Ex Parte 6253075 et al

Patent Trial and Appeal BoardJul 29, 2015

90012638 (P.T.A.B. Jul. 29, 2015)

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 07/30/2015 PROSKAUER ROSE LLP ONE INTERNATIONAL PLACE BOSTON, MA 02110 EXAMINER BANANKHAH, MAJID A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 07/30/2015 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 Appellant ____________ Appeal 2014-006225 Reexamination Control 90/012,638 Patent US 6,253,075 B12 Technology Center 3900 ____________ Before ELENI MANTIS MERCADER, STANLEY M. WEINBERG, and BETH Z. SHAW, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 MobileMedia Ideas, LLC, is the real party in interest. App. Br. 2. 2 Issued June 26, 2001 to Beghtol et al. (hereinafter the “’075 Patent”). Appeal 2014-006225 Reexamination Control 90/012,638 Patent US 6,253,075 B1 2 In our Decision dated December 22, 2014, we affirmed the Examiner’s decision rejecting claims 5, 6, 10, and 11 (Dec. 3–11). Appellant argues, inter alia, that contrary to our analysis, which relied on the Patent Owner’s Specification of a manual mode to ascertain the meaning of the term “control processor,” the message processor (i.e., a switch that, in response to using the button, to “release the incoming call on the communication channel between the mobile communication device and remote transceiver”), would still constitute a processor (Req. 43). Thus, Appellant argues that contrary to our conclusion, the ‘075 patent does not disclose a structure of a “control processor” that is the same as the Patent Owner’s counter example which was proffered as an alternative way of releasing a call (see Req. 4). Appellant during the Oral Hearing conceded that a processor can be used to read a memory as well known to the skilled artisans but argued that this is not inherent based on the alternative combination of a ROM with a switch to perform the same function (see transcript of Oral Hearing, pages 12–13 dated February, 05, 2015). Appellant explained during the Oral Hearing how a ROM and a switch can perform the function of determining if the incoming call can be rejected without the use of a control processor. Id. Upon reconsideration, we enter a new ground of rejection for claims 5 and 10, under 35 U.S.C. § 103 (a) as being unpatentable over GSM 03.83 of record, and for claims 6 and 11, under 35 U.S.C. § 103 (a) as being unpatentable over GSM 03.83 in view of Takenouchi, of record. We adopt 3 Request for rehearing dated Feb. 19, 2015 (hereinafter “Req.”). Appeal 2014-006225 Reexamination Control 90/012,638 Patent US 6,253,075 B1 3 the Examiner’s findings and conclusions in the Answer with the modification of the use of a “control processor” as being obvious rather than inherent. In other words, it would have been obvious to skilled artisans at the time of the invention to pursue a limited number of alternative ways within their technical grasp to perform the function of determining if the incoming call can be rejected, and as admitted by Appellant, these are either the use of a “control processor” or the use of a ROM and a switch. (See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) and transcript of Oral Hearing, pages 12–13 dated February, 05, 2015). While we considered the additional arguments made in Appellant’s request for re-hearing, we are not persuaded by the arguments. We refer Appellant to our Decision dated December 22, 2014. We note that with respect to Appellant’s argument regarding our Opinion not relying on the “release” example proffered by Appellant, the particular example recites “release”, just as the Examiner’s examples, and not “immediate release” as recited in claim 5 (Req. 7). Thus, we reasonably relied under the broadest reasonable interpretation consistent with the Specification on the example regarding the “rejection message” (Dec. 8–9) which would lead to the immediate release of the call. We adopt the Examiner’s findings, other than the inherency finding which we substitute with the obviousness finding as stated supra, and accordingly we institute new grounds of rejection for claims 5, 6, 10, and 11 under 35 U.S.C. § 103(a). Appellant’s request for rehearing has been granted to the extent that our decision has been reconsidered, and we modified our opinion to enter new grounds of rejection. Therefore, we grant Appellant’s request for Appeal 2014-006225 Reexamination Control 90/012,638 Patent US 6,253,075 B1 4 rehearing, and we hereby designate that the rejection of claims 5 and 10 under 35 U.S.C. § 102 (b) is reversed as well as the rejection of claims 6 and 11 for the same reason, and we enter new grounds of rejection for claims 5, 6, 10, and 11 under 35 U.S.C. § 103(a). This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[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 Patent Owner, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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. 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 GRANTED 37 C.F.R. § 41.50(b)