Ex Parte 5394140 et alDownload PDFPatent Trial and Appeal BoardMay 27, 201490010278 (P.T.A.B. May. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 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). Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 2 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 Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 3 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, Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 4 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. Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 5 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 Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 6 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. Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 7 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. Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 8 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- Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 9 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 Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 10 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 Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 11 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 Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 12 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 Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 13 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 Appeal 2011-002823 Reexamination Control 90/010,278 Patent 5,394,140 14 PATENT OWNER: OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P. 1940 Duke Street Alexandria, VA 22314 THIRD PARTY REQUESTOR: WILMERHALE/ NEW YORK 399 PARK AVENUE New York, NY 10022 Copy with citationCopy as parenthetical citation