Ex Parte 6055439 et al

Patent Trial and Appeal Board

Jun 16, 2014

90012450 (P.T.A.B. Jun. 16, 2014)

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.
90/012,450 08/23/2012 6055439 51020-018USRX3 9957
42532 7590 06/16/2014
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/16/2014 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
____________

Appeal 2014-004550
Reexamination Control 90/012,450
Patent 6,055,439 C2
Technology Center 3900
____________

Before CAROLYN D. THOMAS, JOHN A. EVANS, and J. JOHN LEE,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

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Patent 6,055,439 C2

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STATEMENT OF THE CASE
Appellant MobileMedia Ideas LLC appeals under 35 U.S.C. § 134(b)
and 35 U.S.C. § 306 from the final rejection of claims 3-6 of U.S. Patent No.
6,055,439 C2 (hereinafter “the '439 Patent”).
1
The request for ex parte
reexamination was filed on August 23, 2012. Oral arguments were heard on
May 28, 2014 (“Hearing”). Claims 1 and 2 are not subject to this
reexamination. Claims 7-50 were added through amendment but have been
cancelled. Claims 3-6 were previously the subject of two ex parte
reexaminations (Reexamination Control Nos. 90/011,433 and 90/012,000).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

CLAIMED SUBJECT MATTER
Independent claim 3 is exemplary of the claims on appeal and recites:
3. A mobile telephone user interface that includes a keypad,
and which mobile telephone may operate in several different
states of operation from the standpoint of a mobile telephone
system, characterized in that a press of a key in a first state of
operation activates a first function; and in a second state of
operation, a second function;
[o]ne of the states of operation is a call conversation state
and the other state is a ready state; and
said key is typically a key intended for controlling a call;
wherein, when the telephone is in the ready state, a press
of the END key activates character deletion from a display.

1
The '439 Patent was originally issued on April 25, 2000, to Ari Helin,
Timo Virranniemi, Juha Kenakkala, and Pasi Huttunen. Appellant
MobileMedia Ideas LLC is identified as the Real Party in Interest and
current assignee of record. (App. Br. 2.)
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REJECTION
Claims 3-6 stand rejected under 35 U.S.C. § 102(b) as anticipated by a
document entitled “Cellular Mobile Telephone User Manual,” purportedly a
printed publication as of August 18, 1993 (hereinafter “Motorola Manual”).

ANALYSIS
Printed Publication Under § 102
Appellant first argues the Examiner erred in finding that the Motorola
Manual is a printed publication under 35 U.S.C. § 102. (App. Br. 19-36.)
Rather, Appellant contends, the Motorola Manual does not constitute prior
art and, thus, cannot anticipate its claims under § 102. (See id.) We are not
persuaded the Examiner erred.
Many of the underlying facts are undisputed. The Examiner’s finding
was chiefly based on the Second Declaration of Tricia Radzus-Painter
(“Radzus-Painter Decl.”), which was submitted by Petitioner. Radzus-
Painter testified in her declaration that she purchased a mobile phone from
Leader Communications on August 18, 1993. (Radzus-Painter Decl. ¶¶ 2-6,
Exs. A-F.) This mobile phone was manufactured by Motorola, Inc., and
bore the model number SCN2423A. (Id. ¶ 3, Ex. B.) Radzus-Painter also
testified the Motorola Manual was provided with the mobile phone when she
purchased it in August 1993, more than one year before the relevant priority
date of the '439 Patent. (See id. ¶¶ 7-8, Ex. H.) The Motorola Manual bears
the title “Cellular Mobile Telephone User Manual” on its front cover. (Id. ¶
8, Ex. H.) The front cover does not feature a Motorola logo or otherwise
identify the manufacturer. (Id.) However, the back cover features the
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Motorola name, logo, and address, as well as a copyright date of 1992, the
text “Printed in U.S.A.,” and a document number, “68P09360A23-O.” (Id.)
The Motorola Manual does not list the model number of any specific phone
on either cover or on any page. (See id.) At the Hearing, Appellant
confirmed it does not dispute any of these facts to which Radzus-Painter
testified in her declaration.
2
(See Hearing Tr. 3:8-13.)
In determining whether a reference is a “printed publication” within
the meaning of § 102, “the key inquiry is whether or not a reference has
been made ‘publicly accessible.’” In re Klopfenstein, 380 F.3d 1345, 1348
(Fed. Cir. 2004). In Klopfenstein, the document at issue was a printed slide
presentation pasted onto poster boards and displayed at two public events.
Id. at 1347. No copies of the presentation were ever distributed to the
public, and the presentation was never indexed in any database, catalog, or
library. Id. at 1349. The Federal Circuit nonetheless held that the
presentation was a printed publication under § 102 because it was publicly
displayed for about three days, the audience comprised persons of ordinary
skill, members of the public were free to take notes or even photograph the
presentation, and the format of the presentation was such that copying its
information would have been a simple undertaking. Id. at 1351-52.
Similarly, the Federal Circuit held that an academic paper orally
presented to an audience comprising skilled artisans and “actually

2
In its brief, Appellant asserted that Radzus-Painter’s declaration “simply
cannot be taken at face value” and “is just not credible.” (E.g., App. Br. 35.)
We are not persuaded by such assertions given that Radzus-Painter’s
declaration is a sworn statement, and Appellant’s counsel stated at the
Hearing, “We know that we have to take her declaration at face value . . . .”
(Hearing Tr. 3:11-12.)
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disseminated [in hard copy] without restriction to at least six persons”
constituted a printed publication under § 102. Massachusetts Inst. of Tech.
v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir. 1985) (“MIT”). The Federal
Circuit also held that “a single catalogued thesis in one university library”
was a printed publication under § 102. In re Hall, 781 F.2d 897, 899-900
(Fed. Cir. 1986).
Recently, the Federal Circuit held that a newsgroup post was a printed
publication under § 102. Suffolk Techs., LLC v. AOL Inc., No. 2013-1392,
2014 WL 2179274, at *5-6 (Fed. Cir. May 27, 2014). In Suffolk, while there
was no evidence in the record that any person of ordinary skill (other than
the post’s author) had actually accessed the specific newsgroup on which the
alleged prior art was posted, the court was persuaded by evidence that
persons of ordinary skill used newsgroups generally at that time. Id. at *5.
The court also held that the reference was sufficiently disseminated because
the newsgroup was organized by subject matter (so a person interested in the
topic could find the post at issue and others like it), the newsgroup’s purpose
was to facilitate discussion of information in its posts, and several users had
in fact accessed and responded to the post. Id.
In contrast, the Federal Circuit vacated a summary judgment of
invalidity based on a paper posted on an FTP server where the record
appeared to show the paper was not a printed publication under § 102. SRI
Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196-97 (Fed. Cir.
2008). In SRI Int’l, the public was not notified of the paper’s existence, and
the nature of the FTP server did not inform interested artisans that the paper
or like information was present on the server. Id. Therefore, the court held
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the record did not support the summary judgment ruling that the paper was
accessible by the public. Id.
Based on these precedents, we agree with the Examiner that the record
here indicates the Motorola Manual was publicly accessible in 1993 and,
thus, qualifies as a printed publication under § 102. First, the Motorola
Manual was sold by a vendor to a member of the public in 1993 together
with its accompanying mobile phone. (Radzus-Painter Decl. ¶¶ 7-8, Ex. H.)
As in Klopfenstein and MIT, members of the public were free to obtain a
copy of the Motorola Manual—indeed, Radzus-Painter did just that—and
the format of the Motorola Manual facilitated dissemination given that it was
sold as a booklet. (See id.) Additionally, unlike SRI Int’l, it is reasonable to
infer that a person of ordinary skill would have known that such
information—i.e., a user manual for a mobile telephone—was available
from the vendor selling the mobile phone. See Suffolk, 2014 WL 2179274,
at *5 (newsgroup’s purpose was discussion about CGI); Klopfenstein, 380
F.3d at 1350 (conferences were directed to cereal chemistry and agriculture).
Thus, we agree with the Examiner’s finding that a person of ordinary skill
would have been able to access the Motorola Manual from the vendor as
Radzus-Painter did. (See Ans. 6-7.)
We are not persuaded by Appellant’s contention that the record “at
best demonstrates that [Radzus-Painter] received one copy of the [Motorola]
Manual, but there is no evidence demonstrating that ‘persons interested and
ordinarily skilled in the subject matter or art, exercising reasonable
diligence,’ would have been able to locate another copy of the Manual.”
(App. Br. 24; see also Reply Br. 4-5.) Even if we assume arguendo that the
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copy in Radzus-Painter’s possession was the only copy of the Motorola
Manual, one copy of the Motorola Manual is enough to be a printed
publication if it is sufficiently accessible to the public, regardless of whether
“another copy” was available. See Klopfenstein, 380 F.3d at 1349 (one copy
displayed, no copies distributed); Hall, 781 F.2d at 899-900 (rejecting
argument that “a single catalogued thesis in one university library” is
insufficient to be printed publication).
Appellant also argues the record does not support the conclusion that
a person of ordinary skill in the art would have been able to locate the
Motorola Manual as Radzus-Painter did because the Motorola Manual does
not specifically correspond to the phone Radzus-Painter purchased. (App.
Br. 24-30.) Appellant points to several poor-quality photographs
3
allegedly
showing differences between the phone depicted in the Motorola Manual
and the actual phone Radzus-Painter purchased with the Motorola Manual.
(Id. 27-30.) Additionally, Appellant notes that the Motorola Manual does
not include a model number or other information identifying a specific
model of mobile phone. (Id. 26.) Noting that Radzus-Painter was actually
provided the Motorola Manual with the phone she bought, the Examiner
found that the Motorola Manual was a “generic” manual that applied to
multiple models of phones, including Radzus-Painter’s phone. (Ans. 9.)
After weighing the evidence, we are not persuaded the Examiner
erred. While minor differences may exist between the phone depicted in the
Motorola Manual and the phone actually purchased by Radzus-Painter, we

3
We cite to the photographs reproduced in Appellant’s opening Appeal
Brief in this opinion for convenience, but we reviewed all copies of the
photographs in the record in arriving at our decision.
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are unable to discern any significant differences between the two that would
undermine the Examiner’s findings. To the contrary, Radzus-Painter’s
phone is very similar to the phone depicted in the Motorola Manual. (See
App. Br. 27-30; Radzus-Painter Decl., Exs. C, H.) Appellant does not
identify any evidence showing that Radzus-Painter’s phone operates in a
manner inconsistent with the Motorola Manual. Most importantly, it is
undisputed that Radzus-Painter was actually provided the Motorola Manual
together with her mobile phone by Leader Communications in 1993.
(Radzus-Painter Decl. ¶¶ 2-8.)
Finally, Appellant relies on two declarations from Judith A. Lavine
(“1st Lavine Decl.” and “2d Lavine Decl.”), who identifies herself as the
Library Manager of the law firm representing Appellant in this appeal. The
declarations state that Lavine made a number of attempts to locate a copy of
the Motorola Manual in 2011 and 2012. (See 1st Lavine Decl. ¶¶ 8-43; 2d
Lavine Decl. ¶¶ 12-14.) Appellant contends Lavine’s testimony establishes
that the Motorola Manual was never published and, in any event, that a
person of ordinary skill could not find a copy. (App. Br. 31-33.) We do not
find Appellant’s contentions persuasive.
We consider Lavine’s declarations to have little probative value
because Lavine’s efforts to locate a copy of the Motorola Manual in 2011
and 2012—i.e., well over a decade after the critical date of the '439 Patent—
has little relevance to whether the Manual was publicly accessible before the
critical date.
4
See Hall, 781 F.2d at 899 (“The proponent of the publication

4
For the same reason, we ascribe little probative value to Lavine’s hearsay
paraphrasing of comments made by various Motorola employees and
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bar must show that prior to the critical date the reference was sufficiently
accessible, at least to the public interested in the art . . . .”) (emphasis added).
In contrast, Radzus-Painter testified that she was given the Motorola Manual
along with her mobile phone at Leader Communications in 1993. (Radzus-
Painter Decl. ¶¶ 2-6.) Further, whether Lavine was able to locate a copy of
the Motorola Manual from various other sources does not rebut Radzus-
Painter’s testimony, and even a single source making the Motorola Manual
publicly accessible is sufficient to render it a printed publication. See
Suffolk, 2014 WL 2179274, at *5 (single newsgroup); Hall, 781 F.2d at 899
(single library). To the extent Appellant is arguing Lavine’s inability to
locate a copy of the Motorola Manual establishes that it was too onerous for
interested persons of ordinary skill to locate it, we note that “a printed
publication need not be easily searchable after publication if it was
sufficiently disseminated at the time of its publication.” Suffolk, 2014 WL
2179274, at *5.
For the above reasons, we conclude the Examiner did not err in
determining that the Motorola Manual is a printed publication and prior art
to the '439 Patent under § 102.

affiliates she contacted via e-mail and customer service telephone numbers
in 2011. (See 1st Lavine Decl. ¶¶ 15-34.) There is no evidence
demonstrating that any of the individuals she contacted had knowledge or
access to information regarding Motorola manuals or business practices at or
prior to the '439 Patent critical date.
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Anticipation of Claims 3-6
Appellant also argues the Examiner erred in finding that the Motorola
Manual’s disclosures anticipate claim 3 of the '439 Patent. (App. Br. 39-51.)
The principal argument advanced by Appellant is that the term “ready state”
in claim 3 must be construed to require the claimed mobile telephone to be
“connected to the mobile telephone system.” (App Br. 39-45.) According to
Appellant, the Motorola Manual does not disclose a “ready state,” as recited
in claim 3, when properly construed. (Id.)
We give claim terms their broadest reasonable interpretation
consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). In support of its proposed construction,
Appellant points to the following language in claim 3: “[the] mobile
telephone may operate in several different states of operation from the
standpoint of a mobile telephone system . . .” (emphasis added). (App. Br.
39.) Appellant also cites several instances in the specification of the '439
Patent where the term “ready state” is allegedly used consistent with its
proposed construction. (Id. 40-41.) Finally, Appellant asserts a person of
ordinary skill would understand the term “ready state” consistent with
Appellant’s proposed construction, relying on extrinsic evidence in the form
of industry standard documents and a U.S. patent. (Id. 42-43.)
Claim 3 does not expressly include any requirement of a connection
with the mobile telephone system. We also note that the specification,
including those sections cited by Appellant, does not describe or mention
connecting to the mobile telephone system as a requirement for a “ready
state.” Nor does the specification provide further information regarding
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what it means to be a state of operation “from the standpoint of a mobile
telephone system,” as recited in claim 3. Thus, neither the claim language
nor the specification indicates the “ready state” necessarily requires a
connection to the mobile telephone system. If anything, the specification
appears to suggest that a connection may not be required. For example,
aside from repeating the claim language, the specification’s description of
the “ready state” merely indicates that “a call is terminated by pressing the
END key and the mobile telephone enters the ready state.” (Spec., col. 4 ll.
33-35.) Since the specification states that the mobile telephone enters the
“ready state” after a call is terminated, it suggests the connection present
during the call may also be terminated.
5
(See Spec., col. 4 ll. 33-35.) At
minimum, we do not discern any intrinsic evidence supporting Appellant’s
narrower reading of the term “ready state” as requiring a connection to the
mobile telephone system.
Further, we are not persuaded Appellant’s proposed construction is
compelled by its proffered extrinsic evidence. As an initial matter, where
the intrinsic evidence supports a broader reasonable construction of a term,
we should not narrow the term’s scope by introducing limitations based on
extrinsic evidence. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973,
977 (Fed. Cir. 2014) (rejecting narrower construction where intrinsic
evidence contained no reference to added limitations). “[E]xtrinsic evidence

5
Appellant argues the system must be “able to determine that the telephone
is in fact in [a] particular state.” (App. Br. 39.) Even assuming arguendo
that this is required by the claims, it is reasonable to conclude that the
system would be able to determine when a mobile telephone terminates its
connection with the system at the conclusion of a call, as described by the
'439 Patent specification.
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is not irrelevant, but has relatively little probative value in view of the
prevailing intrinsic evidence.” Id. Moreover, we note that Appellant admits
its extrinsic evidence is dated from 1996 or later—i.e., after the priority date
of the '439 Patent—further reducing its probative value. (See App. Br. 42-
43.) In addition, as the Examiner noted (Ans. 14), Appellant has not
demonstrated any nexus between the extrinsic evidence it cites and the
claimed invention of the '439 Patent. We note the '439 Patent makes no
mention of the GSM or GPRS standards, nor does it cite or otherwise
mention U.S. Patent No. 6,032,038, which is unsurprising since all of those
references post-date the filing date of the '439 Patent. Consequently, we
decline to construe the term “ready state” narrowly to require a connection
to the mobile telephone system.
Appellant’s contentions regarding the disclosures of the Motorola
Manual are dependent on its proposed claim construction. (See App. Br. 46-
51; Reply Br. 9.) Thus, based on our conclusion that Appellant’s claim
construction is overly narrow and unsupported, we are not persuaded the
Examiner’s findings with respect to the Motorola Manual’s disclosures are
erroneous. As the Examiner found, the Motorola Manual discloses an
operational state in which a mobile telephone is ready for a user to input a
phone number—i.e., “dialing”—and where “a press of the END key
activates character deletion from a display,” as recited in claim 3. (Ans. 3-
4.) Specifically, the Motorola Manual discloses: “When dialing, [the
CLR/END key] clears the last digit entered when pressed and released.”
(Motorola Manual 1.) The Manual further discloses: “Enter the telephone
number . . . . If you misdial, press [the CLR/END key] and release quickly
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to clear only the last digit entered.” (Id. 2.) Thus, we agree with the
Examiner’s findings.
For the above reasons, we sustain the Examiner’s rejection of claim 3
as anticipated by the Motorola Manual. The patentability of claims 4-6 are
not separately argued and rise or fall together with claim 3. (See App. Br.
52.) Thus, we also sustain the Examiner’s rejection of claims 4-6.

DECISION
We AFFIRM the Examiner’s rejection of claims 3-6 under 35 U.S.C.
§ 102.

TIME PERIOD FOR RESPONSE
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

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APPELLANT / PATENT OWNER
Abigail F. Cousins
Proskauer Rose LLP
Patent Department
One International Place
Boston, MA 02110-2600

THIRD PARTY REQUESTER
John S. Sieman
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
901 New York Ave., NW
Washington, DC 20001-4413

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