Ex Parte Lakkala et al

Patent Trial and Appeal Board

Mar 11, 2013

10949568 (P.T.A.B. Mar. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HARRI LAKKALA, RIKU SUOMELA,
and ILKKA SALMINEN
____________________

Appeal 2011-001526
Application 10/949,568
Technology Center 2400
____________________

Before: ALLEN R. MacDONALD, LINDA E. HORNER,
MICHAEL W. KIM, BARBARA A. BENOIT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001526
Application 10/949,568

2

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 4-9, 11-16, 18-28, 30-35, 37-42, 44-52, 79, 80, and 82-85. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part. We also enter a new ground of rejection pursuant
to 37 C.F.R. § 41.50(b).
Appellants’ Invention
Appellants’ invention is directed to an apparatus and method for
creating, storing, and using personal information relating to a real-world,
earth-shaking event (“ESE”) event. Spec. 1. Claims 1 and 27 are illustrative
of the invention (formatting added):
1. A method, comprising:
[(a)] receiving a message of an event at a user device;
[(b)] creating at the user device metadata relating to the
event in response to the received message of the event and
storing the created metadata in a memory at the device;
[(c)] collecting content data in response to receiving the
message of the event to generate a content data set relating to
the message of the event; and
[(d)] adding the created metadata to the content data set.

27. A user device, comprising:
[(a)] a memory device for storing a program; and
[(b)] a processor in communication with the memory
device, the processor is configured with the program to:
[(i)] control receiving a message of an event at the
user device;
[(ii)] control at the user device creation of
metadata relating to the event in response to the received
Appeal 2011-001526
Application 10/949,568

3
message of the event and control storing the created
metadata in the memory device;
[(iii)] control collection of content data in response
to the received message of the event to generate a content
data set relating to the message of the event; and
[(iv)] control adding of the created metadata to the
content data set.
Rejection on Appeal
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Keyes US 6,516,427 B1 Feb. 4, 2003
Pather US 7,177,859 B2 Feb. 13, 2007
Kovacs EP 1 296 253 A1 Mar. 26, 2003

The Examiner rejected claims 1, 2, 4-9, 11-16, 18-28, 30-35, 37-42,
44-52, 79, 80, and 82-85 under 35 U.S.C. § 103(a) as being unpatentable
over Pather, Keyes, and Kovacs.
ISSUE ON APPEAL
Did the Examiner err in rejecting claims 1, 2, 4-9, 11-16, 18-28, 30-
35, 37-42, 44-52, 79, 80, and 82-85 under 35 U.S.C. § 103(a) because the
combination of Pather, Keyes, and Kovacs fails to disclose or suggest
creating at the user device metadata relating to the event in response to the
received message of the event and collecting content data in response to the
received message of the event?
Appeal 2011-001526
Application 10/949,568

4
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 27, 28, 30-35, 37-42, 44-52, and 80 under 35
U.S.C. § 112, second paragraph, for indefiniteness. Specifically, we
construe “a processor . . . configured . . . to” perform various control
functions, as recited in independent claim 27, as a “means-plus-function”
limitation subject to 35 U.S.C. § 112, sixth paragraph, and conclude that the
Specification’s failure to disclose an algorithm corresponding to the recited
functions renders the claim indefinite under 35 U.S.C. § 112, second
paragraph.

FINDINGS OF FACT
Appellants’ Invention
1. The Specification discloses that the present invention may be
implemented in user device 100a, which may be a wireless or wired device
that has been enabled to communicate over a network. Examples include a
hand-held wireless telephone, a personal digital assistant, a laptop or
personal computer, a set-top box, a digital camera or camcorder, a digital
audio device, a television, a digital radio device, a digital video recorder, a
wrist watch, and a global positioning system receiver. Spec. 3-4; Fig. 1.
2. The Specification states that user device 100a may receive
notice of a real-world, earth-shaking event (“ESE”) from an event provider
120. Spec. 4, 8; Fig. 3 (step 302).
3. The Specification discloses that once notice of an event has
been received, user device 100a may create an ESE data set in response to a
notification of the event. Spec. 5, 9; Fig. 3 (steps 306, 308). This may
Appeal 2011-001526
Application 10/949,568

5
involve collecting content, e.g., “the user manually creating video, image,
audio or text data using device 100a,” or “device 100a automatically sending
context information using sensors that are either integral or peripheral to the
device.” Spec. 5; see also Spec. 14; Fig. 3 (step 322).
4. The Specification discloses that user device 100a creates
metadata for use in storing and retrieving an ESE data set. Spec. 14; Fig. 3
(step 320). “The metadata may be based on the name, description, time and
date information, location information and/or the like.” Spec. 14.
5. The Specification discloses that the “metadata is added to the
collected content by way of, e.g., embedding it within the content, storing it
with the content or otherwise associating it with the content.” Spec. 14; Fig.
3 (step 324).
6. The Specification discloses that “[u]ser device 100a may also
include a CPU 200 and associated memory 205 containing programming for
controlling, in accordance with the present invention, data processing and
transfer operations among the various elements of device 100a via a data
transfer bus 250.” Spec. 6.
Dictionary Definitions
7. AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE
1398 (4th ed. 2006) (defining “processor” as “2. Computer Science a. A
computer. b. A central processing unit. c. A program that translates another
program into a form acceptable by the computer being used.”).
8. MICROSOFT COMPUTER DICTIONARY 92 (5th ed. 2002) (defining
“central processing unit” as “CPU”); id. at 132 (defining “central processing
unit” as “[a]cronym for central processing unit. The computational and
control unit of a computer. The CPU is the device that interprets and
Appeal 2011-001526
Application 10/949,568

6
executes instructions . . . By definition, the CPU is the chip that functions as
the ‘brain’ of a computer. In some instances, however, the term
encompasses both the processor and the computer’s memory or, even more
broadly, the main computer console (as opposed to peripheral equipment).”).
PRINCIPLES OF LAW
35 U.S.C. § 112, Sixth Paragraph
Special rules of claim construction allow for claim limitations drafted
in functional language and are set forth in 35 U.S.C. § 112, sixth paragraph,
which provides for:
[a]n element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.

35 U.S.C. § 112, sixth paragraph (emphasis added). While this provision
permits a claim limitation to be set forth using solely functional language, it
operates to restrict such claim limitations to those structures, materials, or
acts disclosed in the specification (or their equivalents) that perform the
claimed function. Personalized Media Comm’ns, LLC v. Int'l Trade
Comm'n, 161 F.3d 696, 703 (Fed. Cir. 1998).
The Federal Circuit has established that use of the term “means” is
central to the analysis of whether a claim limitation should be interpreted in
accordance with 35 U.S.C. § 112, sixth paragraph: use of the word “means”
creates a rebuttable presumption that the inventor intended to invoke § 112,
sixth paragraph, whereas failure to use the word “means” creates a
rebuttable presumption that the inventor did not intend the claims to be
Appeal 2011-001526
Application 10/949,568

7
governed by § 112, sixth paragraph. Id. at 703-04; Flo Healthcare
Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed. Cir. 2012).
When an inventor has not signaled an intent to invoke § 112, sixth
paragraph, by using the term “means,” the presumption against its
invocation is strong but can be overcome if “the claim term fails to recite
sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function.” Lighting World, Inc. v.
Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (quoting
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002)
(internal quotation marks and citation omitted)). A claim limitation that
“essentially is devoid of anything that can be construed as structure” can
overcome the presumption. Flo Healthcare, 697 F.3d at 1374. The
presumption may be overcome by a claim limitation that uses a non-
structural term that is “simply a nonce word or a verbal construct that is not
recognized as the name of structure” but is merely a substitute for the term
“means for” associated with functional language. Lighting World, 382 F.3d
at 1360. Claim language that further defines a term that otherwise would be
a nonce word can denote sufficient structure to avoid construction under
§ 112, sixth paragraph, MIT v. Abacus Software, 462 F.3d 1344, 1354 (Fed.
Cir. 2006), as can a claim limitation that contains a term that “is used in
common parlance or by persons of skill in the pertinent art to designate
structure,” Lighting World, 382 F.3d at 1359. Nor will claim language
invoke a § 112, sixth paragraph, construction if persons of ordinary skill in
the art reading the specification understand the term to be the name for a
structure that performs the function, even when the term covers a broad class
of structures or identifies the structures by their function. Greenberg v.
Appeal 2011-001526
Application 10/949,568

8
Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many
devices take their names from the functions they perform.”).
Indefiniteness Analysis for Computer-Implemented
Claim Limitations Interpreted Under
35 U.S.C. § 112, Sixth Paragraph
A claim limitation interpreted in accordance with 35 U.S.C. § 112,
sixth paragraph, is construed to cover the corresponding structures,
materials, or acts disclosed in the specification (and their equivalents) that
perform the claimed function. Personalized Media, 161 F.3d at 703. For a
computer-implemented claim limitation interpreted under § 112, sixth
paragraph, the corresponding structure must include the algorithm needed to
transform the general purpose computer or processor disclosed in the
specification into the special purpose computer programmed to perform the
disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game
Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Thus, the specification must
sufficiently disclose an algorithm to transform the general purpose computer
or processor to a special purpose processor programmed to perform the
disclosed algorithm. Id. at 1338. An algorithm is defined, for example, as
“a finite sequence of steps for solving a logical or mathematical problem or
performing a task.” MICROSOFT COMPUTER DICTIONARY 23 (5th ed. 2002).
An applicant may express the algorithm in any understandable terms
including as a mathematical formula, in prose, in a flow chart, or “in any
other manner that provides sufficient structure.” Finisar Corp. v. DirecTV
Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
An indefiniteness rejection under § 112, second paragraph, is
appropriate if the specification discloses no corresponding algorithm
Appeal 2011-001526
Application 10/949,568

9
associated with a computer or processor. Aristocrat, 521 F.3d at 1337-38.
Mere reference to a general purpose computer or processor with appropriate
programming without providing an explanation of the appropriate
programming, or to “software” without providing detail about the means to
accomplish the software function, is not an adequate disclosure. Id. at 1334;
Finisar, 523 F.3d at 1340-41. In addition, simply reciting the claimed
function in the specification, while saying nothing about how the computer
or processor ensures that those functions are performed, is not a sufficient
disclosure for an algorithm which, by definition, must contain a sequence of
steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed.
Cir. 2009).
If the specification explicitly discloses an algorithm, the sufficiency of
the disclosure must be determined in light of the level of ordinary skill in the
art. Aristocrat, 521 F.3d at 1337. The specification must sufficiently
disclose an algorithm to transform a general purpose processor to a special
purpose processor so that a person of ordinary skill in the art can implement
the disclosed algorithm to achieve the claimed function. Id. at 1338.
ANALYSIS
Claim Construction – Claim 27
Claim 27 recites a user device comprising (a) a memory device for
storing a program and (b) a processor in communication with the memory
device and configured with the program to (i) “control receiving a message
of an event at the user device,” (ii) “control at the user device creation of
metadata relating to the event in response to the received message of the
event and control storing of the created metadata in the memory device,”
Appeal 2011-001526
Application 10/949,568

10
(iii) “control collection of content data in response to the received message
of the event to generate a content data set relating to the message of the
event,” and (iv) “control adding of the created metadata to the content data
set.” The “processor” limitation is set forth using functional language,
raising the issue whether the limitation should be treated as a “means-plus-
function” limitation under 35 U.S.C. § 112, sixth paragraph. The absence of
the word “means” creates the strong rebuttable presumption that the
inventors did not intend the “processor” limitation to be governed by § 112,
sixth paragraph. See Flo Healthcare, 697 F.3d at 1373. To determine
whether the presumption is overcome, we must decide whether the term
“processor” as used in claim 27 is one that connotes structure, or is instead a
verbal construct devoid of structure that is used as a substitute for the term
“means for.” See Lighting World, 382 F.3d at 1360.
First, we consider how a skilled artisan would understand the term
“processor” as used in claim 27. Based on our review of dictionary
definitions, we conclude that a skilled artisan would not recognize
“processor” as the name of a sufficiently definite structure for performing
the control functions recited by the “processor” limitation. Rather, a person
skilled in the art of computer programming would recognize the term
“processor” to mean a general purpose computer, a central processing unit
(“CPU”), or a program that translates another program into a form
acceptable by the computer being used. FF7, FF8; see Lighting World, 382
F.3d at 1360-61 (consulting dictionaries to determine whether a claim term
has a generally understood meaning that denotes structure). This
interpretation is consistent with Appellants’ Specification, which refers only
to a CPU, without providing a definition of “processor” or any additional
Appeal 2011-001526
Application 10/949,568

11
description sufficient to inform a skilled artisan that the term connotes a
sufficiently definite structure. FF6; see Lighting World, 382 F.3d at 1361
(consulting specification to determine whether a claim term denotes
structure).
We also consider whether the control functions performed by the
processor in claim 27 are functions typically found in a commercially
available off-the-shelf processor. If a general purpose processor would be
capable of performing the claimed functions, then a skilled artisan might
understand the claim term “processor” to provide sufficient structure for
performing those functions. See In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (functions such as
“processing,” “receiving,” and “storing” that can be achieved by any general
purpose computer without special programming do not require disclosure of
more structure than the general purpose processor that performs those
functions). In this case, however, we conclude that at least two of the
functions performed by the processor in claim 27—controlling the collection
of content data and controlling the creation of metadata—are not typical
functions found in a general purpose processor and would require additional
programming of the processor to implement. Therefore, unlike the claimed
“control unit” comprising “a CPU and a partitioned memory system” that
was held to provide sufficient structure to perform the claimed function of
“controlling the communication unit,” see LG Elecs., Inc. v. Bizcom Elecs.,
Inc., 453 F.3d 1364, 1372 (Fed. Cir. 2006), rev'd on other grounds, Quanta
Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (2008), here the claimed
control functions cannot be executed by a general purpose processor without
Appeal 2011-001526
Application 10/949,568

12
additional programming. Accordingly, the claimed “processor” alone is not
sufficient structure to perform the functions in claim 27.
The term “processor” also appears in claim 27 by itself without a
structural modifier, which is further evidence that the term is a nonce word
that is not recognized as the name of structure. See Flo Healthcare, 697
F.3d at 1374 (holding that “the generic term ‘mechanism’ standing alone
may connote no more structure than the term ‘means,’” but the term “height
adjustment mechanism” designates a class of generally-understood
structures). Nor does claim 27 include any structure connected to the
processor that would indicate the processor itself is a sufficiently definite
structure. Claim 27 is unlike the claims in Inventio AG v. ThyssenKrupp
Elevator Americas Corp., 649 F.3d 1350, 1359-60 (Fed. Cir. 2011), in which
the claimed “computing unit” that was held to connote sufficiently definite
structure was claimed to be connected to a modernizing device and to
generate a destination signal for transmission to the modernizing device and
was further claimed to be connected to floor terminals of the elevator system
and evaluate incoming call reports, destination floors, and identification
codes to generate the destination signal for processing by the modernizing
device. In contrast, claim 27 does not recite any structure connected to the
“processor” other than a memory device, which is not sufficient for
performing the control recited functions. Nor does claim 27 recite the
specific steps that the processor undertakes to perform the recited control
functions.
The term “processor” in claim 27 is also different from the claim
terms “circuit” and “circuitry,” which have been held to denote sufficiently
definite structure to avoid the application of § 112, sixth paragraph. See
Appeal 2011-001526
Application 10/949,568

13
MIT, 462 F.3d at 1354-56; Linear Tech. Corp. v. Impala Linear Corp., 379
F.3d 1311, 1320-21 (Fed. Cir. 2004); Apex Inc. v. Raritan Comp., Inc., 325
F.3d 1364, 1374 (Fed. Cir. 2003). The term “circuit” coupled with a
description in the claims of the circuit’s operation typically conveys the
structural arrangement of the circuit’s components. See MIT, 462 F.3d at
1355; Linear Tech., 379 F.3d at 1320; Apex, 325 F.3d at 1373. In contrast,
the recited processor and claim language here do not convey to a person
skilled in the art anything about the internal components, structure, or
specific operation of the processor.
For these reasons, we conclude that the term “processor” as used in
claim 27 is a non-structural term that would not be understood by a skilled
artisan as having sufficiently definite structure to perform the recited control
functions. The term is used as merely a substitute for the term “means for”
associated with recited functional language and thus invokes the application
of § 112, sixth paragraph. We also conclude that dependent claims 28, 30-
35, 37-42, 44-52, and 80 contain no additional language connoting structure
sufficient to perform the recited functions, nor do they recite specific steps
that the processor undertakes to perform the recited functions. These claims,
therefore, are also interpreted under § 112, sixth paragraph.
New Ground of Rejection under 35 U.S.C. § 112,
Second Paragraph – Claim 27
Having concluded that the “processor” limitation in claim 27 invokes
the application of § 112, sixth paragraph, we now consider whether
Appellants’ Specification discloses sufficient corresponding structure for
performing the claimed control functions. See Aristocrat, 521 F.3d at 1333.
Because the limitations of claim 27 are computer-implemented and cannot
Appeal 2011-001526
Application 10/949,568

14
all be performed by a general purpose computer without any special
programming, we must determine whether the Specification discloses an
algorithm that transforms a general purpose processor into a special purpose
processor that performs the claimed functions. Id.; cf. Katz, 639 F.3d at
1316.
The only portion of the Specification that describes the processor and
its associated functions provides that the user device may include a CPU and
a memory “containing programming for controlling, in accordance with the
present invention, data processing and transfer operations among the various
elements” of the user device. FF6. That description is merely a general
statement that fails to mention the specific control functions recited in claim
27, much less provide any detailed steps as to how the processor would
perform functions such as controlling creation of metadata and controlling
collection of content data.
The Specification does contain a flow chart illustrating a process by
which content data and metadata are created, stored, and used. FF2-FF5
(citing Fig. 3). However, the flow chart presents the process at a high level
without reference to the control functions to be performed by the processor.
Even if the steps shown in the flow chart could somehow be understood as
corresponding to the functions ascribed to the claimed processor, the flow
chart and accompanying description in the Specification would simply be
restating the claimed functions without conveying to a skilled artisan how
the processor ensures that the functions are performed. As such, the
Specification fails to disclose an algorithm that transforms the general
purpose processor into a special purpose processor programmed to perform
Appeal 2011-001526
Application 10/949,568

15
the control functions recited in claim 27. See Blackboard, 574 F.3d at 1384;
Aristocrat, 521 F.3d at 1334.
Because Appellants’ Specification fails to disclose an algorithm for
performing the functions recited in the “processor” limitation of claim 27, it
fails to describe sufficient corresponding structure as required for a
limitation interpreted under 35 U.S.C. § 112, sixth paragraph. Accordingly,
we enter a new ground of rejection of claim 27 as being unpatentable under
35 U.S.C. § 112, second paragraph, as indefinite. Claims 28, 30-35, 37-42,
44-52, and 80 depend from claim 27 and therefore are also indefinite under
35 U.S.C. § 112, second paragraph. As such, we also enter a new ground of
rejection of claims 28, 30-35, 37-42, 44-52, and 80 on this same basis.
Rejection under 35 U.S.C. § 103(a) – Claim 1
In rejecting independent claim 1 under 35 U.S.C. § 103(a), the
Examiner finds that Pather substantially discloses the claimed invention,
including receiving a message of an event at a user device, collecting content
data and creating metadata relating to the event, and adding the metadata to
the collected content data. Ans. 4, 10-11; Pather, col. 2, ll. 53-64; col. 7, l.
55 – col. 8, l. 30; col. 21, ll. 24-31; col. 23, ll.3-15. The Examiner finds,
however, that Pather does not teach that (i) metadata relating to the event is
created at the user device and in response to the received message of the
event, and (ii) content data is collected in response to receiving the message
of the event. Ans. 4-6. The Examiner relies on Keyes and Kovacs for these
features and concludes that the claimed invention would have been obvious
over the combination of Pather, Keyes, and Kovacs. Ans. 5-6, 11-12.
Appeal 2011-001526
Application 10/949,568

16
Appellants contend that the Examiner erred in rejecting the claims
under 35 U.S.C. § 103(a) because the combination of references does not
teach “collecting content data in response to receiving the message of the
event” or “creating at the user device metadata relating to the event in
response to the received message of the event,” as recited in claim 1. App.
Br. 4-10. Appellants specifically challenge some of the Examiner’s findings
regarding Kovacs and Keyes and further contend that the Examiner does not
provide a rational basis for combining Pather and Keyes.
We have reviewed the Examiner’s § 103(a) rejection in light of
Appellants’ arguments that the Examiner has erred. We disagree with
Appellants’ conclusions.
First, Appellants argue that Kovacs teaches content data collection
that occurs automatically, not in response to receiving a message of an
event, as recited in claim 1. App. Br. 7. We disagree. Kovacs discloses a
recording device, such as a digital camera or camcorder, that collects
electronic content (i.e., a recording) and includes a module for gathering
context information from which metadata relating to the recording can be
created. Kovacs, ¶¶ [0011], [0024], [0032]. Metadata is then stored with the
recording (i.e., the collected content data). Kovacs, ¶¶ [0011], [0032].
Appellants rely on the following statement in Kovacs: “[w]henever a
recording device records electronic content, the context gathering module
automatically gathers the current context of the recording device . . . .”
App. Br. 7 (quoting Kovacs, ¶ [0032]) (emphasis added by Appellant).
While this sentence describes the automatic nature of context-gathering in
Kovacs, it does not teach that content data is collected automatically, as
Appellants assert. Instead, as set forth in claim 1, the recording device in
Appeal 2011-001526
Application 10/949,568

17
Kovacs starts collecting content data (i.e., begins a recording) in response to
a received message of an event (e.g., a signal from the User Control Unit to
start a recording). See Kovacs, ¶ [0041].
Appellants further argue that Kovacs does not teach creating metadata
in response to a received message of an event, as recited in claim 1. App.
Br. 7. A careful review of the Examiner’s rejection, however, shows that the
Examiner does not rely on Kovacs for such a teaching but rather relies on
Keyes. Ans. 5, 11-12. Therefore, Appellants’ arguments with respect to
Kovacs do not show error in the Examiner’s rejection.
Next, Appellants allege error in the Examiner’s findings regarding
Keyes. Keyes discloses a peripheral device that sends a message to a remote
diagnostic device in the event of a malfunction. Keyes, col. 4, ll. 29-36; Fig.
2A. The remote diagnostic device sends a response message to the
peripheral device that causes a diagnostic application on the peripheral
device to execute a particular diagnostic subroutine, producing results that
can be sent to the remote diagnostic device. Keyes, col. 4, ll. 42-57; Fig. 2B.
Appellants state that the Examiner appears to be equating the response
message of Keyes to the metadata relating to the event that is created at the
user device in claim 1. App. Br. 8. Based on this understanding, Appellants
contend that Keyes’s response message, consisting of instructions to execute
a diagnostic subroutine resident on the peripheral device or executable code
for diagnosing the cause of a peripheral device malfunction, cannot be
reasonably interpreted as metadata relating to the event, nor is it created at
the peripheral device. Id.
Based on our review of Keyes and the Examiner’s Answer, we
understand the Examiner to be equating the response message received at the
Appeal 2011-001526
Application 10/949,568

18
peripheral device in Keyes to the message of the event received at the user
device in Appellants’ claim 1, rather than the metadata created at the user
device. Ans. 5. Receipt of the response message in Keyes causes the
peripheral device to execute a diagnostic subroutine that produces results
relating to the device malfunction, just as receipt of the event message in
claim 1 causes the user device to create metadata relating to the event. See
Keyes, col. 4, ll. 42-57; Fig. 2B. Thus, Appellants’ argument, which is
based on a misunderstanding of the Examiner’s rejection, does not
demonstrate that the Examiner erred in relying on Keyes.
Finally, Appellants contend that “the Examiner did not provide any
basis to establish that the skilled artisan would have been realistically led by
anything in [Pather] or [Keyes] to modify the subscription-based notification
system of [Pather] to include any teaching of a system for remote diagnosis
of peripheral device malfunctions disclosed in [Keyes].” App. Br. 9. The
Examiner, however, cites Keyes for the general concept that data creation at
a user device may be triggered by receipt of an event message, rather than
for Keyes’s specific teachings relating to remote diagnosis of peripheral
device malfunctions. Ans. 5. Appellants have not presented any persuasive
arguments or evidence that a person of ordinary skill in the art would not
have had the knowledge and skills rendering him capable of combining the
features of Keyes and Pather to have metadata creation triggered by an event
message and performed at the user device rather than at a central location.
See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1368 (Fed. Cir. 2006).
For the foregoing reasons, we sustain the Examiner’s § 103(a)
rejection of claim 1, as well as the rejection of dependent claims 2, 4-9, 11-
Appeal 2011-001526
Application 10/949,568

19
16, 18-26, and 79, for which Appellants have not made separate, detailed
arguments. We also sustain the Examiner’s § 103(a) rejection of claim 82,
which contains similar limitations, as well as dependent claims 83-85, for
which Appellants have not made separate, detailed arguments.
For the reasons discussed in the previous section, claims 27, 28, 30-
35, 37-42, 44-52, and 80 are indefinite. Therefore, we reverse, pro forma,
the Examiner’s § 103(a) rejection of these claims because it was necessarily
based on speculation and assumptions as to the scope of the claims. See In
re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Specifically, as there is no
algorithm disclosed in the Specification corresponding to the functions
recited in independent claim 27, there is no way to determine whether any
prior art discloses the same or equivalent structure to the structure
encompassed by claim 27. Of course, if these claims were not construed
under § 112, sixth paragraph, and therefore were not indefinite under § 112,
second paragraph, we would sustain the Examiner’s § 103(a) rejection of
claim 27, which contains similar limitations to claim 1, as well as the
rejection of dependent claims 28, 30-35, 37-42, 44-52, and 80, for which
Appellants have not made separate, detailed arguments.

DECISION
The Examiner’s decision to reject claims 1, 2, 4-9, 11-16, 18-26, 79,
and 82-85 under 35 U.S.C. § 103(a) is affirmed. The Examiner’s decision to
reject claims 27, 28, 30-35, 37-42, 44-52, and 80 under 35 U.S.C. § 103(a) is
reversed pro forma.
Appeal 2011-001526
Application 10/949,568

20
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
for claims 27, 28, 30-35, 37-42, 44-52, and 80 under 35 U.S.C. § 112,
second paragraph.
Section 41.50(b) provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” 37
C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, the
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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)(iv).
Appeal 2011-001526
Application 10/949,568

21

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

msc