Ex Parte 5987058 et al

Patent Trial and Appeal Board

Mar 20, 2013

90010667 (P.T.A.B. Mar. 20, 2013)

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.
90/010,667 09/04/2009 INV001 5987058 17186.105003 9240
20786 7590 03/21/2013
KING & SPALDING
1180 PEACHTREE STREET , NE
ATLANTA, GA 30309-3521
EXAMINER
FERRIS III, FRED O
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/21/2013 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 NORTHPEAK WIRELESS, LLC.1,
Appellant and Patent Owner
____________

Appeal 2012-005562
Reexamination Control No. 90/010,667
Patent 5,987,058
Technology Center 3900
____________

Before KARL D. EASTHOM, KEVIN F. TURNER, and
MICHAEL R. ZECHER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
NorthPeak Wireless, LLC., Appellant, appeals under 35 U.S.C. §§
134(b) and 306 from a final rejection of claims 35 and 86. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

1 NorthPeak Wireless, LLC. is the Patent Owner and the real party in interest
(App. Br. 2).
Appeal 2012-005562
Reexamination Control No. 90/010,667
United States Patent 5,987,058

2
STATEMENT OF THE CASE2
This proceeding arose from a request for ex parte reexamination filed
on behalf of Intel Corporation on September 4, 2009, of United States Patent
5,987,058 (the '058 Patent). The '058 Patent, entitled “Wireless Alarm
System,” issued November 16, 1999, to H. Britton Sanderford et al., and has
several patent applications upon which it claims priority, listed on the face of
the '058 Patent. The '058 Patent is said to have expired (App. Br. 2).
The '058 Patent, and a related patent (United States Patent 4,977,577),
have been involved in several litigations, and the latter was the subject of a
prior reexamination proceeding (No. 90/010,622), as summarized in
Appellant’s Appeal Brief (App. Br. 2).
We heard oral arguments from Patent Owner’s representative on June
20, 2012, a transcript3 of which is part of the record.

CLAIMED INVENTION
Appellant’s invention relates to a wireless alarm system using spread
spectrum transmitters, fast frequency shift keying, and spread spectrum
receivers, where a coarse lock is first obtained, followed by a fine lock to the
spread spectrum signal (Abs.).

2 Our decision will make reference to the Appellant’s Second Amended
Appeal Brief (“App. Br.,” filed August 22, 2011) and Reply Brief (“Reply
Br.,” filed February 1, 2012), and the Examiner’s Answer (“Ans.,” mailed
December 1, 2011).
3 Record of Oral Hearing (hereinafter Oral Hr’g Tr.). We note that the panel
that heard oral arguments is different from the instant panel.
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Appeal 2012-005562
Reexamination Control No. 90/010,667
United States Patent 5,987,058

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carrier frequency;
a phase shift keying modulator having an input coupled
to the output of the carrier generation means and having a
modulation input;
a chip code generator connected to the modulation input
of the phase shift keying modulator and configured to apply a
chip code sequence to the modulation input of the phase shift
keying modulator so as to produce a phase shift keying spread
spectrum modulated signal at said carrier frequency at an
output of said phase shift keying modulator;
a power amplifier having an input coupled to the output
of the phase shift keying modulator;
a filter having an input coupled to an output of the power
amplifier;
an antenna having an input coupled to an output of the
filter to transmit an amplified and filtered phase shift keying
spread spectrum modulated signal at said carrier frequency;
timer means for enabling application of multiple chip
code sequences to the modulation input of the phase shift
keying modulator prior to transmission of data so as to promote
spread spectrum timing synchronization in a receiver that
receives a spread spectrum modulated signal transmitted by the
antenna;
address storage means for storing addresses;
data storing means for storing data; and
error detection generation means for providing a
plurality of error detection bits to secure the data stored in said
data storing means and addresses stored in said address storage
means and said error detection bits to be transmitted with said
data.

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United States Patent 5,987,058

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86. A spread spectrum transmitter comprising:
a carrier generation device configured to generate a
carrier at a carrier frequency at an output thereof;
a phase shift keying modulator having an input coupled
to the output of the carrier generation device and having a
modulation input;
a chip code generator connected to the modulation input
of the phase shift keying modulator and configured to apply a
chip code sequence to the modulation input of the phase shift
keying modulator and thereby produce a phase shift keying
spread spectrum modulated signal at said carrier frequency at
an output of said phase shift keying modulator;
a power amplifier having an input coupled to an output
of the phase shift keying modulator and an output that provides
an amplified phase shift keying spread spectrum signal;
a filter having an output and an input coupled to the
output of the power amplifier;
an antenna coupled to the output of the filter and
configured to transmit an amplified and filtered phase shift
keying spread spectrum modulated signal at said carrier
frequency;
a timer that determines when multiple chip code
sequences are applied to the modulation input of the phase shift
keying modulator prior to transmission of data, thereby to
promote spread spectrum timing synchronization in a receiver
configured to receive the spread spectrum modulated signal
transmitted by the antenna;
a first memory that stores addresses;
a second memory that stores data; and
an error detector that outputs a plurality of error
detection bits to secure at least one of the addresses stored in
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United States Patent 5,987,058

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said first memory and the data stored in said second memory,
said plurality of error detection bits to be transmitted with said
data and said at least one of the addresses.
(App. Br., Claims App’x.).

PRIOR ART REJECTION
The prior art references relied upon by the Examiner in rejecting the
claims are:
Weinberg 4,291,409 Sep. 22, 1981

F. H. Dickson, Technical Plan, Packet Radio Experimental Repeater, NTIS#
AD783006, Collins Radio Company (July 1974) (hereinafter “Dickson”).

The Examiner maintained a rejection on the following basis:
 Claims 35 and 86 under 35 U.S.C. § 103(a) as being unpatentable
over Dickson and Weinberg (Ans. 5-27).

The Examiner and Appellant also rely upon following Declarations:
 Declaration of David Biggs, dated June 15, 2010, (App. Br., Evidence
Appx., Exhibit 5) (“Biggs Decl.”).
 Declaration of Gerald Schmidt, dated June 16, 2010, (App. Br.,
Evidence Appx., Exhibit 1) (“Schmidt Decl.”).
 Declaration of H. Britton Sanderford, dated June 17, 2010, (App. Br.,
Evidence Appx., Exhibit 4) (“Sanderford I Decl.”).
 Declaration of H. Britton Sanderford, dated May 6, 2011, (App. Br.,
Evidence Appx., Exhibit 1) (“Sanderford II Decl.”).

Appeal 2012-005562
Reexamination Control No. 90/010,667
United States Patent 5,987,058

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ISSUE
Appellant has asserted numerous arguments as to whether the
Examiner erred in proffering the above-cited rejection, which we detail in
the analysis section below. We have considered in this decision only those
arguments that Appellant actually raised in the Briefs. Arguments which
Appellant could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
The issue arising from the respective positions of Appellant and the
Examiner, which we consider herein, follows:
Did the Examiner err in finding that Dickson and Weinberg render the
subject matter of claims 35 and 86 obvious?

FINDINGS OF FACT
1. The '058 Patent provides, in part:
The microprocessor 8 broadly controls the voltage controlled
oscillator 2 by supplying an enable signal to the enable input of
the voltage controlled oscillator 2, and a modulating voltage to
the modulation input of the voltage controlled oscillator 2.
Also, the microprocessor 8 controls the RF power amplifier 3
by supplying a keying signal to the keying input of the RF
power amplifier 3.
(Spec. col. 6, ll. 16-23).
2. The '058 Patent also provides, in part:
A timing circuit 13 is included in microprocessor 8, and is
coupled to the enable input of the voltage controlled oscillator 2
and to the keying input of the RF power amplifier 3 for
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enabling the voltage controlled oscillator 2 and the RF power
amplifier 3, by outputting an enable signal to the enable input
of the voltage controlled oscillator 2 and a keying signal to the
keying input of the RF power amplifier 3, respectively, during
the transmitting interval.
(Spec. col. 7, ll. 1-8).
3. In addition, the '058 Patent provides, in part:
Once the microprocessor 8 is reset by the wake-up circuit 9 the
timing circuit 13 allows the crystal 23 to stabilize for 1-5 ms.
The timing circuit 13 then enables the transmitter oscillator 2
and allows it to stabilize for 1 ms. The timing circuit 13
subsequently enables the RF amplifier 3 by sending a keying
signal to the keying input.
(Spec. col. 7, ll. 59-64).
4. The '058 Patent also provides, in part:
In operation, the transmitter sends a supervisory message often
enough so that the receiver can detect failure of any transmitter
within 200 seconds. The microprocessor 8 effectively "sleeps"
between these transmissions to conserve battery life while
counter 9 counts down to wake-up microprocessor 8.
(Spec. col. 7, ll. 45-50).
5. The '058 Patent provides, in part, that “[t]he voltage controlled
oscillator 2 is enabled by applying an enable signal to the enable
input” (Spec. col. 6, ll. 4-5). Also, “[t]he recirculating register 10 . . .
outputs, during a transmitting interval, the spread spectrum chip code
as a modulating voltage to the modulation input of voltage controlled
oscillator 2, thereby enabling the voltage controlled oscillator 2 to
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produce a spread spectrum frequency shift keying (FSK) modulated
signal as shown in FIG. 2A” (Spec. col. 6, ll. 26-32).
6. Dickson provides that each packet used in its system has a preamble
(§3.7.1, p. 3-10), where the preamble, then the header and the text
data are processed (§5.2.1, p. 5-9), and where the preamble is encoded
with multiple chip code sequences (Fig. 5-4, p. 5-11). After the
preamble bits have been encoded, the encoded chips are used to
generate chip impulses that are applied to a modulating surface
acoustic wave device (§5.2.1.c, p. 5-10), where the modulator output
is then up-converted, amplified, filtered and transmitted (§5.1, p. 5-1).
7. Weinberg discloses a pseudo-noise code generator that outputs a chip
code sequence, which incorporates a recirculating shift register that is
controlled by a timing signal from a crystal controlled clock (col. 6,
19-28; Fig. 4).

PRINCIPLES OF LAW
Interpretation of Expired Patent Claims
Patent claims in a reexamination proceeding in the USPTO are
ordinarily given their broadest reasonable interpretation consistent with the
patent disclosure. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). When the patent has not expired, construing claims of an
unexpired patent broadly is not unfair to the patentee because the patentee
has the opportunity to amend the claims to obtain more precise claim
coverage. See id. However, patent claims of an expired patent may not be
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amended. 37 C.F.R. § 1.530(j).
The standard of claim construction for the claims of an expired patent
in reexamination was addressed in Ex parte Papst-Motoren, 1 USPQ2d 1655
(BPAI 1986). The Board noted that In re Yamamoto, 740 F.2d 1569 (Fed.
Cir. 1984), held that claims in a reexamination proceeding should be given
their broadest reasonable interpretation, consistent with the specification,
because applicants had the right to amend, whereas in a district court,
“claims should be so construed, if possible, as to sustain their validity.”
Yamamoto, 740 F.2d at 1571 n.* (citing ACH Hosp. Systems, Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)). The Board held:
[I]n reexamination proceedings in which the PTO is
considering the patentability of claims of an expired patent
which are not subject to amendment, a policy of liberal claim
construction may properly and should be applied. Such a
policy favors a construction of a patent claim that will render it
valid, i.e., a narrow construction, over a broad construction that
would render it invalid.

Papst-Motoren, 1 USPQ2d at 1656; Ex parte Bowles, 23 USPQ2d 1015,
1017 (BPAI 1991) (both nonprecedential4). The Board also held in both
Papst-Motoren and Bowles that it would be error to read “inferential
limitations” into the claims. Papst-Motoren, 1 USPQ2d at 1657; Bowles,

4 Although Papst-Motoren is not designated as precedential, it was decided
by an expanded panel of the Board of Patent Appeals and Interferences,
including the Commissioner, the Deputy Commissioner, the Chairman of the
Board, and an Examiner-in-Chief. See also In re Rambus Inc., 694 F.3d 42,
46 (Fed. Cir. 2012).
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23 USPQ2d at 1017.
Papst-Motoren’s holding that “claims should be so construed, if
possible, as to sustain their validity” is another way of saying that the
USPTO does not apply the “broadest reasonable interpretation” in
construing the claims of an expired patent in a reexamination proceeding.
The policy reason is that the claims in an expired patent cannot be amended.
However, the maxim that “claims should be so construed, if possible, as to
sustain their validity” is sometimes misunderstood and the Federal Circuit
has clarified the maxim since Papst-Motoren. In accordance with those
cases, it is clear that any claim construction must be in accord with the rules
of claim construction and claims may not be redrafted. See Generation II
Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001)
(“[C]laims can only be construed to preserve their validity where the
proposed claim construction is ‘practicable,’ is based on sound claim
construction principles, and does not revise or ignore the explicit language
of the claims.”); Lucent Techs., Inc. v. Gateway, Inc.,
525 F.3d 1200, 1215-16 (Fed. Cir. 2008) (“This court has repeatedly held
that courts may not redraft claims to cure a drafting error made by the
patentee, whether to make them operable or to sustain their validity . . . . To
do so ‘would unduly interfere with the function of claims in putting
competitors on notice of the scope of the claimed invention.’”) (citations and
footnote omitted). The maxim is limited “to cases in which ‘the court
concludes, after applying all the available tools of claim construction, that
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the claim is still ambiguous.’” Phillips v. AWH Corp., 415 F.3d 1303, 1327
(Fed. Cir. 2005) (en banc) (citing Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 911 (Fed. Cir. 2004)). Importantly, it is “error . . . to use the
possible invalidity of those claims, if broadly construed, as a basis for
construing them narrowly.” The Saunders Group, Inc. v. ComforTrac, Inc.,
492 F.3d 1326, 1335 (Fed. Cir. 2007); Tate Access Floors, Inc. v. Interface
Architectural Resources, Inc., 279 F.3d 1357, 1367 (Fed. Cir. 2002)
(“Fairness and the public notice function of the patent law require courts to
afford patentees the full breadth of clear claim language, and bind them to it
as well. Consequently, where such claim language clearly reads on prior art,
the patent is invalid.”); Phillips, 415 F.3d at 1327 (“[W]e have certainly not
endorsed a regime in which validity analysis is a regular component of claim
construction.”); Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999)
(“[I]f the only claim construction that is consistent with the claim’s language
and the written description renders the claim invalid, then the axiom does
not apply and the claim is simply invalid.”).
The maxim does not mean that claims should be construed more
narrowly than is required by the rules of claim construction, as is sometimes
misunderstood from cases such as In re Prater, 415 F.2d 1393, 1404 n.30
(CCPA 1969) (“By construing a claim as covering only patentable subject
matter, courts are able, in appropriate cases, to hold claims valid in order to
protect the inventive concept or the inventor’s contribution to the art. The
patentee at that time usually may not amend the claims to obtain protection
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comnsurate with his actual contribution to the art.”) and Yamamoto,
740 F.2d at 1572 (“District courts may find it necessary to interpret claims to
protect only that which constitutes patentable subject matter to do justice
between the parties.”).
Papst-Motoren does not describe what sources of claim construction
can be used. We assume for this appeal that a patentee is entitled to rely on
any of the various intrinsic and extrinsic sources of claim meaning discussed
in Phillips. It is patentee’s burden to show how an argued claim
construction is supported by the evidence.
Papst-Motoren also does not state what methodology of claim
construction should be used, e.g., whether the USPTO should consider all
sources of evidence considered by district courts. Nevertheless, the USPTO
always considers the specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997) (“[I]t would be unreasonable for the PTO to ignore any
interpretive guidance afforded by the applicant’s written description . . . .”).
For purposes of this appeal, we assume that any type of evidence of claim
meaning identified by Phillips, including prosecution history of the original
patent, can be considered since patentee may not amend.
Means-Plus-Function Limitation Interpretation
Claim construction of a means-plus-function limitation includes two
steps. First, the court must determine the claimed function. Second, the
court must identify the corresponding structure in the written description of
the patent that performs that function. Applied Med. Res. Corp. v. U.S.
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Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006)(internal citations
omitted).
Obviousness Rejections
A finite number of solutions within the skill and understanding of
ordinarily skilled artisans can be indicative of obviousness:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).

ANALYSIS
Our standard for claim interpretation of expired patent claims is
provided above. That is the standard we apply to claims 35 and 86 in the
analysis below.
Appellant argues that: (1) the Examiner erred in construing the "timer
means" claim element of claim 35 and improperly found that the
combination of Dickson and Weinberg discloses this claim element, (2) that
the Examiner also erred in applying the same analysis to 86, which does
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recite the timer element in means-plus-function form, and (3) that the
Examiner erred in failing to consider the totality of the evidence, including
evidence of substantial secondary considerations (App. Br. 6). We consider
each of these in turn.
Appellant acknowledges that the Examiner has properly and
succinctly framed the issue of the proper interpretation of the “timer means”
element from claim 35 (Reply Br. 7). The Examiner finds that the structure
corresponding to the “timer means” is microprocessor 8 (with internal
timing circuit 13) or discrete components that enable (activate) the oscillator
and amplifier (Ans. 33). Both Appellant and the Examiner agree on the
proper supporting structure, but disagree on the specific function. The
Examiner and Appellant specifically disagree as to whether the “enable”
function requires a “powering up” of specific elements, namely the voltage
controlled oscillator and the RF amplifier. We agree with the Examiner and
find that it does not.
The function of the “timer means” from claim 35 is described in the
Specification (FF 1-3). The enabling aspect of that means is also described
therein (id.). Appellant argues that the “timer means” enables the
application of multiple chip code sequences “by signaling the carrier
generator, modulator, and RF amplifier to power up and the recirculating
register to recirculate the spread spectrum chip code” (App. Br. 10).
However, the clearest usage of enabling in the instant Specification does not
discuss “powering up,” only that the voltage controlled oscillator is enabled
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by the enable signal (FF 5). Like the Examiner (Ans. 31-33), we can find no
specific recitations in the Specification that would lead one of ordinary skill
in the art to conclude that the enabling function of the timer means must
include the powering up of circuits.
Appellant argues that the waking of the carrier generator and amplifier
is what causes the timing circuit to enable application of multiple chip code
sequences to the modulation input of the phase shift keying modulator prior
to transmission (App. Br. 11). Even though this occurs (FF 1-3), we do not
find that this compels the expansion of the clearly stated function of the
timer means of claim 35. The Specification does not enlarge the meaning of
enable to more than activate, as the Examiner has found (Ans. 33).
Further, we agree with the Examiner (Ans. 38), that the prior art
discloses a microprocessor providing code sequences to an
encoder/modulator (FF 6), which can incorporate a recirculating shift
register that is controlled by a timing signal from a crystal controlled clock
(FF 7). While Appellant contends that Dickson and Weinberg do not
disclose an algorithm resident in a microprocessor or discrete components
which signals elements to power up (App. Br. 12-13), we do not find this to
be a deficiency based on the Examiner’s claim interpretation, with which we
concur.
Appellant also argues that the Examiner erred in applying the same
analysis to the “timer” element in claim 86 as that provided for the “timer
means” of claim 35 (App. Br. 13-14). Appellant alleges that it is clear error
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for the Examiner to provide the same analysis and construction to the
different claim terms, and the rejection of claim 86 should be reversed for
the same reasons discussed supra (id.). However, we agree with the
Examiner (Ans. 41), that the Examiner discussed the function of both
elements and did not create an equivalence between the elements.
Additionally, given that the “timer means” recited in claim 35 is presumably
narrower in scope than the “timer” recited in claim 86, we concur with the
Examiner’s findings that the applicability of the prior art to claim 35 would
suggest that the prior art is also applicable to claim 86.
Appellant also argues that the Examiner failed to adequately consider
the allegedly compelling evidence of secondary considerations (App. Br.
14). Appellant reiterates the evidence proffered of commercial success,
domination of the relevant market, licensing, and direct sales (App. Br. 15-
29). Appellant acknowledges (App. Br. 15) that “[t]o establish commercial
success as a secondary consideration of non-obviousness, the commercial
success must be based on the combination of the features recited in the
patent claims and the commercial success must be a result of the claimed
features. See Muniauction Corp. v. Thomson Corp., 532 F.3d 1318, 1328
(Fed. Cir. 2008).” This is the nexus requirement that the Examiner finds to
be lacking between the evidence and claims 35 and 86 (Ans. 42-43). We
agree with the Examiner.
Both the Examiner and Appellant acknowledge that wake up function
of the wake up timer is separate from the “timer means” of claim 35, and the
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“timer” of claim 86 (Ans. 30; Reply Br. 9). The microprocessor of the
instant invention sleeps between these transmissions to conserve battery life
while wake up timer counts down to wake-up microprocessor. Our review
of claims 35 and 86 reveal no other elements of those claims that would read
upon or be equivalent to the wake up timer, and Appellant has not made
arguments to such a claim construction. As such, any necessity of the wake
up timer to the commercial success of the instant invention would place that
success as not resulting from claimed features of claims 35 and 86.
Further to the latter point, we include a pertinent portion of the Oral
Hearing:
JUDGE CLARKE: But it’s the wake-up circuit 9 that
conserves the power, right? Or?
MR. MAYBERRY: It contributes to that because it also
puts the microprocessor to sleep. So the bigger --
JUDGE CLARKE: So the major power drain is
consumed by the wake-up circuit 9? I think that’s the way I
read the specification, anyway.
The marked processor A effectively sleeps between the
transmissions to conserve battery life, while number 9 counts
down.
MR. MAYBERRY: Right.
JUDGE CLARKE: Right, okay.
JUDGE TURNER: But if that’s not the timer means and
the timer means doesn’t read on 9, then it seems like a lot of
what’s in your brief and your reply brief, you know, where’s
the nexus between, you know, this timer means and, you know,
this -– all these secondary considerations?
MR. MAYBERRY: My understanding from the inventor
was that it was the way the timing circuit started and stopped
the oscillators and the amplifier was a main contributor to both
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the ability to have less components and to save power.
JUDGE TURNER: That may be necessary but it may
not be sufficient. If I’m able to elaborate, it may be that the
powering is up is important, but that can’t be accomplished
without 9 as well. So without 9, you just simply have, you
know, a system that, you know, never wakes up and, you know,
you may have another problem. So you may not have a nexus
between this precise claim, unless you take into account 9 as
well.
I know you may not agree with that argument, but --
MR. MAYBERRY: I understand.
JUDGE TURNER: -- tell my why I’m wrong, because
that’s what we’re here for.
MR. MAYBERRY: I understand the point, and it is the
case that battery life was a main factor to its success, and the
wake-up timer would contribute to it.
(Oral Hr’g Tr. 12-14).
As such, it is clear that at least a portion of the success of the instant
invention was its battery life, and the wake up timer contributed to that
battery life. The Specification also provides that power savings can occur
because only the wake up timer is active while in sleep mode (FF 4). It is
further clear that the benefits of the invention (Sanderford II Decl. ¶10),
arose from its power savings aspects, which contributed to the commercial
success and licensing described (App. Br. 15-29). Based on the evidence
provided, we cannot say that the commercial success and other secondary
considerations must be a result of the claimed features of claims 35 and 86.
Therefore, we cannot agree with Appellant that the Examiner failed to
appreciate the magnitude of the evidence provided (App. Br. 25-26), and
Appeal 2012-005562
Reexamination Control No. 90/010,667
United States Patent 5,987,058

20
rather we agree with the Examiner (Ans. 42-43) that Appellant has failed to
show the required nexus between the evidence provided and the claim
elements of claims 35 and 86.
Accordingly, we sustain the rejection of claims 35 and 86 under 35
U.S.C. § 103(a).

CONCLUSION
We conclude that the Examiner did not err in finding that Dickson and
Weinberg render the subject matter of claims 35 and 86 obvious.

DECISION
We affirm the Examiner’s rejection of claims 35 and 86.
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

Appeal 2012-005562
Reexamination Control No. 90/010,667
United States Patent 5,987,058

21

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