Ex Parte 7,057,605 et al

Patent Trial and Appeal Board

May 29, 2013

90011692 (P.T.A.B. May. 29, 2013)

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.
90/011,692 05/13/2011 7,057,605 NIPF-2 8267
52450 7590 05/29/2013
KRIEG DEVAULT LLP
ONE INDIANA SQUARE
SUITE 2800
INDIANAPOLIS, IN 46204-2079
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/29/2013 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 ADC TECHNOLOGY, INC.
Appellant and Patent Owner
____________

Appeal 2013-004305
Reexamination Control 90/011,692
Patent 7,057,605 B2
Technology Center 3900
____________

Before MAHSHID D. SAADAT, KEVIN F. TURNER, and STEPHEN C.
SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Patent owner appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 14, 15, and 19. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.

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STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on May 13, 2011, of United States Patent 7,057,605 B2 (the ’605 Patent)
issued to Toshiharu Enmei on June 6, 2006. Presently, claims 14, 15, and 19
stand rejected.
Patentee’s invention relates to a portable communication device (col.
1, ll. 18-19). Claim 14 reads as follows:
14. A portable communicator comprising:
a wireless communication device that is wirelessly
connected to a public communication channel and conducts
transmission and reception through the public communication
channel;
a computer that outputs control commands to the wireless
communication device, enters data from the public
communication channel through the wireless communication
device and transmits data to the public communication channel
through the wireless communication device;
a display that shows predetermined images sent by the
computer;
a remainder display controlling device to show a
remaining power capacity on the display; and
a operation status display controlling device to show an
operation condition of the portable communicator on the
display while the remaining power capacity is shown.

(App. Br. 32, Claims Appendix).

The Examiner cites the following references:

Metroka US 5,117,449 May 26, 1992
Burke US 5,248,929 Sep. 28, 1993
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Bartlett W. Mel, et al., “Tablet: Personal Computer in the Year 2000,”
Communications of the ACM, Vol. 31, No. 6, June 1998 (“Tablet”).

The Examiner rejects claims 14, 15, and 19 under 35 U.S.C. § 103(a)
as unpatentable over Burke and any one of Tablet or Metroka.

ISSUE
Did the Examiner err in rejecting claims 14, 15, and 19?

PRINCIPLE OF LAW
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

ANALYSIS
Metroka and Burke
Appellant argues that “Metroka teaches away from a combination
with Burke” (App. Br. 17). “A reference may be said to teach away when a
person of ordinary skill, upon [examining] the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.”
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Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc. 73 F.3d 1085, 1090
(Fed. Cir. 1995) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
In the present case, Metroka discloses a communication device (see e.g., col.
2, ll. 63-65) that includes a low battery indicator (see e.g., col. 4, ll. 5-11).
Burke discloses a communication device (see e.g., col. 2, l. 36) that includes
a battery level indicator (see e.g., col. 2, ll. 56-57). While Metroka discloses
an indication “that a low battery condition does exist” (col. 4, ll. 7-8) and
Burke discloses any battery level (col. 2, l. 56), Appellant has not
demonstrated that Burke discourages indicating a low battery level (as
disclosed by Metroka). In fact, Burke discloses displaying a battery level
which one of ordinary skill in the art would have understood to include a
low battery condition as disclosed by Metroka.
Appellant argues that combining the teachings of Metroka with those
of Burke “would render the prior art being modified unsatisfactory for its
intended purpose” (App. Br. 18). Appellant argues that the intended purpose
of Metroka “is to identify a battery end of life state, and shut off the
apparatus in a timely fashion in response thereto” (id.) and that “Burke
frustrates this intended purpose” (id.). We disagree with Appellant for at
least the reasons set forth by the Examiner (Ans. 31-32).
For example, Metroka discloses an “integrated paging and
radiotelephone apparatus” (col. 3, ll. 9-10) while Burke discloses a “hand
held cellular telephone” (col. 2, l. 36) that “may display the current status of
the battery charge” (col. 2, ll. 42-43). Appellant has not demonstrated how a
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display of the status of battery charge (Burke) would render the cell phone
and pager of Metroka unsatisfactory for its intended purpose of functioning
as a cell phone and pager.
Even assuming Appellant’s contention that the intended purpose of
Metroka “is to identify a battery end of life state” (App. Br. 18) to be
correct, Appellant has not demonstrated how including a display of the
battery charge (Burke) would render this feature of Metroka’s cell
phone/pager unsatisfactory to identify a battery end of life state. One of
ordinary skill in the art would have considered a display of a battery charge
status (Burke) to be “satisfactory” to identify a battery end of life state
(Metroka) because displaying the status of battery charge would inform a
user if the battery was near the end of life state, which would provide the
information needed by the user to identify an end of life state of the battery.
This would permit the user to achieve the Appellant’s proposed “intended
purpose” of identifying a battery end of life state.
Appellant argues that Burke fails to disclose or suggest an operation
status display controlling device (App. Br. 20). Claim 14 recites an
operation status display controlling device to show an operation condition of
the portable communicator on the display.
Burke discloses “a hand held cellular telephone . . . having . . . a
display” (col. 2, ll. 36-37) that displays information pertaining to the cellular
telephone (see, e.g., Fig. 1, element 10). As the Examiner indicates, Burke
discloses a display on the cellular telephone that displays “SIG” (Ans. 27,
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citing Fig. 1). We agree with the Examiner that one of ordinary skill in the
art would have understood “SIG” (as disclosed by Burke) to refer to the
strength of a signal received by the device and that a signal strength would
have constituted an operation condition of the device.
While Appellant argues that Burke fails to explicitly disclose that
“SIG” refers to “signal strength” (see, e.g., Reply Br. 14), Appellant does
not indicate that Burke also fails to disclose displaying an operation
condition of a device, as recited in claim 14. Appellant does not assert or
demonstrate that “SIG” does not refer to an operation status of the phone.
In addition, Metroka discloses a cellular telephone (or “radiotelephone
apparatus” – col. 3, l. 9) that includes “a display . . . for indicating the
apparatus’s status” (col. 3, ll. 38-39). Hence, Metroka discloses displaying
the operation status of a device. Burke further confirms that displaying an
operation status of a phone on a display would have been known to one of
ordinary skill in the art by disclosing a specific example of a cellular
telephone displaying an operation status (e.g., “SIG”). We agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
to have combined the known feature of displaying a status of a device on a
device (Metroka) and the known feature of displaying information pertaining
to a cellular phone on a display of the cellular phone (Burke) to achieve the
predictable result of displaying status information of a device.
Regarding claim 15, Appellant argues that Burke fails to disclose or
suggest a device that “shows remaining power capacity regardless of
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whether the portable communicator is in a receiving-data status and a calling
status” (App. Br. 22). We disagree with Appellant for at least the reasons set
forth by the Examiner (Ans. 12-14).
Claim 15 recites a device comprising a remainder display controlling
device (that shows remaining power capacity). As described above, the
combination of Metroka and Burke discloses a device comprising a display
that displays remaining power capacity. Appellant has not demonstrated that
the combination of Metroka and Burke fails to disclose such a device.
While Appellant argues that Burke fails to disclose a functional state of how
data is displayed by the remainder display controlling device, no patentable
weight is accorded to the disputed functional state1 in claim 15, which is
directed to a device.
In any event, Burke discloses “a hand held cellular telephone” (col. 2,
l. 36) with a “display [that displays] the current status of the battery charge”
(col. 2, ll. 42-43). The status information is displayed “when such
information is desired” (col. 2, ll. 56-57). Hence, Burke discloses a
communication device that displays remaining power capacity (i.e., battery
charge status) when information is desired. Appellant does not indicate that
Burke discloses that the battery charge information is not desired during any
specific times during the use of the device such as during “receiving-data
status” or a “calling status.” Nor does Appellant provide a rationale as to

1 Claim 15 recites “wherein the remaining power capacity is shown . . .
regardless of whether the . . . communicator is [in a particular status].”
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why one of ordinary skill in the art would not desire battery charge status
information either during “a receiving-data status” or during a “calling
status,” as recited in claim 15. Hence, we agree with the Examiner that the
combination of Metroka and Burke discloses or suggests displaying power
capacity regardless of whether the portable communicator is in a receiving-
data status and a calling status, as recited in claim 15.
Appellant argues that it would not have been obvious to one of
ordinary skill in the art to have combined the teachings of Metroka and
Burke because “[o]ver 90% of a large, extremely sophisticated market have
signed a license to a family of patents including the ‘605 patent in an amount
of over $18,000,000” (App. Br. 25). However, we agree with the Examiner
that Appellant has failed to establish a proper nexus between the claimed
invention and the alleged commercial success. “Evidence of commercial
success, or other secondary considerations, is only significant if there is a
nexus between the claimed invention and the commercial success.” Ormco
Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006).
For example, Appellant has not demonstrated that any licensing
activity was “a direct result of the unique characteristics of the claimed
invention – as opposed to other economic and commercial factors unrelated
to the quality of the patented subject matter.” In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996). Rather, Appellant merely asserts that licenses were
“signed” to a “family of patents” of which the ‘605 patent was one. Even
assuming Appellant’s statement to be correct that a license was “signed” to a
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“family of patents,” and even assuming that Appellant’s implication to be
true that a license was “signed” specifically to the claimed invention of the
‘605 patent, Appellant has nevertheless failed to demonstrate a nexus
between the merits of the invention and the alleged license. Without a
showing of nexus, “the mere existence of ... licenses is insufficient to
overcome the conclusion of obviousness” when there is a strong prima facie
case. SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349,
1358 (Fed.Cir. 2000).
Affirmance of the rejection for claims 14, 15, and 19 based on the
combination of Metroka and Burke renders it unnecessary to reach the
propriety of the Examiner’s decision to reject those claims on a different
basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we
need not reach the propriety of the rejection of those claims over the
combination of Burke and Tablet.

CONCLUSION
We conclude that the Examiner did not err in rejecting claims 14, 15,
and 19 as obvious over Metroka and Burke.

DECISION
The decision of the Examiner to reject claims 14, 15, and 19 is
affirmed.
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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

peb

PATENT OWNER:

PAUL R. STEFFES
KRIEG DEVAULT LLP
ONE INDIANA SQUARE, SUITE 2800
INDIANAPOLIS, INDIANA 46204-2079

THIRD-PARTY REQUESTOR:

RICHARD BAUER
C/O PATENT ADMINISTRATOR
KATTEN, MUCHIN ROSENMAN LLP
2900 K STREET NW, SUITE 200
WASHINGTON, D.C. 20007-5118