Ex Parte Ylitalo

Patent Trial and Appeal BoardAug 17, 2017

13718208 (P.T.A.B. Aug. 17, 2017)

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. 13/718,208 12/18/2012 Jouni Ylitalo 800.0882.U2(US) 6280 10948 7590 08/21/2017 Harrington & Smith, Attorneys At Law, LLC 4 Research Drive, Suite 202 Shelton, CT 06484 EXAMINER FANG, PAKEE ART UNIT PAPER NUMBER 2642 NOTIFICATION DATE DELIVERY MODE 08/21/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): USPTO@hspatent.com Nokia. IPR @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOUNI YLITALO Appeal 2016-005250 Application 13/718,208 Technology Center 2600 Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and JENNIFER L. McKEOWN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2016-005250 Application 13/718,208 Appellant requests rehearing of our Decision dated June 20, 2017 (“Dec.”), where we affirmed the Examiner’s decision to reject claims 28-47. Request for Rehearing filed July 31, 2017 (“Req. Reh’g”). In the Request, Appellant contends that we misapprehended or overlooked certain points raised in connection with the Examiner’s written description rejection of these claims. Specifically, Appellant contends that we erred by finding that the original disclosure does not support the recited negative limitation, namely that the predetermined application view is not associated with an emergency call. Req. Reh’g 1—6. We disagree. As we explained in our Decision, it is well settled that a negative limitation, while permissible, must nevertheless be supported by a reason to exclude that limitation—a reason that can be provided by properly describing alternative features of the invention. See Dec. 4—5 (citing Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355-57 (Fed. Cir. 2015)). But as we indicated on page 5 of our Decision, Appellant’s original disclosure does not properly describe such alternative features, unlike the original disclosure at issue in Inphi. In Inphi, alternative elements were positively recited and properly described in the Specification, and, therefore, certain alternative elements were properly excluded in the claims. See Inphi, 805 F.3d at 1355-57. Here, Appellant contends for the first time in the Request that the Specification provides the requisite reason for excluding emergency calls in the claims by disclosing five alternatives, namely (1) not reacting when another key is pressed down; (2) answering an incoming call by pressing any key when a call arrives; (3) emergency calls can be carried out when the keypad is locked; (4) accessing the calendar when the keypad is locked; and 2 Appeal 2016-005250 Application 13/718,208 (5) using SMS messaging when the keypad is locked. Req. Reh’g 2-4 (citing Spec. Tflf 15—16). According to Appellant, alternative (3), namely carrying out emergency calls when the keypad is locked, can be excluded explicitly in the claims, and that, purportedly, no skilled artisan would consider the teaching of answering an incoming call to be associated with making an emergency call. Req. Reh’g 4. These arguments are unavailing. First, these alternative-based arguments are raised for the first time on rehearing and technically are waived as untimely. See 37 C.F.R. § 41.79(b)(1). Nor has Appellant shown why these arguments could not have been presented earlier, particularly since Inphi was decided before the Reply Brief was filed on April 12, 2016. Nevertheless, even if these arguments were timely raised in the first instance on rehearing, we find them unpersuasive. Notably, the disclosure at issue in Inphi clearly and unambiguously disclosed distinct alternatives, namely particular types of signals that were distinguished from each other as viable distinct alternatives in the original disclosure and in light of an associated technical standard. See Inphi, 805 F.3d at 1353—57. But here, unlike the distinct signals at issue in Inphi, there is no such clear and unambiguous disclosure of viable distinct alternatives to provide the requisite reason to exclude those alternatives. At best, skilled artisans would have to infer from the somewhat limited disclosure in paragraphs 15 and 16 of the Specification that the five above-noted features that Appellant identifies are alternatives. But even assuming, without deciding, that this alternative-based inference could be drawn from this limited disclosure, skilled artisans would still have to infer that the predetermined application view displayed while a predetermined key is continuously pressed down and 3 Appeal 2016-005250 Application 13/718,208 the keypad is locked in claim 28 is not associated with an emergency call— an inference that, at best, presupposes that this function would be performed by excluding alternative (3) above, that is, by not making emergency calls when the keypad is locked. This inference is undercut by the scope of claim 28, which recites, quite broadly, that the predetermined application view is not associated with an emergency call—not that this view is not associated with making such a call. So even assuming, without deciding, that skilled artisans could infer from the original disclosure that there is a reason to exclude from the claims making emergency calls when the keypad is locked, that does not mean that skilled artisans also would infer from this disclosure that the displayed predetermined application view also would not be associated with an emergency call—a much broader relationship. Appellant’s contention, then, that skilled artisans would not consider the teaching of answering an incoming call as associated with making an emergency call (Req. Reh’g 4), is not only unsubstantiated attorney argument with little probative value, it also is not commensurate with the scope of claim 28. We reach this conclusion even assuming, without deciding, that excluding an emergency call association in claim 28’s negative limitation would have been obvious from Appellant’s original disclosure, for it is well settled that a description that merely renders the invention obvious does not satisfy the written description requirement. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (enbanc) (citations omitted). Therefore, to the extent that Appellant contends that the recited negative limitation would have been obvious from the cited passages from the original disclosure, such a position is unavailing in light of Ariad. 4 Appeal 2016-005250 Application 13/718,208 In addition, as we explained on page 5 of our Decision, Appellant did not persuasively rebut the Examiner’s finding that skilled artisans would associate the disclosed calendar and SMS functions with emergency events or calls. Although Appellant alleges that no reasonable skilled artisan would associate a calendar or SMS feature with an emergency call (Req. Reh’g 5), Appellant provides no evidence on this record to substantiate this assertion apart from mere attorney argument that has low probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). See also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). Appellant’s assertion that skilled artisans allegedly know that emergency calls need to be made right away without any possibility that a calendar or SMS feature will prevent or retard the emergency call from going through (Req. Reh’g 5) is likewise unsubstantiated attorney argument and, therefore, unavailing. Nor is this contention commensurate with the scope of claim 28 for the reasons noted previously. Accordingly, we are not persuaded that we misapprehended or overlooked those points in rendering our decision. CONCFUSION For the foregoing reasons, we have granted Appellant’s request to the extent that we have reconsidered our decision, but we deny the request with respect to making any changes therein. DENIED 5