Ex Parte . et alDownload PDFPatent Trial and Appeal BoardSep 17, 201495001958 (P.T.A.B. Sep. 17, 2014) Copy Citation 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 2 BACKGROUND Third Party Requester, Cisco Systems, Inc. (“Requesterâ€) filed a Request for Inter Partes Reexamination (“Requestâ€) on April 4, 2012 of United States Patent 7,221,387 B2 (hereinafter the “’387 patentâ€).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 Ownerâ€), 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 (“RANâ€); (2) Patent Owner’s Appeal Brief filed October 12, 2013 (“PO App. Br.â€); (3) Requester’s Respondent Brief filed November 8, 2013 (“TPR Resp. Br.â€); and (4) the Examiner’s Answer mailed March 5, 2014 (“Ans.â€) (incorporating the RAN by reference). Appeal 2014-006377 Reexamination Control 95/001,958 Patent 7,221,387 B2 3 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. Appeal 2014-006377 Reexamination Control 95/001,958 Patent 7,221,387 B2 4 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. (“Malyâ€), INTERACTIVE DISTANCE LEARNING OVER INTRANETS, IEEE Internet Computing, January – February 1997. 10. Hussein Abdel-Wahab et al. (“Maly IIâ€), 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. Appeal 2014-006377 Reexamination Control 95/001,958 Patent 7,221,387 B2 5 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 Appeal 2014-006377 Reexamination Control 95/001,958 Patent 7,221,387 B2 6 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.â€). 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.â€). Appeal 2014-006377 Reexamination Control 95/001,958 Patent 7,221,387 B2 7 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.â€)). 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. Appeal 2014-006377 Reexamination Control 95/001,958 Patent 7,221,387 B2 8 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.â€). 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 Appeal 2014-006377 Reexamination Control 95/001,958 Patent 7,221,387 B2 9 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; Appeal 2014-006377 Reexamination Control 95/001,958 Patent 7,221,387 B2 10 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 Appeal 2014-006377 Reexamination Control 95/001,958 Patent 7,221,387 B2 11 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 Copy with citationCopy as parenthetical citation