Ex Parte Vo

Board of Patent Appeals and Interferences

Oct 26, 2009

11213511 (B.P.A.I. Oct. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte KIEM-PHONG VO
_____________

Appeal 2009-0025271
Application 11/213,5112
Technology Center 2600
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Decided: October 26, 2009
_______________

Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and
ROBERT E. NAPPI, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is AT&T Corp.
2 Filed August 26, 2005, as a continuation of Application 10/015,516, which
was filed on December 13, 2001, and issued on November 29, 2005, as
Patent 6,970,712. Substitute Specification filed October 24, 2007, at 1:3-4.
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. Appellant’s invention3
Appellant’s invention relates generally to network communications
services such as telephone services and data services, and, more particularly,
to a method for providing a network-based, real-time replay service.
Specification 1:6-8.
The invention addresses the following problem:
Under field conditions, data transmission can be briefly
interrupted or lost. In such cases, instant replay can be helpful to
resynchronize the conversation. For example, during a
conversation conducted via a telephone network, voice data can be
corrupted by jitters on the network circuit or the data may be
received but not properly processed because the listener was
distracted by some external events (e.g., baby crying). In a
wireless telephone communication, the data may have passed
through most of the network intact, only to be corrupted by
weather conditions between the wireless base station and the
handset. Non-voice data may similarly be corrupted during
transmission.

3 Because the Specification as filed includes neither line nor paragraph
numbers, references herein to the Specification are to line numbers in the
Substitute Specification, supra note 2.
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Id. at 1:16-23. Appellant’s solution to this problem is to provide the data
transfer medium with a buffering module that continuously stores signals
traveling through the network and replays them upon request. Id. at 3:9-17.

B. The claims
The independent claims before us are claims 1, 12, and 16, of which
claim 1 reads:
1. A method replaying a portion of a communication,
comprising the steps of:
establishing a connection between first and second end
nodes thereby establishing a communication in progress;
receiving, at a buffering module in the connection from
the first and second end nodes, a communications signal sent
from the second end node to the first end node;
maintaining in a memory a segment of the
communications signal that was transmitted through the
buffering module immediately previous to present time;
receiving at the buffering module a request to retransmit
at least a portion of the segment of the signal; and
during the communication in progress retransmitting
from the buffering module to the first end node the portion of
the segment.
(Claims App., Amended Brief received October 24, 2007 (hereinafter
“Br.”).)

C. The references and rejection
The Examiner relies on the following references:
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Sun et al. (“Sun”) US 2002/0160751 A1 Oct. 31, 2002
(filed April 26, 2001)

Iivonen et al. (“Iivonen”) US 2003/0114140 A1 June 19, 2003
(effectively filed May 29, 20014)

Claims 1-20 stand rejected under 35 U.S.C. § 103(a) for obviousness
over Sun in view of Iivonen. Final Action 2.

THE ISSUE
Appellant has the burden on appeal to show reversible error by the
Examiner in maintaining the rejection. See In re Kahn, 441 F.3d 977, 985-
86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
The sole issue before us is whether the Examiner erred in concluding
that Appellant’s “Declaration Under 37 C.F.R. 1.131” (hereinafter “Rule 131
Declaration”) and attachments thereto are insufficient to antedate either of
the cited references.5

4 The Iivonen patent identifies itself (at ¶ 0001) as “a Continuation of
International Application PCT/FI10/00512 filed May 29, 2001 . . . .”
5 The Rule 131 Declaration, filed January 22, 2007, is not included in
Appellant’s Evidence Appendix (filed January 30, 2008), which does
include the emails and letter cited in the Rule 131 Declaration.
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PRINCIPLES OF LAW
37 C.F.R. § 1.131 permits an applicant to antedate and thereby remove
a reference or an activity as the basis for a prior art rejection by submitting
an appropriate oath or declaration to establish invention of the subject matter
of the rejected claim prior to the effective date of the reference or activity.
37 C.F.R. § 1.131(a). The showing of facts shall be such, in character and
weight, as to establish (1) reduction to practice prior to the effective date of
the reference, or (2) conception of the invention prior to the effective date of
the reference coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the application. 37 C.F.R.
§ 1.131(b). Thus, a showing of prior conception alone is not sufficient to
antedate a reference.
“[P]roof of actual reduction to practice requires demonstration that the
embodiment relied upon as evidence of priority actually worked for its
intended purpose.” Newkirk v. Lulejian, 825 F.2d 1581, 1582 (Fed. Cir.
1987) (citation omitted). Conception is “the formation, in the mind of the
inventor of a definite and permanent idea of the complete and operative
invention, as it is to be thereafter to be applied in practice.” Coleman v.
Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (emphasis omitted) (citation
omitted). Diligence can be shown by evidence of activity aimed at reducing
the invention to practice, either actually or constructively, and/or by legally
adequate excuses for inactivity. Griffith v. Kanamaru, 816 F.2d 624, 626
(Fed. Cir. 1987). It is necessary to account for the entire period for which
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diligence must be shown, id., and to provide evidence that is specific as to
facts and dates. Gould v. Schawlow, 363 F.2d 908, 920 (CCPA 1966).

ANALYSIS
The Rule 131 Declaration does not explain whether Appellant is
asserting (1) a reduction to practice prior to the effective date of the
reference to be antedated and/or (2) conception of the invention prior to that
date coupled with the requisite diligence. Instead, the Rule 131 Declaration
asserts that Appellant “made the invention described and claimed in
[Appellant’s] application prior to April 26, 2001,” which is the effective date
of the Sun reference, citing the following evidence:
1. An e-mail message dated March 15, 2001, from me to
David Belanger, to whom I reported in the AT&T organization
structure at the time. The message describes the subject matter
claimed in my patent application. The e-mail message was also
addressed to Robert Canavan (rcanavan@att.com) who was the
patent attorney assigned to my technical organization.
2. An e-mail message dated March 16, 2001 addressed to
Robert Canavan, patent attorney, conveying a[n] attachment
describing the work in my e-mail message of March 15 (above).
3. A patent disclosure letter dated March 16, to David
Belanger from Robert Canavan, documenting the establishment of
a patent study item, which item corresponds to the work referred
to in the e-mails above, and to the subject matter claimed in my
patent application. As indicated on [sic] that letter I was sent a
copy of the letter.
Rule 131 Declaration 1-2, ¶¶ 1-3. Appellant has not provided a copy of the
above-mentioned attachment to the March 16, 2001, e-mail message.
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The March 16, 2001, patent disclosure letter describes the invention as
follows:
A conversation is a forum in which participants attempt to transfer
information in real time to one another via means such as voice,
keyboards, wireless devices etc. Currently, such transferred data
are assumed to be immediately consumed by the receiver(s), then
disappear. Examples of conversations include telephone calls,
conference calls, electronic drawing boards and instant messaging.
But data transmission can be briefly interrupted or loss [sic]. For
example, during a conversation conducted via a telephone
network, voice data can be corrupted by jitters on the network
circuit or they may be received but not properly processed because
the listener got distracted by some external events (e.g., baby
crying). In such cases, instant replay can be helpful to
resynchronize the conversation. We propose that instant replay
can be implemented as a feature of the data transfer medium via
some combination of the network, broadband phone, cable
modem, or instant messaging module by buffering the last n units
(minutes, lines of text, etc.) of a communication for some
appropriate n.
(Evid. App., last page.)
Because the Rule 131 Declaration, e-mails, and letter fail to assert that
the claimed method was performed prior to the April 26, 2001, filing date of
the Sun reference, as required to establish an actual reduction to practice
prior to that date, the Examiner was correct to consider whether the evidence
instead establishes conception prior to that date coupled with the requisite
diligence. The Examiner concluded that neither prior conception nor the
requisite diligence has been established. Regarding conception, the
Examiner concluded that the evidence is insufficient because “[i]t does not
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discuss anything concerning about limitations recited in the claims.” Final
Action 8. Appellant argues that the evidence need not show all of the
claimed features, citing In re Tanczyn, 347 F.2d 830 (CCPA 1965), and In re
Stempel, 241 F.2d 755 (CCPA 1957). (Br. 8-9.)
However, we find it unnecessary to address the conception issue
because we agree with the Examiner that the evidence “is insufficient to
establish diligence from a date prior to the date of reduction to practice of
the Sun et al. and Iivonen references to either a constructive reduction to
practice or an actual reduction to practice.” Final Action 7-8. This position
of the Examiner is not even mentioned in the Brief. Although the
Examiner’s conclusion that diligence has not been shown is acknowledged
in the Reply Brief, it fails to point out any error therein. Rather than
explaining how the evidence demonstrates efforts to achieve an actual or a
constructive reduction to practice (or reasonable excuses for inactivity)
throughout the period running from prior to Sun’s April 26, 2001, filing date
up to Appellant’s December 13, 2001, effective filing date, Appellant makes
only the following arguments, which are germane to conception rather than
diligence:
On the issue of the 1.131 Declaration, the Examiner finds a
concept in the evidence but finds diligence lacking. It is
applicant’s position that they showed as much as the references
show prior to the effective date of the reference. Moreover, if the
claimed invention is a method, and the method is implemented in
software, the invention is complete when the steps of the claimed
method are disclosed in a provable document.
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(Reply Br. 5.) To the extent that Appellant is instead arguing above that the
evidence establishes an actual reduction to practice prior to Sun’s date, that
argument is entitled to no consideration because it was not necessitated by a
new point in the Answer and thus should have been made in the opening
Brief. See Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978,
989 (Fed. Cir. 2006) (argument raised for the first time in the reply brief that
could have been raised in the opening brief is waived); accord Ex parte
Scholl, No. 2007-3653, slip op. at 18 n.13 (BPAI March 13, 2008)
(designated as “Informative Opinion”), available at
http://www.uspto.gov/web/ offices/dcom/bpai/its/fd073653.pdf. In any
event, as noted above, the evidence fails to assert, let alone establish, that the
claimed method was performed prior to Sun’s April 26, 2001, filing date, as
is necessary for Appellant to be credited with an actual reduction to practice
prior to that date.
For the foregoing reasons, Appellant has not shown error in the
Examiner’s conclusion that Appellant’s Rule 131 Declaration and
attachments are insufficient to antedate either of the cited references.

DECISION
The rejection of claims 1-20 under 35 U.S.C. § 103(a) for obviousness
over Sun in view of Iivonen 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. See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED

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