Ex Parte Wang et al

Patent Trial and Appeal Board

Mar 29, 2018

14528233 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/528,233 10/30/2014 MICHAEL H. WANG
81368 7590 04/02/2018
GIBB & RILEY, LLC
Frederick W. Gibb, III, Esq.
844 West Street
Suite 300
Annapolis, MD 21401
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.
20141031US01 1065
EXAMINER
WASHINGTON, JAMARES
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
04/02/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
support@gibbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL H. WANG, FRANCIS KAPO TSE,
SURYA PRAKASH KOTHA, AMRITA SHAILINI DIOL,
CHRISTOPHER MARK VILLONE, PREMKUMAR RAJENDRAN, and
DEEP AK RA VISHANKAR RAMKUMAR
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Application 14/528,233 1
Technology Center 2600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-5, 7, 8, 10-12, 14, 15, and 17-19, which
constitute all of the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies itself, Xerox Corporation, as the real party in interest.
App. Br. 3.
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Application 14/528,233
THE INVENTION
The disclosed and claimed invention is directed to "operating a
facsimile device using separate mobile devices." Spec. i-f 1. 2
Claim 1, reproduced below with the disputed limitations italicized, is
illustrative of the claimed subject matter:
1. A method comprising:
operatively connecting a portable computing device to a
separate device, said separate device having an optical scanner
and a facsimile modem;
operating an application on said portable computing
device to cause said optical scanner to scan an item to create an
electronic image of said item;
causing said separate device to transmit said electronic
image to said portable computing device, using said application;
receiving facsimile information comprising a telephone
number into a graphic user interface of said portable computing
device, using said application;
creating a facsimile file by combining said electronic
image and said facsimile information and adding said facsimile
information in a header of said facsimile file using said
application operating on said portable computing device, said
facsimile file having a file format usable by said separate device,
and said header being distinct from said electronic image;
transmitting said facsimile file from said portable
computing device to said separate device, using said application;
causing said separate device to send said electronic image
as a facsimile telephone transmission, without transmitting said
2 We refer to the Specification filed Oct. 30, 2014 ("Spec."); Final Office
Action mailed Nov. 23, 2016 ("Final Act."); Appeal Brief filed Mar. 20,
2017 ("App. Br."); Examiner's Answer mailed July 12, 2017 ("Ans."); and
the Reply Brief filed Aug. 30, 2017 ("Reply Br.").
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Application 14/528,233
header, using said facsimile information contained within said
header, using said application;
receiving, by said portable computing device from said
separate device, a result of said separate device attempting to
send said facsimile; and
displaying, on said graphic user interface of said portable
computing device, said result of said separate device attempting
to send said facsimile, using said application.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Choi et al. US 2006/0126114 Al
(hereinafter "Choi")
Denpo US 2007/0071190 Al
Vendrow et al. US 2010/0184408 Al
(hereinafter "V endrow")
Nusimow et al. US 2013/0041677 Al
(hereinafter "Nusimow")
Ikeda US 2014/0362406 Al
REJECTIONS
June 15, 2006
Mar. 29, 2007
July 22, 2010
Feb. 14,2013
Dec. 11, 2014
Claims 1, 7, 8, 14, and 15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ikeda, Vendrow, Denpo, and Choi. Ans. 4.
Claims 3-5, 10-12, and 17-19 stand rejected under 35 U.S.C. § 103
as being unpatentable over Ikeda, Vendrow, Denpo, Choi, and Nusimov.
Ans. 11.
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant's arguments regarding the claims.
Claims 1, 5, 7, 8, 12, 14, 15, and 19
Appellant argues Vendrow teaches "a mobile device interacting with a
fax manager or fax server" but does not teach that the "mobile device
creat[es] the facsimile file," and thereby does not teach the claimed "creating
a facsimile file ... using said application operating on said portable
computing device." App. Br. 13 (emphasis added); see App. Br. 12; see
Reply Br. 2.
We agree with the Examiner's findings that Vendrow teaches the
external mobile device creating (generating and populating) the facsimile
file (fax document) for transmission. Ans. 5---6, 16-17. As cited by the
Examiner (Ans. 5, 16), Vendrow teaches that a ''fax document template can
be transmitted to the mobile device" which "can function as a remote control
terminal of the fax server." Vendrow i-f 59 (emphasis added). Vendrow
further teaches that a "fax document is populated and stored," which "can
include inserting a user's identity, existing phone number, address, and other
personal information." Vendrow i-f 61 (emphasis added). Vendrow teaches
the "mobile device 510 can invoke a word processing program on either the
mobile device 510 ... to edit the selected fax document template, including
manually or automatically inserting values to data fields, inserting text, and
inserting recipient name and number to generate a fax document 572."
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Vendrow i-f 72 (emphasis added). In other words, Vendrow teaches the
mobile device utilizing a fax document template, inserting information such
as recipient name and phone number, and generating the fax document.
Appellant has not persuasively argued why Vendrow's mobile device
generating a fax document by inserting information does not teach the
claimed using an application operating on a portable computing device to
create a facsimile file by adding facsimile information.
Appellant further contends Vendrow teaches a mobile device inserting
text into the fax document template but does not teach "that the mobile
device can include a facsimile header," and thereby Vendrow does not teach
the claimed creating a facsimile file by "adding said facsimile information in
a header of said facsimile file." App. Br. 14; see Reply Br. 2-3.
During examination of a patent application, a claim is given its
broadest reasonable construction "in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). There is a presumption that a claim term carries
its ordinary and customary meaning. In re Trans logic Tech., Inc., 504 F .3d
1249, 1257 (Fed. Cir. 2007). An applicant may rebut this presumption,
however, by acting as his own lexicographer, providing a definition of the
term in the specification with "reasonable clarity, deliberateness, and
precision." See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
absence of such a definition, limitations are not to be read from the
specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993). "[A ]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
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the claims to those embodiments." Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en bane) (citations omitted). Instead, the claims may
embrace "different subject matter than is illustrated in the specific
embodiments in the specification." Nazomi Commc 'ns., Inc. v. ARM
Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005), cited with approval in
Phillips, 415 F.3d at 1323.
Claim 1 recites "adding said facsimile information in a header of said
facsimile file," but Appellant's Specification and the claim do not define
"header of said facsimile file" or describe how to "add said facsimile
information" to such a header. Accordingly, the claimed adding facsimile
information in a header of the facsimile file, in light of Appellant's
Specification, broadly encompasses adding data to the facsimile file.
Therefore, we agree with the Examiner's findings that Vendrow
teaches facsimile information added to a header portion of a facsimile file.
Ans. 6, 17. As cited by the Examiner (Ans. 5), Vendrow teaches "edit[ing]
the selected fax document template, including manually or automatically
inserting values to data fields, inserting text, and inserting recipient name
and number to generate a fax document 572." Vendrow i-f 72 (emphasis
added). In other words, Vendrow teaches generating a fax document by
inserting fax data to the fax document template. The claimed adding
facsimile information in a header of a facsimile file, broadly encompassing
adding data to the facsimile file, does not preclude Vendrow's inserting fax
data to the fax document template.
Accordingly, we sustain the Examiner's rejection of claim 1, along
with the rejections of commensurate claims 8 and 15, for which Appellant
relies on the same arguments as discussed above for claim 1 (App. Br. 12),
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along with dependent claims 5, 7, 12, 14, and 19, which are not argued
separately (id. at 16, 18).
Claims 3, 4, 10, 11, 17, and 18
Appellant contends Nusimow's system generating a coversheet does
not teach the claimed "creating a facsimile coversheet by placing portions of
said facsimile information into a facsimile coversheet template, using said
portable computing device." App. Br. 17; Reply Br. 4.
Appellant's argument against Nusimow separately from Vendrow
does not persuasively rebut the combination made by the Examiner. One
cannot show non-obviousness by attacking references individually, where
the rejections are based on combinations of references. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Specifically, we agree with the Examiner's finding that Nusimow
teaches "two separate and distinct devices are used for
transmission/reception of faxes" and "generating the coversheet for outgoing
faxes," and that "it would have been obvious to provide the external
'portable' device as disclosed by the combination of Ikeda and Vendrow ...
with the functionality of the EHR [electronic health record] system, separate
from the facsimile apparatus, in generating fax coversheets." Ans. 19-20.
As cited by the Examiner (Ans. 5, 11), Vendrow teaches that a ''fax
document template can be transmitted to the mobile device" (Vendrow i-f 59)
which will "generate a fax document" (Vendrow i-f 72), and Nusimow
teaches that the system "automatically generates a coversheet" and the
"coversheets can be a template" (Nusimow i-f 54). In other words, Vendrow
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teaches a mobile device using templates to create a fax, and Nusimow
teaches using templates to create a fax coversheet.
Appellant has not persuasively argued why applying Nusimow's
coversheet templates to be used at Vendrow's mobile device utilizing fax
templates does not teach the claimed "creating a facsimile coversheet by
placing portions of said facsimile information into a facsimile coversheet
template, using said portable computing device."
Accordingly, we sustain the Examiner's rejection of claims 3, 10, and
17, as well as claims 4, 11, and 18, not separately argued. See App. Br. 17-
18.
DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 1, 3-5, 7, 8, 10-12, 14, 15, and 17-19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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