Vineet Mittal et al.

Patent Trials and Appeals Board

Nov 15, 2019

12607231 - (D) (P.T.A.B. Nov. 15, 2019)

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.
12/607,231 10/28/2009 Vineet Mittal 030284.00584/082629 4215
15142 7590 11/15/2019
Arent Fox, LLP and Qualcomm, Incorporated
1717 K Street, NW
Washington, DC 20006-5344
EXAMINER
SISON, JUNE Y
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
11/15/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ocpat_uspto@qualcomm.com
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte VINEET MITTAL, MICHAEL J. KOENIG, RAJEEV D. RAJAN,
and KEVIN T. GREGORY
________________

Appeal 2018-006619
Application 12/607,231
Technology Center 2400
________________

Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and
RUSSELL E. CASS, Administrative Patent Judges.

CASS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–61 under 35 U.S.C. §§ 102 or 103, and of
claims 15, 17, 18, 45 and 47 under 35 U.S.C. § 112(b). Appeal Br. 8.2
Claims 1–61 constitute all of the claims pending in this Application. Id. We
have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant lists QUALCOMM Incorporated as the real
party in interest. Appeal Brief filed January 11, 2018 (“Appeal Br.”) 4.
2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
July 28, 2017 (“Final Act.”); the Examiner’s Answer mailed May 15, 2018
(“Ans.”); and the Reply Brief filed June 13, 2018 (“Reply Br.”).
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We affirm the rejection under 35 U.S.C. § 112(b) and reverse the
rejections under 35 U.S.C. §§ 102 and 103.

BACKGROUND
The present invention relates to a method of obtaining contextually
relevant content by a wireless communication device (WCD). Abstr. First,
a wireless communications device may obtain a destination device
identifying item, such as a telephone number. Id.; Spec. ¶ 44. Next, the
WCD may transmit the destination device identifying item to a contextual
content server. Abstr.
The contextual content server may determine one or more
contextually relevant context items by processing the received destination
device identifying item and a WCD location value. Id. Contextual content
items may include, for example, coupons, advertisements, and
announcements associated with products, services, individuals, groups, or
locations. Spec. ¶ 31.
The contextual content server may then send the contextually relevant
content items to the WCD. Abstr. For example, the contextual content
server may associate the dialed number and/or the calling number with a
florist and provide content items for the dialed florist and other florists in the
area. Spec. ¶ 31. The contextually relevant content may be provided to the
user at various times, including before a call is made, while a call is being
connected, during the time when a call is already connected, or after the call
is completed. Id. ¶ 52.
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Claim 1 is illustrative of the claims at issue:
1. A method of obtaining contextually relevant content by a
wireless communications device (WCD), the method
comprising:
detecting, by the WCD, initiation of a connection between
the WCD and a destination device over a first communication
path to establish a voice call with the destination device;
obtaining, by the WCD, a destination device identifying
item based on the detected initiation of the connection and the
destination device;
transmitting, by the WCD, while establishing the voice call
with the destination device, the destination device identifying
item to a contextual content server over a second
communication path different than the first communication
path, wherein the contextual content server determines one or
more contextually relevant content items by processing the
received destination device identifying item while the WCD is
establishing the voice call with the destination device; and
receiving, by the WCD, from the contextual content server
over the second communication path while establishing the
voice call with the destination device, at least one of the one or
more contextually relevant content items.
Appeal Br. 19 (Claims Appendix).

THE SECTION 102 AND 103 REJECTIONS
In the Final Office Action, the Examiner rejects claims 1, 15–18, 32,
and 45–48 under 35 U.S.C. § 102(b) as being anticipated by Urban
(US 20017/0297587 A1; published Dec. 27, 2007). Final Act. 3–24. The
Examiner finds that Urban discloses all of the limitations of claim 1,
including for example, (i) “transmitting, by the WCD, while establishing the
voice call, the destination device identifying item to a contextual content
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server over a second communication path different than the first
communication path, in which the contextual content server determines one
or more contextually relevant content items by processing the received
destination device identifying item while the WCD is establishing the voice
call with the destination device” (id. at 4–5 (citing Urban ¶¶ 47–48; Figs. 1,
3, and 8); and (ii) “receiving, by the WCD from the contextual context
server over the second communication path while establishing the voice call
with the destination device, at least one of the one or more contextually
relevant content items” (id. at 5 (citing Urban ¶¶ 48, 51–52; Figs. 11, 13)).
Appellant argues, inter alia, that Urban does not disclose the transmitting or
receiving limitations of claim 1. Appeal Br. 11, 13–14; Reply Br. 6, 8–9.
We agree with Appellant that the Examiner has not sufficiently
established that Urban discloses the “transmitting” and “receiving”
limitations of claim 1. Urban discloses a caller ID messaging device that
supplants the incoming calling line identification signal with a Caller ID
messaging signal, which is transmitted to a destination device. Urban,
Abstr. The Examiner relies on paragraph 48 of Urban, which teaches that
the data from a Caller ID message from a calling device may need
reformatting based on the configuration of the receiving device:
Regardless of the calling party’s communications device . . .
used to communicate the Caller ID Messaging Signal, this
information may need to be formatted accordingly for the
receiving party’s communications device (including audio, text
(e.g., ASCII), video, or other digital formats and combination
thereof). Accordingly, the Comm Device Interface 250 of the
Caller ID Messaging Device 200, the Caller ID Messaging
DataServer 718 (via the Caller ID Messaging Profile), and/or
the gateway 770 of the data network 760 has the intelligence for
appropriate formatting of the Caller ID Messaging Signal for
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transmission to the receiving party’s communications device.
For example, if the calling party’s communications device uses
the Wireless Application Protocol (WAP) technique, then the
Caller ID Messaging Signal is formatting using the Wireless
Mark-up Language (WML) and must be configured for Caller
ID standards known in the art.
Urban ¶ 48.
We do not see how this portion of Urban discloses “a contextual
content server that determines one or more contextually relevant content
items by processing the received destination device identifying item” and
sends “at least one or more of the contextually relevant context items” to the
WCD, as required by claim 1. On its face, paragraph 48 describes various
devices within the network that format the Caller ID Messaging Signal
appropriately for the receiving party’s communications device. But the
Examiner fails to adequately explain why formatting the Caller ID
Messaging signal for the destination device, as disclosed in Urban,
reasonably corresponds to determining a contextually relevant content item
by processing the received destination device identifying item, as recited in
claim 1.
Moreover, even if one were to consider the formatted message to be a
“contextually relevant content item,” the Examiner fails to sufficiently
explain how the cited portion of Urban discloses that this formatted message
is sent by a contextual content server to the calling WCD in response to a
transmission of a destination device identifying item by the contextual
context server. To the contrary, paragraph 48 discloses that the caller ID
message is formatted “for transmission to the receiving party’s
communications device.” Urban ¶ 48 (emphasis added).
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Furthermore, the Examiner is not consistent in identifying what
information in Urban corresponds to the “contextually relevant content
item.” Elsewhere in the Final Action, the Examiner identifies the
“contextually relevant content items” as the message “Cancel dinner
working late” in Figure 11 and the message “House alarm is on” in
Figure 13. Final Act. 5; Ans. 81. And, the Examiner fails to establish that
either of these message in Figs. 11 and 13 satisfy the relevant limitations of
claim 1 relating to the “contextually relevant content items.”
The “Cancel dinner working late” message in Figure 11 is a caller ID
message sent by the calling party to the called party and the “House alarm is
on” message in Figure 13 is sent by the called party to the calling party in
response to the calling party’s caller ID message. Urban ¶¶ 51–52. Neither
of these messages is determined by a “contextual content server” by
“processing the received destination device identifying item.” And, neither
message is sent by a contextual content server to the WCD in response to a
transmission of a destination device identifying item by the WCD to the
contextual context server. Rather, the message in Figure 11 is sent from the
calling party device to the called party device, and the message in Figure 13
is sent from the called party device to the calling party device.
Accordingly, the Examiner has not established that Urban discloses
each and every limitation of claim 1. We, therefore, reverse the Examiner’s
rejection of claim 1 under Section 102. We also reverse the Section 102
rejection of independent claims 15–18, 32, and 45–48, which include similar
limitations as claim 1.
With respect to the remaining rejections of dependent claims 2–14,
19–31, 33–44, and 49–61, the Examiner does not rely on any of the three
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additionally cited references to cure the deficiency of the anticipation
rejection explained above. Final Act. 25–75. Accordingly, we likewise
reverse the Section 103 rejections of these dependent claims.

THE SECTION 112 REJECTION
In the Final Office Action, the Examiner rejected independent
claims 15, 17, 18, 45, and 47 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention. Final Act. 2.
Of these independent claims, claims 17 and 47 expressly use “means
for” language, while claims 15, 18, and 45 do not. Claim 17 illustrates the
claims that expressly use “means for” language:
17. An apparatus, comprising:
means for detecting, by a wireless communications device
(WCD), initiation of a connection between the WCD and a
destination device over a first communication path to establish
a voice call with the destination device;
means for obtaining, by the WCD, a destination device
identifying item based on the detected initiation of the
connection and the destination device;
means for transmitting, by the WCD, while establishing the
voice call with the destination device, the destination device
identifying item to a contextual content server over a second
communication path different than the first communication
path, wherein the contextual content server determines one or
more contextually relevant content items by processing the
received destination device identifying item while the WCD is
establishing the voice call with the destination device; and
means for receiving, by the WCD, from the contextual
content server over the second communication path while
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establishing the voice call with the destination device, at least
one of the one or more contextually relevant content items.
Appeal Br. 23–24 (Claims Appendix).
The remaining claims use a similar format but without the “means
for” language. For example, claim 15 recites “at least one processor”
comprising “modules” for performing the claimed functions:
15. At least one processor configured to obtain contextually
relevant content by a wireless communications device (WCD),
the at least one processor comprising:
a first module for detecting, by the WCD, initiation of a
connection between the WCD and a destination device over a
first communication path to establish a voice call with the
destination device;
a second module for obtaining, by the WCD, a destination
device identifying item based on the detected initiation of the
connection and the destination device;
a third module for transmitting, by the WCD, while
establishing the voice call with the destination device, the
destination device identifying item to a contextual content
server over a second communication path different than the first
communication path, wherein the contextual content server
determines one or more contextually relevant content items by
processing the received destination device identifying item
while the WCD is establishing the voice call with the
destination device; and
a fourth module for receiving, by the WCD, from the
contextual content server over the second communication path
while establishing the voice call with the destination device, at
least one of the one or more contextually relevant content items.
Appeal Br. 22–23 (Claims Appendix).
Claim 45 uses a similar format, with a “processor” comprising
“modules” for performing the claimed functions. Id. at 31–32. Claim 18
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recites “a communications module coupled to the at least one processor
and/or the memory, and operable for” performing essentially the same
functions performed by the modules in claim 15, without using the “module
for” language. Id. at 24.
The Examiner determines that all of claims 15, 17, 18, 45, and 47
include “means-plus-function” limitations subject to § 112, paragraph 6, and
that the Specification fails to recite adequate corresponding structure to
perform the claimed functions. Final Act. 2–3. Appellant does not dispute
that claims 17 and 47 (which use “means for” language) are subject to § 112,
paragraph 6, but argues that claims 15, 18, and 45 (which do not use “means
for” language) are not. Appeal Br. 16; Reply Br. 15.
I.
We first address whether claims 15, 18, and 45 reasonably can be
interpreted as including “means-plus-function” limitations and are, therefore,
subject to § 112, paragraph 6. Our reviewing court has held that “the failure
to use the word ‘means’ . . . creates a rebuttable presumption . . . that § 112,
para. 6 does not apply.” Williamson v. Citrix Online LLC, 792 F.3d 1339,
1348 (Fed. Cir. 2015) (en banc). See MPEP § 2181 (9th ed. Rev. 07.2017
Nov. 2018). However, to determine whether a limitation is subject to § 112,
paragraph 6, “the essential inquiry is not merely the presence or absence of
the word ‘means’ but whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as
the name for structure.” Id. Thus, “[w]hen a claim term lacks the word
‘means,’ the presumption can be overcome and § 112, paragraph 6 will
apply if . . . the claim term fails to ‘recite sufficiently definite structure’ or
else recites ‘function without reciting sufficient structure for performing that
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function.’” Id. (quoting Watts v. SL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir.
2000).
In Williamson, the claim limitation in question recited a “distributed
learning control module” for performing various functions. Id. at 1344. The
court observed that this limitation “is in a format consistent with traditional
means-plus-function claim limitations” but “replaces the term ‘means’ with
the term ‘module’” before reciting the functions performed by the module.
Id. at 1351. The court determined that the term “module” is “a well-known
nonce word” and is “simply a generic description for software or hardware
that performs a specified function.” Id. Such nonce words “that reflect
nothing more than verbal constructs may be used in a claim in a manner that
is tantamount to using the word ‘means’ because they typically do not
connote sufficiently definite structure.” Id. (quotations omitted). Thus, the
court concluded that the “distributed learning control module” limitation
“fails to recite sufficiently definite structure and that the presumption against
means-plus-function claiming is overcome.” Id. at 1351.
Turning to the present claims, claims 15 and 45, like the claims in
Williamson, use the words “module for” instead of “means for.” So while
the absence of the term “means for” initially creates a rebuttable
presumption that § 112, paragraph 6, does not apply to these limitations,
each of the “module for” limitations are in a format consistent with
traditional means-plus function claim limitations. As in Williamson, then,
we determine that the use of the term “module” is a nonce word that acts as
a generic description for hardware or software that performs the specified
function. Thus, we conclude that the “module for” limitations in claims 15
and 45 fail to recite sufficiently definite structure and that this failure
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overcomes the presumption that the claims are not means-plus-function
claims.
As to claim 18, this claim recites “a communications module coupled
to the at least one processor and/or the memory, and operable for”
performing the claimed functions. Because the word, “means” is not used,
there is a rebuttable presumption that § 112, paragraph 6 does not apply. As
discussed above, however, “module” is a nonce word that fails to recite
sufficiently definite structure. We also determine that the term
“communications” before the word “module,” as well as the statement in the
claim that the module is “coupled to at least one processor and/or the
memory,” does not provide sufficiently definite structure for performing the
“detecting,” “obtaining,” “transmitting” and “receiving” functions
performed by this module. We, therefore, conclude that this failure to recite
sufficiently definite structure also overcomes the presumption that these
limitations are not means-plus-function claims.
Appellant argues that § 112, paragraph 6 does not apply to claims 15,
and 45 because they “include[] at least one processor with various modules
performing the recited functions.” Appeal Br. 16; Reply Br. 15. We
disagree.
Again, Williamson is instructive. In Williamson, the claims at issue
recited that the “distributed learning control module” was part of
“distributed learning server . . . coupled to the presenter computer system
and the audience member computer system via the network,” but,
nonetheless, the court found that § 112, paragraph 6, applied. Williamson,
792 F.3d at 1344.
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The “processor” in the present claims does not provide any more
definite structure than the “distributed learning server” in Williamson. Both
simply recite generic computer hardware rather than sufficiently definite
structure tied to the claimed functions. As such, we conclude that the
“processor” in the claim is a generic element and there is no structure in the
claim that provides sufficient description of how the processor performs the
various functions recited.
II.
Next, we turn to the question of whether Appellant’s Specification
discloses sufficient structure that corresponds to the claimed functions,
which is required for a means-plus-function claim to be definite under
35 U.S.C. § 112, paragraph 2. Id. at 1351.
Construing a means-plus-function claim is a two-step process. “The
court must first identify the claimed function,” and then, “the court must
determine what structure, if any, disclosed in the specification corresponds
to the claimed function.” Id. “Structure disclosed in the specification
qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or
associates that structure to the function recited in the claim.” Id. at 1352.
Additionally, “[e]ven if the specification discloses corresponding structure,
the disclosure must be of ‘adequate’ corresponding structure to achieve the
claimed function.” Id. Where a function “must be implemented in a special
purpose computer—a general purpose computer programmed to perform
particular functions pursuant to instructions from program software,” the
specification must “disclose an algorithm for performing the claimed
function.” Id.
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Here, we conclude that the claimed functions must be implemented
using a special purpose computer, i.e., a general purpose computer
programmed to perform the particular functions set forth in the claim
pursuant to instructions from program software. For example, in claim 15,
the claimed processor must be programmed pursuant to instructions from
program software to carry out the functions performed by the “third module
for transmitting” and the “fourth module for receiving.” The same is true for
the comparable functions performed in claims 17, 18, 45, and 47. Therefore,
the Specification must disclose an algorithm for performing these claimed
functions to satisfy the definiteness requirement.
Appellant argues that sufficient corresponding structure is contained
in paragraphs 37 to 42 and 69 to 71 of the Specification, but Appellant fails
to identify algorithms in the Specification that are linked or associated to the
claimed functions. Appeal Br. 16–17; Reply Br. 15. For example,
Appellant does not show where or how the Specification “clearly links or
associates” particular algorithms to the “transmitting” and “receiving”
functions in claim 15, or the comparable limitations in claims 17, 18, 45, and
47. Our review of the Specification has not revealed such algorithms either.
The same is true for the remaining claim elements.
Paragraphs 37 to 42, cited by Appellant, describe the steps set forth in
the flow chart of Figure 2, but these descriptions merely repeat the functions
set forth in the claim without setting forth an algorithm or additional detail
for performing those functions. Spec. ¶¶ 37–42. Paragraphs 69 to 71
describe the block diagram of Figure 8, but this figure merely includes boxes
with text reciting means for performing the claimed functions, again without
any algorithm for performing those functions. Spec. ¶¶ 69–71.
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Appellant further cites paragraphs 43, 58, and 62. But Appellant
again does not identify a particular algorithm or explain how such an
algorithm, even if present, was linked or associated to the claimed functions.
Appellant also argues that:
Structural support for the claims is provided additionally at
least in paragraph [0080], which discloses that “various
illustrative logics, logical blocks, modules, and circuits
described in connection with the aspects disclosed herein may
be implemented or performed with a general purpose processor,
a digital signal processor (DPS), an application specific
integrated circuit (ASC), a field programmable gate array
(FPGA) or other programmable logic device, discrete gate or
transistor logic, discrete hardware components, or any
combinations thereof designed to perform the function
described herein.”
Appeal Br. 17.
This disclosure, however, merely describes structures that can be used
to implement the claimed “processor,” but it does not set forth algorithms for
performing the claimed functions. Nor does the disclosure clearly link or
associate such algorithms with the claimed functions.
Consequently, we do not find error either in the Examiner’s
determination that claims 15, 17, 18, 45, and 47 are “means-plus-function”
claims, or in the determination that these claims are indefinite under
35 U.S.C. § 112, second paragraph, for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.3

3 Upon further prosecution, the Examiner may wish to consider whether any
of the dependent claims based on claims 15, 18, 18, 45 or 47 are also
indefinite.
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CONCLUSION
We reverse the Examiner’s rejection of claims 1, 15–18, 32, and 45–
48 under 35 U.S.C. § 102(b) and the Examiner’s rejection of claims 2–14,
19–31, 33–44, and 49–61 under 35 U.S.C. § 103.
We affirm the Examiner’s rejection of claims 15, 17, 18, 45 and 47
under 35 U.S.C. § 112, second paragraph.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15, 17, 18,
45,47
112 Indefiniteness 15, 17,
18, 45, 47

1, 15–18, 32,
45–48
102 Urban 1, 15–18, 32,
45–48
2–4, 6, 9, 10,
13, 14, 19–21,
23, 26, 27, 30,
31, 33–35, 37,
43, 44, 49–51,
53, 59–61
Urban, Milic-
Frayling
2–4, 6, 9, 10,
13, 14, 19–
21, 23, 26,
27, 30, 31,
33–35, 37,
43, 44, 49–
51, 53, 59–
61
5, 7, 8, 22, 24,
25, 36, 38–40,
52, 54–56
103 Urban, Milic-
Frayling, Bates
5, 7, 8, 22,
24, 25, 36,
38–40, 52,
54–56
11, 12, 28, 29 103 Urban, Bates 11, 12, 28,
29
41, 42, 57, 58 103 Urban, Milic-
Frayling, Blegan
41, 42, 57,
58
Overall
Outcome
15, 17,
18, 45, 47
1–14, 16,
19–44, 46,
48–61

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED IN PART