Ex Parte Raith et al

Board of Patent Appeals and Interferences

May 21, 2012

10807975 (B.P.A.I. May. 21, 2012)

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.
10/807,975 03/24/2004 Alex Krister Raith 4740-193 4453
24112 7590 05/21/2012
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
FAROUL, FARAH
ART UNIT PAPER NUMBER
2471
MAIL DATE DELIVERY MODE
05/21/2012 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 ALEX KRISTER RAITH, EDWIN SANDBERG, and
JONAS SVEDBERG
____________
Appeal 2009-011205
Application 10/807,975
Technology Center 2400
____________

Before DAVID M. KOHUT, MICHAEL R. ZECHER, and
BRYAN F. MOORE, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-23 and 25-33.1 Claim 24 has been cancelled.
Br. 1-2.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ Invention
Appellants invented a method and apparatus for processing
multimedia messages according to desired media formats. Spec. ¶ [0002].
Illustrative Claims
1. A method of processing multimedia messages
outgoing from an originating network comprising:
selectively transcoding multimedia content in outgoing
multimedia messages from a current format into a default
format as a function of their destination network addresses; and
sending the messages according to their destination
network addresses.

15. A method of processing multimedia messages
outgoing from an originating network comprising:
sending destination address information for an outgoing
multimedia message from a first entity to a second entity;
receiving at the first entity a corresponding indication
from the second entity as to whether multimedia content
transcoding is desired for the message;

1 While Appellants indicate their intent not to appeal the rejection of claims
22, 23, 25, and 33 (see Br. 2), Appellants’ Notice of Appeal filed June 27,
2008, states that “Applicant hereby appeals from the Examiner’s [F]inal
[R]ejection of claims 1-23 and 25-33.” We note that neither Appellants nor
the Examiner has subsequently withdrawn or cancelled any of the pending
claims. Therefore, since the Notice of Appeal indicates that claims 1-23 and
25-33 are pending in the present patent application, all of Appellants’
pending claims 1-23 and 25-33 are on appeal.
2 All references to the Brief are to the Brief entered November 11, 2008,
which replaced the Brief filed September 29, 2008.
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selectively performing transcoding at the first entity
based on the indication; and
sending the message from the first entity for delivery to
the destination address.

Prior Art Relied Upon
Trossen US 2004/0111476 A1 June 10, 2004
(filed Dec. 6, 2002)

Rejections on Appeal
Claims 1-14 and 26-30 stand rejected under 35 U.S.C. § 112, second
paragraph for failing to particularly point out and distinctly claim the subject
matter which Applicants regard as their invention. Ans. 3-4.
Claims 1-4, 9-13, 15,16, 18-20, 22, 23, 25, and 31-33 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Trossen. Ans. 4-11.
Claims 5-8, 17, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Trossen. Ans. 11-14.
Examiner’s Findings and Conclusions
1. The Examiner concludes that the use of the claim term
“default” within the context of the claims is inconsistent with its plain
meaning and, therefore, renders claims 1-14 and 26-30 indefinite under 35
U.S.C. § 112, second paragraph. Br. 15-16. Put another way, the Examiner
concludes that since Appellants’ Specification does not set forth an explicit
definition of the claim term “default” that is contrary to its ordinary and
customary meaning, an ordinarily skilled artisan would not be on notice that
Appellants redefined such term. Br. 3-4 and 16.
2. Further, the Examiner finds that Trossen discloses defining one
or more recipient rules such that the media content is transcoded. See Ans. 5
(citing to ¶ [0034]). The Examiner also finds that Trossen discloses
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associating the recipient rules with respective recipients based on addressing
information. See id (citing to ¶ [0036]). Therefore, the Examiner finds that
Trossen describes “selectively transcoding multimedia content in outgoing
multimedia messages from a current format into a default format as a
function of their destination network addresses[,]” as recited in independent
claim 1. Id.
3. The Examiner finds that Trossen discloses a rules processor that
determines whether any recipient rules associated with a recipient are stored
in a user database. See Ans. 8 (citing to ¶¶ [0023-0024], [0036], and
[0060]). The Examiner also finds that Trossen discloses that the rules
processor receives a rule for the user database and, subsequently, performs
the necessary transcoding. See id. Therefore, the Examiner finds that
Trossen describes “sending destination address information for an outgoing
multimedia message from a first entity to a second entity; receiving at the
first entity a corresponding indication from the second entity as to whether
multimedia content transcoding is desired for the message; and selectively
performing transcoding at the first entity based on the indication[,]” as
recited in independent claim 15. Id.
Appellants’ Contentions
1. Appellants contend that paragraph [0009] of the present
Specification discloses that a particular coding format specified for a
particular destination address is denominated as a specific format, while a
coding format known or likely to be compatible with a given destination
network address is a default format for that address (an others in the same
network domain). Br. 12-13 (quotations omitted). Moreover, Appellants
argue that the present Specification amply defines the claim terms “default”
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and “specific”—namely at paragraphs [0009], [0045-0047], and [0060]; and
Figures 3 and 5. Br. 13-14. As a result, Appellants allege that the use of the
claim term “default” does not render claims 1-14 and 26-30 indefinite under
35 U.S.C. § 112, second paragraph. Br. 14.
2. Appellants contend that Trossen discloses individual messages
recipients can define recipient rules, and a given recipient rule can specify
transcoding. Br. 16. However, Appellants argue that Trossen’s recipient
transcoding is analogous to a specific transcoding format and, therefore,
Trossen does not describe “selectively transcoding multimedia content in
outgoing multimedia messages from a current format into a default format as
a function of their destination network addresses[,]” as recited in
independent claim 1. Id (emphasis added).
3. Appellants contend that Trossen’s rule processor is a self-
contained decision maker, e.g., it evaluates any recipient rule that might be
associated with an outgoing message and applies any specified transcoding.
Br. 18. Consequently, Appellants argue that Trossen fails to describe a first
and second entity arrangement, where the first entity provides destination
address information to a second entity, which in turn determines whether
transcoding is desired based on the address (not based on a recipient rule)
and returns an indication as such to the first entity, as required by
independent claim 15. Id.

II. ISSUES
1. Did the Examiner err in concluding that claims 1-14 and 26-30
are indefinite? In particular, the issue turns on whether an ordinarily skilled
artisan, having read Appellants’ Specification, would be apprised of the
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scope of “a default format,” as recited in independent claim 1, and “default
coding,” as recited in independent claim 26.
2. Did the Examiner err in finding that Trossen describes
“selectively transcoding multimedia content in outgoing multimedia
messages from a current format into a default format as a function of their
destination network addresses[,]” as recited in independent claim 1?
3. Did the Examiner err in finding that the Trossen describes the
following claim limitations recited in independent claim 15:
(a) “sending destination address information for an outgoing
multimedia message from a first entity to a second entity;”
(b) “receiving at the first entity a corresponding indication from the
second entity as to whether multimedia content transcoding is desired for the
message;” and
(c) “selectively performing transcoding at the first entity based on
the indication[?]”

III. ANALYSIS
35 U.S.C. § 112, Second Paragraph Rejection
Claims 1-14 and 26-30
We find error in the Examiner’s indefiniteness rejection of
independent claims 1-14 and 26-30. In particular, we note that independent
claims 1 and 26 respectively recite, inter alia, “a default format” and
“default transcoding.”
We begin our analysis by first looking to Appellants’ Specification for
context. Appellants’ Specification discloses that “[an] exemplary
originating network may be configured to perform transcoding into a default
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format for certain destination addresses, e.g., transcoding into a format that
is widely used in multimedia delivery, such as WINDOWS Media Audio
format.” ¶ [0009]. Further, when determining whether a destination address
is identified as belonging to a set of addresses for which transcoding is
desired, Appellants’ Specification discloses “determining whether the
targeted address corresponds to some Internet domain, e.g., default coding,
or whether it corresponds to a different type of wireless network, e.g.,
specific coding.” ¶ [0060].
Upon reading Appellants’ Specification for context, we find that an
ordinarily skilled artisan3 would have been apprised of the scope of the
claim term “a default format.” That is, while the claim term “a default
format” is not explicitly defined in Appellants’ Specification, we find that an
ordinarily skilled artisan would have understood that transcoding a
multimedia message into a default format amounts to transcoding the

3 A claim is indefinite if, when read in light of the specification, it does not
reasonably apprise those skilled in the art of the scope of the invention.
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir.
2003) (citations omitted). In particular, our reviewing court held that the
claim as a whole must be considered to determine whether the claim
apprises one of ordinary skill in the art of its scope, and therefore serves the
notice function required by 35 U.S.C. § 112, second paragraph, by providing
clear warning to others as to what constitutes the infringement of the patent.
Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir 2000)
(citations omitted). If the language of the claim is such that a person of
ordinary skill in the art could not interpret the metes and bounds of the
claims so as to understand how to avoid infringement, a rejection of the
claim under 35 U.S.C. § 112, second paragraph, is deemed appropriate.
Morton Int'l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir.
1993). During prosecution, the threshold standard of ambiguity for
indefiniteness is lower than it might be during litigation of an issued patent.
Ex parte Miyazaki, 89 USPQ2d 1207, 1212 (BPAI 2008) (precedential).
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message into a format selected from a group of formats that are widely used
for delivering multimedia messages (e.g., a WINDOWS Media Audio
format or a format that corresponds to an Internet domain).
Moreover, while the claim term “a default format” is broad in the
sense that it amounts to any one format that is widely used in delivering
multimedia messages, the Examiner has not explained why the use of “a
default format” within the context of the claims is contrary to its ordinary
and customary meaning4—namely the preset selection of an option offered
by a system, which will always be followed except when explicitly altered.5
Put another way, we find that an ordinarily skilled artisan would be able to
interpret the metes and bounds of the claim term “a default format”—in this
case a single format selected from a group of formats that are widely used
for delivering multimedia messages—so as to understand how to avoid
infringement. Therefore, we will not sustain the Examiner’s rejection of
claims 1-14 and 26-30 as being indefinite under 35 U.S.C. § 112, second
paragraph

4 We note that to support their respective interpretations of the claim term “a
default format,” both the Examiner and Appellants provide competing
dictionary definitions for the term “default.” See Ans. 3-4; Br. 9. However,
both the Examiner and Appellants failed to provide corresponding dates
indicating that such definitions come from dictionaries that precede the
effective filing data of the present patent application. We therefore decline
to adopt the respective dictionary definitions offered by the Examiner and
Appellants.
5 Collins English Dictionary, © HarperCollins Publisher (2000) (retrieved
from http://www.xreferplus.com/entry/hcengdict/default) (last visited May
17, 2012).
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35 U.S.C. § 102(b) Rejection
Claim 1
We do not find error in the Examiner’s anticipation rejection of
independent claim 1, which recites, inter alia, “selectively transcoding
multimedia content in outgoing multimedia messages from a current format
into a default format as a function of their destination network addresses[.]”
We begin our analysis by first considering the scope and meaning of
the claim term “a default format,” which must be given its broadest
reasonable interpretation consistent with Appellants’ disclosure. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989) (stating that during examination “claims must be
interpreted as broadly as their terms reasonably allow”). In light of our
review of Appellants’ Specification supra, we find that the claim term “a
default format” may be broadly, but reasonably construed as a single format
selected from a group of formats widely used in delivering multimedia
messages. With this claim construction in mind, we turn to the merits of the
Examiner’s anticipation rejection.
Trossen discloses using one or more defined recipient rules to
transcode multimedia content. ¶ [0034]. Further, Trossen discloses
associating the recipient rules with addressing information for the intended
recipients. ¶ [0036]. Consequently, we find that Trossen’s disclosure of
using defined rules to transcode multimedia content amounts to transcoding
such content into the desired coding format for an intended recipient’s
address. Moreover, while Trossen allows a potential recipient of a
multimedia message to define a recipient rule that controls the desired
coding format, we note that Trossen does not preclude such format from
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being a single format selected from a group of widely accepted formats used
in multimedia delivery. Thus, we find that Trossen sufficiently describes the
disputed claim limitation. It follows that the Examiner has not erred in
finding that Trossen anticipates independent claim 1.
Claims 4, 9, 11-13, and 31
Appellants do not provide separate and distinct arguments for
patentability with respect to independent claim 31, and dependent claims 4,
9, and 11-13. See Br. 16-18. Therefore, since Appellants group independent
claim 31, and dependent claims 4, 9, and 11-13, with independent claim 1
(id), these claims fall with independent claim 1. See 37 C.F.R.
§ 41.37(c)(l)(vii).
Claims 2 and 3
Appellants contend that while Trossen discloses multimedia
messaging can involve mobile users and the Internet (such as email),
Trossen fails to describe performing or not performing a default transcoding
based on whether or not given multimedia messages target email addresses,
as required by dependent claim 2 and 3. Br. 16-17. We do not agree with
Appellants.
Trossen discloses that recipient rules are capable of being applied to
the delivery of media content based on the priority of such content.
¶ [0066]. In particular, if a multimedia message is designated as urgent,
Trossen discloses that the corresponding recipient rules specify delivering
the media content to the recipient’s telephone. ¶ [0067]. If the multimedia
message is not designated as urgent, Trossen discloses that the
corresponding recipient rules specify delivering the media content to the
recipient’s email address. Id. Therefore, since Trossen discloses a scenario
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that uses defined recipient rules to perform transcoding for a multimedia
message that targets an email address, we find that Trossen describes
“performing transcoding for messages targeted to email addresses,” as
recited in dependent claim 2.
With respect to dependent claim 3, we note that the disputed
limitation is a negative limitation, namely “not performing transcoding for
messages not targeted to email addresses.” Although permissible,6 a
negative limitation merely recites what a claim lacks and, therefore, is broad
by its very nature. In order to show error in the Examiner’s findings of what
a claim lacks via a negative limitation, Appellants must show that Trossen
has this feature. In this case, Appellants have not provided any evidence or
technical reason explaining why a prospective recipient in Trossen’s rule-
based system is incapable of defining a recipient rule that specifies not
transcoding multimedia content that does not target an email address.
Consequently, we are not persuaded of error in the Examiner’s position that
Trossen’s disclosure of defining rules used to transcode multimedia content
(see ¶¶ [0034] and [0036]) implicitly describes “not performing transcoding
for messages not targeted to email addresses,” as recited in dependent claim
3. See Ans. 5-6. It follows that the Examiner has not erred in finding that
Trossen anticipates dependent claims 2 and 3.
Claim 10
Appellants contend that Trossen only discloses that one or more
recipients can, if they like, specify that transcoding be used for messages

6 See generally Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 923
(Fed. Cir. 1991) (“The use of a negative limitation to define the metes and
bounds of the claimed subject matter is a permissible form of expression.”)
(citation omitted).
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targeting them. Br. 17. Therefore, Appellants argue that Trossen does not
describe “performing default transcoding for outgoing messages targeted to
Internet domains and not performing default transcoding for outgoing
messages targeted to wireless network domains[,]” as recited in dependent
claim 10. Id. We do not agree with Appellants.
In addition to using recipient rules, Trossen discloses delivering media
content to recipients based on one or more network rules. ¶ [0045]. For
example, Trossen discloses defining a network rule that requires delivering
media content to a Wide Area Network (“WAN”)(e.g., Internet). ¶ [0046].
Consequently, we find that since Trossen discloses using defined network
rules to perform transcoding for multimedia content that targets a WAN or
Internet domain, Trossen describes “performing default transcoding for
outgoing messages targeted to Internet domains[,]” as recited in dependent
claim 10.
Moreover, we note that dependent claim 10 also contains a negative
limitation, namely “not performing default transcoding for outgoing
messages targeted to wireless network domains.” Therefore, similar to our
analysis with respect to dependent claim 3, Appellants must show that
Trossen has this feature. In this case, Appellants have not provided any
evidence or technical reason explaining why a prospective user of Trossen’s
rule-based system is incapable of defining a network rule that specifies not
transcoding multimedia content that targets wireless network domains.
Consequently, we are not persuaded of error in the Examiner’s position that
Trossen’s disclosure of defining rules used to transcode multimedia content
(see ¶¶ [0034] and [0036]) implicitly describes “not performing default
transcoding for outgoing messages targeted to wireless network domains,”
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as recited in dependent claim 10. See Ans. 6-7. It follows that the Examiner
has not erred in finding that Trossen anticipates dependent claim 10.
Claim 15
We do not find error in the Examiner’s anticipation rejection of
independent claim 15, which recites, inter alia: 1) “sending destination
address information for an outgoing multimedia message from a first entity
to a second entity;” 2) “receiving at the first entity a corresponding
indication from the second entity as to whether multimedia content
transcoding is desired for the message;” and 3) “selectively performing
transcoding at the first entity based on the indication[.]”
At the outset, we adopt the Examiner’s findings of fact as our own.
See Ans. 8. In particular, Trossen discloses that a Multimedia Messaging
Service (“MMS”) system includes both a rules processor and one or more
user databases, which store user address information. See ¶¶ [0023-0024];
see also Figure 1. Further, Trossen discloses that the rules processor can
parse a multimedia message and determine whether the corresponding
address information identifies any stored recipient or network rules. See
¶ [0060].
Based on these textual portions of Trossen cited by the Examiner, we
find that Trossen describes an arrangement between the rules processor and
one or more user databases, whereby the rules processor provides
information pertaining to a recipient (e.g., address information) to the one or
more user databases, which in turn identify any stored recipient or network
rules that specific the desired transcoding and return such rules to the rules
processor. Consequently, we find that Trossen describes the disputed claim
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limitations. It follows that the Examiner has not erred in finding that
Trossen anticipates independent claim 15.
Claim 16
Appellants contend that while Trossen distinguishes external entities
from internal entities (e.g., external email server), Trossen does not disclose
that the rules processor is external. Br. 19. Therefore, Appellants argue that
Trossen does not describe that “the second entity is external to the
originating network,” as recited in dependent claim 16. Id. We do not agree
with Appellants.
Trossen’s Figure 2 depicts the interworking between two different
Multimedia Messaging Service Environments (“MMSEs”). ¶ [0026]. In
particular, Trossen discloses that MMSE A, which includes MMS A, is
capable of sending a multimedia message to MMSE B, which includes
MMS B. See Figure 2. Therefore, since MMS A and MMS B both contain
a rules processor and one or more user databases (see ¶¶ [0023-0024]; see
also Figure 1), we find that Trossen discloses that the rules processor located
in MMS A is capable of providing information pertaining to a recipient (e.g.,
address information) to the one or more user databases located in MMS B.
That is, we find that Trossen’s one or more user databases located in MMS
B are external to the originating MMSE—in this case MMSE A. Thus, we
find that Trossen describes the disputed claim limitation. It follows that the
Examiner has not erred in finding that Trossen anticipates dependent claim
16.
Claims 18-20
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 18-20. See Br. 18-19.
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Therefore, since Appellants group dependent claims 18-20 with independent
claim 15 (id), these claims fall with independent claim 15. See 37 C.F.R.
§ 41.37(c)(l)(vii).
Claims 22, 23, 25, and 33
Since Appellants do not present any arguments with respect to
independent claim 33, and dependent claims 22, 23, and 25 (see Br. 16-20),
the rejection of these claims under 35 U.S.C. §102(e) as being anticipated by
Trossen is summarily sustained.7
Claim 32
Appellants offer the same arguments set forth in response to the
anticipation rejection of independent claim 15 to rebut the anticipation
rejection of independent claim 32. See Br. 19-20. We have already
addressed these arguments in our discussion of independent claim 15, and
we found them unpersuasive. It follows that the Examiner has not erred in
finding that Trossen anticipates independent claim 32.
35 U.S.C. § 103(a) Rejection
Claims 5-8
Appellants offer the same argument set forth in response to the
anticipation rejection of independent claim 1 to rebut the obviousness
rejection of dependent claims 5-8. See Br. 20-21. We have already
addressed this argument in our discussion of independent claim 1, and we
found it unpersuasive. It follows that the Examiner has not erred in
concluding that Trossen renders dependent claims 5-8 unpatentable.

7 See Manual of Patent Examining Procedure § 1205.02, 8th ed., Rev. 8, July
2010 (“If a ground of rejection stated by the examiner is not addressed in the
[A]ppellant’s brief, that ground of rejection will be summarily sustained by
the Board.”).
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Claims 17 and 21
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 17 and 21. See Br. 20-21.
Therefore, we select independent claim 15 as representative of these
aforementioned claims. See 37 C.F.R. § 41.37(c)(1)(vii). Consequently, the
Examiner has not erred in rejecting dependent claims 17 and 21 for the same
reasons set forth in our discussion of independent claim 15.

IV. CONCLUSION
1. The Examiner has erred in rejecting claims 1-14 and 26-30 as
being indefinite under 35 U.S.C. § 112, second paragraph.
2. The Examiner has not erred in rejecting claims 1-4, 9-13, 15,
16, 18-20, 22, 23, 25, and 31-33 as being anticipated under 35 U.S.C.
§ 102(e).
3. The Examiner has not erred in rejecting claims 5-8, 17, and 21
as being unpatentable under 35 U.S.C. § 103(a).

V. DECISION
1. We reverse the Examiner’s decision to reject claims 1-14 and
26-30 as being indefinite under 35 U.S.C. § 112, second paragraph.
2. We affirm the Examiner’s decision to reject claims 1-4, 9-13,
15, 16, 18-20, 22, 23, 25, and 31-33 as being anticipated under 35 U.S.C.
§ 102(e).
3. We affirm the Examiner’s decision to reject claims 5-8, 17, and
21 as being unpatentable under 35 U.S.C. § 103(a).
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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)(iv).

AFFIRMED-IN-PART

ke