body a unique
identifier corresponding to the data format of the original message body;
transmitting the identifier and original message body through the network
for reception by a host facility;
inspecting the identifier at the host facility to identify the data format of the
message body; and
advising the recipient of the receipt of the message and its data format.

2 This appeal is for a reissue application for US Patent 5,838,685.
Accordingly, the Specification is the printed patent. See 37 C.F.R.
§ 1.173(a)(1).
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Appeal 2010-004382
Application 11/057,853
Reissue Patent 5,838,685

The Examiner relies on the following prior art references to show
unpatentability:3
Bobo US 5,675,507 Oct. 7, 1997
Marshall US 6,396,597 B1 May 28, 2002

Claims 1-26 stand rejected under § 103(a) as being unpatentable over
Marshall and Bobo (Ans. 3-21).
Throughout this decision, we make reference to the Appeal Brief
(“Br.,” filed Sept. 10, 2009), and the Examiner’s Answer (“Ans.,” mailed
Oct. 14, 2009) for their respective details.

APPELLANT’S CONTENTION4
Appellant does not separately argue any claim, but, instead,
collectively argues disputed independent claim limitations (see Br. 18-21).
The arguments are that the cited references fail to teach or suggest a recited
“original composer” limitation (independent claims 1 and 5) and “original
sender” limitation (independent claims 7 and 26), which limitations, we
understand, Appellant inferentially contends are equivalent (Br. 18).
Relying on these arguments, Appellant further asserts that because of their
dependencies the other claims also are patentable (Br. 22). Accordingly, we
select independent claim 1 as representative, pursuant to our authority under
37 C.F.R. § 41.37 (c)(1)(vii).

3 Effective filing dates for these documents precede Appellant’s earliest
effective filing date and are not at issue.
4 Arguments that Appellant did not make have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii).
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Appeal 2010-004382
Application 11/057,853
Reissue Patent 5,838,685

Appellant argues that the Examiner improperly finds the Marshall
described service computer as teaching or suggesting the disputed
limitations (Br. 19). In accord with this argument, Appellant identifies that
the Examiner does not find Bobo teaching or suggesting the disputed
limitations, and Appellant then asserts that the argued Marshall deficiencies
are not overcome by Bobo (Br. 21).

ISSUE
Did the Examiner err under § 103(a) by finding that Marshall and
Bobo, alone or in combination, teach or suggest the “original composer” as
recited in representative claim 1?

PRINCIPLES OF LAW
The scope of claimed limitations is determined by giving the terms in
claims their ordinary and accustomed meaning while interpreting the claims
as broadly as is reasonable and consistent with the specification. See In re
Thrift, 298 F.3d 1357, 1364 (Fed. Cir. 2002).

ANALYSIS
For the following reasons, Appellant’s argument that the Examiner
erred in rejecting the independent claims is not persuasive.
Appellant identifies the disputed limitations of representative method
claim 1 as “an original composer composing an original message body of an
identified data format for an intended recipient; [and] the original composer
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Appeal 2010-004382
Application 11/057,853
Reissue Patent 5,838,685

annexing to said original message body a unique identifier corresponding to
the data format of the original message body” (Br. 17).
The Examiner finds Marshall’s described service computer (50)
teaches or suggests the recited “original composer” of the disputed
limitations (Ans. 4-5). Appellant argues Marshall is deficient because: (i)
Marshall’s service computer (50) receives messages for subsequent storage
and forwarding, and does not originate the messages; (ii) “Marshall
repeatedly emphasizes that the messages originate elsewhere, e.g., computer
(60) or fax machine (62);” and (iii) “Marshall makes clear that the actual
originators of the messages may be completely unaware of the existence of
service computer (50)” (Br. 21).
Appellant does not contend that the Marshall taught service computer
(50) fails to annex a unique identifier corresponding to the data format of a
message body as recited in the disputed limitations.
Appellant asserts as a conclusion that the disputed limitations recite
that a message originates at the “original composer” and therefore a message
is not received at the “original composer” (Br. 20). Appellant does not
address why this is the exclusive or even a correct interpretation. What we
find, however, from ordinary and accustomed meanings of the recited terms
is that the “original composer” puts an original message body together in an
identified data format, which does not exclude receipt of a message for data
formatting. Besides being supported by ordinary and accustomed meanings
for the recited terms, we also find this interpretation is supported by the
Specification. See Thrift, 298 F.3d at 1364. In particular, we find disclosure
of a data transmission system having a front end apparatus 114, which can
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Appeal 2010-004382
Application 11/057,853
Reissue Patent 5,838,685

be a microprocessor-driven data-acquisition device, [i.e., an original
composer] capable of accepting text or other data files that “converts them to
an appropriate digital format which can be transmitted over a network”
(Spec., col. 6, lines 6-15).
In addressing Appellant’s argument, the Examiner also relies on the
Specification. Specifically, the Examiner cites Specification disclosures at
page 8, lines 10-15 (i.e., col. 4, lines 17-22) that we find to be in accord with
those identified above, namely: “The sender constructs an E-Mail message
body at 16 [see Fig. 3] in the desired format, whether as a facsimile image,
conventional text, audio or video file or the like. At 18 conventional header
material is entered, along with the appropriate coding to classify the type of
E-mail body” (Ans. 32). Thus, consistent with the Specification the disputed
limitations encompass an original composer that “converts [E-mail
messages] to an appropriate digital format” or otherwise said “constructs an
E-Mail message body . . . in the desired format.” We do not find any
recitation in the disputed limitations that excludes receipt by the original
composer of a message for data formatting. We, therefore, are not
persuaded by Appellant’s argument that disputed limitations fail to read on
Marshall’s service computer 50 because it receives messages.
Consistent with this interpretation, the Examiner finds Marshall
teaches a service computer 50 for “composing an original message body
(figure 4, original message body having data format 154) of an identified
format for the recipient . . .” (Ans. 32). We agree. In particular, we find
Marshall teaches that “the service computer [50] manipulates the [received]
facsimile data to the desired format” (Spec., col. 7, lines 34-39).
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Appeal 2010-004382
Application 11/057,853
Reissue Patent 5,838,685

For the foregoing reasons, we will sustain the rejection of
representative claim 1, and also the rejection of the other independent claims
5, 7, and 26 along with the respective dependent claims that fall with their
base independent claims.
ORDER
The Examiner’s decision rejecting claims 1-26 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).
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Appeal 2010-004382
Application 11/057,853
Reissue Patent 5,838,685

AFFIRMED

ELD

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005

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