Ex Parte Migimatsu

Patent Trial and Appeal BoardMay 28, 2013

10047374 (P.T.A.B. May. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TAKA MIGIMATSU ____________________ Appeal 2010-008428 Application 10/047,374 Technology Center 2400 ____________________ Before: ROBERT E. NAPPI, DEBRA K. STEPHENS, and PATRICK M. BOUCHER, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008428 Application 10/047,374 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a final rejection of claims 1, 2, 4, 5, 31, 38, 45, 50, 53-55, 57, 58, and 62-70. We have jurisdiction under 35 U.S.C. § 6(b). Claims 3, 6-30, 32-37, 39-44, 46-49, 51, 52, 56, and 59-61 have been canceled. We AFFIRM. Introduction According to Appellant, the invention is directed to a system and method for transmitting voice messages from a caller location to a receiver location using computers coupled to each other through the Internet (Abstract). STATEMENT OF THE CASE Exemplary Claim Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for transmitting voice messages from a caller to a recipient over a network, said system comprising: a first access device coupled to a network, said first access device comprising: a voice encoding device configured to receive a first voice signal and generate a digital message file, wherein said digital message file comprises a complete caller communication; Appeal 2010-008428 Application 10/047,374 3 a first storage device capable of storing said digital message file; and a transmission device configured to transmit said digital message file through said network; wherein said transmission device transmits said digital message file through said network after said voice encoding device completes the generation of said digital message file, and wherein said transmission of said digital message file is responsive to a caller indication; a second access device coupled to said network, said second access device comprising: a receiving device configured to receive said digital message file from said transmission device, responsive to said caller indication; a second storage device capable of storing said digital message file; a delivery notification device configured to notify of the receipt of said digital message file, said delivery notification device being responsive to said caller indication; and a voice decoding device configured to decode said digital message file and generate a second voice signal, wherein said voice decoding device decodes said digital message file after said receiving device completes the reception of said digital message file. REFERENCE Gordon US 5,608,786 Mar. 4, 1997 Appeal 2010-008428 Application 10/047,374 4 REJECTIONS The Examiner made the following rejections: (1) Claims 1 and 4 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement (Ans. 3). (2) Claims 1, 2, 4, 5, 31, 38, 45, 50, 53-55, 57, 58, and 62-70 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Gordon (Ans. 4).1 We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). ISSUE 1 35 U.S.C. § 112, first paragraph: Claims 1 and 4 Appellant argues the Examiner erred in stating the claims contain subject matter not described in the Specification in such a way as to enable an ordinarily skilled artisan to make and/or use the invention since “complete caller communication” is not disclosed (App. Br. 9). According to Appellant, a “complete caller communication” includes a voice message, and the voice message is complete since it is part of an asynchronous rather than real-time interaction (App. Br. 9). Appellant also argues the Specification provides numerous references to support the ordinary interpretation of the phrase (App. Br. 9). Since a complete caller communication is clearly and repeatedly described in the Specification as 1 The objections to claims 4 and 69 are not before us. Appeal 2010-008428 Application 10/047,374 5 voice mail and voice mail messages, according to Appellant, “‘complete caller communication’ includes a voice mail message” (Reply Br. 2). Appellant argues “message” is used “to more clearly distinguish real- time voice communication (e.g., a single packet of real-time voice communication is clearly not a complete caller communication, but a packet is sometimes referred to as a message)” (Reply Br. 2). Therefore, Appellant asserts, these numerous references would lead an ordinarily skilled artisan to understand the plain and ordinary meaning, and thus, claims 1 and 4 are enabled and definite (App. Br. 12; Reply Br. 2). Issue 1: Has the Examiner erred in rejecting claims 1 and 4 as failing to comply with the enablement requirement due to the inclusion of the recited “complete caller communication” subject matter? ANALYSIS The test for compliance with the enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). “Enablement is not precluded by the necessity for some experimentation .... However, experimentation needed to practice the invention must not be undue experimentation. The key word is ‘undue,’ not ‘experimentation.’” Id. at 736-737. Here, we determine that an ordinarily skilled artisan could implement the invention without undue experimentation. Although we agree with the Examiner that “complete caller communication” is not explicitly defined, Appeal 2010-008428 Application 10/047,374 6 taking a broad, but reasonable interpretation of the term, we find an ordinarily skilled artisan could implement the invention as recited. Accordingly, the Examiner erred in determining the invention as recited in claims 1 and 4 fails to comply with the enablement requirement. ISSUE 2 35 U.S.C. § 102(e): Claims 1, 2, 4, 5, 31, 38, 45, 50, 53-55, 57, 58, 62-67, and 69 Claim 1 Appellant argues in contrast to Gordon, the present invention involves recording a complete caller communication prior to transmission over a network (App. Br. 14). According to Appellant, Gordon’s voice packet is not a complete caller communication (App. Br. 15). Further, Appellant argues “Gordon discloses a process by which an ongoing communication is established, not the creation of a complete caller communication followed by a transmission of the communication over a network” (App. Br. 15). In Gordon, subscribers access their voice mailbox when convenient; therefore, Appellant argues, no transmission or reception of messages responsive to a caller indication is described (App. Br. 15). Issue 2: Has the Examiner erred in finding Gordon discloses “generate . . . said digital message file comprises a complete caller communication;” “a transmission device configured to transmit said digital message file through said network . . . after said voice encoding device Appeal 2010-008428 Application 10/047,374 7 completes the generation of said digital message file;” “said transmission of said digital message file is responsive to a caller indication;” and receiving “said digital message file from said transmission device, responsive to said caller indication” as recited in claim 1? ANALYSIS Initially we note Appellant has not explicitly defined “complete caller communication” or “caller indication” in the Specification. Thus, taking broad, but reasonable interpretations in light of the Specification, we are not persuaded of error in the Examiner’s findings. Specifically, we find Gordon discloses the invention as recited in claim 1. We find Gordon discloses generating a digital message file wherein the digital message file comprises a complete caller communication (col. 4, ll. 51-52 and 63-65; col. 5, ll. 8-10 and 35-50; col. 9, ll. 5-9; Ans. 4 and 8-9). We additionally agree with the Examiner that Gordon discloses “a transmission device configured to transmit said digital message file through said network . . . after said voice encoding device completes the generation of said digital message file” and “said transmission of said digital message file is responsive to a caller indication” (Ans. 4-5 and 8-9). Indeed, Gordon discloses a voice message which can be retrieved by a subscriber (col. 2, ll. 55-65; col. 5, ll. 17-31 and 50-60; col. 9, ll. 35-60). Further, we find transmission of the digital message file may be responsive to a caller indication (id.). As Appellant has not explicitly defined “caller indication,” taking a broad, but reasonable interpretation, we determine transmission may occur in response to the user receiving the summary which indicates a caller called (caller indication) or Appeal 2010-008428 Application 10/047,374 8 automatic transmission in response to a caller indication (alert) that is received (id.). We find Gordon discloses a second access device that receives the digital message file from the transmission device, responsive to said caller indication (Ans. 5-6). Appellant argues Gordon does not transmit voice messages after recording and before playback, however, we find the Examiner has shown Gordon discloses this feature (Ans. 4-5 and 8-9). Gordon discloses transfer between two UniPost Access Nodes (see e.g., Figs. 1 and 2). Gordon describes this feature in more detail in the example of a subscriber traveling to Japan (col. 10, ll. 31-35) which we further note. Specifically, Gordon describes that the Tokyo Unipost Access node permits a Toronto-based subscriber travelling to Japan to access their mailbox contents (col. 3, ll. 9-16; col. 10, ll. 31-63). The subscriber can select individual messages from the Summary, for downloading or forwarding (col. 10, ll. 64-65). “By delivering all message types into the PC, the subscriber is able to save voice, fax, …..and other message types under any subdirectory within his PC” (col. 10, l. 65 – col. 11, l. 14). Thus, Appellant’s arguments that Gordon does not transmit a complete caller communication after recording and before playback (Reply Br. 3) is not persuasive. Nor are we persuaded the claims recite messaging being “pushed” over the network (Reply Br. 4). Accordingly, the Examiner did not err in finding Gordon discloses the invention as recited in independent claim 1 and commensurately recited, and argued, claim 4. Dependent claims 2, 5, 31, 38, 45, 50, 53-55, 57, 58, 62-67, and 69 are not separately argued and thus fall with their respective Appeal 2010-008428 Application 10/047,374 9 independent claims. Therefore, the Examiner did not err in rejecting claims 1, 2, 4, 5, 31, 38, 45, 50, 53-55, 57, 58, 62-67, and 69 under 35 U.S.C. § 102(e) for anticipation by Gordon. ISSUE 3 35 U.S.C. § 102(e): Claims 68 and 70 Appellant asserts the invention is not anticipated by Gordon (App. Br. 16-17). Specifically, Appellant contends Gordon does not disclose the use of destination information to select the destination of a voice message prior to transmission of that voice message (App. Br. 17). In particular, according to Appellant, Gordon’s disclosure cited by the Examiner relates to retrieval of voice messages by playing them back over the Internet (App. Br. 17). Appellant thus argues the Examiner has failed to identify specifically what is considered to be destination information and fails to identify how such information is used to select the second access device. Therefore, Appellant contends Gordon does not disclose the invention as recited. Issue 3: Has the Examiner erred in finding Gordon discloses the destination information is used to select the second access device as recited in claims 68 and 70? ANALYSIS We agree with the Examiner’s findings and adopt them as our own (Ans. 7 and 10). Appellant has not presented sufficient evidence or argument to persuade us the Examiner’s findings are in error. Accordingly, Appeal 2010-008428 Application 10/047,374 10 the Examiner did not err in finding Gordon describes the invention as recited in claims 68 and 70. Therefore, the Examiner did not err in rejecting claims 68 and 70 under 35 U.S.C. § 102(e) for anticipation by Gordon. DECISION The Examiner’s rejection of claims 1 and 4 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement is reversed. The Examiner’s rejection of claims 1, 2, 4, 5, 31, 38, 45, 50, 53-55, 57, 58, and 62-70 under 35 U.S.C. § 102(e) as being anticipated by Gordon is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED msc