UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`Microsoft Corporation,
`Petitioner
`
`v.
`
`
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`
`____________
`
`
`
`Case IPR2016-01581
`Patent 5,754,946
`
`____________
`
`
`
`PATENT OWNER MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`BACKGROUND ............................................................................................. 1 
`I.
`INTRODUCTION ........................................................................................... 2 
`II.
`III. PROPER CLAIM CONSTRUCTION ............................................................ 6 
`A.
`Rules Governing Claim Construction ................................................... 6 
`1.
`Phillips Standard Governs .......................................................... 6 
`i.
`Look to Claims Themselves and Then
`Specification ..................................................................... 6 
`ii.
`Can Read Specification Limitations into Claims ............. 7 
`iii. Can Rely on Extrinsic Evidence ....................................... 7 
`Background on the Technology and the ‘946 Patent ............................ 8 
`1.
`Person of Ordinary Skill in the Art ............................................. 8 
`2.
`Claim Limitations ....................................................................... 8 
`Construction of Independent Claim Terms ........................................... 9 
`1.
`“retransmission” or “retransmitting” of claims 1 and 7-8 .......... 9 
`2.
`“means for receiving a radio frequency message from the
`network” of claim 1..................................................................... 9 
`“means for transmitting, only upon actuation of the
`switch, a signal to the communications network
`requesting retransmission of said specified portion of said
`message” of claim 1 .................................................................. 10 
`“means for receiving said specified portion retransmitted
`from the communications network and for displaying the
`received specified portion on the display” of claim 1 .............. 11 
`“means for detecting errors in the received message” of
`claim 2 ....................................................................................... 11 
`“means for highlighting said errors when the message is
`displayed on said display” of claim 2 ....................................... 12 
`“means for transmitting radio frequency signals
`containing a message to the mobile unit” of claim 7 ................ 12 
`
`B.
`
`C.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`
`
`

`
`8.
`
`9.
`
`“means for receiving, from the mobile unit, radio
`frequency signals representing a portion of the message
`that the user desires retransmission” of claim 7 ....................... 13 
`“means for retransmitting radio frequency signals
`containing the portion of the message to the mobile unit”
`of claim 7 .................................................................................. 13 
`10. Limitations regarding a “portion of” a message of claims
`1 and 7-8 .................................................................................... 14 
`D.
`Krebs .................................................................................................... 14 
`E.
`Schwendeman ...................................................................................... 21 
`F.
`Yoshida ................................................................................................ 21 
`IV. GROUND 3 – CLAIMS 1, 4, AND 7-8 ARE NOT ANTICIPATED
`BY KREBS AND ARE NOT OBVIOUS OVER KREBS. ............................ 22 
`A.
`Rules on anticipation and obviousness ............................................... 22 
`B.
`Krebs does not anticipate or render claims 1 and 7-8 obvious. .......... 23 
`C.
`Krebs does not anticipate or render dependent claim 4 obvious. ....... 30 
`V. GROUND 4 – CLAIMS 1-2, 4, AND 7-9 ARE NOT OBVIOUS
`OVER KREBS IN VIEW OF SCHWENDEMAN AND YOSHIDA. ............. 30 
`A.
`Krebs, Schwendeman, and Yoshida do not render claims 1 and
`7-8 obvious. ......................................................................................... 30 
`Krebs, Schwendeman, and Yoshida do not render dependent
`claims 2, 4, and 9 obvious. .................................................................. 35 
`VI. CONCLUSION .............................................................................................. 35 
`
`B.
`
`
`
`
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES 
`Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir.
`2000) ................................................................................................................... 22
`Ex parte Frye, 94 USPQ 2d 1072 (BPAI 2010) ...................................................... 22
`Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986) ................ 6
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) .............................................................. 22
`In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) ............................. 7
`In re Royka, 490 F.2d 981 (CCPA 1974) ......................................................... 22, 30
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 22
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ..................... 22
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .......................................6, 7
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) ........... 7
`Vitrionics Corp. v. Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996) ............................. 6
`Xerox Corp. v. 3Com Corp., 458 F.3d 1310 (Fed. Cir. 2006) ................................. 22
`OTHER AUTHORITIES 
`35 United States Code § 102 ..................................................................... 1, 3, 22, 35
`35 United States Code § 103 ............................................................................ passim
`37 C.F.R. § 42.100 ..................................................................................................... 1
`37 C.F.R. § 42.107 ..................................................................................................... 2
`Manual of Patent Examining Procedure § 2111.01 ................................................... 7
`Manual of Patent Examining Procedure § 2558 ........................................................ 6
`
`
`
`
`iii
`
`
`
`

`
`
`I.
`
`BACKGROUND
`
`On August 11, 2016, the Petitioner Microsoft Corporation (“Microsoft” or
`
`“Petitioner”) filed a Petition for Inter Partes Review under 37 C.F.R. § 42.100,
`
`requesting inter partes review of claims 1-2, 4, and 7-9 of U.S. Patent No.
`
`5,754,946 (“the ’946 Patent”) on two grounds. The Petitioner asserts that claims 1-
`
`2, 4, and 7-9 of the ’946 Patent are unpatentable over the following references
`
`under 35 U.S.C. §§ 102, 103:1
`
`Ground 3 - Claims 1, 4, and 7-8 as anticipated and obvious over U.S. Patent
`
`No. 5,448,759 (“Krebs”); and
`
`Ground 4 – Claims 1-2, 4, and 7-9 as obvious over Krebs in view of U.S.
`
`Patent No. 5,396,537 (“Schwendeman”) in view of U.S. Patent No.
`
`5,031,179 (“Yoshida”).
`
`The ‘946 Patent, entitled “Nationwide Communication System,” was filed
`
`on September 21, 1993 and issued on May 19, 1998. The ‘946 Patent expired on
`
`May 19, 2015.
`
`The ‘946 Patent describes and claims methods and systems for
`
`communication between a system network and a mobile unit. The system network
`
`Grounds 1 and 2 involving four other references: Japanese Unexamined
`1
`Patent Application H2-213237 (“Akiyama”), U.S. Patent No. 4,940,963
`(“Gutman”), U.S. Patent No. 4,644,351 (“Zabarsky”), and U.S. Patent No.
`5,311,516 (“Kuznicki”), are described in another petition, IPR2016-01576.
`
`1
`
`

`
`
`includes a plurality of base transmitters and base receivers included in the network.
`
`The base transmitters are divided into zonal assignments and broadcast in
`
`simulcast using multi-carrier modulation techniques. The system network controls
`
`the base transmitters to broadcast in simulcast during both systemwide and zonal
`
`time intervals. The system network dynamically alters zone boundaries to
`
`maximize information throughput. The system also uses a mobile unit which
`
`receives messages from the network and transmits messages to the network. The
`
`mobile unit includes a switch that allows a user to request the network to
`
`retransmit a portion of a received message that contains errors. Ex. 1001 at
`
`Abstract.
`
`II.
`
`INTRODUCTION
`
`The Patent Owner, Mobile Telecommunications Technologies, LLC,
`
`submits this Preliminary Response to the Petition for Inter Partes Review of
`
`claims 1-2, 4, and 7-9 of the ‘946 Patent. 37 C.F.R. § 42.107.
`
`The Patent Owner respectfully requests that the Board deny the Petition on
`
`every ground alleged by the Petitioner for, at least, the following reasons.
`
`First, with regard to Ground 3, Krebs does not teach or suggest, at least, at
`
`least, “a switch actuatable to specify a portion of the displayed message for which
`
`a user desires to retransmission from the communications network,” as recited in
`
`claim 1, “a switch actuatable to specify a portion of the displayed message for
`
`
`
`2
`
`

`
`
`which a user desires retransmission … means for retransmitting radio frequency
`
`signals containing the portion of the message to the mobile unit,” as recited in
`
`claim 7, and “receiving an indication of a portion of the displayed message for
`
`which a user desires retransmission; transmitting, only upon receipt of the
`
`indication, a signal requesting retransmission of said indicated portion of said
`
`message,” as recited in claim 8 (hereinafter collectively referred to as the “user
`
`specified or indicated portion limitation”). Dependent claim 4 is not obvious over
`
`Krebs, because independent claim 1 from which it depends, is not obvious over
`
`Krebs and because of the additional features it recites.
`
`For anticipation under 35 U.S.C. §102 a proponent must show “that the four
`
`corners of a single prior art document describe every element of the claimed
`
`invention.” Obviousness under 35 U.S.C. §103 requires that all claim limitations
`
`must be taught or suggested by the applied references. For Ground 3, the
`
`Petitioner relies on Krebs for the user specified or indicated portion limitation. Its
`
`argument is a simple assertion that, because the original message in Krebs gets
`
`transmitted in response to a notification message and the notification message may
`
`contain a part of the original message, part of the notification message gets
`
`retransmitted. It has not argued that a part of the notification message is specified
`
`or indicated by the user as required by the user specified or indicated portion
`
`limitation. Nor has it argued that retransmission of a part of the notification
`
`
`
`3
`
`

`
`
`message is desired by the user also as required by the user specified or indicated
`
`portion limitation.
`
`Also, the Patent Owner submits that in Krebs there is no need for the user to
`
`specify or indicate to the central processor what part of the notification message
`
`should be retransmitted with the original message. Additionally, the central
`
`processor of Krebs knowing that it had already sent part of the original message in
`
`the notification message could conserve bandwidth by not retransmitting that
`
`portion of the notification message. This latter argument is admitted by the
`
`Petitioner.
`
`At least because the Petitioner’s argument regarding Krebs teaching or
`
`suggesting this limitation does not even include a discussion of the elements of the
`
`limitation, there is no reasonable likelihood that the Petitioner can prevail with
`
`regard to claims 1, 4, and 7-8 of the ‘946 Patent according to Ground 3.
`
`Second, with regard to Ground 4, Krebs, Schwendeman, and Yoshida,
`
`individually or in combination, do not teach or suggest, at least, the user specified
`
`or indicated portion limitation as recited in claims 1 and 7-8. Dependent claims 2,
`
`4, and 9 are not obvious over Krebs, Schwendeman, and Yoshida, because
`
`independent claims 1 and 8, from which they depend respectively, are not obvious
`
`over Krebs, Schwendeman, and Yoshida and because of the additional features they
`
`recite.
`
`
`
`4
`
`

`
`
`
`Obviousness under 35 U.S.C. §103 requires that all claim limitations must
`
`be taught or suggested by the applied references. For Ground 4, the Petitioner
`
`relies on Schwendeman, and Yoshida for the user specified or indicated portion
`
`limitation. Its entire argument with regard to this limitation is that Schwendeman
`
`discusses a retransmission of an entire message and Yoshida describes
`
`retransmitting the erroneous part of a message. Again it does not argue that a part
`
`of the notification message is specified or indicated by the user or that
`
`retransmission of a part of the notification message is desired by the user. In
`
`addition, the portions of Schwendeman and Yoshida cited by the Petitioner do not
`
`support such an argument. At least because the Petitioner’s argument regarding
`
`Schwendeman and Yoshida teaching or suggesting this limitation does not even
`
`include a discussion of the elements of the limitation, there is no reasonable
`
`likelihood that the Petitioner can prevail with regard to claims 1-2, 4, and 7-9 of
`
`the ‘946 Patent according to Ground 4.
`
`Therefore, there is no reasonable likelihood that the Petitioner can prevail
`
`with regard to claims 1-2, 4, and 7-8 of the ‘946 Patent on either ground.
`
`
`
`5
`
`

`
`
`III. PROPER CLAIM CONSTRUCTION
`A. Rules Governing Claim Construction
`
`1.
`Phillips Standard Governs
`The ‘946 Patent expired on May 19, 2015, so the proper claim construction
`
`is that used in district court review. The broadest reasonable interpretation (BRI)
`
`standard does not apply. In regard to the proper claim construction used in district
`
`court review, MPEP 2258 provides that “[i]n a reexamination proceeding involving
`
`claims of an expired patent, claim construction pursuant to the principle set forth
`
`by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321,
`
`1329 (Fed. Cir. 2005) (words of a claim “are generally given their plain and
`
`ordinary meaning” as understood by a POSA at the time of the invention) should
`
`be applied since the expired claims are not subject to amendment. See Ex parte
`
`Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986).”
`
`i.
`Look to Claims Themselves and Then Specification
`The first step in construing claims under Phillips is to “look to the words of
`
`the claims themselves.” Vitrionics Corp. v. Conceptronic, 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996). Second, the specification must be considered when construing
`
`claim terms. Id. “[T]he specification is always highly relevant.” Id.
`
`
`
`6
`
`

`
`
`
`ii.
`Can Read Specification Limitations into Claims
`Claim construction under Phillips varies from the BRI standard in at least
`
`two important ways. Claim construction under Phillips may read limitations in the
`
`specification into the claims. For example, “[t]he presumption that a term is given
`
`its plain and ordinary meaning may be rebutted by the applicant by clearly setting
`
`forth a different definition of the term in the specification. In re Morris, 127 F.3d
`
`1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) (the USPTO looks to the
`
`ordinary use of the claim terms taking into account definitions or other
`
`“enlightenment” contained in the written description). MPEP 2111.01.
`
`iii. Can Rely on Extrinsic Evidence
`Under Phillips, “it is entirely appropriate, perhaps even preferable, for a
`
`court to consult trustworthy extrinsic evidence to ensure that the claim construction
`
`it is tending to from the patent file is not inconsistent with clearly expressed,
`
`plainly apposite, and widely held understandings from the pertinent technical
`
`field.” Pitney Bowes, Inc. v. HP Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999).
`
`In summary, under Phillips the first step in construing claims is to look to
`
`the words of the claims themselves. The second step is to consider the
`
`specification. Additionally, there is no prohibition on reading limitations in the
`
`specification into the claims, and to consult trustworthy extrinsic evidence.
`
`
`
`7
`
`

`
`
`
`B.
`
`Background on the Technology and the ‘946 Patent
`1.
`Person of Ordinary Skill in the Art
`A person having ordinary skill in the art at the time of the invention
`
`(PHOSITA) of the ’946 Patent would possess a bachelor’s degree in electrical
`
`engineering or its equivalent and about four years working in the field of wireless
`
`telecommunications networks and would possess knowledge regarding wireless
`
`transmission protocols as used in telecommunications, or equivalent education and
`
`work experience.
`
`2.
`Claim Limitations
`Independent claim 1 recites: a two-way wireless data communication system
`
`including a switch actuatable to specify a portion of the displayed message for
`
`which a user desires retransmission, and means for transmitting, only upon
`
`actuation of the switch, a signal to the communications network requesting
`
`retransmission of the specified portion of the message. Independent claim 7
`
`recites: a two-way wireless data communication system including a switch
`
`actuatable to specify a portion of the displayed message for which a user desires
`
`retransmission, means for receiving, from a mobile unit, radio frequency signals
`
`representing a portion of the message that the user desires retransmission; and
`
`means for retransmitting radio frequency signals containing the portion of the
`
`message to the mobile unit. Independent claim 8 recites: a two-way wireless data
`
`
`
`8
`
`

`
`
`communication method including receiving an indication of a portion of the
`
`displayed message for which a user desires retransmission and transmitting, only
`
`upon receipt of the indication, a signal requesting retransmission of said indicated
`
`portion.
`
`C. Construction of Independent Claim Terms
`
`1.
`
`“retransmission” or “retransmitting” of claims 1 and
`7-8
`
`Challenged claims 1 and 7-8 recite a “retransmission.” The Petitioner
`
`asserts that, because of issue preclusion, the interpretation of “retransmission” to
`
`the mobile unit should not be limited to a second transmission from the network to
`
`the mobile unit, but must also include a single transmission to the mobile unit if the
`
`information transmitted is relayed at least once within the network.
`
`The Patent Owner submits that the term “retransmission” should be
`
`construed to have its plain and ordinary meaning. This plain and ordinary meaning
`
`is the transmission of something again, or for a second time.
`
`2.
`
`“means for receiving a radio frequency message from
`the network” of claim 1
`Challenged claim 1 recites “means for receiving a radio frequency message
`
`from the network.” The Petitioner asserts that the corresponding function is
`
`“receiving a radio frequency message from the network” and the linked structure
`
`includes an antenna (1502 or 1702) and a receiver (1506 or 1706).
`
`
`
`9
`
`

`
`
`
`The Patent Owner submits that the phrase “means for receiving a radio
`
`frequency message from the network” should be construed to have its plain and
`
`ordinary meaning.
`
`3.
`
`“means for transmitting, only upon actuation of the
`switch, a signal to the communications network
`requesting retransmission of said specified portion of
`said message” of claim 1
`Challenged claim 1 recites “means for transmitting, only upon actuation of
`
`the switch, a signal to the communications network requesting retransmission of
`
`said specified portion of said message.” The Petitioner asserts that the
`
`corresponding function is “transmitting, only upon actuation of the switch, a signal
`
`to the communications network requesting retransmission of said specified portion
`
`of said message” and the linked structure includes an antenna (1502), a transmitter
`
`(1520), transmit logic (1518), and a switch (1622).
`
`The Patent Owner submits that the phrase “means for transmitting, only
`
`upon actuation of the switch, a signal to the communications network requesting
`
`retransmission of said specified portion of said message” should be construed to
`
`have its plain and ordinary meaning.
`
`
`
`10
`
`

`
`
`
`4.
`
`“means for receiving said specified portion
`retransmitted from the communications network and
`for displaying the received specified portion on the
`display” of claim 1
`Challenged claim 1 recites “means for receiving said specified portion
`
`retransmitted from the communications network and for displaying the received
`
`specified portion on the display.” The Petitioner asserts that the corresponding
`
`function
`
`is “receiving
`
`said
`
`specified portion
`
`retransmitted
`
`from
`
`the
`
`communications network and displaying the received specified portion on the
`
`display” and the linked structure includes an antenna (1502) and a receiver (1506)
`
`for receiving a message portion, and further includes a display logic and a display
`
`for displaying the received portion.
`
`The Patent Owner submits that the phrase “means for receiving said
`
`specified portion retransmitted from the communications network and for
`
`displaying the received specified portion on the display” should be construed to
`
`have its plain and ordinary meaning.
`
`5.
`
`“means for detecting errors in the received message”
`of claim 2
`Challenged claim 2 recites “means for detecting errors in the received
`
`message.” The Petitioner asserts that the corresponding function is “detecting
`
`errors in the received message” and the closest possible structure includes a
`
`receiver capable of decoding error correcting codes contained in the message.
`
`
`
`11
`
`

`
`
`
`The Patent Owner submits that the phrase “means for detecting errors in the
`
`received message” should be construed to have its plain and ordinary meaning.
`
`6.
`
`“means for highlighting said errors when the message
`is displayed on said display” of claim 2
`Challenged claim 2 recites “means for highlighting said errors when the
`
`message is displayed on said display.”
`
` The Petitioner asserts that the
`
`corresponding function is “highlighting said errors when the message is displayed
`
`on said display” and the linked structure includes a display capable of highlighting
`
`errors in the message by underlining errors, placing errors in brackets, or printing
`
`errors in reserve video.
`
`The Patent Owner submits that the phrase “means for highlighting said
`
`errors when the message is displayed on said display” should be construed to have
`
`its plain and ordinary meaning.
`
`7.
`
`“means for transmitting radio frequency signals
`containing a message to the mobile unit” of claim 7
`Challenged claim 7 recites “means for transmitting radio frequency signals
`
`containing a message to the mobile unit.” The Petitioner asserts that the
`
`corresponding function is “transmitting radio frequency signals containing a
`
`message to the mobile unit” and the linked structure includes a base transmitter
`
`connected to an antenna.
`
`
`
`12
`
`

`
`
`
`The Patent Owner submits that the phrase “means for transmitting radio
`
`frequency signals containing a message to the mobile unit” should be construed to
`
`have its plain and ordinary meaning.
`
`8.
`
`“means for receiving, from the mobile unit, radio
`frequency signals representing a portion of the
`message that the user desires retransmission” of claim
`7
`Challenged claim 7 recites “means for receiving, from the mobile unit, radio
`
`frequency signals representing a portion of the message that the user desires
`
`retransmission.” The Petitioner asserts that the corresponding function is
`
`“receiving, from the mobile unit, radio frequency signals representing a portion of
`
`the message that the user desires retransmission” and the linked structure includes
`
`a base transmitter connected to an antenna.
`
`The Patent Owner submits that the phrase “means for receiving, from the
`
`mobile unit, radio frequency signals representing a portion of the message that the
`
`user desires retransmission” should be construed to have its plain and ordinary
`
`meaning.
`
`9.
`
`“means for retransmitting radio frequency signals
`containing the portion of the message to the mobile
`unit” of claim 7
`Challenged claim 7 recites “means for retransmitting radio frequency signals
`
`containing the portion of the message to the mobile unit.” The Petitioner asserts
`
`
`
`13
`
`

`
`
`that the corresponding function is “retransmitting radio frequency signals
`
`containing the portion of the message to the mobile unit” and the linked structure
`
`includes a base transmitter connected to an antenna.
`
`The Patent Owner submits that the phrase “means for retransmitting radio
`
`frequency signals containing the portion of the message to the mobile unit” should
`
`be construed to have its plain and ordinary meaning.
`
`10. Limitations regarding a “portion of” a message of
`claims 1 and 7-8
`Challenged claims 1 and 7-8 each recite a “portion of” a message. The
`
`Petitioner asserts that the term is limited to “only a portion.”
`
`The Patent Owner submits that the term a “portion of” a message should be
`
`construed to have its plain and ordinary meaning.
`
`D. Krebs
`
`Krebs is directed to improving the utilization of communication resources
`
`between a central processor and a communication unit. Ex. 1007 at 1:8-11.
`
`Communication resources are defined by the particular multiplexing scheme used.
`
`Id. at 1:16-18.
`
` However, wireless communication systems necessitate
`
`communication
`
`resources with bandwidths appropriate
`
`for
`
`the
`
`type of
`
`communication. Id. at 1:31-33. For example, file transfers or facsimile
`
`transmissions require longer bandwidths than short data messages such as pages.
`
`
`
`14
`
`

`
`
`Id. at 1:34-36. As a result, improving the utilization of communication resources
`
`requires improving the utilization of bandwidths appropriate for the type of
`
`communication.
`
`Krebs provides a method for efficient communication resource bandwidth
`
`utilization when transmitting first (short) bandwidth messages, second (long)
`
`bandwidth messages, and
`
`third (still
`
`longer) bandwidth messages
`
`to a
`
`communication unit from a central processor. Id. at 2:9-14. It does this by
`
`providing different methods for transmitting first (short) bandwidth messages and
`
`second (long) bandwidth messages or third (still longer) bandwidth messages.
`
`When a message is a first (short) bandwidth message, it directly transmits the short
`
`message to a communication unit via a first set of communication resources used
`
`primarily for short bandwidth messages. Id. at 2:9-14 and Fig. 2 at 202. This is
`
`shown below in Annotation 1 of Fig. 2 of Krebs.
`
`
`
`15
`
`

`
`
`
`
`
`When a message is a second (long) bandwidth message or a third (still
`
`longer) bandwidth message, Krebs performs a two-step process. In the first step, it
`
`prepares a first (short) bandwidth notification message for the original message and
`
`transmits the first (short) bandwidth notification message to a communication unit
`
`via a first set of communication resources used primarily for short bandwidth
`
`messages. Ex. 1007 at 2:23-28 and Fig. 2 at 203-204. The first (short) bandwidth
`
`
`
`16
`
`

`
`
`notification message is a first (short) bandwidth message that notifies the
`
`communication unit that the original message is available for transmission to it. Id.
`
`at 4:57-61. The first (short) bandwidth notification message typically contains the
`
`originator of the original message, a summary of the message, the date sent, the
`
`length of the message, priority, and cost to retrieve the entire message over the
`
`network. Id. at 4:61-65. The first step of the two-step process for second (long)
`
`bandwidth messages or third (still longer) bandwidth messages is shown below in
`
`Annotation 2 of Fig. 2 of Krebs.
`
`
`
`17
`
`

`
`
`
`
`
`The second step of the two-step process for transmitting a second (long)
`
`bandwidth message or a third (still longer) bandwidth message involves interaction
`
`with the user of the communication unit (pager) before the original message is
`
`finally sent. First, when the communication unit receives the first (short)
`
`bandwidth notification message transmitted in the first step from the central
`
`
`
`18
`
`

`
`
`processor, it displays it to a user. Ex. 1007 at 5:3-5 and Fig. 2 at 205. Next, the
`
`user, observing the first (short) bandwidth notification message, sends a response
`
`from the communication unit to the central processor. Id. at 5:22-24 and Fig. 2 at
`
`206. The response may comprise a receive message request, a delete message
`
`request, a forward message request, or a save message request. Id. at 5:24-26. If
`
`the response is a received message request, the central processor sends the original
`
`second (long) bandwidth message or a third (still longer) bandwidth message to the
`
`communication unit via a second or third set of communication resources used
`
`primarily for long bandwidth messages or longer still bandwidth messages,
`
`respectively. Id. at Fig. 2 at 207-208. The second step of the two-step process for
`
`second (long) bandwidth messages or third (still longer) bandwidth messages is
`
`shown below in Annotation 3 of Fig. 2 of Krebs.
`
`
`
`
`
`19
`
`

`
`
`
`
`
`Krebs employs this two-step process for second (long) bandwidth messages
`
`and third (still longer) bandwidth messages to more efficiently utilize the second
`
`and third sets of communication resources. By deferring transmission of a second
`
`(long) bandwidth message or a third (still longer) bandwidth message until the
`
`communication unit requests to receive it, the second and third sets of
`
`communication resources are used more efficiently. Ex. 1007 at 2:36-40. In other
`
`words, the second and third sets of communication resources are not constantly
`
`being consumed by automatically sending second (long) bandwidth messages and
`
`
`
`20
`
`

`
`
`third (still longer) bandwidth messages. Instead, they are only sent when the user
`
`requests them.
`
`The only additional cost to this two-step process is the creation and
`
`transmission of the first (short) bandwidth notification message. However, since
`
`this notification message is a shorter message than the original message and is sent
`
`via the first set of communication resources, which is used for transmitting shorter
`
`messages, the utilization of communication resources required by these first (short)
`
`bandwidth notification message is much less than the original messages.
`
`E.
`
`Schwendeman
`
`Schwendeman is directed to a method and apparatus for reliably delivering
`
`messages from a central terminal to a communication receiver in a communication
`
`system, such as an electronic mail system. Ex. 1008 at Abstract.
`
`F.
`
`Yoshida
`
`Yoshida is directed to a data communication apparatus having an error
`
`retransmission mode that allows the operator to ascertain an amount of error data
`
`when an error is contained in data, and when the error is not corrected despite
`
`retransmission of the error a predetermined number of times. It is also possible to
`
`reproduce data with respect to correctly received data by discriminating correct
`
`data contained in error data, thereby presenting error data from becoming wasted
`
`
`
`21
`
`

`
`
`as practically as possible. Ex. 1009 at Abstract.
`
`IV. GROUND 3 – CLAIMS 1, 4, AND 7-8 ARE NOT ANTICIPATED BY
`KREBS AND ARE NOT OBVIOUS OVER KREBS.
`
`A. Rules on anticipation and obviousness
`
`The CAFC has held that a proponent of anticipation under 35 U.S.C. §102
`
`must show “that the four corners of a single prior art document describe every
`
`element of the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`
`1359, 1369 (Fed. Cir. 2008) (citing Xerox Corp. v. 3Com Corp., 458 F.3d 1310,
`
`1322 (Fed. Cir. 2006), citing Advanced Display Sys. Inc. v. Kent State Univ., 212
`
`F.3d 1272, 1282 (Fed. Cir. 2000).
`
`Pursuant to the requirements for establishing a prima facie case of
`
`obviousness under 35 U.S.C. §103, all the claim limitations must be taught or
`
`suggested by the applied references. In re Royka, 490 F.2d 981 (CCPA 1974).
`
`“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
`
`statements; instead, there must be some arti