Ex Parte 5958006 et al

Patent Trial and Appeal Board

Nov 16, 2012

90010889 (P.T.A.B. Nov. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/010,889 04/15/2010 5958006 357037US91RX 5980
22850 7590 11/19/2012
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
RYMAN, DANIEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/19/2012 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, INC.
Patent Owner & Appellant
____________________

Appeal 2012-006991
Reexamination Control 90/010,889
Patent US 5,958,006 C11
Technology Center 3900

____________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and
JOSIAH C. COCKS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge

DECISION ON APPEAL
STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. § 134(b) from the final
decision of the Examiner to reject claims 26 and 27. We have jurisdiction
under 35 U.S.C. § 306. Oral hearing was August 15, 2012.
We affirm.

1 The patent was subject to a prior ex parte reexamination proceeding in
which the reexamination certificate issued January 12, 2010.
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Invention
The '006 patent relates to select and summary indices that are used to
provide user flexibility in reviewing and requesting otherwise filtered data.
The indices contain identifying (summary) information about data which has
not been fully transferred between a communication server and a remote
unit. '006 patent Abstract.

Representative Claim
26. A controller of a communication unit adapted for
requesting data over a wireless communication channel from a
further data processing host via a communication server, the
controller comprising:

(a) a summary store to store identifying information
received from the host via the communications server about
data units not sent from the host to the communication unit and
not received at the communication unit,

wherein said data units are individually filtered prior to
reception at the communication unit, based upon user definable
filter parameters.
(App. Br. 18, Claims Appendix).

Prior Art

Hoshi et al., A Mobile Pen-Based Computing System for
Cellular Telephone Networks, IEEE, Pub. No. 0-7803-0917-
0/93 (1993) (hereinafter “Hoshi”).

Shi-Kuo Chang et al., A Knowledge-Based Message
Management System ACM Transactions on Office Information
Systems, Vol. 5, No. 3, pp. 213-236, (1987) (hereinafter
“Chang”).
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Owner’s Contentions
Owner contends that the Examiner erred in rejecting claims 26 and 27
under 35 U.S.C. § 103(a) over Hoshi and Chang.

DISCUSSION
Of the claims subject to reexamination (1, 12, and 24-27), claims 1,
12, 24, and 25 have been indicated to be patentable. Claims 26 and 27 are
rejected. Because Appellant does not argue dependent claim 27 separately,
we will decide the appeal on the basis of claim 26 alone. See also 37 C.F.R.
§ 41.37(c)(1)(vii).
The Examiner’s Answer is hereby incorporated by reference. We
adopt the Examiner’s findings as our own. We add the following remarks
for emphasis.
Appellant’s Reply Brief reproduces some of the Examiner’s responses
to the arguments submitted by Appellant in the Appeal Brief. As the
Examiner notes, Hoshi is found to teach all the limitations of claim 26.
Chang is cited only in the alternative as further support to show that a
claimed feature was well known in the art. Appellant has not shown that
Chang is necessary to remedy any deficiency in Hoshi taken alone.
Moreover, the Examiner agrees that combining Hoshi and Chang in such a
way to add further email transmissions to Hoshi’s “urgent” emails would be
an improper combination. See Final Rej. 8. As such, the evidence provided
by the proffered Rule 132 declaration by Dr. Raymond W. Nettleton might
be responsive to the prior rejection of claims 1, 12, 24, and 25, which have
subsequently been indicated as patentable, but not to the present rejection of
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claims 26 and 27. See Nettleton Decl. ¶ 12 (“It is my understanding that the
current rejection of the '006 Patent is based upon a belief that the Hoshi
system could be modified to maintain its urgent email only operating
principle, but at the same time forward information on all email.”).
We agree with the Examiner that Hoshi’s Mobile Station Server does
all that is required of the claimed “host.” Appellant points to no special
limiting definition in the '006 patent, but seems to allege that the term has
some special recognized meaning in the pertinent art that would distinguish
over Hoshi. However, Appellant has not provided any extrinsic evidence to
show that the artisan would not have considered the Mobile Station Server a
“host,” notwithstanding that the Server does everything that the claim
requires of the “host.” Moreover, the Office Information System (Hoshi
381, Fig. 1), which contains the Mobile Station Server, appears to meet all of
Appellant’s unfounded requirements of a “host.”
Appellant also argues that the claimed “summary store” requires more
than the display buffer identified in Hoshi, notwithstanding that it appears to
be uncontested that the display buffer stores “identifying information”
consistent with the requirements of claim 26.2 Appellant urges that we read
limitations into the claim from the Specification because the '006 patent is

2 To the extent that Appellant may hold to the questionable reading of the
claimed “information” in the Appeal Brief (at 9), Appellant’s Reply Brief
does not address the response by the Examiner (Ans. 10-11), which we find
to be persuasive.

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alleged to describe a summary store 208 (Fig. 2)3 separate from user I/O
display 204, and the summary store is described as a “significant
component” of the invention.
However, the “significant feature” description relied upon by
Appellant at column 11, lines 27 through 34 of the '006 patent addresses the
“summary index,” rather than the physical medium in which relevant
information may be stored. Further, the '006 patent expressly describes how
broadly the “summary store” is to be interpreted.
Specific features of data exchange unit 206 [Fig. 2] preferably
includes (as more fully described below) a prestage filter (PSF)
manager 208, rate governor (RG) 209, user profile store 212,
select and summary index store 213, and mail store 214 (a store
being any available device (e.g., ROM (read-only memory),
disks) or program (e.g., a database) for storage of the specified
information).

('006 patent col. 5, ll. 35-41) (emphasis added).
Appellant cites, in both briefs, In re Suitco Surface, Inc.4 to suggest
that the “summary store” has not been read or interpreted in light of the
Specification. In fact, however, the term has. See '006 patent col. 5, ll. 35-
41. Moreover, in Suitco Surface our reviewing court held that the express
language of the claims required a “material for finishing the top surface of
the floor,” such that an interpretation that allows the finishing material to fall
anywhere above the surface being finished, regardless of whether it actually

3 Appellant refers to “summary store 208” in both briefs. According to the
'006 patent (e.g., col. 9, ll. 24-27), element 208 is the “prestage filter (PSF)
unit” or manager.

4 Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010).
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“finishes” the surface, represented error. Suitco Surface, 603 F.3d at 1260.
In this case, the express language of claim 26 does not require anything of
the “summary store” (or, for that matter, the “host”) that is not taught by
Hoshi. Further, our reviewing court has repeatedly warned against confining
the claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
We find that the preponderance of the evidence supports the
Examiner’s conclusion with respect to obviousness of the subject matter as a
whole of claim 26. We sustain the Examiner’s rejection.

DECISION
The Examiner’s decision to reject claims 26 and 27 is affirmed.
Extensions of time for taking any subsequent action in connection
with this appeal are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R.
§ 41.50(f).

AFFIRMED
rvb

PATENT OWNER:

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314

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Third Party Requester:

WILMER CUTLER PICKERING HALE AND DORR LLP
399 PARKE AVENUE
NEW YORK, NY 10022-4614