Oxy Systems, Inc.

Patent Trials and Appeals Board

Nov 6, 2020

14714629 - (D) (P.T.A.B. Nov. 6, 2020)

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.
14/714,629 05/18/2015 Lawrence A. Denenberg OXY.1001C1 1345
144359 7590 11/06/2020
Blueshift IP LLC
1 Broadway, 14th Floor
Cambridge, MA 02142
EXAMINER
HARRELL, ROBERT B
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
11/06/2020 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):
docketing@blueshiftip.com
eofficeaction@appcoll.com
mail@blueshiftip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LAWRENCE A. DENENBERG, HARRY C. FORSDICK,
MICHAEL A. KRASNER, GRAEME W. SMITH, GRANT GOULD,
MARC J. NEUBERGER, and MARC D. TANNER
____________

Appeal 2019-005622
Application 14/714,629
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JAMES B. ARPIN, and
NABEEL U. KHAN, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 0F1 appeals from the
Examiner’s decision to reject claims 1, 7, 8, 12, 18, 19, 35, 36, 38, 39, and
41–70. See Claims Appendix. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Oxy Systems,
Inc. Appeal Br. 1.
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The present invention relates generally to a cellular telephone storing
first personal data and transmitting the data to a personal server. See Spec.,
Abstract.
Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A method performed by at least one computer processor
executing computer program instructions stored on at least one non-
transitory computer-readable medium, the method comprising:
(A) creating first personal data on a cellular telephone, the
first personal data comprising audio data;
(B) storing the first personal data in a first file in persistent
storage on the cellular telephone; and
(C) transmitting, via a first wide area network connection
over a network, the network including a cellular telephone network,
the first personal data from the cellular telephone to a server.

Appellant appeals the following rejection: 1F2
Claims 1, 7, 8, 12, 18, 19, 35, 36, 38, 39, and 41–70 are rejected under
35 U.S.C. § 102(e) as being anticipated by McZeal (US 6,763,226 B1, July
13, 2004). Final Act. 78–97.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

2 The Examiner vacated the rejection of claims 1, 7, 8, 12, 18, 19, 35, 36, 38,
39, and 41–70 under 35 U.S.C. § 101. See Ans. 3.
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ANALYSIS
Rejection under § 102(e)
Claims 1, 7, 8, 12, 18, 19, 35, 36, 38, 39, and 41–56
Claim 1 recites, inter alia, creating first personal data on a cellular
telephone. See claim 1. Appellant contends that “the pending claims recite
a method which includes steps performed by a cellular telephone, and
McZeal does not disclose a cellular telephone[,] [i]nstead, McZeal discloses
a [multi-function] computer.” Appeal Br. 33. Appellant further contends
that “[t]he ability of McZeal’s computer to perform such limited forms of
cellular communication do not qualify his computer as a cellular telephone.”
Appeal Br. 34. We disagree with Appellant.
McZeal explicitly discloses “the device also functions as a regular
cellular telephone . . . and calls may be placed from anywhere on earth using
the internet or a private voice/data network.” McZeal 27:44–47. In
addition, McZeal discloses that “[a]nother primary objective of this
invention is to provide a world standard for digital cellular communications
using . . . Personal Communication Services (PCS) that uses a digital cellular
network.” McZeal 18:1–7; see In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(“it is proper to take into account not only specific teachings of the reference
but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom”).
Further, Appellant admits that “making voice calls over a cellular
telephone network, [] is an essential capability of a cellular telephone”
(Appeal Br. 36), and that McZeal discloses that “McZeal’s computer
includes some functions in common with a conventional cellular telephone,
namely the placing of voice telephone calls.” Id. at 37. In other words,
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Appellant concedes that McZeal’s computer acts as a limited function
cellular telephone, i.e., at least capable of making voice calls over a cellular
network. For at least these reasons, we find that McZeal’s computer teaches
a “cellular telephone” as claimed.
Moreover, even if McZeal’s computer is limited to “performing some
conventional functions performed by a cellular telephone,” as argued by
Appellant (see Appeal Br. 37), Appellant has not shown that the claimed
cellular telephone is distinguishable from McZeal’s computer that acts as a
cellular telephone. For instance, Appellant’s Specification does not define
all the required functions of the claimed cellular telephone, as such
Appellant has not distinguished the claimed cellular telephone from
McZeal’s computer, i.e., the World-Wide-Walkie-Talkie. Here, we find that
the broadest reasonable interpretation of a “cellular telephone,” which is
consistent with Appellant’s above noted admissions, would encompass
McZeal’s computer.
Appellant also contends that “the Examiner’s rejection impermissibly
uses knowledge of today’s smartphones . . . with the benefit of hindsight to
interpret McZeal’s walkie-talkie as an improved cellular telephone.” Appeal
Br. 38. Again, we disagree with Appellant. Instead of hindsight, the
Examiner finds, as noted above, an explicit teaching in McZeal of a device
where calls may be placed from anywhere on earth using the internet or a
private voice/data network. As such, we agree with the Examiner that
“McZeal’s mobile device is a cellular telephone and more.” Ans. 6.
Appellant further contends that McZeal’s device does not perform the
function of “transmitting first personal data from a cellular telephone to a
server over a network via a wide area network connection, the network
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including a cellular telephone network.” Appeal Br. 39. Specifically,
Appellant highlights that “McZeal does not, therefore, disclose transmitting
a file over a cellular telephone network to a server, as expressly required
by claim 1.” Id. We disagree with Appellant.
First, as noted above, McZeal discloses using a cellular network.
McZeal 18:1–7. Second, Appellant concedes that McZeal discloses creating
a file, i.e., “an end-user is able to compose and store the digital information.”
Appeal Br. 40. Specifically, McZeal discloses “the end-user would be
allowed to compose a digital recording 510 and to save this recording to a
special compressed file type to be subsequently emailed or forwarded by a
gateway to any computer, telephone, email address on the internet or the
telephone network.” McZeal 39:23–30. In other words, McZeal clearly
discloses composing, saving, and transmitting, e.g., via email, a digital file
to any computer and/or telephone via a telephone network.
McZeal also discloses that “file” can be video, audio, and image data.
See McZeal 40:13–32; 59:36–39. Appellant fails to persuasively distinguish
McZeal’s device (which in part acts as a cellular telephone) which can
transmit a digital file to any computer (which can be an email server) from
the claimed transmitting step. Appellant’s Specification similarly states that
“the server 104 is an email server, the mobile device 102 may send and
receive email through the server 104.” Spec. 3:1–3. As such, the claimed
server can be the email server disclosed in McZeal.
Thus, we find unavailing Appellant’s contention that McZeal fails to
disclose “transmitting a file over a cellular telephone network to a server,”
given the aforementioned disclosures in McZeal. Accordingly, we sustain
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the Examiner’s rejection of claims 1, 7, 8, 12, 18, 19, 35, 36, 38, 39, and 41–
56.
Claims 57–62 and 64–69
Regarding independent claim 57, in addition to the arguments supra,
Appellant further contends that “McZeal does not teach transmitting the first
personal data at backup software executing on the cellular telephone”
(Appeal Br. 52–53), and “McZeal’s mere disclosure of synchronization and
of the use of Windows CE™ does not disclose the use of backup software.”
Id. at 53. We disagree with Appellant.
As noted by the Examiner, “[A]ppellant’s claims do not recite the
detail of the backup function” (Ans. 12), and McZeal discloses “Windows
CE™ . . . [and the] [E]xaminer made of record NEC MobilePro™ 780
User’s Guide . . . [to show] the functionality of WindowsCE™.” Id.
Stated differently, the Examiner finds that the claimed “backup
software” is not defined in Appellant’s claims and Appellant’s Specification
merely notes that “backup software executing on the mobile device 202 may
transmit some or all of the data stored on the mobile device 202 for backup
storage in the personal data 213.” Spec. ¶ 55. As such, the Examiner finds,
and we agree, that the claimed “backup software” reads on McZeal’s
disclosed WindowsCE™ which, as according to the Examiner’s undisputed
evidence, i.e., NEC MobilePro™ 780 User’s Guide, includes a backup
utility. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(“[T]he absence of specific findings on the level of skill in the art does not
give rise to reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (quoting Litton Indus. Prods.,
Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985).
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Appellant contends that Windows CE™ included Microsoft
ActiveSync is “not general backup software” and “NEC MobilePro 780 . . .
is a laptop PC, not a cellular telephone.” See Appeal Br. 54. We point out
that representative claim 57 is not limited to “general backup software” but
rather any backup software, and the Examiner is not relying on NEC
MobilePro 780 to teach a cellular telephone, but rather McZeal.
Appellant offers a dictionary definition for the claimed “backup
software.” See Appeal Br. 53–54. However, our reviewing court guides that
extrinsic evidence is unlikely to result in a reliable interpretation of patent
claim scope unless considered in the context of the intrinsic evidence.
Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc). The
court in Phillips guided that “different dictionaries may contain somewhat
different sets of definitions for the same words. A claim should not rise or
fall based upon the preferences of a particular dictionary editor, or the
court’s independent decision, uninformed by the specification, to rely on one
dictionary rather than another.” Id. at 1322. The court in Phillips reaffirmed
its view that the specification “is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.” Id. at 1315 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). As noted above,
Appellant’s Specification merely indicates that the backup software “may
transmit some or all of the data stored on the mobile device 202 for backup
storage in the personal data 214.” See Spec. ¶ 55. No other requirements
are disclosed for the claimed backup software. As such, we find unavailing
Appellant’s aforementioned contentions.
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Accordingly, we sustain the Examiner’s rejection of claims 1, 7, 8, 12,
18, 19, 35, 36, 38, 39, 41–62, and 64–69.
Claims 63 and 70
Appellant contends that “McZeal does not teach determining whether
the first personal data satisfies predetermined criteria . . . and cannot find
any reference in [McZeal] . . . to determining whether the first personal data
satisfy predetermined criteria.” Appeal Br. 56. We agree with Appellant.
Here, the Examiner starts by citing to McZeal’s column 3, lines 21–35
(see Non-Final Act. 88), then cites McZeal’s column 23, lines 31–35 (see
Ans. 13) to disclose this feature. We agree with Appellant that these
portions of McZeal fail to clearly anticipate the claimed “determining
whether the first personal data satisfy predetermined criteria.” See claim 63.
For example, at column 23, McZeal merely discloses a “process of
activating a new unit for use on the data network which once registered
becomes a known device . . . that enables the device to be authorized to . . .
utilize the special services.” McZeal 23:29–35. However, McZeal’s
“authorizing a device” for use is distinguishable from the claimed
“determining whether the first personal data satisfy predetermined criteria.”
As such, we find that the Examiner errs in rejecting claim 63, and claim 70
for similar reasons.
Accordingly, we reverse the Examiner’s rejection of claims 63 and 70.
CONCLUSION
Appellant has demonstrated that the Examiner errs in rejecting claims
63 and 70 as being anticipated under 35 U.S.C. § 102(e) by McZeal.
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However, Appellant has not demonstrated that the Examiner errs in
rejecting’s claims 1, 7, 8, 12, 18, 19, 35, 36, 38, 39, 41–62, and 64–69 as
being anticipated under 35 U.S.C. § 102(e) by McZeal.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 7, 8, 12, 18,
19, 35, 36, 38,
39, 41–62,
64–69

102(e) McZeal 1, 7, 8, 12,
18, 19, 35,
36, 38, 39,
41–62,
64–69

63, 70 102(e) McZeal 63, 70
Overall
Outcome
1, 7, 8, 12,
18, 19, 35,
36, 38, 39,
41–62,
64–69

63, 70
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART