Ex Parte 7,057,605 et alDownload PDFPatent Trial and Appeal BoardMay 29, 201390011692 (P.T.A.B. May. 29, 2013) Copy Citation 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. Appeal 2013-004305 Reexamination Control 90/011,692 Patent 7,057,605 B2 2 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 Appeal 2013-004305 Reexamination Control 90/011,692 Patent 7,057,605 B2 3 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.” Appeal 2013-004305 Reexamination Control 90/011,692 Patent 7,057,605 B2 4 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 Appeal 2013-004305 Reexamination Control 90/011,692 Patent 7,057,605 B2 5 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, Appeal 2013-004305 Reexamination Control 90/011,692 Patent 7,057,605 B2 6 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 Appeal 2013-004305 Reexamination Control 90/011,692 Patent 7,057,605 B2 7 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].” Appeal 2013-004305 Reexamination Control 90/011,692 Patent 7,057,605 B2 8 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 Appeal 2013-004305 Reexamination Control 90/011,692 Patent 7,057,605 B2 9 “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. Appeal 2013-004305 Reexamination Control 90/011,692 Patent 7,057,605 B2 10 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 Copy with citationCopy as parenthetical citation