Ex Parte 7224779 et al

Patent Trial and Appeal Board

Apr 8, 2014

95001898 (P.T.A.B. Apr. 8, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,898 02/16/2012 7224779 3566.008USX 6455
30827 7590 04/09/2014
MCKENNA LONG & ALDRIDGE LLP
1900 K STREET, NW
WASHINGTON, DC 20006
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/09/2014 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
____________

SKYPE TECHNOLOGIES, SA and SKYPE, INC.
Requester

v.

EIDOS COMMUNICATIONS, LLC
Patent Owner
____________

Appeal 2014-000121
Reexamination Control 95/001,898
Patent 7,224,779 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, STEPHEN C. SIU, and STANLEY M.
WEINBERG, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
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Reexamination Control 95/001,898
Patent 7,224,779 B2

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Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
rejections of claims 1, 2, and 5-12. Claims 3, 4, and 13-75 are not subject to
reexamination. RAN 1. We have jurisdiction under 35 U.S.C. §§ 134 and
315. An Oral Hearing was conducted on January 29, 2014. A transcript of
the hearing will be made of record in due course.

STATEMENT OF THE CASE
This proceeding arose from a request by Skype Technologies, SA and
Skype, Inc. (“Requester”) for an inter partes reexamination of U.S. Patent
7,224,779 B2, titled “Telephonic Voice Message Transmission Control
Method” and issued to Paul F. Finnigan, on May 29, 2007 (the ’779 patent).
The ’779 patent describes a method of controlling transmission of
telephonic voice message data in telephonic voice message systems (col. 1,
ll. 22-23).
Claim 1 reads as follows:
1. A method of controlling digitized voice data in a
computer network, said method comprising the steps of:
acquiring an address for a recipient of the digitized voice data;
prior to transmitting the digitized voice data from an origination
address of the sender to the recipient, obtaining a recipient
transmission instruction over the computer network; and
processing the digitized voice data in accordance with the
recipient transmission instruction.

The cited references are as follows:

Theimer US 5,493,692 Feb. 20, 1996
Harkins US 5,513,126 Apr. 30, 1996
Pepe US 5,742,905 Apr. 21, 1998
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Oberlander US 5,825,865 Oct. 20, 1998

Patent Owner appeals the Examiner’s rejections as follows:
Claims 1, 2, and 5-12 under 35 U.S.C. § 102(e) as anticipated by any
one of Pepe, Harkins, or Oberlander, and under 35 U.S.C. § 103(a) as
unpatentable over Theimer and one of Harkins or Pepe.
Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Harkins and
Pepe.

ISSUE

Did the Examiner err in rejecting claims 1, 2, and 5-12?

PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Pepe Reference

Patent Owner contends that Pepe “does not disclose each and every
element as set forth in claim 1” (PO App. Br. 14). In particular, Patent
Owner argues that “the receipt and delivery options in Pepe are not obtained
‘prior to transmitting,’ and thereafter temporarily stored at the origination
address or any other address associated with the sender” (PO App. Br. 14).
Claim 1 recites “prior to transmitting the digitized voice data from an
origination address of the sender to the recipient, obtaining a recipient
transmission instruction over the computer network.”
Pepe discloses, for example, “message routing and delivery
instructions” received over a network from a subscriber that are “stored in a
‘subscriber profile’” (in a database) and that the instructions “control[] the
delivery of outgoing messages and the routing of incoming messages and
message notifications” (col. 6, ll. 22-27). We agree with the Examiner that
Pepe discloses obtaining a recipient transmission instruction over a computer
network, as recited in claim 1. Patent Owner has not indicated sufficient
differences between receiving (and storing in a database) message routing
and delivery instructions over a network as disclosed by Pepe and obtaining
a recipient transmission instruction over a computer network as recited in
claim 1.
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Patent Owner argues that “the receipt and delivery options in Pepe are
not obtained ‘prior to transmitting,’” because “the PCI [of Pepe] controls the
transmission of message data received from an ‘origination address’ that has
already been transmitted by a sender (PO App. Br. 14). We cannot agree
with Patent Owner that Pepe fails to disclose obtaining a transmission
instruction prior to transmitting voice data from an address of the sender to
the recipient, as recited in claim 1. Notably, the recipient in Pepe has not yet
received the voice data (i.e., the voice data is not yet transmitted to the
recipient) at the time the PCI server of Pepe obtains a transmission
instruction. Therefore, actions taking place at the PCI server of Pepe, such
as obtaining a transmission instruction, occur “prior to” transmitting data
from the sender to the recipient (the recipient not having yet received the
transmission of data).
Patent Owner argues that Pepe discloses “that the message data
received at the PCI has already been forwarded from another system or
network” (PO App. Br. 14) and therefore Pepe fails to disclose prior to
transmitting the digitized voice data from an origination address of the
sender to the recipient, obtaining a recipient transmission instruction over
the computer network, as recited in claim 1. Claim 1 does not require
obtaining transmission instructions prior to message data being forwarded
from another system or network. Rather, claim 1 merely recites “prior to
transmitting . . . voice data from an origination address of the sender to the
recipient, obtaining . . . [an] instruction over the computer network.” As
noted above and as explained by the Examiner, Pepe discloses this feature.
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Patent Owner also argues that the “message data arriving at the PCI”
of Pepe “is not the ‘initial’ transmission of the message data, as required by
claim 1” (PO App. Br. 15). Claim 1 does not recite “initial transmission.”
Therefore, we are not persuaded by Patent Owner’s argument that Pepe fails
to disclose the features of claim 1, even assuming Patent Owner’s contention
to be correct that Pepe, in fact, fails to disclose an “initial transmission” of
message data.
Patent Owner argues that “the sender in Pepe” is not a “part of or
associated with the PCI [of Pepe]” (PO App. Br. 15). Thus, Patent Owner
appears to argue that claim 1 requires the sender to be a “part of or
associated with” a specific entity corresponding to the PCI server of Pepe.
As previously described, claim 1 recites obtaining a recipient transmission
instruction over the computer network prior to transmitting voice data from a
sender to a recipient. We agree that claim 1 recites transmitting voice data
from a sender to a recipient. However, we do not agree with Patent Owner
that claim 1 also recites that the sender is “part of or associated with” any
specific entity corresponding to the PCI server of Pepe. Indeed, claim 1
does not require the sender to be “part of or associated with” any particular
component.
In any event, even assuming that claim 1 requires obtaining
transmission instructions prior to transmitting data from a sender to a
component corresponding to the PCI server of Pepe (as Patent Owner
appears to contend), we note that Pepe discloses that the “PCI database 44
maintains the subscriber profile” (col. 11, ll. 56-57), and that the subscriber
profile stores the “message routing and delivery instructions” provided over
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a network by a subscriber (col. 6, ll. 22-23). The “message routing and
delivery instructions” of Pepe are received “prior to transmitting” voice data
from an origination address of a sender to the recipient (and also prior to
transmitting data from a sender to the PCI server of Pepe) because,
according to Pepe, “when a CallCommand call arrives [from a sender] at the
PCI server 48 [which stores the instructions in a database],” a message is
sent “to the PCI database 44 [within which is stored the message routing and
delivery instructions] to determine how to handle the call” (col. 11, ll. 4-5).
If the instructions are already available in the “PCI database 44” (i.e., stored,
and therefore “obtained” prior to data being transmitted) to “determine how
to handle the call,” then the instructions already have been “obtained.” If the
instructions had not been obtained already “prior to” the PCI server
receiving the call in Pepe, then the “PCI server 48” would be unable to
“determine how to handle the call” (because the instructions would not be
stored in the database – not having already been “obtained”). This would be
contrary to the explicit teaching of Pepe that a determination is made (based
on the previously stored message routing and delivery instructions) “how to
handle the call.”
Patent Owner does not provide additional arguments in support of
claims 1, 2, and 5-12 with respect to the Pepe reference.
Affirmance of the anticipation rejection for the above-referenced
claims based on Pepe renders it unnecessary to reach the propriety of the
Examiner’s decision to reject those claims on a different basis. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach
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the propriety of the rejection of those claims over Harkins, Oberlander,
and/or Theimer.

CONCLUSION
The Examiner did not err in rejecting claims 1, 2, and 5-12.
DECISION
We affirm the Examiner’s decision to reject claims 1, 2, and 5-12
under 35 U.S.C. § 102(e) as anticipated by Pepe.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, 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.

AFFIRMED

Appeal 2014-000121
Reexamination Control 95/001,898
Patent 7,224,779 B2

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FOR PATENT OWNER:
McKenna Long & Aldridge LLP
1900 K Street, NW
Washington, DC 20006

FOR THIRD-PARTY REQUESTER:
Schwegman, Lundberg & Woessner/Reexams
PO Box 2938
Minneapolis, MN 55402

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