Ex Parte 5394140 et al

Patent Trial and Appeal Board

May 27, 2014

90010278 (P.T.A.B. May. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/010,278 09/16/2008 5394140 347236US 8689
22850 7590 05/27/2014
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
TARAE, CATHERINE MICHELLE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/27/2014 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
____________

Ex parte MOTOROLA MOBILITY LLC
____________

Appeal 2011-002823
Reexamination Control 90/010,278
Patent 5,394,1401
Technology Center 3900
____________

Before SCOTT R. BOALICK, Vice Chief Administrative Patent Judge,
ALLEN R. MacDONALD, KARL D. EASTHOM,
BARBARA A. BENOIT, and LYNNE E. PETTIGREW,
Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.
DECISION ON APPEAL
On March 13, 2012, the Board issued a decision affirming the
Examiner’s rejection of claims 1-5 and 8-20 and reversing the Examiner’s
rejection of claims 6 and 7 in this ex parte reexamination of U.S. Patent No.

1 Poh-T’in Wong, Allen J. Weidler, and William J. Burke, Method and
Apparatus for Pre-Programmed Call-Back-Number-Determined Alert
(issued Feb. 28, 1995).
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5,394,140 (the ’140 patent). Motorola Mobility LLC, the owner of the ’140
patent, appealed the Board’s decision to the United States Court of Appeals
for the Federal Circuit. On motion by the Director of the United States
Patent and Trademark Office, the Federal Circuit remanded the case for
further proceedings. In re Motorola Mobility LLC, No. 2012-1470 (Fed. Cir.
Mar. 5, 2013) (order). In the remand order, the Federal Circuit directed the
Board to reassess its obviousness analysis in light of the Director’s
concession that the Examiner and the Board failed to address whether the
algorithm in Figure 4 of Appellant’s patent disclosure is part of the structure
corresponding to the “processor means” limitation in claim 1 under 35
U.S.C. § 112, ¶ 6. Id. at *2-3. In view of the Federal Circuit’s order, we
withdraw our March 13, 2012, decision and substitute this decision in its
place.
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(b) from a final rejection of
claims 1-20 in this ex parte reexamination proceeding. We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306.
We affirm-in-part.
The Invention
The ’140 patent discloses an apparatus in a communication receiver
for producing different alerts for different call-back numbers to enable a user
to identify a call-back number from its corresponding alert. Abstract; col. 1,
ll. 64-68. The apparatus includes a memory for storing programmed call-
back numbers and their corresponding special audible alerts as well as a
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programmed default audible alert. Col. 4, ll. 42-59; Fig. 2. The apparatus
also includes a processor for comparing a received call-back number to the
programmed call-back numbers and, upon finding a match, instructing an
audio alert generator to emit the special audible alert corresponding to the
matched programmed call-back number. Col. 4, ll. 33-36; col. 5, l. 51 –
col. 6, l. 16; Fig. 4. If a match is not found, the processor instructs the audio
alert generator to emit the programmed default audible alert. Col. 6,
ll. 17-29.
Claims 1, 8, and 15 are independent. Claims 1, 6, and 13 are
illustrative of the invention (disputed limitations in italics):
1. A communication receiver comprising:
receiver means for receiving a message comprising at
least a received call-back number;
storage means for storing at least one user-programmed
call-back number along with data defining at least one
corresponding user-programmed special audible alert, and
further for storing data defining a user-programmed default
audible alert;
processor means coupled to the receiver means for
processing the message to derive the received call-back number
and coupled to the storage means for comparing the received
call-back number with the at least one user-programmed call-
back number; and
audible alert generation means coupled to the processor
means for generating, in response to the received call-back
number being found equal to a call-back number included in the
at least one user-programmed call-back number, the
corresponding user-programmed special audible alert in
accordance with the data defining said alert,
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wherein the processor means comprises a first processor
element for controlling the audible alert generation means to
generate the user-programmed default audible alert in response
to the received call-back number being found not equal to any
call-back number included in the at least one user-programmed
call back number.
6. The communication receiver in accordance with
claim 2, wherein the user control means comprises:
means for a user to select a cadence for a new user-
programmed special audible alert; and
means for a user to select a tone frequency for the new
user-programmed special audible alert, and
wherein the audible alert generation means generates the
new user-programmed special audible alert in accordance with
the selected cadence and tone frequency.
13. The selective call receiver in accordance with claim
9, wherein the user controls comprise:
first elements that allow a user to select a cadence for a
new user-programmed special audible alert; and
second elements that allow a user to select a tone
frequency for the new user-programmed special audible alert,
and
wherein the audible alert generator generates the new
user-programmed special audible alert in accordance with the
selected cadence and tone frequency.
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Rejection on Appeal
The Examiner has rejected claims 1-20 under 35 U.S.C. § 103(a) as
being unpatentable over Breeden (US 5,066,949, Nov. 19, 1991) and
Amamiya (JP S61-288541, Dec. 18, 1986). Ans. 4-17.
Issues
1. Does Amamiya teach or suggest a “user-programmed default
audible alert,” as recited in independent claims 1, 8, and 15?
2. Does Amamiya teach or suggest the “storage means” and
“processor means” limitations recited in independent claim 1?
3. Does Amamiya teach or suggest elements that allow a user to
select a cadence and a tone frequency for a user-programmed special audible
alert, as recited in dependent claim 13 and commensurately recited in claim
20, and elements that allow a user to select a cadence and a tone frequency
for a user-programmed default audible alert, as recited in dependent claim
14?
4. Has the Examiner identified structures corresponding to the
“means for a user to select a cadence” and “means for a user to select a tone
frequency” limitations in dependent claims 6 and 7?
ANALYSIS
Claims 1-5, 8-12, and 15-19: “user-programmed default audible alert”
Appellant contends that Amamiya does not teach or suggest a “user-
programmed default audible alert,” as recited in independent claims 1, 8, and
15. App. Br. 8-9. Specifically, Appellant argues that the Examiner has
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misinterpreted the claim term “to read on Amamiya’s silent alerts.” App.
Br. 8.
Appellant’s contention is unpersuasive. Contrary to Appellant’s
argument, the Examiner does not interpret the claim term to read on
Amamiya’s silent alerts. Rather, the Examiner explains that Amamiya
teaches that a “normal (default) alert is used when the call-back number has
not been registered.” Ans. 19. The Examiner also explains that Amamiya
teaches that a “normal (default) alert is audible, because it at least rumbles.”
Ans. 19-20; see also Amamiya, p. 228, col. 2, ¶ 2 (“[A] normal receiving
tone will rumble if caller number 103 is not registered.”). The Examiner
further explains that Amamiya teaches or suggests that a default alert is user-
programmed “because the volume can be set and the rumble function can be
turned on or off.” Ans. 20; see also Amamiya, p. 228, col. 2, ¶ 2 (“[I]t is
possible to set calling volume zero and make no rumble occur for calling
from person other than specified person at mid-night.”). Based on the cited
portions of Amamiya, we agree with the Examiner that Amamiya teaches or
suggests a “user-programmed default audible alert.” See Ans. 20.
For these reasons and the reasons set forth by the Examiner (Ans. 19-
20), we sustain the Examiner’s rejection of independent claims 8 and 15 as
well as dependent claims 9-12 and 16-19, for which Appellant has not made
separate, detailed arguments. Appellant presents additional arguments for
claim 1, which we address in the following section.
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Claims 1-5: Means-plus-function limitations
Appellant argues that the prior art references do not teach or suggest
certain limitations in claim 1 that invoke 35 U.S.C. § 112, ¶ 6.2 Beginning
with the “storage means” limitation, Appellant argues that Amamiya does
not teach the recited function “storing data defining a user-programmed
default audible alert.” App. Br. 11. As explained above, however,
Amamiya teaches or suggests a user-programmed default audible alert. See
Ans. 20. Moreover, programming a device to emit a default audible alert
necessarily involves storing the alert within the device. See Ans. 22.
Appellant further contends that Amamiya does not teach or suggest a
structure that is the same or equivalent to Appellant’s disclosed structure
corresponding to the recited “storage means.” App. Br. 11; Reply Br. 5.
According to Appellant, the corresponding structure is EEPROM 210, as
shown in Figure 2 of the ’140 patent. App. Br. 2, 10. We agree with the
Examiner that Amamiya teaches a memory (item 6 in Figure 1) that is
equivalent to Appellant’s disclosed EEPROM for storing a user-
programmed default audible alert. See Ans. 21-22.
Turning to the “processor means” limitation of claim 1, Appellant
contends that Amamiya does not teach or suggest either the identical
function or a structure that is the same or equivalent to Appellant’s disclosed
corresponding structure. App. Br. 11-12; Reply Br. 5-6. Appellant argues

2 Paragraph 6 of 35 U.S.C. § 112 was replaced with newly designated
§ 112(f) when § 4(c) of the Leahy-Smith America Invents Act, Pub. L. No.
112-29 (2011) (“AIA”) took effect on September 16, 2012. Because this
case was filed before that date, we refer to the pre-AIA version of § 112 in
this decision.
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that “[t]here is no disclosure in Amamiya . . . that processing Amamiya’s
signal control circuit 5 retrieves data defining a ‘user-programmed default
audible alert’ from storage means and controls audible alert generation
means.” App. Br. 11-12. Appellant also asserts that “signal control circuit 5
is not an equivalent structure to the claimed ‘processor means’ because it
does not retrieve data defining a ‘user-programmed default audible alert’
from storage means and control an audible alert generation means.” App.
Br. 12 (emphasis added). Further, Appellant argues that the corresponding
structure in Appellant’s disclosure includes steps 412 and 426 of Figure 4,
which, according to Appellant, “entail[] reading cadence and tone identifiers
from the means for storage.” Reply Br. 6. Because “Amamiya does not
provide a user programmed cadence function,” Appellant contends that
Amamiya cannot teach an equivalent structure for retrieving the same. Id.
Appellant’s arguments do not persuade us that the Examiner erred.
The first step in interpreting a means-plus-function limitation is to determine
the recited function. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
1321 (Fed. Cir. 2003). Claim 1 recites three functions performed by the
“processor means”: “processing the message to derive the received call-
back number,” “comparing the received call-back number with the at least
one user-programmed call-back number,” and “controlling the audible alert
generator means to generate the user-programmed default audible alert in
response to the received call-back number being found not equal to any call-
back number included in the at least one user-programmed call back
number” (emphases added). As the Examiner correctly notes, “claim 1 does
not require a processor means for retrieving data defining a user-
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programmed default audible alert from storage means,” as asserted by
Appellant. Ans. 22 (emphasis added). In other words, retrieving data is not
a function recited in claim 1.
The second step in interpreting a means-plus-function limitation is to
determine the corresponding structures in the written description that
perform the recited functions. Omega Eng’g, 334 F.3d at 1321. For a
computer-implemented, means-plus-function limitation reciting a function
that cannot be performed by a general purpose computer without special
programming, the disclosed structure includes the algorithm for performing
the claimed function. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312
(Fed. Cir. 2012) (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech.,
521 F.3d 1328, 1333 (Fed. Cir. 2008)). In this case, Appellant points to the
flowchart in Figure 4 of Appellant’s disclosure as the algorithm that
performs the functions of the “processor means.” App. Br. 3; Reply Br. 6.
In particular, Appellant cites as corresponding structure step 426, in which
the microprocessor reads default alert cadence and tone identifiers from the
EEPROM, and step 412, in which the microprocessor accesses ROM to
fetch alerts firmware for processing the alert cadence and tone identifiers.
Reply Br. 6; ’140 patent, Fig. 4.
We disagree with Appellant’s identification of steps 426 and 412 as
corresponding structure for the processor means recited in claim 1. A
disclosed structure is corresponding “only if the specification . . . clearly
links or associates that structure to the function recited in the claim.”
B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997).
“In other words, the structure must be necessary to perform the claimed
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function.” Omega Eng’g, 334 F.3d at 1321 (citing Northrop Grumman
Corp. v. Intel Corp., 325 F.3d 1346, 1352 (Fed. Cir. 2003)). Therefore, the
corresponding structure for the recited processor means comprises only
those parts of the algorithm in Figure 4 necessary for performing the
processing, comparing, and controlling functions. Steps 426 and 412 do not
relate to the processing and comparing functions, which are performed in
earlier steps of Figure 4. Nor are steps 426 and 412 necessary for
performing the recited function of controlling the audible alert generation
means. The only portion of Figure 4 that is linked clearly to the
“controlling” function and is necessary for performing that function is step
414, in which the microprocessor sends alerting instructions to the audible
alert generator. See ’140 patent, col. 6, ll. 5-7, Fig. 4. Therefore, contrary to
Appellant’s argument (Reply Br. 6), the disclosed algorithmic structure
corresponding to the “processor means” in claim 1 does not involve reading
cadence and tone identifiers from the storage means.
Having interpreted “processor means” in accordance with § 112, ¶ 6,
we consider whether the prior art teaches that limitation. Appellant contends
that Amamiya does not teach a “processor means” as disclosed in
Appellant’s written description or an equivalent structure because Amamiya
does not teach retrieving a user-programmed default audible alert that
includes a user-programmed cadence. App. Br. 11-12; Reply Br. 6. As
discussed, however, the proper interpretation of the “processor means”
limitation in claim 1 does not require a processor that retrieves cadence
information because (i) the claim does not recite a “retrieving” function, and
(ii) the disclosed structure (including the disclosed algorithm) for performing
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the recited functions does not include retrieval of cadence data. Therefore,
Appellant’s argument is unpersuasive. Instead, we agree with the Examiner
that Amamiya teaches a processor means (signal control circuit 5) for
controlling the audible alert generation means (sounding unit 18) via ringing
volume switching circuit 15 and ringing tone switching circuit 16 to generate
the user-programmed default audible alert. See Ans. 22-23; Amamiya,
p. 224, col. 2, ll. 20-24, 36-42.
For these reasons and the reasons set forth by the Examiner (Ans. 21-
23), we sustain the Examiner’s rejection of independent claim 1 as well as
dependent claims 2-5, for which Appellant has not made separate, detailed
arguments.
Claims 13, 14, and 20
Dependent claim 13 recites “elements that allow a user to select a
[cadence and a tone frequency] for a new user-programmed special audible
alert.” Dependent claim 14 recites “elements that allow a user to select a
[cadence and a tone frequency] for the user-programmed default audible
alert.” Dependent claim 20 recites limitations similar to those in claim 13.
The Examiner finds these limitations taught by Amamiya because
Amamiya teaches new user-programmed alerts that are ring tones. Ans. 14.
According to the Examiner, “[t]hose of ordinary skill in the art at the time of
the invention would have understood that each ring tone has its own unique
cadence and tone frequency[, and by] selecting the ring tone, the user
automatically selects its cadence and tone frequency.” Ans. 20.
Appellant contends the Examiner erred in finding these limitations
taught by Amamiya. App. Br. 9. Appellant emphasizes that the “claims
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require user controls that allow a user to select a tone or cadence for a
programmed alert.” Reply Br. 4. In Appellant’s view, the “mere selection
of a ring tone” as taught in Amamiya does not provide customization of tone
and cadence as required by the claims. Id.
Appellant has persuaded us that the Examiner erred. While we agree
that a ring tone has a cadence and a tone frequency, the recited limitations
require that a user be allowed to select a cadence and a tone frequency, not
just select a ring tone that happens to have a particular cadence and tone
frequency. Accordingly, we do not sustain the Examiner’s rejection of
claims 13, 14, and 20.
Claims 6 and 7
Appellant contends that the Examiner erred in rejecting claims 6 and 7
because (i) they contain means-plus-function limitations, and (ii) “the
Examiner has not identified the structure of the specification, compared this
structure to the art of record, or explained the conclusion of structural
equivalence.” App. Br. 12. As asserted by Appellant, the Examiner has not
performed any comparison between structures in Appellant’s disclosure and
structures in the prior art. Ans. 23. Rather, the Examiner concludes that the
“means for a user to select a cadence” and “means for a user to select a tone
frequency” limitations are not means-plus-function limitations in accordance
with 35 U.S.C. § 112, ¶ 6.
We agree with Appellant that the Examiner erred. The recited
limitations are presumed to invoke § 112, ¶ 6, because they contain “means
for” language. See Personalized Media Commc’ns, LLC v. Int’l Trade
Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998). The presumption is not
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overcome in this case because the limitations fail to recite sufficient
structure for performing the specified functions. See id. at 704. Because the
Examiner has not identified the means-plus-function limitations in claims 6
and 7 and has not compared any disclosed structures corresponding to those
limitations with any structures in the prior art, the Examiner has failed to
establish a prima facie case of obviousness. Accordingly, we do not sustain
the Examiner’s rejection of claims 6 and 7.
DECISION
We affirm the Examiner’s decision rejecting claims 1-5, 8-12, and 15-
19.
We reverse the Examiner’s decision rejecting claims 6, 7, 13, 14, and
20.
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-IN-PART

peb
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OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 Duke Street
Alexandria, VA 22314

THIRD PARTY REQUESTOR:

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