Ex Parte 5764899 et al

Patent Trial and Appeal Board

Sep 17, 2012

90010890 (P.T.A.B. Sep. 17, 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.
90/010,890 03/07/2010 5764899 357592US91RX 6176
22850 7590 09/17/2012
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/17/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex Parte MOTOROLA MOBILITY, INC.
Patent Owner
____________

Appeal 2012-008999
Reexamination Control No. 90/010,890
Patent 5,764,899
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and THOMAS
L. GIANNETTI, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

DECISION
Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from the
Examiner’s rejection of claim 4 of United States Patent 5,764,899. We
have jurisdiction under 35 U.S.C. §§ 6, 134, and 306.
We heard oral arguments on September 5, 2012, a transcript of which
will be made part of the record.
We affirm.

Appeal 2012-008999
Reexamination Control No. 90/010,890
Patent 5,764,899

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STATEMENT OF THE CASE

This proceeding arose from a third party request for ex parte re-
examination of United States Patent 5,764,899 (the ʾ899 patent), entitled
“Method and Apparatus for Communicating an Optimized Reply.” The ʾ899
patent issued to Gene Eggleston, Mitch Hansen, and Anthony Rzany, on
June 9, 1998.

The ʾ899 Patent Invention

As described in the patent, when sending a reply, a remote
communication unit’s controller generates a delta between the preceding
message and a reply message, and forms an optimized reply using the delta
and an identifier of the preceding message. On receiving the optimized
reply, the communication server uses the data unit identifier to retrieve the
preceding message from a further server (e.g., the post office mailbox of the
user associated with the remote unit), and reconstructs the full reply from the
retrieved message and the delta. The server then forwards the full reply to
the addressee. When receiving a reply a preceding message forming part of
the reply is identified and an optimized reply is formed and sent to the
remote unit. ʾ899 Patent Abstract.

The Rejection
This appeal involves a single claim:
4. A method for communicating reply data between a
communication unit and a communication server, comprising:

at the communication server:
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Appeal 2012-008999
Reexamination Control No. 90/010,890
Patent 5,764,899

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Morgan relates to the annotation of documents by co-workers in an
office environment. Morgan col. 1, ll. 13-44. The user of a personal
communicating computer (e.g., a portable wireless device) receives a
document (e.g., an electronic message) which the user annotates (e.g., adds a
responsive message) and then transmits only the annotation information (the
delta in step 1004) to the indicated destinations, along with an identifier of
the document that has been annotated. Id. ll. 58-61. Upon receipt, a stored
version of the identified document can then be coupled with the annotation
and viewed in its appropriate context. Id. ll. 62-64. By this provision,
transmission source requirements are minimized and bandwidth
requirements are reduced. Id. ll. 64-65; col. 8, ll. 21-27. See also column 9
of Morgan, describing Fig. 10 supra. From the discussion above it is
apparent that Morgan both recognizes the problem addressed by the ʾ899
patent (conserving bandwidth) and the proposed solution (transmitting delta
information) in connection with electronic communications between a client
and server.

Examiner’s Findings

The Examiner concisely summarizes the issues as: (1) whether Morgan
teaches an optimized reply; and (2) whether the reply is formed at a server.
Final Rej. 6. As to issue (1) the Examiner points to the delta information in
Morgan and the discussion of message identifiers in Morgan at col. 9, l.18 as
“comprising” the optimized reply. Final Rej. 6. As to issue (2), the
formation of the optimized reply, the Examiner points to the discussion in
Appeal 2012-008999
Reexamination Control No. 90/010,890
Patent 5,764,899

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Morgan of the server constructing an annotated version of the original
document. Final Rej. 7. Morgan states that the server receiving the delta
information “will readily construct an annotated (or edited) version of the
original document and forward it on to the intended recipient.” Col. 9, ll.
22-25. According to the Examiner, “In other words, once the server receives
all the defined components that make up an optimized reply, it will construct
the optimized reply and forward that [optimized] reply to the desired user.”
Final Rej. 7.

Appellant’s Contentions/Examiner’s Response

Appellant contends that the Examiner’s interpretation of the claim is
incorrect and the anticipation rejection is erroneous for several reasons:

1. The Examiner ignores the teachings of the ʾ899 patent’s
specification, specifically, the requirement “that the claimed optimized reply
be formed to reduce data volume relative to that which would be sent
otherwise.” App. Br. 5 (emphasis original). The Examiner however states
that the Appellant’s bandwidth consumption argument is “moot” (i.e.,
irrelevant) as it is not recited in the claim. Final Rej. 8. The Examiner also
states that bandwidth consumption depends on message content and not just
the function of the invention. Id. Thus bandwidth is not a “meaningful
basis” for distinguishing claim 4 from the prior art. Id.

Appeal 2012-008999
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Patent 5,764,899

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2. The Examiner’s definition would “embrace the very prior art
communication system the ʾ899 Patent was designed to improve.” App. Br.
5. The Examiner responds that there is no exclusion of “new user content” in
the claim language. Ans. 7. The Examiner specifically points to the
“comprising” language in claim 4 as indicating that other elements may be
added to the stated elements and still form a combination within the scope of
the claim. Id. at 7-8. And the Examiner states that “optimized reply” is not
a term of degree but one of structure. Id. at 8.

3. Appellant points to the disclosure in Morgan that the receiving
server “will readily construct an annotated (or edited) version of the original
document and forward it on to the intended recipient.” App. Br. 7 (emphasis
omitted). This, according to Appellant, does not meet the limitation of the
server “forming an optimized reply comprising the first data unit identifier
and the delta.” Id. Appellant contends that formation of an optimized reply
requires reducing data transmission volume with respect to the reply that
would otherwise be sent. Id. The Examiner however responds that this is
not a proper construction, in that the ʾ899 patent allows for the possibility
that the so-called “optimized” reply might be larger (and thus consume more
bandwidth) than the original reply. Ans. 11-12. See ʾ899 patent, col. 11,
l.61 - col. 12, l.8. The Examiner responds also that even if bandwidth
reduction were required the transmission of delta information in Morgan
would still teach an optimized reply. Ans. 12.

Appeal 2012-008999
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Patent 5,764,899

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4. The Nettleton Rule 132 declaration, after reviewing Morgan,
concludes that “Morgan does not describe a server forming an optimized
reply comprising the first data unit identifier and delta; and sending the
optimized reply to the communication unit as recited in claim 4.” Nettleton
Dec. ¶18 (emphasis original). The basis for this is Nettleton’s contention
that “the Morgan server never sends an optimized reply as claimed.” Id.
(emphasis omitted). The Examiner however finds that Nettleton’s assertions
are not necessarily correct. Final Rej. 8. Among other reasons the Examiner
states that the definition of “optimized reply” in the claims and specification
is not constrained by bandwidth usage. Id. at 8-9.

ANALYSIS

We see no error either in the Examiner’s findings that each step of
claim 4 is present in Morgan or in the Examiner’s point by point rebuttal of
Applicant’s contentions as set forth supra. In particular, we see no error in
the Examiner’s finding that in Morgan, an “optimized reply” “comprising”
a first unit (i.e. message) identifier and a delta is “formed” when the server
constructs the annotated or edited version of the original document and
forwards it. Final Rej. 7. As determined by the Examiner: “In other words,
once the server receives all the defined components that make up an
optimized reply, it will construct the optimized reply and forward that reply
to the desired user.” Id.
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Patent 5,764,899

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The term “comprising” appears twice in the claim, including in
subparagraph (iii) defining “optimized reply.” There can be no doubt from
this context that an open-ended definition of that term was intended.
At oral argument Appellant’s counsel asserted that under the broadest
reasonable interpretation standard the claim should not be construed to
encompass the prior art. Appellant has cited no persuasive authority for this
application of the doctrine. The case relied on (App. Br. 5) for this
proposition, SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
242 F.3d 1337 (Fed Cir. 2001), is inapposite. Apart from dealing with
issues of patent infringement, not invalidity, the case arose from district
court litigation where the broadest reasonable interpretation doctrine does
not apply. “[T]he Board does not engage in the same claim construction
process during patent prosecution as a district court would in an
infringement suit.” In re Buszard, 504 F.3d 1364, 1368 (Fed. Cir. 2007)
(Prost, J., dissenting). More pertinent to this appeal is In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow
meaning, the PTO should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the broader
definition.”). We agree with the Examiner therefore that claim 4 properly
construed is indisputably open-ended and sufficiently broad to read on
Morgan.
Nor are we persuaded by Appellant’s reliance on an intended use of
the invention (bandwidth reduction) that is neither recited nor reflected in
the structural limitations of the claim. We further agree with the Examiner’s
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Patent 5,764,899

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finding that what Appellant points to as the “optimized reply” may not be
optimal at all in conserving bandwidth. See Ans. 9-10.
With regard to the Nettleton declaration we agree with the Examiner
that it reflects Appellant’s construction of the claim and other arguments and
is therefore unpersuasive for the reasons set forth above. See Final Rej. 9.
For the at least foregoing reasons we are not persuaded of any error in
the Examiner’s claim interpretation and we conclude that there is ample
record support for the Examiner’s finding of anticipation of claim 4 by
Morgan.

CONCLUSION

The rejection of claim 4 under 35 U.S.C. § 102(b) is affirmed.
Requests for extensions of time in this ex parte reexamination proceeding
are governed by 37 C.F.R. § 1.550(c).

AFFIRMED

Appeal 2012-008999
Reexamination Control No. 90/010,890
Patent 5,764,899

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PATENT OWNER:
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314

THIRD PARTY REQUESTER:
WILMER CUTLER PICKERING HALE & DORR LLP
399 PARK AVENUE
NEW YORK, NY 10022