Ex Parte 6049796 et al

Patent Trial and Appeal Board

Nov 12, 2014

90012080 (P.T.A.B. Nov. 12, 2014)

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.
90/012,080 01/06/2012 6049796 51020-022USRX 6779
42532 7590 11/13/2014
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/13/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MOBILEMEDIA IDEAS LLC
Appellant
________________

Appeal 2014-001759
Reexamination Control 90/012,080
Patent 6,049,796
Technology Center 3900
________________

Before JEAN R. HOMERE, JASON V. MORGAN, and
JOHNNY A. KUMAR,1 Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

INTRODUCTION
Appellant filed a paper under 37 C.F.R. § 41.52(a)(1) (2013)
requesting we designate as new grounds our Decision of May 1, 2014,
wherein we affirmed the Examiner’s decision rejecting claims 17–28. We
have reconsidered our original Decision and the underlying record, in light
of Appellant’s comments in the Request, and find our Decision does not set

1 The original panel consisted of Judges Ruggiero, Morgan, and Kumar.
Judge Homere replaces Judge Ruggiero, now retired.
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forth a new ground of rejection. We, therefore, decline to change the
Decision.
Appellants’ request is DENIED.
DISCUSSION
In rejecting representative claim 17 of patent 6,049,796 (“the ’796
patent”), the Examiner construed the search engine recitation to encompass
passive search engines. Fin. Act. 38 (the ’796 patent “describes that a search
engine can have either a passive search function or an active search
function”). In particular, the Examiner noted the ’796 patent discloses both:
(1) a passive search that is performed when a user activates the search by
pressing enter or “search” and (2) an active search that is performed while
the user types in the search key. Id. at 39 (citing the ’796 patent col. 2, ll. 5–
13, 30–37, and 51–67). The Examiner thus found the ’796 patent discloses
“that a ‘search engine’ can perform a method of searching known as a
‘passive search’, or can perform a method of searching as an ‘active
search’.” Fin. Act. 39. Therefore, the Examiner found the search
capabilities described in the Simon Users Manual2 disclosed the search
engine recitation. Id. at 12.
Appellant did not dispute the Examiner’s finding that the Simons
Users Manual discloses a search engine. App. Br. 30. Instead, Appellant
merely argued the Simon Users Manual search engine is a passive search
engine, but the claim 17 search engine recitation excludes passive search
engines. Id. at 12. We did not find Appellant’s arguments persuasive of

2 Simon Says “Here’s How!”, Simon™ Users Manual, IBM Corp. (1994).
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error because we agreed with the Examiner the claim 17 search engine
recitation, given a broad but reasonable interpretation in light of the ’796
patent specification, encompasses passive search engines. Dec. 4–7.
Appellant argues the Decision erroneously sets forth an undesignated
new ground of rejection because:
the Board deviates from the Examiner’s definition of the
“search engine” recited in claim 17, and says, for the first time
on appeal, that this “search engine” does not perform the
function “to properly interpret search commands.” Rather, the
Board says, for the first time on appeal, that an unrecited input
interface performs this function.
Req. Reh’g 6.
In particular, Appellant submits the Examiner repeatedly construed
the search engine recitation to be “‘software or firmware to properly
interpret search commands, carry out a search algorithm, and display lists of
records that meet the search specifications.’” Id. at 5, 9 (citing, e.g., Fin.
Act. 36, ll. 7–10); see also Req. Reh’g 11–12, 15.
We acknowledged the Examiner cited to a portion of the ’796 patent
disclosing “that accomplishing a search in a PDA [(personal digital
assistant)] includes incorporating ‘software or firmware to properly interpret
the search commands, carry out a search algorithm, and display lists of
records that meet the search specification.’” Dec. 5 (citing Ans. 11; the ’796
patent col. 1, 1. 66–col. 2, 1. 2). However, we emphasized this disclosure,
instead of explicitly describing the functions of a search engine per se,
distinguishes between the function of interpreting search commands and the
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function of carrying out a search algorithm.3 See Dec. 5. This particular
disclosure, along with several other portions in the ’796 patent, provided
ample support for the Examiner’s conclusion that the claimed search engine
could be activated either passively in the manner disclosed in the Simon
Users Manual or actively as a user types in search keys. Dec. 4–7; see also
Fin. Act. 39; Ans. 6–7, 11.
Contrary to Appellant’s contention, our construction of the search
engine recitation did not change the thrust of the rejection so as to deny
Appellant a fair opportunity to react. In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976). The Examiner explicitly found “the difference between the
active search and the passive search, as described in the specification of the
’796 Patent appears to be how the search engine is activated.” Ans. 11
(emphasis added); see also Dec. 4. Furthermore, during the oral hearing,
Appellant’s counsel was asked whether it was “the Examiner’s position, that
the back-end -- that the search engine subroutine [703] could be a passive
[sic] and, in fact, is disclosed as potentially being passive.” Oral Hr’g Trans.
8, ll. 16–18. Appellant’s counsel reacted by saying subroutine 703 “is not

3 We note in passing that even if the recited search engine were construed to
perform the function “to properly interpret search commands” (Req. Reh’g
5) the outcome of our Decision would not change. The ’796 patent Fig. 7A,
which depicts a search engine that can be activated either passively or
actively, includes a step in which the search command is properly
interpreted. See Dec. 6 (citing the ’796 patent Fig. 7A, block 803 (which
verifies the supplied key is not empty)). Thus, Appellant’s reliance on the
Examiner’s statements as establishing a definition of a search engine does
not show that the recited search engine recitation was limited by disavowal.
Req. Reh’g 17.
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the -- the only operation of the search engine, and the patent does not
disclose that all (that) the search engine does . . . is do the matching. . . . [I]t
expressly says it includes all of Figs[.] 6 and 7.” Id. at 8, ll. 19–22.
Not only did we find Appellant’s position unpersuasive,4 our
characterization of the Examiner’s position was consistent with the
Examiner’s repeated finding that the method of activation was the
distinguishing feature between a search engine invoked passively (i.e., a
passive search engine) or actively (i.e., an active search engine). See Fin.
Act. 35–36, 39; Ans. 6–7, 8–9, and 11. Because our findings and
conclusions were consistent with the Examiner’s findings and ultimate
conclusions, our Decision did not change the thrust of the Examiner’s
rejection.

4 As we noted, Figs. 6A–B merely “illustrate ‘a flowchart detailing the
sequence following a command to perform a search.’” Dec. 5 (citing the
’796 patent col. 4, ll. 3–4). Only Figs. 7A–B “depict ‘a flowchart detailing a
search engine sequence . . . .’” Dec. 5–6 (citing the ’796 patent col. 4, ll. 5–
7). Furthermore, Appellant’s counsel acknowledged the matching procedure
703, illustrated in Figs. 7A–B, “could be done by a passive search engine.”
Oral Hr’g Trans. 8, ll. 9–10.
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CONCLUSION
Based on the record before us now and in the original appeal, we have
granted Appellant’s request to the extent that we have reconsidered our
Decision, but we deny Appellant’s request to designate our Decision as
setting forth new grounds of rejection. The request for rehearing is denied.
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).

REHEARING DENIED

PATENT OWNER:
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110

THIRD-PARTY REQUESTER:
THE MARBURY LAW GROUP, PLLC
11800 SUNRISE VALLEY DRIVE
15TH FLOOR
RESTON, VA 20191

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