Ex parte Antor Media Corp

UNITED S TATES PATENT AND T RADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. 	FILING DATE 	FIRST NAMED INVENTOR 	ATTORNEY DOCKET NO. 	CONFIRMATION NO.
90/009,261 	08/21/2008 	5,734,961 	ED 017 954 148 US 	8409
7590 	10/21/2010 	EXAMINER
GOLDSTEIN, FAUCETT & PREBEG, LLP
1177 WEST LOOP SOUTH 	FOSTER, ROLAND G
SUITE 400
HOUSTON, TX 77027
3992
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MAIL DATE 	DELIVERY MODE
10/21/2010 	PAPER
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PTOL-90A (Rev. 04/07)

UNITED S TATES PATENT AND T RADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. 	FILING DATE 	FIRST NAMED INVENTOR 	ATTORNEY DOCKET NO. 	CONFIRMATION NO.
90/007,839 	12/07/2005 	5734961 	866093 	1585
7590 	10/21/2010 	EXAMINER
JEAN-PAUL CASTILLE, PRESIDENT
ANTOR MEDIA CORPORATION 	FOSTER, ROLAND G
84440 ROBION
CANTE PLOURE,
FRANCE 	3992
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10/21/2010 	PAPER
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PTOL-90A (Rev. 04/07)

UNITED S TATES PATENT AND T RADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. 	FILING DATE 	FIRST NAMED INVENTOR 	ATTORNEY DOCKET NO. 	CONFIRMATION NO.
90/007,936 	02/17/2006 	5734961 	18768-002LL1 	7819
7590 	10/21/2010 	EXAMINER
GOLDSTEIN, FAUCETT & PREBEG LLP
1177 West Loop South 	FOSTER, ROLAND G
Suite 400
Houston, TX 77027
3992
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10/21/2010 	PAPER
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PTOL-90A (Rev. 04/07)

UNITED S TATES PATENT AND T RADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. 	FILING DATE 	FIRST NAMED INVENTOR 	ATTORNEY DOCKET NO. 	CONFIRMATION NO.
90/007,957 	03/03/2006 	5734961 	04395.0003.000000 	9567
7590 	10/21/2010 	EXAMINER
R. ROSS VIGUET
FULBRIGHT & JAWORSKI LLP 	FOSTER, ROLAND G
2200 ROSS AVE., SUITE 2800
DALLAS, TX 75201 ART UNIT 	PAPER NUMBER
3992
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PTOL-90A (Rev. 04/07)

UNITED S TATES PATENT AND T RADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. 	FILING DATE 	FIRST NAMED INVENTOR 	ATTORNEY DOCKET NO. 	CONFIRMATION NO.
90/007,942 	02/17/2006 	5734961 	62797/P0001RE/10616216 	2496
7590 	10/21/2010 	EXAMINER
GOLDSTEIN, FAUCETT & PREBEG, LLP
1177 WEST LOOP SOUTH 	FOSTER, ROLAND G
SUITE 400
HOUSTON, TX 77027
3992
ART UNIT 	PAPER NUMBER
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10/21/2010 	PAPER
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PTOL-90A (Rev. 04/07)

____________
____________
____________
____________
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte ANTOR MEDIA CORPORATION
Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
Patent 5,734,961
Technology Center 3900
Before RICHARD TORCZON, KARL EASTHOM, and STEPHEN C. SIU,
Administrative Patent Judges.
SIU, Administrative Patent Judge
DECISION ON APPEAL1
Antor Media Corporation2 appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1-29. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
STATEMENT OF THE CASE
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
2Antor Media Corporation is the real party in interest.

Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
This proceeding arose from five separate third party requests for ex
parte reexamination of U.S. 5,734,961. The Office granted the requests and
merged the five proceedings (i.e., Reexamination Control 90/007,839;
90,007,936; 90/007,942; 90/007,957; and 90/009,361).
Patentee’s invention relates to transmitting information from a server
to subscribers via a high data digital telecommunications network (Spec.
Col. 1, ll. 15-18).
Representative claim 1 reads as follows:
1. 	Method of receiving information from one
of a plurality of information systems via a high data rate
telecommunication network in response to a request
from one of plural subscriber stations, said method
comprising the steps of:
initiating a two-way transmission from subscriber
computer means of said one of said plural subscriber
stations to one of said information systems via said
telecommunication network,
outputting on output means of said one of said
plural subscriber stations data related to plural
information stored at one of said information systems,
selecting at said one of said plural subscriber
stations at least one of said information by means of
input; means of said one of said plural subscriber
stations and transmitting a signal identifying said at least
one selected information from said subscriber computer
means to a selected information system via said
telecommunication network,
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Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
receiving at said one of said plural subscriber
stations from said selected information system digital
signals via said telecommunication network, expanding
by expansion means said transmitted signals, converting
said expanded digital signals into analog signals and
delivering said analog signals to transducer means.
The prior art references relied upon by the Examiner in rejecting the
claims are:
Barrett 	4,918,588 	Apr. 17, 1990
Arif Ghafoor, C.Y. Roger Chen, and P. Bruce Berra, A Distributed
Multimedia Database System, IEEE, 1988, pgs 461-469 (“Ghafoor”).
H.K. Huang, et al., Picture Archiving and Communication Systems (PACS)
for Radiological Images: State of the Art, CRC Critical Reviews in
Diagnostic Imaging, Volume 28, Issue 4, 1988, pgs 383-427 (“Huang”).
Stavros Christodoulakis and Theodora Velissaropoulos, Issues in the Design
of a Distributed Testbed for Multimedia Information Systems (MINOS),
Journal of Management Information Systems, Fall 1987, Vol. 4, No. 1
(“MINOS”).
The Examiner rejected claims on the following bases:
(1) claims 1-3, 5-7, 9, 11-15, 17-19, 21-24, and 26 under 35 U.S.C. §
102(a) and 102(b) as being anticipated by Ghafoor or Huang and, in the
alternative, under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Ghafoor and Huang;
(2) claims 27-29 under 35 U.S.C. § 102(a) and 102(b) as being
anticipated by Ghafoor and, in the alternative, under 35 U.S.C. § 103(a) as
3

Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
being unpatentable over the combination of Ghafoor and Huang;
(3) claim 25 under 35 U.S.C. § 103(a) as being unpatentable over
Ghafoor and either Barrett or Huang and, in the alternative, over Huang and
Barrett;
(4) claims 1-3, 5, and 13-15 under 35 U.S.C. § 102(b) as being
anticipated by MINOS; and
(5) claims 1-29 under 35 U.S.C. § 103(a) as being unpatentable over
Barrett and MINOS.
ISSUES
Appellant argues that “Ghafoor is . . . not enabled with respect to the
methods and systems claimed by Castille” (App. Br. 20) and that MINOS “is
non-enabling because it did not put the public in possession of the claimed
invention before the date of the invention” (App. Br. 36).
Appellant also argues that Ghafoor “does not teach all elements of the
claim” (App. Br. 21, 25-26), fails to disclose “that the plural information
storage means contain sounds and the transducer means contain speaker
means” (App. Br. 25-26), fails to disclose “images and video display means”
(App. Br. 26), and fails to disclose “a screen plotting means” (App. Br. 26).
Appellant also argues that the combination of Ghafoor and Barrett fails to
teach or suggest “subband decoding,” or “a way to interface ISDN to a
workstation of the mini-computer system of Barrett” (App. Br. 30).
4

Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
Appellant argues that Huang fails to disclose the claimed invention
because Huang is directed towards radiological systems, and teaches away
from allowing sound as the data of interest” (App. Br. 31).
Appellant argues that MINOS “does not teach a plurality of
information systems” or “a workstation retrieving information from one of a
plurality of information systems (App. Br. 38) and that “the combination of
Barrett in view of MINOS does not teach [or suggest] a plurality of
information systems” (App Br. 39).
Appellant argues that “nothing in Ghafoor would merit a combination
of Huang and Ghafoor” (App. Br. 28), that “Huang cannot be combined with
Ghafoor without destroying its intended function” (App. Br. 29), that
“Huang teaches away from the . . . system taught by Ghafoor” (id.), that it
would not have been obvious to one of ordinary skill in the art to combine
the Huang and Barrett references because “Huang teaches away from a
printer by being focused on digital images and providing an image database
solution” and that “[e]ven if it did not, the printer of Barrett is not of the high
quality specific type that would be needed by Huang” (App. Br. 34), that
“[a]dding a printer to Huang would be superfluous and would make the
system described redundant” (id.), and that “[t]here is no reason that one
skilled in the art would have been prompted to combine the elements of
MINOS and Barrett” (App. Br. 39).
Thus, we identify the following issues:
5

Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
1) 	Does the Ghafoor reference provide an enabling disclosure of
claims 1-3, 5-7, 9, 11-15, 17-19, 21-24, and 26-29?
2) 	Does the MINOS reference provide an enabling disclosure of
claims 1-3, 5, and 13-15?
3) 	Did the Examiner err in finding that Ghafoor discloses the
features recited in claims 1-3, 5-7, 9, 11-15, 17-19, 21-24, and 26-29?
4) 	Did the Examiner err in finding that Huang discloses the
features recited in claims 1-3, 5-7, 9, 11-15, 17-19, 21-24, and 26?
5) 	Did the Examiner err in finding that MINOS discloses the
features recited in claims 1-3, 5, and 13-15?
6) 	Did the Examiner err in finding that the combination of
Ghafoor and Barrett discloses or suggests the features recited in claim 25?
7) 	Did the Examiner err in finding that it would have been obvious
to one of ordinary skill in the art to have combined the Ghafoor and Huang
references?
8) 	Did the Examiner err in finding that it would have been obvious
to one of ordinary skill in the art to have combined the Huang, Barrett, and
Ghafoor references?
9) 	Did the Examiner err in finding that it would have been obvious
to one of ordinary skill in the art to have combined the MINOS and Barrett
references?
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
6

Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
but chose not to make in the Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
FINDINGS OF FACT
1. 	Ghafoor discloses a “multiprocessor based architecture for a
heterogeneous multimedia database (HMD) system” (Abstract).
2. 	Ghafoor discloses a user “workstation . . . to display multiple
data to the user in the desired format” that is “able to interface with the
communication network and support communication protocols in order to
interact with the central controller and multimedia servers” (pg. 462, col. 2,
2.2. User Workstation).
3. 	Huang discloses “storage and retrieval of radiographic images”
(pg. 397).
4. 	Huang discloses operations to “define a particular patient of
interest, request to view a set of images for the patient, and . . . perform
some sort of image processing” (Pg. 406).
5. 	Huang discloses that information is “transmitted to a storage
device . . . and later . . . available for retrieval, display, manipulation, and
review” (Pg. 409).
PRINCIPLES OF LAW
“To be enabling under § 112, a patent must contain a description that
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Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
enables one skilled in the art to make and use the claimed invention.” Atlas
Powder Co. v. E. I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576 (Fed.
Cir. 1984) (citing Raytheon Co. v. Roper Corp., 724 F.2d 951, 960 (Fed. Cir.
1983)). “That some experimentation is necessary does not preclude
enablement; the amount of experimentation, however, must not be unduly
extensive.” Id. (citing W.L. Gore & Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540, 1557 (Fed. Cir. 1983); In re Angstadt, 537 F.2d 498, 503
(CCPA 1976)).
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
ANALYSIS
(1) Enablement of the Ghafoor reference
Claims 1-3, 5-7, 9, 11-15, 17-19, 21-24, and 26-29
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Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
Appellant argues that the Ghafoor reference is “not enabled with
respect to the methods and systems claimed by Castille” (App. Br. 20)
because “it [the Ghafoor reference] merely describes the overall architecture
of the desired system, and does not seek to teach actual implementation”
(App. Br. 21) and fails to enable the claimed invention “in reference to
‘output means’, input means’ and ‘transducer means’” (App. Br. 22).
The Examiner finds “intrinsic evidence” (Ans. 45), including the
Specification of the ‘961 patent that, according to the Examiner, establishes
a state of the prior art that demonstrates that Ghafoor provides sufficient
enabling disclosure for claimed elements such as “the claim term ‘high data
rate telecommunications network’” (Ans. 45-46), “the claimed ‘subscriber
workstation’” (Ans. 46), “an ‘output means’” (id.), “[t]he claimed ‘input
means’” (id.), and “[t]he claimed ‘transducer means’” (id.), with respect to
the relative level of skill in the art. The Examiner further cites various
working examples disclosed by Ghafoor including, for example, an “input
device, such as a keyboard” (Ans. 46), a component that “transduces an
input signal using a conventional, generic means” (id.), an “output device,
such as a video screen, headphone, loudspeaker, or electronic printer
structure” (id.), and “high-bandwidth networks” (Ans. 45).
The Examiner further finds that Ghafoor discloses details of a
“conventional workstation” as recited in the claims of the ‘961 patent (Ans.
47) and disclosed in the Specification of the ‘961 patent as being previously
known to those of skill in the art (Ans. 48).
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Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
We agree with the Examiner. “To be enabling under § 112, a patent
must contain a description that enables one skilled in the art to make and use
the claimed invention.” Atlas Powder Co, 750 F.2d at 1576. “Whether
undue experimentation is needed is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
considerations.” “Factors to be considered in determining whether a
disclosure would require undue experimentation . . . include (1) the quantity
of experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature
of the invention, (5) the state of the prior art, (6) the relative skill of those in
the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims.” In re Wands, 858 F.2d 731, 737 (Fed.Cir. 1988). These
factors are “commonly referred to as ‘the Wands factors’” Warner-Lambert
Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1337 (Fed. Cir. 2005) and
“are a useful methodology for determining enablement . . . .” Enzo
Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1372 (Fed. Cir. 1999).
As described above, Appellant argues that the Ghafoor reference fails
to provide an enabling disclosure of the claimed subject matter and also
submitted an affidavit by an expert ( “Declaration of Dr. Ray Mercer” dated
February 14, 2008, hereinafter “Mercer Dec’l”) who rendered a conclusion
similar to that of Appellant (App. Br 20).
Claim 1 recites, for example, initiating a two-way transmission,
outputting data at a station, selecting and identifying the information,
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Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
transmitting a signal to a system, and receiving signals at the station.
Appellant fails to demonstrate that Ghafoor does not provide an enabling
disclosure for any of the features recited in claim 1. Rather, Appellant
merely argues that Ghafoor “[uses] equivocal language, such as ‘should’ . . .
and ‘assume’” (Response to Non-Final Office Action in Ex Parte
Reexamination, dated February 14, 2008 at 27, hereinafter “OA 2/14/08”),
does not “specifically . . . address performance issues of their system” (id.
28), tries “to predict future trends” (id.), supposedly “fails to teach how to
perform object integration” (id.), provides “no detail . . . on how
heterogeneous data integration . . . is achieved” (id.), “provide no suggestion
as to how the temporal timing may be maintained” (id. 29), “does not teach a
suitable network connection to its workstation” (id. 32), and “does not teach
a suitable user workstation or other device for use with the network” (id.).
Appellants further argue that “Patent Owner’s Attorneys discussed their
inability . . . to understand the query function using objects (Oc :O1) on page
465 of Ghafoor” (id. 31). Even assuming Appellant’s contentions to be true
that Ghafoor utilizes the terms “should” and “assume” and attempts to
“predict future trends,” we are not persuaded that the use of such terms
demonstrates the need for one of ordinary skill in the art to engage in undue
experimentation to perform the claimed invention, particularly in view of the
level of skill in the art or the predictability of the art, for example, with
respect to the Ghafoor reference. Also, as the Examiner points out, none of
the specific features (e.g., object integration or temporal timing) cited by
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Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
Appellant are found in the claims (Ans. 49).
In addition, Appellant does not address the Wands factors and “fails to
recognize that prior art references must be ‘considered together with the
knowledge of one of ordinary skill in the pertinent art.’” In re Paulsen, 30
F.3d at 1480. Similar to the situation in Paulsen (in which a prior art
reference “only discloses a box for a calculator”), the skill level of artisans
involved in data transmission and contemplating Ghafoor’s teachings was
“quite advanced.” Id. Appellant and Mr. Mercer do not aver that they were
aware of the skill level involved in information transmission at the time of
the invention and do not address the skill level.
Appellant’s technical expert similarly sets forth little or no factual
basis upon which to support a conclusion of non-enablement. Mr. Mercer
concludes that the reference is “forward-looking” and “intended to stimulate
discussion rather than teach how to implement the technology” (See Mercer
Dec’l ¶ 10). However, Mr. Mercer fails to set forth a sufficient factual
foundation to support a conclusion reflecting the proper legal standard for
enablement based on undue experimentation under the Wands factors.
Appellant generally cites the Wands factors (App. Br. 20) but makes
no attempt to consider the factors with respect to the present case and does
not apply the Wands factors to render a determination of “undue
experimentation,” such as the level of skill involved, the quantity of
experimentation necessary, the predictability or unpredictability of the art,
the breadth of the claims, etc. Accordingly Appellant has not established
12

Appeal 2010-007531
Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
that Ghafoor constitutes a non-enabling anticipatory reference.
(2) Enablement of the MINOS reference
Claims 1-3, 5, and 13-15
Appellant argues that MINOS “is non-enabling because it did not put
the public in possession of the claimed invention before the date of the
invention” (App. Br. 36).
The Examiner finds that, given the level of skill in the art and the state
of the prior art, the MINOS reference would have been enabling to one of
ordinary skill in the art to practice the claimed invention without undue
experimentation (Ans. 54-56).
We agree with the Examiner. Appellant asserts that because MINOS
allegedly discloses a telephone network that “is separate from the digital
data network” that an “indication of the current state of the art” is provided
(App. Br. 36). However, Appellant fails to indicate what the “current state
of the art” is indicated to be based on a telephone network being separate
from a digital data network. Appellant appears to argue that the “current
state of the art” indicates that “MINOS would require experimentation”
(App. Br. 36) but fails to demonstrate, or even assert, that one of ordinary
skill in the art would have to engage in undue experimentation to achieve the
claimed invention. Thus, we agree with the Examiner that Appellant’s
assertion “fails to even address whether the additional experimentation
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Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
would have been undue” (Ans. 55). As noted above, Appellant fails to
address the Wands factors with respect to the claimed invention.
Similarly, Appellant argues that MINOS discloses a “query interface
[that] was not fully developed” (App. Br. 37) and “problems . . . to be solved
. . . [that] were so substantial” (App. Br. 37), but fails to specify the alleged
“problems” or show how such alleged “problems” or other factors would
have required undue experimentation on the part of one of skill in the art
given the MINOS reference.
Appellant’s technical expert (Dr. Ray Mercer) similarly fails to set
forth a factual basis upon which to support a conclusion of non-enablement.
Dr. Mercer generally states that “[o]ne of ordinary skill in the art . . . would
not have been able to make or use the system . . . without undue
experimentation” (Mercer Dec’l ¶ 21) but does not mention or apply the
Wands factors to render that determination, such as level of skill in the art,
quantity of experimentation necessary, predictability or unpredictability of
the art, breadth of the claims, etc.
Accordingly, Appellant has not established that MINOS constitutes a
non-enabling anticipatory reference.
(3) Anticipation under 35 U.S.C. § 102(a) and § 102(b) by Ghafoor
Claims 1-3, 5-7, 9, 11-15, 17-19, 21-24, and 26
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Reexamination Control 90/007,839; 90/007,936; 90/007,942; 90/007,957;
and 90/009,261
United States Patent 5,734,961
Appellant argues that “Ghafoor does not . . . describe ‘a system for
transmitting information from a server to subscribers via a high data digital
telecommunications network’” (App. Br. 21).
Even assuming that the claims recite “a system for transmitting
information from a server to subscribers via a high data digital
telecommunications network” as Appellant contends, as the Examiner points
out, Ghafoor discloses a system including a “workstation . . . to display
multiple data to the user” (pg. 462, col. 2) and a communication network “to
interconnect geographically dispersed servers and users with broadband
multimegabit services” (pg. 462, col. 2) over with data is transmitted.
Ghafoor discloses a system in which geographically dispersed user
workstations exchange data with servers via high speed data communication
networks which we find indistinguishable from the feature disputed by
Appellant. Nor has Appellant stated any differences.
Appellant further argues “[i]f all of the elements of the claim are
disclosed in Ghafoor, there seems to be little incentive to combine Ghafoor
with Huang” (App. Br. 22), however, Appellant fails to indicate any specific
claimed features that Ghafoor fails to disclose. Therefore, we are not
persuaded by Appellant’s argument.
Appellant argues that “Ghafoor does not teach ‘outputting data related
to plural information’” (App. Br. 23) because Ghafoor discloses “plural
information, and not data related to plural information” (App. Br. 24). We
are not persuaded by Appellant’s argument because if Ghafoor discloses
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“plural information,” then this information must be related to the
information that the plural information represents, i.e., Appellant has not
demonstrated that the information in Ghafoor is unrelated to itself nor do we
find that the information in Ghafoor is unrelated to itself.
Appellant also argues that “Ghafoor fails to teach initiating a two-way
transmission from a subscriber computer station” but fails to demonstrate
how a user workstation (i.e., subscriber computer station) exchanging
information over a high speed data communication network with a server (as
described above in Ghafoor) supposedly differs from the disputed claimed
feature. Nor do we find any difference between the two seemingly identical
features.
We therefore do not find Appellant’s arguments to be compelling and
we find no error in the rejection of claims 1-3, 5-7, 9, 11-15, 17-19, 21-24,
and 26.
Claims 27-29
Appellant argues that “[s]peaker means are not mentioned in
Ghafoor” and that Ghafoor fails to disclose “images and video display
means” or “screen plotting means” (App. Br. 26).
The Examiner finds that Ghafoor discloses data transmission in a
system in which the data includes “full-motion video signals as well as audio
signals” (pg. 461, col. 2) and a user workstation can “display multiple data
to the user in the desired format” (pg. 462, col. 2) to provide, for example,
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“images, graphs, maps, charts, etc.” (id.). Since Ghafoor discloses providing
audio, video, images, graphs, maps, or charts on output devices and since
speakers provide sound, displays for images and video provide images and
video, and screen plotting devices provide other images such as graphs,
maps, and charts, we agree with the Examiner that, in the absence of specific
structure disclosed in the Specification for the various output means,
Ghafoor discloses devices that constitute speaker means (for output of
audio), images and video display means (for output of images and video),
and screen plotting means (for output of charts, maps, etc., for example).
We therefore do not find Appellant’s arguments to be compelling and
we find no error in the rejection of claims 27-29.
(4) Anticipation under 35 U.S.C. § 102(a) and § 102(b) by Huang
Claims 1-3, 5-7, 9, 11-15, 17-19, 21-24, and 26
Appellant argues that Huang fails to disclose “sound as the data of
interest” (App. Br. 31). However, Appellant fails to indicate that any of the
disputed claims recite that sound must be the “data of interest.” Since
Appellant has not shown that sound must be the data of interest in the
disputed claims, we find no relevance in Appellant’s argument that Huang
supposedly fails to disclose this feature.
In addition, while Appellant argues that the Specification provides an
example in which data includes audio data (App. Br. 31-32), we note that, “a
particular embodiment appearing in the written description may not be read
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into a claim when the claim language is broader than the embodiment.”
Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
Similarly, Appellant argues that “Huang cannot teach speaker means”
(App. Br. 33) but none of the disputed claims recite “speaker means.”
We therefore do not find Appellant’s arguments to be compelling and
we find no error in the rejection of claims 1-3, 5-7, 9, 11-15, 17-19, and 21
24, and 26.
(5) Anticipation under 35 U.S.C. § 102(b) by MINOS
Claims 1-3, 5, and 13-15
Appellant argues that “[t]here is no teaching in MINOS of a
workstation retrieving information from one of a plurality of information
systems” (App. Br. 38). As the Examiner states, MINOS discloses
prefetching of pages, searching in signature files, and returning object
identifiers and miniatures to the client workstation by the storage and
retrieval subsystem in a distributed database system (Section 2.1 and 3.2;
Ans. 56). Since Appellant has failed to demonstrate any differences between
an information system in which requested data is transmitted from databases
(i.e., “information systems”) to a user workstation (MINOS) and the claimed
feature of receiving data at a subscriber station from an information system
(or a database), we agree with the Examiner that MINOS discloses this
feature.
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We therefore do not find Appellant’s arguments to be compelling and
we find no error in the rejection of claims 1-3, 5, and 13-15.
(6) Obviousness under 35 U.S.C. § 103(a) over Ghafoor and Barrett
Claim 25
Appellant argues that the rejection of claim 25 “is improper as the
references combined do not show or suggest . . . subband decoding . . . [or] a
way to interface ISDN to a workstation” (App. Br. 30). However, Appellant
has not demonstrated that claim 25 requires these features. Claim 25 recites
plural information storage means that contain documents and a transducer
means that includes printing means that converts signals into writing. Claim
25 does not appear to recite “subband decoding” or “a way to interface
ISDN to a workstation.”
Therefore, we find Appellant’s argument not persuasive.
(7) Obviousness under 35 U.S.C. § 103(a) over Ghafoor and Huang
Claims 1-3, 5-7, 9, 11-15, 17-19, and 21-29
As described above, Ghafoor discloses a system in which a user at a
workstation obtains data over a high speed data communication network
from databases (FF 1-2) and Huang discloses a system in which a user at a
workstation obtains data over a network (FF 3-5). We agree with the
Examiner that both Ghafoor and Huang are in the same field of endeavor. In
addition, both Ghafoor and Huang disclose known elements performing their
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known functions of requesting and receiving data over a network that
combine to provide the predictable result of receiving requested data over a
network at a user or subscriber station. “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., 550 U.S. at 416.
Appellant argues that “Huang cannot be combined with Ghafoor
without destroying its intended function” (App. Br. 29). We disagree with
Appellant’s contention because Huang’s “intended function” of requesting
data and receiving the requested data over a network is the same as that of
Ghafoor, namely, to request data and receive the requested data over a
network. Appellant has not demonstrated how Ghafoor destroys an intended
function when the intended function is the same as that of Ghafoor.
Appellant argues that “Huang teaches away from the heterogeneous
multimedia database system taught by Ghafoor” (App. Br. 29). “A reference
may be said to teach away when a person of ordinary skill, upon
[examining] the reference, would be discouraged from following the path set
out in the reference, or would be led in a direction divergent from the path
that was taken by the applicant.” Para-Ordnance Mfg., Inc. v. SGS
Importers Int’l, Inc. 73 F.3d 1085, 1090 (Fed. Cir. 1995) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In this case, Appellant has not
indicated that Huang (or Ghafoor) discourages a person of ordinary skill
from following the path set out in either of the references. Rather, both
Huang and Ghafoor disclose systems in which a user may request and
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receive data, the Huang reference further indicating that the data may
include radiographic image data.
We therefore do not find Appellant’s arguments to be compelling and
we find no error in the rejection of claims 1-3, 5-7, 9, 11-15, 17-19, and 21
29.
(8) Obviousness under 35 U.S.C. § 103(a) over Ghafoor, Huang and Barrett
Claim 25
The Examiner finds that Barrett discloses “receiving ‘writing’
information . . . and transducer means (such as the disclosed laser printer)”
(Ans. 14). Appellant asserts that “the three references [Ghafoor, Huang, and
Barrett] [are] from different fields” (App. Br. 34) but fails to provide support
for the assertion. We also disagree with Appellant because each of Ghafoor,
Huang, and Barrett disclose data retrieval systems in which a user requests
data and receives data over a network. Thus, contrary to Appellant’s
assertion, Ghafoor, Huang, and Barrett are all from the same field, namely,
the field of data retrieval over a network.
Appellant also argues that “Huang teaches away from a printer” (App.
Br. 34) but fails to provide a rationale in support of this statement. For
example, Appellant fails to indicate how one of skill in the art would be
discouraged from following the path set out in the reference” Para-
Ordnance Mfg., Inc., 73 F.3d at 1090.
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Appellant also argues that “the printer of Barrett is not of the high
quality specific type that would be needed by Huang” and that “[a]dding a
printer to Huang would be superfluous and would make the system
described redundant” (App. Br. 34). First, we find no logic in Appellant’s
contradictory arguments that Huang both requires a high quality printer and
teaches away from a printer, and that adding a printer would be
“superfluous.” Second, even assuming that Huang requires a high quality
printer, Appellant has not demonstrated how Barrett’s explicit disclosure of
the use of a printer (which Appellant alleges is required by Huang) does not
render the disputed feature of a “printer means” obvious.
We therefore do not find Appellant’s arguments to be compelling and
we find no error in the rejection of claim 25.
(9) Obviousness under 35 U.S.C. § 103(a) over MINOS and Barrett
Claims 1-29
The Examiner finds that one of ordinary skill in the art would have
been motivated to combine Barrett and MINOS “to ‘allow the transfer of
various types of digitized data . . .” and that “efficiency would have been
increased because ‘integrated communications [such as ISDN] allow the
transfer of all data types on one communication network’” (Ans. 24).
Appellant argues that “[t]here is no reason that one skilled in the art
would have been prompted to combine the elements of MINOS and Barrett”
(App. Br. 39) but fails to provide a rationale in support of this contention or
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to demonstrate that the motivation to combine the references provided by the
Examiner is in error. Nor do we independently find any error in the
Examiner’s findings.
The Examiner finds that “the patent owner has failed to provide
sufficient evidence that the alleged commercial success . . . was directly
derived from the invention as claimed” (Final Office Action, 3/25/09). We
agree with the Examiner because while Appellant argues that various
corporations have “taken licenses to the claimed subject matter” (App. Br.
41), “the mere existence of . . . licenses is insufficient to overcome the
conclusion of obviousness” (Sibia Neurosciences, Inc., v. Cadus
Pharmaceutical Corp., 255 F.3d 1349, 1358 (Fed. Cir. 2000)). Also, while
Appellant has asserted that certain corporations have “taken licenses,”
Appellant has not asserted any specific reasons for the alleged actions of the
cited corporations with regard to the claimed invention or a nexus between
the merits of the invention and the alleged licenses. “[O]nly little weight can
be attributed to such evidence [secondary considerations] if the patentee
does not demonstrate ‘a nexus between the merits of the invention and the
licenses of record’.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)
(citing Stratoflex, Inc., v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir.
1983)).
We therefore do not find Appellant’s arguments to be compelling and
we find no error in the rejection of claims 1-29.
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CONCLUSIONS
We conclude that the Ghafoor reference and the MINOS reference
provide enabling disclosures of the claimed subject matter; Ghafoor
discloses the features recited in claims 1-3, 5-7, 9, 11-15, 17-19, 21-24, and
26-29; Huang discloses the features recited in claims 1-3, 5-7, 9, 11-15, 17
19, 21-24, and 26; MINOS discloses the features recited in claims 1-3, 5,
and 13-15; the combination of Ghafoor and Barrett discloses or suggests the
features recited in claim 25; it would have been obvious to one of ordinary
skill in the art to have combined the Ghafoor and Huang references; it would
have been obvious to one of ordinary skill in the art to have combined the
Huang, Barrett, and Ghafoor references; and it would have been obvious to
one of ordinary skill in the art to have combined the MINOS and Barrett
references.
DECISION
The decision of the Examiner to reject claims 1-29 is AFFIRMED.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED
ack
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Counsel for Patent Owner:
Edward W. Goldstein
Goldstein, Faucett & Prebeg, L.L.P.
1177 West Loop South
Suite 400
Houston, TX 77027
Counsel for Third Party Requesters:
Alan L. Whitehurst
Jones Day
51 Louisiana Avenue, N.W.
Washington, DC 90001-2113
Thomas A. Rozylowics
Fish & Richardson P.C.
1425 K Street, N.W.
Suite 1100
Washington, D.C. 20005
Howrey LLP
c/o IP Docketing Department
Attn: Janelle D. Waack
1111 Louisiana
25th Floor
Houston, TX 77002-5242
Robert C. Laurenson
Howrey LLP
2020 Main Street
Suite 10000
Irvine, CA 92614
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Paul Rauch
Evan Law Group LLC
600 West Jackson Blvd., Suite 625
Chicago, IL 60661
26