Ex Parte 6,735,614 et al

Patent Trials and Appeals Board

Sep 11, 2013

95000631 - (R) (P.T.A.B. Sep. 11, 2013)

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.
95/000,631 05/03/2011 6,735,614 S057-P11333 9591
33356 7590 01/14/2015
SoCAL IP LAW GROUP LLP
310 N. WESTLAKE BLVD. STE 120
WESTLAKE VILLAGE, CA 91362
EXAMINER
HENEGHAN, MATTHEW E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/14/2015 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
____________

RESEARCH IN MOTION LIMITED,
Third Party Requester,

v.

SIMPLEAIR, INC.,
Patent Owner and Appellant.
____________

Appeal 2013-008777
Reexamination Control 95/000,631
Patent 6,735,614 B1
Technology Center 3900
____________

Before KEVIN F. TURNER, STANLEY M. WEINBERG,
and DAVID C. MCKONE, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Patent Owner SimpleAir, Inc. (“Appellant”), pursuant to 37 C.F.R.
§ 41.79(a)(1), has submitted a Request for Rehearing (“Req. Reh’g.”),
requesting rehearing of our original decision (“Dec.”) affirming the
Examiner’s decision to reject claims 1–6 and 10–12 of U.S. Patent No.
6,735,614 B1 (“the ’614 patent”). The Decision affirmed an obviousness
rejection of claims 1–6 and 10–12 over Jonsson (WO 93/16564, published
Aug. 19, 1993) and Foladare (US 6,343,115 B1, issued Jan. 29, 2002, filed
Feb. 13, 1996). Dec. 8–18.
After consideration of Appellant’s comments in the Request, we find
no errors in our prior Decision. We therefore decline to change our prior
decision for the following reasons.

ANALYSIS
In the Right of Appeal Notice (“RAN”), the Examiner adopted the
reasons given in the Inter Partes Reexamination Request (“Reexam. Req.”)
for rejecting claims 1–6 and 10–12 over Jonsson and Foladare. RAN 6–7
(citing Reexam. Req. 50–60). The Reexamination Request, in turn,
identified in Jonsson a “paging central” on which a user could register and
argued that it corresponded to “providing an address service connected to the
first communication network on which a user may register . . . an associated
address on a second communication network,” as recited in claim 1.
Reexam. Req. 50–51 (citing Jonsson, 19:27–36). The Reexamination
Request acknowledged that Jonsson did not explicitly disclose registering a
“name.” Id. at 51. Rather, the Reexamination Request argued that Foladare
described registering a subscriber name and contended that a skilled artisan
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would have predictably applied Foladare’s teaching to Jonsson, resulting in
claim 1. Id. In our Decision, we agreed with the Examiner and the
Reexamination Request. Dec. 9, 12–13.
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked in rendering the
Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Appellant
points to two instances in which it alleges we erred. First, Appellant argues
that we misapprehended the proper scope of the claims by giving an
improper construction to the term “address service,” as recited in claim 1.
Req. Reh’g. 1–3. Second, Appellant argues that we misapprehended the
teachings of the prior art by concluding that a person of ordinary skill in the
art would have had reason to combine Jonsson and Foladare. Id. at 3–4.
Neither of these arguments is persuasive.

Construction of “address service”
In its Rebuttal Brief, Appellant argued that the paging central
described in Jonsson actually would have been implemented such that
humans would have performed key parts of Jonsson’s alerting service in a
manual process. Reb. Br. 5–6. Appellant argued that, today, such a method
would be performed automatically, but that “[b]ack then, it was new.” Id.
Appellant continued that “one of ordinary skill in the art would see
Jonsson’s human-based system and understand that employees of the
alerting service enter subscriber data into the database – not the users.”
Id. at 7. Appellant, however, did not tie this argument to the language of
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claim 1 or otherwise explain how this purported aspect of Jonsson
distinguished Jonsson from claim 1.
Nevertheless, we considered Appellant’s argument and concluded that
claim 1 recited “providing an address service connected to the first
communications network” broadly, without limiting the address service to
particular structure. Dec. 12. Specifically, we concluded that the claim
language did not limit an address service to automatic software agents to the
exclusion of human agents collecting information and entering it into a
database. Id.
In the Request for Rehearing, Appellant now contends that “address
service” should be limited to “software in a computer system,” arguing that
passages from the specification of the ’614 patent make this clear. Req.
Reh’g. 1–3. Appellant did not make this argument in the Appeal Brief or the
Rebuttal Brief. Accordingly, we could not have misapprehended it. See 37
C.F.R. § 41.79(b)(1) (“Arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs are not permitted in the
request for rehearing,” except in circumstances not present here.).
Moreover, even if we consider Appellant’s argument, we are not
persuaded that “address service” should be restricted to software in a
computer system to the exclusion of human actors. In construing claims of
an unexpired patent in reexamination, we give claims their broadest
reasonable interpretation consistent with the specification. See In re Am.
Academy of Science Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Appellant points to examples in which the address service is described
variously as hosted on a computer, “on line,” part of an “information
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provider,” and as a website having hyperlinks. Req. Reh’g. 2–3 (citing ’614
patent, Abstract, 2:3–11, 3:1–7, 4:26–32). According to Appellant, “these
excerpts clearly define to one of ordinary skill in the art that the ‘address
service’ is software on a computer system.” Req. Reh’g. 3.
We disagree. None of the passages cited by Appellant constitutes a
definition of “address service.” Nor do they expressly or implicitly disavow
address services that include human components. Rather, they are examples
to which we will not limit the claim language. See Am. Academy, 367 F.3d
at 1369 (“We have cautioned against reading limitations into a claim from
the preferred embodiment described in the specification, even if it is the only
embodiment described, absent clear disclaimer in the specification.”).
Under a broadest reasonable interpretation, an address service, as recited in
claim 1, is not limited to software on a computer system and can include
human agents. Accordingly, Appellant has not persuaded us that we
misapprehended the construction of “address service.”

Reason to Combine Jonsson and Foladare
In the Decision, we concluded that a skilled artisan would have had
reason to combine Jonsson’s teaching of an address service in which users
are registered with Foladare’s teaching of organizing a database of user
information by user name. Dec. 9. Specifically, we agreed with the
Examiner that “an address service . . . on which a user may register a name
and an associated address,” as recited in claim 1, would have been a
predictable result of a combination of those features and would have made a
caller’s designation of a subscriber easier and more accurate. Id.
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Appellant argues that our reasoning was hindsight-driven,
“improperly substituted [our] own conjecture about predictability with the
legal requirement for motivation,” and “conflate[d] predictability with
motivation.” Req. Reh’g. 4. According to Appellant, “if this were obvious,
one must wonder why Jonsson does not disclose it.” Id.
We are not persuaded by Appellant’s argument. In KSR International
Co. v. Teleflex, Inc., 550 U.S. 398, 407 (2007), the Supreme Court rejected
the notion that a claim is obvious only after a showing of a motivation or
suggestion to combine the prior art teachings in the prior art itself, the nature
of the problem, or the knowledge of a person of ordinary skill in the art.
Instead, “any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” Id. at 420. Specifically, “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416;
accord id. at 417 (“When a work is available in one field of endeavor,
design incentives and other market forces can prompt variations of it, either
in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.”).
In this case, we agreed with the Examiner that combining the familiar
elements of Jonsson and Foladare would have yielded predictable results,
and, thus, would have been obvious. Dec. 9. We did not conflate
motivation and predictability. Rather, predictability was a reason a skilled
artisan would have combined Jonsson and Foladare. Improving Jonsson by
making a caller’s designation of a subscriber easier and more accurate was
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another. Id. We are still of the view that the Examiner stated multiple
reasons, with rational underpinning, for combining Jonsson and Foladare.
See In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
Accordingly, Appellant has not persuaded us that we misapprehended
the teachings of Jonsson and Foladare.

CONCLUSION
We have considered the arguments raised by Appellants in the
Request, but the arguments do not persuade us that the original Decision was
in error. Based on the record before us now and in the original appeal, we
are still of the view that the Examiner did not err in rejecting claims 1–6 and
10–12 under § 103. Accordingly, we deny the Request for Rehearing.

REHEARING DENIED
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office.
See 37 C.F.R. §§ 90.1 and 1.983.

peb

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For PATENT OWNER:

SOCAL IP LAW GROUP LLP
310 N. Westlake Blvd. Ste 120
Westlake Village, CA 91362

For THIRD PARTY REQUESTOR:

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P
1940 Duke Street
Alexandria, VA 22314