Ex Parte 6253075 et al

Patent Trial and Appeal Board

Dec 19, 2014

90012638 (P.T.A.B. Dec. 19, 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.
90/012,638 09/14/2012 6253075 51020-032USRX3 1036
42532 7590 12/22/2014
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
BANANKHAH, MAJID A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/22/2014 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 1
Patent Owner, Appellant
____________

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Technology Center 3900
____________

Before ELENI MANTIS MERCADER, STANLEY M. WEINBERG, and
BETH Z. SHAW, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

1 MobileMedia Ideas, LLC, is the real party in interest. App. Br. 2.
2 Issued June 26, 2001 to Beghtol (hereinafter the “’075 Patent”).
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STATEMENT OF THE CASE
The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C.
§§ 134(b) and 306 from the Final Rejection of claims 5, 6, 10, and 11.3 App.
Br. 4. An oral hearing was conducted on this appeal on November 5, 2014.
A transcript of the hearing will be made of record in due course. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.

Appellant’s Invention
Appellant’s invention relates to rejecting incoming calls for use in a
mobile communications device. See generally ’075 Patent, Abstract.
Claims 5 and 10 under reexamination are reproduced as follows:
5. A method of rejecting an incoming call to a mobile
phone, said mobile phone having a transceiver circuit for
transmitting and receiving transmissions to and from a remote
transceiver, said mobile phone in communication with a first
calling station via the remote transceiver on a communication
channel in a wireless system, said method comprising the steps
of:
receiving at the mobile phone, a transmission from the
remote transceiver signifying that there is an incoming call;
determining at the mobile phone if said incoming call is
to be rejected; and

3 In response to a Request for Ex parte Reexamination filed Sept. 14, 2012,
seeking reexamination of independent claims 5, 6, 10, and 11, an Order
Granting Request for Ex parte Reexamination was issued on Nov. 19, 2012,
ordering reexamination of claims 5, 6, 10, and 11.
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transmitting from the mobile phone a rejection message
to the remote transceiver in response to a determination being
made, during said step of determining, that said incoming call is
to be rejected, said rejection message comprising at least one
information element indicating to the wireless system that the
wireless system is to immediately release the incoming call on
the communication channel between the mobile phone and
remote transceiver.
10. In a mobile communications device, apparatus in
communication with a first calling station for selectably
rejecting an incoming call, said apparatus comprising:
a transceiver operable to send and receive transmissions
to and from a remote transceiver in a wireless system on a
communication channel, said transceiver for receiving a
transmission signifying that an incoming call is being
attempted; and
a control processor coupled to said transceiver, said
control processor for determining if said incoming call is to be
rejected, and, in response to a positive determination, said
control processor for outputting a rejection message to said
transceiver for transmission to said remote transceiver, wherein
said rejection message comprises at least one information
element indicating to the wireless system that the wireless
system is to immediately release the incoming call on the
communication channel between the mobile communications
device and remote transceiver.

The Examiner’s Rejections
1. Claims 5 and 10 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by GSM 03.83 (GSM Technical Specification, Digital
Cellular Telecommunications System; Call Waiting (CW) and Call
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Hold (HOLD) Supplementary Services - Stage 2 (GSM 03.83)
Version 5.0.0 (December 1996)).
2. Claims 6 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over GSM 03.83 in view of Takenouchi (Japanese Laid
Open Patent Application H7 -177233 to Tsuyoshi Takenouchi
(“Takenouchi”) filed on December 20, 1993 and published on July 14,
1995).

ANALYSIS
Claims 5 and 10 rejected under 35 U.S.C. § 102(b)
Appellant argues that GSM 03.83 fails to teach the limitation of a
“control processor for determining if said incoming call is to be rejected,
and, . . . said control processor for outputting a rejection message to said
transceiver for transmission to said remote transceiver” as recited in claim
10 (see App. Br. 15). Appellant argues that GSM 03.83 does not disclose
any physical structure of its mobile phone and in particular, no “control
processor” (id.). Appellant asserts the Examiner relies on inherency of a
control processor since there are determinations to be made (id.). Appellant
asserts that one of ordinary skill in the art would know that there are other
structures that do not qualify as a “control processor” that are “for
determining if said incoming call is to be rejected, and . . . for outputting a
rejection message to said transceiver” (id. at 16).
Appellant proffers such an example wherein, one such other structure
comprises (1) a Read Only Memory (i.e., ROM) storing the rejection
message, (2) a button that the user could use to indicate that the incoming
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call is to be rejected, and (3) a switch that, in response to using the button,
outputs the rejection message from ROM to the mobile communication
device’s transceiver to “release the incoming call on the communication
channel between the mobile communication device and remote transceiver”
(id.). Appellant concludes that a “control processor for determining if said
incoming call is to be rejected and . . . for outputting a rejection message to
said transceiver,” is not necessarily, i.e., not inherently, present in GSM
03.83 (id.).
The Specification “is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (citations omitted). We turn to Appellant’s Specification to determine
the meaning of the terms “said control processor for outputting a rejection
message.” Appellant directed us to sections of the Specification describing
two alternative modes (see col. 3, l. 61–col. 4, l. 3 and col. 5, l. 59–col. 6, l.
39; App. Br. 8). In an automatic mode, identification information is
compared with identification information stored in the rejection memory
wherein if a determination is made to reject the incoming call the message
processor automatically transmits the rejection message from a mobile
station to the base station. Id. In the manual mode, if a determination is
made that the call is not to be automatically rejected, a user is given the
option to manually reject the call and the user interaction is received by a
controller which directs the message processor to send the rejection message
(see col. 3, l. 61–col. 4, l. 3 and col. 5, l. 59–col. 6, l. 39; App. Br. 8; and
Fig. 2). Thus, the manual mode identified by Appellant as a “control
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processor” as described in the Specification (App. Br. 8; col. 3, l. 61–col. 4,
l. 3 and col. 5, l. 59–col. 6, l. 39; and Fig. 2), which essentially is composed
of a rejection memory (i.e., ROM), an input actuator (i.e., a button) and a
message processor (i.e., a switch that, in response to using the button,
outputs the rejection message from ROM to the mobile communication
device’s transceiver to “release the incoming call on the communication
channel between the mobile communication device and remote transceiver”)
(see col. 3, ll. 57–59; App. Br. 8), is exactly what Appellant argues as not
constituting a “control processor”—a ROM, a button, and a switch (App. Br.
16). Based on Appellant’s own Specification, a ROM, a button, and a
switch may constitute a control processor.
Thus, we agree with the Examiner’s response that Appellant’s
alternative example, describes “a ROM storing the rejection message,” but
does not explain how can a system that can read from a ROM, and can
“determine if said incoming call is to be rejected, and . . . for outputting a
rejection message to said transceiver,” does not constitute a control
processor (Ans. 10). The Examiner concludes, and we agree, that Appellant
admits to the structure of a “control processor” being present before the time
of the invention (id.), in essence because a ROM is used for storage and
reading, as well as based on Appellant’s Specification as addressed supra.
Accordingly, we affirm the Examiner’s rejection of claim 10.
Appellant further argues with respect to claim 5 that the Examiner’s
interpretation of “immediate release” as “immediately terminated” is
incorrect because it improperly imports from the Specification into claim 5
the words “the caller may be given no opportunity to leave a message and
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the call may be immediately terminated” (App. Br. 17–18; see also col. 7, ll.
8–11). Appellant provides alternative Specification examples relied upon in
the prosecution history, such as “the base station releases the call . . . the
base station may terminate the incoming call or transfer the call to a voice
messaging system” (App. Br. 19). Appellant asserts that its interpretation is
consistent with the plain meaning of the words of the claim because of the
plain meaning in the dictionary definition of “immediate” as “without
intervening medium or agent; direct: an immediate cause” (id. at 20).
According to Appellant, the broadest reasonable interpretation of the phrase
“the wireless system is to immediately release the incoming call on the
communication channel between the mobile phone and remote transceiver”
is that “the wireless system must, without requiring any additional action by
or communication from the mobile phone, ‘release the incoming call on the
communication channel between the mobile phone and remote transceiver’”
(id.). This was the interpretation reached by the U.S. District of Delaware in
construing claim 5 (see id. at n.6).
We note at the outset that the District Court’s decision is not
controlling because of the different standards of proof and claim
interpretation employed by the District Courts and the Office. See In re
Zletz, 893 F.2d 319, 322(Fed. Cir. 1989) (manner of claim interpretation that
is used by courts in litigation is not the manner of claim interpretation that is
applicable during prosecution of a pending application before the PTO) and
In re Etter, 756 F.2d 852 (according to 35 U.S.C. § 282, there is a
presumption of patent validity which has no application in reexamination
proceedings).
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Furthermore, it is the Appellant’s burden to precisely define the
invention, not the USPTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Appellant always has the opportunity to amend the claims during
prosecution, and broad interpretation by the Examiner reduces the possibility
that the claim, once issued, will be interpreted more broadly than is justified.
In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). We also note that
because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)).
Our reviewing Court in Phillips provided us with guidance as to
how to construe the meaning of disputed terms. The Court stated:
The claims, of course, do not stand alone. Rather, they are part
of a fully integrated written instrument, consisting principally
of a specification that concludes with the claims. For that
reason, claims must be read in view of the specification . . . .
[T]he specification is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single
best guide to the meaning of a disputed term.
Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc)
(citations omitted). In other words, Appellant’s own Specification is the best
guide to the meaning of disputed terms. Thus, under the broadest reasonable
interpretation, we find the Examiner correctly interpreted the terms in light
of Appellant’s Specification.
In particular, we agree with the Examiner’s findings that as stated in
Appellant’s Specification, there are two choices for the base station to
distinguish, (1) a busy message that leads to the caller being given an
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opportunity to leave a message, and (2) rejection message that leaves the
caller no opportunity to leave a message (Ans. 14). The “rejection message”
is a message notifying or informing the base station that the mobile user
would like to reject the attempted incoming call and with regard to the word
“immediately,” which comes after the step of determination (id.). The
Specification states that if the mobile phone indicates that the call is
undesired, the call is rejected without giving the caller an opportunity to hear
the busy message (id.).
As such, after the determination by the base station, if the caller is not
given an opportunity to hear a busy message, the “message rejection” is
immediate (id.). Thus, the broadest reasonable interpretation consistent with
Appellant’s Specification is that the release is immediate if the caller is
given no chance to leave a message after the base station determination (id.).
Appellant further argues that Figure 1.6 in GSM 03.83 illustrates an
information flow diagram with the label “connection reject (user busy)”
from the mobile phone (MS) to an MSC (App. Br. 21). According to
Appellant, the MSC in GSM 03.83 is not a “remote transceiver” as recited in
claim 5 because the MSC communicates with other components via wires
and does not constitute one end of a communication system in a wireless
system (id. at 21–24).
We do not agree with Appellant. We agree with the Examiner’s
finding (Ans. 17) that Appellant does not explain which one of the portions
cited shows that the system disclosed is wired, for example, a “Land Line”
as argued (id.). The lines shown in Figure 6.1 (see App. Br. 22) are
connecting different hardware (mobile to Antenna and from there to other
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components) are communication line and are all wireless (id.). Appellant’s
references to the lines in Figure 6.1, which shows a mobile phone in
communication with other parts of the communication system (such as
Switching Center) through a wireless Network Antenna, and therefore they
are part of a wireless communication system (Ans. 17-18). We agree with
the Examiner (id.) that Appellant merely argues without providing any
evidence to support the argument. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (attorney argument not the kind of factual evidence required
to rebut a prima facie case of obviousness); In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence”).
Accordingly, we also affirm the Examiner’s rejection of claim 5 under
35 U.S.C. § 102(b).
Claims 6 and 11 rejected under 35 U.S.C. § 103
Regarding claim 6, Appellant argues that the combination of GSM
03.83 and Takenouchi does not teach a message to release an incoming call
on a communication channel which is transmitted from the called mobile
phone in response to a manual input from an actuator on the called mobile
phone (App. Br. 12). Appellant further argues that the invention solves
problems that the prior art did not (id.).
We are not persuaded by Appellant’s argument. The Examiner relied
on GSM 03.83 for the teaching of a “rejection message” as discussed supra,
and on Takenouchi for the teaching of a manual input as an actuator used to
provide an indication how to handle an incoming call while the user is on
another call (Ans. 6; see also ¶¶ 15–16 of Takenouchi).
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Regarding claim 11, Appellant relies on the same arguments as those
presented for claims 6 and 10.
Accordingly, we affirm the rejection of claims 6 and 11.

CONCLUSION
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 5, 6, 10, and 11.

DECISION
We affirm the Examiner’s decision rejecting claims 5, 6, 10, and 11.

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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