Ex Parte . et al

Patent Trial and Appeal Board

Sep 17, 2014

95001958 (P.T.A.B. Sep. 17, 2014)

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.
95/001,958 04/04/2012 7221387 . Fern-R387 5145
74162 7590 09/18/2014
Law Office of Scott C Harris Inc
PO Box 1389
Rancho Santa Fe, CA 92067
EXAMINER
HOTALING, JOHN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/18/2014 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
____________

CISCO SYSTEMS, INC.
Requester and Respondent

v.

DENNIS S. FERNANDEZ
Patent Owner and Appellant

____________

Appeal 2014-006377
Reexamination Control 95/001,958
Patent 7,221,387 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2014-006377
Reexamination Control 95/001,958
Patent 7,221,387 B2

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BACKGROUND
Third Party Requester, Cisco Systems, Inc. (“Requester”) filed a
Request for Inter Partes Reexamination (“Request”) on April 4, 2012 of
United States Patent 7,221,387 B2 (hereinafter the “’387 patent”).1 The ’387
patent includes claims 1–78. The Examiner rejected claims 1–3, 5–10, 12–
19, 21–26, 28–34, 36–41, 43–47, 69, 70, and 74–77. Claims 4, 11, 20, 27,
35, 42, 48–68, 71–73, and 78 are not subject to reexamination.
Patent Owner, Dennis S. Fernandez (“Patent Owner”), appeals under
35 U.S.C. §§ 134 and 315 the Examiner’s decision to reject claims 1–3, 5–
10, 12–19, 21–26, 28–34, 36–41, 43–47, 69, 70, and 74–77. PO App. Br.
13–25.
2

We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm the
Examiner’s decision to reject claims 1–3, 5–10, 12–19, 21–26, 28–34, 36–
41, 43–47, 69, 70, and 74–77.

RELATED PROCEEDINGS
We are informed of multiple proceedings related to this appeal. See
Request 1–2, PO App. Br. 4, and TPR Resp. Br. 1.

1
The ’387 patent issued to Fernandez et al., on May 22, 2007, from
Application 10/444,261, filed May 22, 2003.

2
Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed
July 12, 2013 (“RAN”); (2) Patent Owner’s Appeal Brief filed October 12,
2013 (“PO App. Br.”); (3) Requester’s Respondent Brief filed November 8,
2013 (“TPR Resp. Br.”); and (4) the Examiner’s Answer mailed March 5,
2014 (“Ans.”) (incorporating the RAN by reference).
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STATEMENT OF THE INVENTION
The ’387 patent describes overlaying a digital television transmission
with two-way communication among subscribers. See ’387 patent, Abstract.
Claim 1 is illustrative of the claimed subject matter:
1. Wireless mobile subscriber unit for real-time
collaborative communication comprising:
an embedded processor;
a user media interface; and
a mobile communication interface;
wherein the user media interface comprises a microphone
and a digital video or image camera for sending respectively a
first audio signal and a first image signal, and a speaker and a
display for receiving respectively a second audio signal and a
second image signal;
the first and second audio and image signals being
transmitted or received via wireless radio-frequency
communication through the mobile communication interface;
the embedded processor enabling two-way image or
audio communication for conferencing between multiple
subscriber units through the user media interface while
simultaneously, prior or after accessing a one-way broadcast or
transmission of a common program or data stream through the
mobile communication interface, wherein a controller centrally
manages combined one- and two-way services of conferencing
coupled with broadcast or transmission by authorizing or
restricting access to the program or data stream by one or more
subscriber units during, after or prior the conference, thereby
enabling collaborative access by a virtual audience to integrated
conferencing and broadcast or transmission services, wherein
the controller functionally overlays: (a) the common program or
data stream that is wirelessly accessed by a plurality of the
subscriber units, with (b) the conference authorized directly
between privately-restricted conferencing subscriber units.

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THE APPEALED REJECTIONS
The Examiner relies on the following references in rejecting claims 1–
3, 5–10, 12–19, 21–26, 28–34, 36–41, 43–47, 69, 70, and 74–77:
1. Ludwig (U.S. 5,617,539; issued Apr. 1, 1997).
2. Robinson (GB Application 2 313 251; Nov. 19, 1997).
3. “Databeam”
http://web.archive.org/web/19970726082242/http://w
ww.databeam.com/; July 26, 1997.
4. Molva (U.S. 5,347,580; issued Sept. 13, 1994).
5. Venkatraman (U.S.5,844,973; issued Dec. 1, 1998).
6. Gifford (U.S. 5,614,927; issued Mar. 25, 1997).
7. Kostreski (U.S. 5,635,979; issued June 3, 1997).
8. Cohen (U.S. 5,481,609; issued Jan. 2, 1996).
9. Kurt Maly et al. (“Maly”), INTERACTIVE DISTANCE
LEARNING OVER INTRANETS, IEEE Internet
Computing, January – February 1997.
10. Hussein Abdel-Wahab et al. (“Maly II”), The
SoftwareArchitecture and Interprocess
Communications of IRI: An Internet-Based Interactive
Distance Learning System, IEEE Proceedings of WET
ICE (1996).
11. Hogan (U.S. 5,657,246; issued Aug. 12, 1997).
12. Harrison (U.S. 5,694,163; issued Dec. 2,1997).
13. Picco (U.S. 6,029,045; issued Feb. 22, 2000).
14. Miller (U.S. 6,064,438; issued May 16, 2000).
15. Nuber (U.S. 5,844,615; issued Dec. 1, 1998).

Claims 1–3, 9, 10, 12, 13, 16–19, 25, 26, 28, 29, 32–34, 40, 41, 43,
44, 47, 69, 70, and 74–77 stand rejected under 35 U.S.C. § 103(a) as obvious
over Ludwig in view of Robinson. RAN 3.
Claims 5, 21, and 36 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ludwig, Robinson, and Databeam. Id.
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Claims 6, 22, and 37 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ludwig, Robinson, and Molva. Id.
Claims 7, 23, and 38 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ludwig, Robinson, and Gifford. Id.
Claims 8, 24, and 39 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ludwig, Robinson, and Venkatraman. Id.
Claims 14, 30, and 45 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ludwig, Robinson, and Kostreski. Id. at 4.
Claims 15, 31, and 46 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ludwig, Robinson, and Cohen. Id.
In addition to the foregoing rejections, the Examiner made additional
rejections of claims 1–3, 5–10, 12–19, 21–26, 28–34, 36–41, 43–47, 69, 70,
and 74–77 under 35 U.S.C. § 103(a) as obvious over various combinations
of the cited references. See RAN 4–6.
Patent Owner appeals the Examiner’s rejecting claims 1–3, 5–10, 12–
19, 21–26, 28–34, 36–41, 43–47, 69, 70, and 74–77 under 35 U.S.C.
§ 103(a) as obvious over Ludwig, Robinson, Databeam, Molva,
Venkatraman, Gifford, Kostreski, Cohen, Maly, Maly II, Hogan, Harrison,
Picco, Miller, and/or Nuber. PO App. Br. 13.

CONTENTIONS AND ANALYSIS
Patent Owner presents arguments under 52 separate headings.
3
PO
App. Br. 13–25. In argument 1, Patent Owner asserts “Ludwig fails to teach

3
We note Requester’s argument that Patent Owner’s brief is non-compliant.
TPR Resp. Br. 4. However, Owner does not cite to any authority indicating
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a controller that ‘centrally manages . . . by authorizing or restricting
access.’” Id. at 13. Whether Ludwig teaches or suggests the controller
limitations of claim 1 is dispositive of this appeal.
4

THE REJECTION OVER LUDWIG
Patent Owner argues the Examiner has misapplied Ludwig with
respect to claim 1’s “central controller” because in Ludwig, the function of
managing does not occur in one general module as required by the claim.
PO App. Br. 13. Patent Owner contends the ’387 patent teaches “centrally
manage” means “the function of managing occurs in one general module . . .
or [in] multiple functionally equivalent controllers, processors, servers or
computers, [that] all have controller functionality.” Id. Patent Owner also

that the Board has been delegated jurisdiction to grant the requested relief of
denying entry of the Brief into the record. To the contrary, the
determination that an appeal brief is improper is a petitionable matter. We
note for Owner’s convenience that in order for a petition to be proper, it
must be submitted as a separate document entitled “Petition,” addressed to
the appropriate authority, be filed timely, and include the associated petition
fee, where a petition fee is required.

4
Patent Owner argues various aspects of the “controller” limitation over
Ludwig, Robinson, Maly, Maly II, Harrison, and Hogan, respectively, in
arguments 1–6. PO App. Br. 13–20. Patent Owner’s arguments 7–52 (id. at
20–25), while presented under separate headings, do not present additional
arguments and/or do not present arguments with particularity. See 37 C.F.R.
41.67(c)(1)(vii) (“[a] statement which merely points out what a claim recites
will not be considered an argument for separate patentability.”). See also Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an
appellant fails to present arguments on a particular issue – or, more broadly,
on a particular rejection – the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.”).
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argues that Ludwig fails to teach “a controller that ‘centrally manages ... by
authorizing or restricting access.’” Id.
We disagree with Patent Owner that claim 1 requires the function of
the controller to be located in “one general module” or in “multiple
functionally equivalent controllers, processors, servers or computers, [that]
all have controller functionality.” PO App. Br. 13. We agree with
Requester that “the ’387 patent teaches that a controller 8 that centrally
manages is actually multiple processors, computers, or servers.” TPR Resp.
Br. 7 (citing Spec. 1:65–2:2 (“Controller 8, which is one or more processor,
server, computer or other functionally equivalent controller functionality
coupled to broadcast 6 and/or network 10 channel, may affect network 10
and broadcast 6 functionality as described herein.”)). Hence, the recited
controller that centrally manages can be properly understood to mean central
management through “one or more processor[s], server[s], computer[s] or
other functionally equivalent controller[s].” Spec. 1:65–2:2. We are thus
unpersuaded the independent claims of the ’387 patent require “the function
of managing occurs in one general module” or in “multiple functionally
equivalent controllers, processors, servers or computers, [that] all have
controller functionality.” PO App. Br. 13.
Further, even if the controller that centrally manages must be
construed as “one general module” or in “multiple functionally equivalent
controllers, processors, servers or computers, [that] all have controller
functionality” (id.), we are nevertheless unpersuaded of error. We agree
with Requester that “Ludwig’s MLAN server 60 by itself meets the
structural and functional limitations of the claimed controller.” TPR Resp.
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Br. at 6. Requester correctly points out that “the MLAN server 60 as a
central controller authorizes or restricts access when it verifies whether a
user is logged in, and restricts access to conferencing to only users who are
logged in.” Id. (citing Ludwig, 22:20-21; Fig. 23). Hence, Ludwig’s
MLAN server meets the controller that centrally manages recited in the
independent claims.
Further still, we agree with Requester that “to the extent that the
patentability of the claims turns on the distinction between one
server/computer or multiple servers/computers performing the functions
claimed . . . performing the claimed functions on a single central server
would have been obvious to one of ordinary skill at the time of the
invention.” TPR Resp. Br. 7. Applying a known technique to a known
device ready for improvement to yield predictable results does not render
patentable an otherwise unpatentable device. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”). We agree with
Requester that “combining [Ludwig’s] MLAN server functionality and
[]CMW 12 functionality into a single server that performs the authorization
functionality would enable an administrator to have local control of the
overall process, thereby providing easier maintenance and upgrades” (TPR
Resp. Br. 7), an obvious modification.
Regarding Patent Owner’s argument that Ludwig’s controller does not
authorize or restrict access (PO App. Br. 13–14), we are also unpersuaded of
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error. Requester correctly points out that “Ludwig discloses that a user must
be logged in before the MLAN server will set up a conference.” TPR Resp.
Br. 8 (citing Ludwig Fig. 23). “If the caller and the callee are both logged
in, the AVNM checks the Service Server to confirm the type of conference
is authorized for the caller and callee and sets up the conference.” Id. (citing
Ludwig 21:12–16; 21:47–22:50). “If the callee is not logged in, the AVNM
notifies the caller, and the caller is restricted from conferencing. Id. (citing
Ludwig 21:47-22:50). In view of the foregoing, we are unpersuaded that
Ludwig’s authorizing the type of conference or restricting the caller in the
absence of the callee being logged in fails to render obvious the
authorization/restriction function of the claimed controller.
Accordingly, Patent Owner’s arguments do not persuade us of error in
the Examiner’s conclusion that Ludwig teaches or suggests the controller
limitations of the independent claims. We sustain the Examiner’s rejection
of claims 1, 17, and 33, argued on the same grounds. See PO App. Br. 13–
14. We also sustain the Examiner’s rejections of claims 2–3, 9, 10, 12, 13,
16, 18, 19, 25, 26, 28, 29, 32, 34, 40, 41, 43, 44, 47, 69, 70, and 74–77 in
which Ludwig is applied as the primary reference because Patent Owner
does not argue the rejections with particularity. See, id. at 20–21.

CONCLUSIONS
On the record before us, the Examiner did not err in rejecting:
Claims 1–3, 9, 10, 12, 13, 16–19, 25, 26, 28, 29, 32–34, 40, 41, 43,
44, 47, 69, 70, and 74–77 under 35 U.S.C. § 103(a) as obvious over Ludwig
in view of Robinson;
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Claims 5, 21, and 36 under 35 U.S.C. § 103(a) as obvious over
Ludwig, Robinson, and Databeam;
Claims 6, 22, and 37 under 35 U.S.C. § 103(a) as obvious over
Ludwig, Robinson, and Molva;
Claims 7, 23, and 38 under 35 U.S.C. § 103(a) as obvious over
Ludwig, Robinson, and Gifford;
Claims 8, 24, and 39 under 35 U.S.C. § 103(a) as obvious over
Ludwig, Robinson, and Venkatraman;
Claims 14, 30, and 45 under 35 U.S.C. § 103(a) as obvious over
Ludwig, Robinson, and Kostreski; and
Claims 15, 31, and 46 under 35 U.S.C. § 103(a) as obvious over
Ludwig, Robinson, and Cohen.
In view of the foregoing, it is unnecessary to reach whether claims 1–
3, 5–10, 12–19, 21–26, 28–34, 36–41, 43–47, 69, 70, and 74–77 stand
properly rejected in any of the Examiner’s alternative rejections. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional
obviousness rejections).
DECISION
We affirm the Examiner’s decision to reject claims 1–3, 5–10, 12–19,
21–26, 28–34, 36–41, 43–47, 69, 70, and 74–77.
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
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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

Patent Owner:

LAW OFFICE OF SCOTT C. HARRIS INC.
PO Box 1389
Rancho Santa Fe, CA 92067

Third Party Requester:

HAYNES AND BOONE, LLP IP SECTION
2323 Victory Avenue
Suite 700
Dallas, TX 75219

alw