Ex Parte Garcia Cadarso et al

Patent Trial and Appeal Board

Apr 1, 2013

10911393 (P.T.A.B. Apr. 1, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAMON GARCIA CADARSO, ANA GARCIA ROBLES,
MIGUEL ANGEL CAMUNAS JURADO,
GUILLERMO LOPEZ SERRANO, and JOSE LOPEZ SERRANO
____________________

Appeal 2010-008797
Application 10/911,393
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI,
MICHAEL W. KIM, BARBARA A. BENOIT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 This Decision is being re-mailed in a corrected form to correct minor
typographical and/or formatting errors. These corrections do not affect the
outcome of the Decision or the analysis relied upon by the Board, and thus
do not affect Appellants’ ability to respond to the Decision. The re-mailing
of this corrected Decision does not change Appellants’ time period for
responding, which time period shall run from the date of mailing of the
original Decision.
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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 12-16 and 18-22. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 12 under appeal reads as follows (emphasis and
formatting added):
12. An apparatus to obtain value-added services in real-time,
on the basis of a general packet radio service (GPRS) network, where
interposed between a SGSN node (Server GPRS Support Node),
which controls radio access and localization of a mobile station, and a
GGSN node (Gateway GPRS Support Node), which allow connection
between an internal network of a mobile network operator and other
external networks, the apparatus using a GTP protocol (GPRS
Tunneling Protocol) for communicating with the SGSN and with the
GGSN, and comprising:
[(a)] capturing means for establishing a first GTP tunnel with
the SGSN node and a second GTP tunnel with the GGSN node for
each PDP Context, for capturing GTP protocol data packets
submitted from the SGSN or the GGSN, and for sending a resulting
GTP data packet to its original destination; and
[(b)] execution means for activating local or remote
applications corresponding to a required service as a function of the
data packets captured and data configured in a data configuration
module of the execution means,
[(c)] wherein the capturing means further comprises an access
module for accessing the execution means to provide decoded
information and to receive a response from the activated application,
and for modifying the GTP data packets originally captured before
sending the resulting GTP data packets to the GGSN or SGSN.

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Rejection on Appeal
The Examiner rejected claims 12-16 and 18-22 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Haumont (US 6,654,589
B1), Forslow (US 2003/0039237 A1), and Gilchrist (US 7,042,855 B1). 2
Appellants’ Contention 3
Appellants contend that the Examiner erred in rejecting claim
12 under 35 U.S.C. § 103(a), because (emphasis added):
One distinguishing feature of claim 12 is an apparatus
with capturing means comprising an access module for
accessing the execution means to provide decoded information
and to receive a response from the activated application, and for
modifying the GTP data packets originally captured, the
capturing means arranged for submitting the resulting GTP
data packet to its original destination.
Another distinguishing feature of claim 12 is an
apparatus wherein the execution means activates local or
remote applications corresponding to a required service as a
function of the data packets captured and data configured in a
data configuration module of the execution means.
Nothing in the cited references, whether considered
either separately or in any permissible combination (if any),
would teach or suggest at least those two distinguishing features
of claim 12.
(App. Br. 14).
Issue on Appeal
Did the Examiner err in rejecting claims 12-16 and 18-22 as being
obvious?

2 Claims 13-16 and 18-22 depend from claim 12.
3 We do not reproduce Appellants’ remaining contentions herein.
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ANALYSIS
Claims 12-16 and 18-22
As to Appellants’ arguments as to why the Examiner has erred in
rejecting claims 12-16 and 18-22 based on the prior art references, we do not
reach the merits of the Examiner’s rejections or the merits of the references
at this time. Rather, we reverse pro forma the outstanding rejections of
claims 12-16 and 18-22 under 35 U.S.C. § 103(a) because appealed claims
12-16 and 18-22 fail to satisfy the requirements of the second paragraph of
35 U.S.C. § 112. Before a proper review of the prior art rejection can be
performed, the subject matter encompassed by the claims on appeal must be
reasonably understood without resort to speculation.
Presently, we would be forced to engage in speculation and conjecture
to determine the scope of the claimed invention because the claims are
indefinite under 35 U.S.C. § 112, second paragraph. This we decline to do.
See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection
cannot be sustained if the hypothetical person of ordinary skill in the art
would have to make speculative assumptions concerning the meaning of
claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)
(“If no reasonably definite meaning can be ascribed to certain terms in the
claim, the subject matter does not become obvious- the claim becomes
indefinite.”).

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 12-16 and 18-22 under 35 U.S.C. § 112,
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second paragraph, for indefiniteness. Claims 13-16 and 18-22 inherit their
indefiniteness based on their dependence from claim 12.
Specifically, we construe the “capturing means,” “execution means,”
and “access module” recited in independent claim 12, each as a “means-
plus-function” limitation subject to 35 U.S.C. § 112, sixth paragraph, and
conclude that claim 12 and its dependent claims are rendered indefinite
under 35 U.S.C. § 112, second paragraph, due to the Specification’s failure
to disclose corresponding structure for performing any of the recited
functions.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Appellants’ Invention
FF1. The Specification as originally filed states that:
between the SGSN node 2 and the GGSN node 3 a block 1 has
been provided that captures the GTP protocol data packets and
sends them to a block 4 for the execution of local or remote
applications, which comprises a data configuration module 5
and which is also connected to an application management
block 6, so that, by means of block 4, and starting from the
captured data packet and the data configured in the data
configuration module 5, the application corresponding to the
service required is obtained, and the information is delivered to
block 6 . . . .
(Spec. ¶ [0031] )(emphasis added).
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FF2. On February 29, 2008, the Specification was amended to state
that “between the SGSN node 2 and the GGSN node 3 a packet capture
block 1 has been provided that captures the GTP protocol data packets and
sends them to an application execution block 4 for the execution of local or
remote applications, . . .”. (Spec. ¶ [0031])(emphasis added).
FF3. The Specification as originally filed further states that block 1
“is fitted with a GGSN module 10 which captures and interprets GTP
messages” and “this module is capable of establishing a GTP tunnel.”
(Spec. ¶ [0032]).
FF4. The Specification as originally filed further states that “block 1
has an SGSN module 11 which captures messages from a GGSN node 3 as
if it was an SGSN node 2. In particular, this module is capable of
establishing a GTP tunnel with a GGSN node 3.” (Spec. ¶ [0033]).
FF5. The Specification as originally filed further states that “Block 1
also has an access module 9 to block 4, which extracts the information
provided by modules 10 and 11 and transfers it to said block 4 for its
process, and it also receives commands to modify the GTP message captured
in any of the two directions.” (Spec. ¶ [0035]) (emphasis added).
FF6. The Specification as originally filed further states that:
Regarding block 4, said block has a process module 12
which collects information from access module 9 which
accesses data configuration module 5 and from which,
according to the configuration programmed and the data
obtained, obtains the specific application to be invoked.
Therefore, process module 12, once the specific application to
be invoked is obtained, transfers the information to an
application module 13 which calls and activates the
management application module 6.
(Spec. ¶ [0036]) (emphasis added).
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PRINCIPLES OF LAW
35 U.S.C. § 112, Sixth Paragraph
(1)
Special rules of claim construction allow for claim limitations drafted
in functional language and are set forth in 35 U.S.C. § 112, sixth paragraph,
which provides for:
[a]n element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.
35 U.S.C. § 112, sixth paragraph (emphasis added). While this provision
permits a claim limitation to be set forth using solely functional language, it
operates to restrict such claim limitations to those structures, materials, or
acts disclosed in the specification (or their equivalents) that perform the
claimed function. Personalized Media Commc’ns, LLC v. Int’l Trade
Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998).
The Federal Circuit has established that use of the term “means” is
central to the analysis of whether a claim limitation should be interpreted in
accordance with 35 U.S.C. § 112, sixth paragraph: use of the word “means”
creates a rebuttable presumption that the inventor intended to invoke § 112,
sixth paragraph, whereas failure to use the word “means” creates a
rebuttable presumption that the inventor did not intend the claims to be
governed by § 112, sixth paragraph. Id. at 703-04; Flo Healthcare
Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed. Cir. 2012).
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(2)
When a claim uses the term “means” to describe a limitation, a
presumption exists that the inventors used the term to invoke 35 U.S.C.
§ 112, sixth paragraph, and the presumption can be rebutted when the same
claim recites sufficient structure to perform the claimed function in its
entirety.
When a claim uses the term “means” to describe a
limitation, a presumption inheres that the inventor used the term
to invoke § 112, ¶ 6. Altiris, Inc. v. Symantec Corp., 318 F.3d
1363, 1375 (Fed.Cir.2003). “This presumption can be rebutted
when the claim, in addition to the functional language, recites
structure sufficient to perform the claimed function in its
entirety.” Id. Claims 13 and 40 recite no such structure. As
the district court noted, the “reference to ‘control’ is simply an
adjective describing ‘means:’ [sic] it is not a structure or
material capable of performing the identified function.”
Biomedino, slip op. at 12. We agree with the district court and
hold that Biomedino has not rebutted the presumption that
§ 112, ¶ 6 applies to “control means.”
Biomedino, LLC, v. Waters Tech. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).
Once the court has concluded the claim limitation is a means-
plus-function limitation, the court must first identify the
function of the limitation. Micro Chem., Inc. v. Great Plains
Chem. Co., 194 F.3d 1250, 1258, 52 USPQ2d 1258, 1263
(Fed.Cir.1999). The court next ascertains the corresponding
structure in the written description that is necessary to perform
that function. Id. “Structure disclosed in the specification is
‘corresponding’ structure only if the specification or
prosecution history clearly links or associates that structure to
the function recited in the claim.” B. Braun Med. v. Abbott
Labs., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900
(Fed.Cir.1997).
Altiris, Inc., v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003).
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(3)
When an inventor has not signaled an intent to invoke § 112, sixth
paragraph, by using the term “means,” the presumption against its
invocation is strong but can be overcome if “the claim term fails to recite
sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function.” Lighting World, Inc. v.
Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (quoting
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002)
(internal quotation marks omitted) (citation omitted)). A claim limitation
that “essentially is devoid of anything that can be construed as structure” can
overcome the presumption. Flo Healthcare, 697 F.3d at 1374. The
presumption may be overcome by a claim limitation that uses a non-
structural term that is “simply a nonce word or a verbal construct that is not
recognized as the name of structure” but is merely a substitute for the term
“means for” associated with functional language. Lighting World, 382 F.3d
at 1360. There are numerous terms which may merely substitute for the
term “means for” associated with functional language such that the
presumption against invoking § 112, sixth paragraph may be overcome.
[A] claim element that does not include the phrase “means for”
or “step for” will not be presumed to invoke 35 U.S.C. 112,
sixth paragraph. When the claim limitation does not use the
phrase “means for,” examiners should determine whether the
presumption that 35 U.S.C. 112, paragraph 6 does not apply is
overcome if the claim limitation uses a non-structural term (a
term that is simply a substitute for the term “means for”). The
following is a list of non-structural terms that may invoke 35
U.S.C. 112, paragraph 6: “mechanism for,” “module for,”
“device for,” “unit for,” “component for,” “element for,”
“member for,” “apparatus for,” “machine for,” or “system
for.” Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096
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(Fed. Cir. 2008); Massachusetts Inst. of Tech. v. Abacus
Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006); Personalized
Media, 161 F.3d at 704; Mas-Hamilton Group v. LaGard, Inc.,
156 F.3d 1206, 1214-1215 (Fed. Cir. 1998). This list is not
exhaustive, and other non-structural terms may invoke 35
U.S.C. 112, paragraph 6.
(MPEP § 2181 I.A.; Eighth Edition, Revision 9 (August 2012)).
(4)
Claim language that further defines a term that otherwise would be a
nonce word can denote sufficient structure to avoid construction under
§ 112, sixth paragraph, MIT v. Abacus Software, 462 F.3d 1344, 1354 (Fed.
Cir. 2006), as can a claim limitation that contains a term that “is used in
common parlance or by persons of skill in the pertinent art to designate
structure,” Lighting World, 382 F.3d at 1359. Nor will claim language
invoke a § 112, sixth paragraph, construction if persons of ordinary skill in
the art reading the specification understand the term to be the name for a
structure that performs the function, even when the term covers a broad class
of structures or identifies the structures by their function. Greenberg v.
Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many
devices take their names from the functions they perform.”).
(5)
For a claim limitation interpreted under § 112, sixth paragraph, if
there is no corresponding structure disclosed in the specification, then the
claim will be found indefinite.
Once a court concludes that a claim limitation is a
means-plus-function limitation, two steps of claim construction
remain: 1) the court must first identify the function of the
limitation; and 2) the court must then look to the specification
and identify the corresponding structure for that function. Med.
Instrumentation, 344 F.3d at 1210. If there is no structure in the
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specification corresponding to the means-plus-function
limitation in the claims, the claim will be found invalid as
indefinite. See Atmel, 198 F.3d at 1378-79 (citing In re
Donaldson, 16 F.3d at 1195).
Biomedino, 490 F.3d at 950.
Judge Rich, writing for the en banc court, explained the
relationship between the second and sixth paragraphs of section
112:
[I]f one employs means-plus-function language
[per paragraph 112-6] in a claim, one must set
forth in the specification an adequate disclosure
showing what is meant by that language. If an
applicant fails to set forth an adequate disclosure,
the applicant has in effect failed to particularly
point out and distinctly claim the invention as
required by the second paragraph of section 112.
In Re Donaldson Co., 16 F.3d 1189, 1195 (Fed.Cir.1994) (en
banc). Therefore, if a claim includes a means-plus-function
limitation, failure to disclose adequate structure corresponding
to the claimed function results in the claim being invalid for
indefiniteness. In re Dossel, 115 F.3d 942, 946 (Fed.Cir.1997).
Whether the written description adequately sets forth structure
corresponding to the claimed function must be considered from
the perspective of a person skilled in the art. Intel Corp. v. VIA
Techs., Inc., 319 F.3d 1357, 1365-66 (Fed.Cir.2003) (citing
Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376
(Fed.Cir.2001)).
Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir.
2008).
(6)
For a computer-implemented claim limitation interpreted under § 112,
sixth paragraph, the corresponding structure must include the algorithm
needed to transform the general purpose computer or processor disclosed in
the specification into the special purpose computer programmed to perform
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the disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game
Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see also Function Media,
L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013). Thus, the
specification must sufficiently disclose an algorithm to transform the general
purpose computer or processor to a special purpose processor programmed
to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1338. An
algorithm is defined, for example, as “a finite sequence of steps for solving a
logical or mathematical problem or performing a task.” MICROSOFT
COMPUTER DICTIONARY 23 (5th ed. 2002). An applicant may express the
algorithm in any understandable terms including as a mathematical formula,
in prose, in a flow chart, or “in any other manner that provides sufficient
structure.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340
(Fed. Cir. 2008).
An indefiniteness rejection under § 112, second paragraph, is
appropriate if the specification discloses no corresponding algorithm
associated with a computer or processor. Aristocrat, 521 F.3d at 1337-38.
Mere reference to a general purpose computer or processor with appropriate
programming without providing an explanation of the appropriate
programming or to “software” without providing detail about the means to
accomplish the software function is not an adequate disclosure. Id. at 1334;
Finisar, 523 F.3d at 1340-41. In addition, simply reciting the claimed
function in the specification, while saying nothing about how the computer
or processor ensures that those functions are performed, is not a sufficient
disclosure for an algorithm which, by definition, must contain a sequence of
steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed.
Cir. 2009).
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If the specification explicitly discloses an algorithm, the sufficiency of
the disclosure must be determined in light of the level of ordinary skill in the
art. Aristocrat, 521 F.3d at 1337. The specification must sufficiently
disclose an algorithm to transform a general purpose processor to a special
purpose processor so that a person of ordinary skill in the art can implement
the disclosed algorithm to achieve the claimed function. Id. at 1338.

ANALYSIS
Introduction
The Background of Appellants’ Specification states:
GPRS is a data transport service used in several cellular
mobile telephony systems, and especially in GSM and UMTS
systems, in order to allow access from a mobile station to a data
packet network (such as the Internet) that uses packet
switching instead of circuit switching. Just as in the GSM
voice service, it is often necessary to add value-added services
in real-time in the GPRS data service.
(Spec. ¶ [0004]) (emphasis added). The Background further states:
These services are based on adding a functional module to the
SGSN nodes which is called GPRS SSF, which permits the
analysis of each data session at the moment of activation and
during its course. It also allows stopping the sessions and
querying external nodes, called SCP (Service Control Point),
through a standardized protocol. These external nodes, that can
have a large capacity for data processing and storage, starting
from the queries from the GPRS network, can command the
network to send them additional data, to change data of the
session in process, to cut the sessions, and to perform many
other functions.
(Spec. ¶ [0008]) (emphasis added).
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Claim 12 recites an apparatus to obtain value-added services in real-
time on the basis of a general packet radio service (GPRS) network, the
apparatus comprising:
(a) “capturing means for establishing . . . , for capturing . . . , and for
sending . . .”;
(b) “execution means for activating . . .,” and “a data configuration
module [for providing configured data]”; and
(c) “an access module for accessing . . ., and for modifying . . . before
sending . . .”.

Capturing Means
As to the “capturing means for establishing . . . , for capturing . . . ,
and for sending . . .” of claim 12, the use of the word “means” creates a
rebuttable presumption that the inventor intended to invoke § 112, sixth
paragraph for this claim limitation. Flo Healthcare, 697 F.3d at 1373.
Although we do not find any contention by Appellants that the term
“capturing means” does not invoke § 112, sixth paragraph, as an initial
matter, we address whether claim 12 recites sufficient structure to perform
the claimed functions of the “capturing means” in their entirety. As part of
this analysis, we address whether use of the term “capturing” to describe
“means” takes the phrase outside the realm in which § 112, sixth paragraph
applies. That is, does “capturing means” recite sufficient structure on its
own such that it obviates the need for § 112, sixth paragraph?
From our review of the claim, we conclude that the “capturing means”
is not a term that is used in common parlance or by persons of skill in the
pertinent art to designate structure. Further, from our review of the record,
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we conclude that persons of ordinary skill in the art reading the specification
would not understand the term “capturing means” to be the name for a
structure that performs the recited functions. We conclude that the reference
to “capturing” is simply an adjective describing “means” and is not a
structure or material capable of performing the identified functions.
Additionally, we find no structure beyond the “capturing means” for
performing the “establishing” and “capturing” functions. However, as to the
“sending” function, claim 12 recites that the “capturing means” comprises an
“access module” for performing at least a part of this function and we
address the “access module” separately infra. Therefore, we conclude that
the claim does not recite other sufficient structure to perform the claimed
“establishing” and “capturing” functions of the “capturing means” in their
entirety.
We conclude from our review that nothing in the record rebuts the
presumption that § 112, sixth paragraph applies to “capturing means” for at
least the functions of “establishing” and “capturing” as set forth in claim 12.
Having concluded that the “capturing means” limitation is drafted in
means-plus-function format, we must determine the corresponding structure
disclosed in the specification. Appellants’ Specification as originally filed
disclosed the “capturing means” as “block 1.” (Spec. ¶ [0031]; FF1-FF2).
This was subsequently amended to read “packet capture block 1.” (February
29, 2008 Amendment).
The Specification discloses that “packet capture block 1” comprises
“GGSN module 10” and “SGSN module 11” which each perform portions of
the “establishing” and “capturing” functions recited in claim 12. (Spec. ¶¶
[0032] - [0033]; FF3-FF4). Further, the Specification discloses that
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“modules 10 and 11 comprise the corresponding decoder/coder to capture
and interpret original messages sent in any of the two directions . . . .”
(Spec. ¶ [0034]). The Specification discloses that block 1 “also has an
access module 9” (discussed infra) which “extracts the information provided
by modules 10 and 11 and transfers it to [the execution means] for its
process, and it also receives commands to modify the GTP message captured
in any of the two directions.” (Spec. ¶ [0035]; FF5). Beyond intended
function statements such as “[t]his information is collected by the GGSN
module 10 decoding the information to transfer it to the access module 9”
(Spec. ¶ [0040]) and “the SGSN module 11 composes the message to be sent
to the GGSN node to continue the establishment of the data session,
according to the specification stated in the signaling ‘Create PDP Context
Request’,” (Spec. ¶ [0047]), we are unable to find any structural details of
modules 10 and 11. See Donaldson, 16 F.3d at 1195. Nor do Appellants
indicate that GGSN module 10 and SGSN module 11 are structures known
in the art. Lastly, Appellants’ Specification does not disclose an algorithm
to provide the necessary structure under § 112, sixth paragraph, if an artisan
were to implement the modules using a general purpose computer. See
Blackboard, 574 F.3d at 1384; Aristocrat, 521 F.3d at 1333-34.
Therefore, we conclude that Appellants have not disclosed the
corresponding structure to perform the claimed “establishing” and
“capturing” functions of the “capturing means” as required for a limitation
interpreted under 35 U.S.C. § 112, sixth paragraph. Rather, claim 12 is
indefinite as to these aspects of the recited “capturing means.”

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Access Module
As to the “access module for accessing . . ., for modifying . . . before
sending . . .” of claim 12, the failure to use the word “means” creates a
rebuttable presumption that the inventor did not intend this claim limitation
to be governed by § 112, sixth paragraph. Flo Healthcare, 697 F.3d at 1373.
As an initial matter, we address whether the term “access module” of
claim 12 is recognized as the name of structure. We conclude that the
“access module” is not a term that is used in common parlance or by persons
of skill in the pertinent art to designate structure. Further, from our review
of the record, we conclude that persons of ordinary skill in the art reading
the specification would not understand the term “access module” to be the
name for a structure that performs the recited functions. We conclude that
the “access module” is not a structure or material capable of performing the
identified functions. Rather, we conclude that here “module” is simply a
nonce word substitute for the term “means” associated with functional
language; and we conclude the reference to “access” is simply an adjective
describing “module.” We conclude that the presumption against invoking
§ 112, sixth paragraph has been overcome.
Having concluded that the “access module” limitation is drafted in
means-plus-function format, we must determine the corresponding structure
disclosed in the specification. Appellants’ Specification as originally filed
discloses the “access module” as “access module 9.” (Spec. ¶ [0035]; FF5).
The Specification further discloses that access module 9 “extracts the
information provided by modules 10 and 11 and transfers it to [the execution
means] for its process, and it also receives commands to modify the GTP
message captured in any of the two directions.” (Spec. ¶ [0035]; FF5).
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Beyond intended function statements such as this, we are unable to find any
structural details of access module 9. Nor do Appellants disclose an
algorithm to provide the necessary structure under § 112, sixth paragraph, if
an artisan were to implement the access module 9 using a general purpose
computer. Lastly, Appellants’ Specification does not indicate that access
module 9 is a structure known in the art.
Therefore, we conclude that Appellants have not disclosed the
required corresponding structure to perform the claimed “accessing,”
“modifying,” and “sending” functions of the “access module.” Rather, claim
12 is indefinite as to these aspects of the recited “access module.”

Execution Means
As to the “execution means for activating . . .” of claim 12, the use of
the word “means” creates a rebuttable presumption that the inventor
intended to invoke § 112, sixth paragraph for this claim limitation. Flo
Healthcare, 697 F.3d at 1373.
Although we do not find any contention by Appellants that the term
“execution means” does not invoke § 112, sixth paragraph, as an initial
matter, we address whether claim 12 recites sufficient structure to perform
the claimed functions of the “execution means” in their entirety. As part of
this analysis, we address whether use of the term “execution” to describe
“means” takes the phrase outside the realm in which § 112, sixth paragraph
applies. That is, does “execution means” recite sufficient structure on its
own such that it obviates the need for § 112, sixth paragraph?
From our review of the claim, we conclude that the “execution
means” is not a term that is used in common parlance or by persons of skill
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in the pertinent art to designate structure. Further, from our review of the
record, we conclude that persons of ordinary skill in the art reading the
specification would not understand the term “execution means” to be the
name for a structure that performs the recited functions. We conclude that
the reference to “execution” is simply an adjective describing “means” and
is not a structure or material capable of performing the identified functions.
Additionally, we find no structure beyond the “execution means” for
performing the “activating” function. However, claim 12 recites that the
“execution means” comprises a “data configuration module” and we address
the “data configuration module” separately infra. Therefore, we conclude
that the claim does not recite other sufficient structure to perform the
claimed “activating” function of the “execution means” in its entirety.
We conclude from our review that nothing in the record rebuts the
presumption that § 112, sixth paragraph applies to “execution means” for the
function of “activating” as set forth in claim 12.
Having concluded that the “execution means” limitation is drafted in
means-plus-function format, we must determine the corresponding structure
disclosed in the specification. Appellants’ Specification as originally filed
disclosed the “execution means” as “block 4.” (Spec. ¶ [0031]; FF1-FF2).
This was subsequently amended to read “application execution block 4.”
(February 29, 2008 Amendment).
The Specification discloses that application execution “block 4” has
“process module 12” which performs the functions of collecting information
from access module 9, obtaining a specific application to be invoked, and
transferring the information to an application module 13, and “block 4”
comprises the “application module 13” which performs the functions of
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calling an application management module 6 and activating the management
application module 6. (Spec. ¶ [0036]; FF6). Further, the Specification
discloses that block 4 “comprises a data configuration module 5” (Spec. ¶
[0031]; FF1) (discussed infra) which contains data which is “preconfigured”
(Spec. ¶ [0043]).
Beyond intended function statements such as “[r]egarding block 4,
said block has a process module 12 which collects information from access
module 9 which accesses data configuration module 5 and from which,
according to the configuration programmed and the data obtained, obtains
the specific application to be invoked” (Spec. ¶ [0036]), we are unable to
find any structural details of modules 12 and 13 which show how functions
such as “obtaining,” “calling,” or “activating” are implemented by
Appellants. Nor do Appellants disclose an algorithm to provide the
necessary structure under § 112, sixth paragraph, if an artisan were to
implement the modules using a general purpose computer. Lastly,
Appellants’ Specification does not indicate that process module 12 and
application module 13 are structures known in the art.
Therefore, we conclude that Appellants have not disclosed the
required corresponding structure to perform the claimed “activating”
function of the “execution means.” Rather, claim 12 is indefinite as to this
aspect of the recited “execution means.”

Data Configuration Module
As to the “data configuration module [for providing configured data]”
of claim 12, the failure to use the word “means” creates a rebuttable
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presumption that the inventor did not intend this claim limitation to be
governed by § 112, sixth paragraph. Flo Healthcare, 697 F.3d at 1373.
As an initial matter, we address whether the term “data configuration
module” of claim 12 is recognized as the name of structure. We conclude
that the “data configuration module” on its face is not a term that is used in
common parlance or by persons of skill in the pertinent art to designate
structure.
However, as previously stated, the Specification discloses that block 4
“comprises a data configuration module 5” (Spec. ¶ [0031]; FF1) which
contains data which is “preconfigured” (Spec. ¶ [0043]). One well-known
structure, in the data processing art to which this invention pertains, which
contains data, is a memory module.4 Further, we take notice that it is
conventional to label such memory modules based on the data stored or
contained therein, such as the disclosed configuration data. From our review
of the record, we conclude that persons of ordinary skill in the art reading
the Specification (particularly Spec. ¶¶ [0036] and [0043]) would understand
the term “data configuration module” to be the name for a structure, such as
a memory module, that performs the function of storing configuration data.
We conclude that that the presumption against invoking § 112, sixth
paragraph has not been overcome.

4 Memory module: “a magnetic or semi-conductor module providing storage
locations . . .” (Rosenberg; Dictionary of Computers, Information
Processing, and Telecommunications; 2nd Ed.; Wiley& Sons; 1987; p. 377).
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37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

CONCLUSIONS
(1) We reject claims 12-16 and 18-22 as indefinite under 35 U.S.C.
§ 112, second paragraph.
(2) Claims 12-16 and 18-22 are not patentable.

DECISION
The Examiner’s rejections of claims 12-16 and 18-22 are reversed.

REVERSED
37 C.F.R. § 41.50(b)

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