Ex Parte 5845219 et al

Patent Trial and Appeal Board

Sep 30, 2014

90011435 (P.T.A.B. Sep. 30, 2014)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.
90/011,435 01/14/2011 5845219 51020-019USRX2
Merged with 90/012,126
EXAMINER
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE

09/30/2014 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.

Reexamination Appeal No. 2014-002751

Merged Reexaminations: 90/011,435
and 90/012,126

Reexamination 90/012,126 was mailed on 9/30/2014.
UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MOBILEMEDIA IDEAS LLC
Patent Owner and Appellant
____________

Appeal 2014-002751
Reexamination Control 90/012,1261
Patent 5,845,2192
Technology Center 3900
____________

Before MAHSHID D. SAADAT, MICHAEL J. STRAUSS, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the
Examiner’s rejection of original claims 1–6 and newly added claims 20–31
of Patent 5,845,219 (referred to by Appellant as “the ‘219 patent”), which
are all the claims subject to reexamination in this ex parte reexamination
proceeding.3 See page 2 of Final Office Action (hereinafter “Final Action”),

1 This appeal is for the merged ex parte reexamination 90/011,435 and
90/012,126.
2 Issued to inventor Hannu Henriksson on December 1, 1998, based on
Application 09/697,981, filed September 4, 1996.
3 We heard Oral argument on June 11, 2014.
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Patent 5,845,219

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mailed January 23, 2013. We have jurisdiction under 35 U.S.C. §§ 6(b) and
306.
We affirm.

STATEMENT OF THE CASE
This Ex Parte Reexamination Proceeding
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Research In Motion, Ltd. (Request for Ex Parte
Reexamination) on February 3, 2012.
Related Litigations
The ‘219 patent was the subject of litigation styled: MobileMedia
Ideas LLC v. Research in Motion Ltd. and Research in Motion Corp., United
States District Court for the Eastern District of Texas, Marshall Division,
Civil Action No. 2:10-cv-00113 (TJW-CE).
According to Appellant, this case was transferred to the Northern
District of Texas on September 9, 2011 (and is considered closed in the
Eastern District of Texas). Currently, the ‘219 patent is the subject of
litigation styled: MobileMedia Ideas LLC v. Research in Motion Limited et
al., United States District Court for the Northern District of Texas, Dallas
Division, Civil Action No. 3:11-cv-02353.
The Invention and Representative Claims on Appeal
The ‘219 patent relates to an improved Silent Service Mode of
operation for a mobile station (the ‘219 patent, col. 1, ll. 38–40). Regardless
of whether the Silent Service Mode is active or not active, an audible
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Patent 5,845,219

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alerting tone is generated when a telephone number of an incoming call
matches a stored priority number (the ‘219 patent, col. 1, ll. 45–48).
Representative original claim 3 on appeal reads as follows (with
emphasis):
3. A mobile station of a type that is bidirectionally
coupled through an RF interface to a network, comprising:
a RF receiver for receiving an incoming call indication
from the network, the incoming call indication including a
calling party telephone number;
a user interface for enabling a user to enter information;
a memory for storing at least one predetermined
telephone number that is entered by the user; and
a controller, responsive to the receipt of an incoming call
indication when a silent service mode (SSM) is active, for
comparing at least a portion of the telephone number of the
calling party to the stored at least one predetermined telephone
number and, if at least the portion of the received calling party
telephone number matches one of the stored numbers, for
overriding the active SSM by generating an audible alert to
inform the user of the presence of the incoming call, said
controller being further responsive to a condition wherein at
least the portion of the received calling party telephone number
does not match one of the stored numbers, for inhibiting the
generation of an audible alert.
App. Br., Claims Appendix.
Prior Art Relied Upon
Takahashi US 4,802,202 Jan. 31, 1989
Mizikovsky US 5,559,860 Sept. 24, 1996
Lee US 5,604,791 Feb. 18, 1997
Zicker US 5,703,934 Dec. 30, 1997
Hooper US 5,734,980 Mar. 31, 1998
Wanner US 5,812,648 Sept. 22, 1998
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Onozuka JP H5-276106 Oct. 22, 1993
(hereinafter JP ‘106)
Kuriki JP H06-30105 Feb. 4, 1994
(hereinafter JP ‘105)

Patent Owner’s admitted prior art.

“Orbitor: A New Personal Communications Concept,” Telesis, Issue
No. 97, Dec. 1993 (hereinafter, Telesis).
The Rejections on Appeal
Rejections based on JP ‘106 (Final Action 3–8):
Claims 1, 3, 22–27, and 29 stand rejected under 35 U.S.C. § 102(b) as
anticipated by JP ‘106.
Claims 2, 4–6, 20, 21, and 31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over JP ‘106 and Takahashi.
Claims 28 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP ‘106 and patent owner’s admitted prior art.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP ‘106, Takahashi, and Hooper.
Claims 1, 3, 20, 22–27, and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over JP ‘106 and Telesis.
Claims 2, 4–6, 20, 21, and 31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over JP ‘106, Telesis, and Takahashi.
Claims 28 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP ‘106, Telesis, and patent owner’s admitted prior art.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP ‘106, Telesis, Takahashi, and Hooper.
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Claims 1, 3, 22–27, and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over JP ‘106 and JP ‘105.
Claims 2, 4–6, 20, 21, and 31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over JP ‘106, JP ‘105, and Takahashi.
Claims 28 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP ‘106, JP ‘105, and patent owner’s admitted prior art.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP ‘106, JP ‘105, Takahashi and Hooper.
Rejections based on Wanner and Zicker (Final Action 9–15):
Claims 1, 3, 22, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wanner and Zicker.
Claims 2, 4–6, 20, 21, and 31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wanner and Zicker, and Takahashi.
Claims 23, 24, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wanner and Zicker, and JP ‘106.
Claims 28 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wanner and Zicker, JP ‘106, and patent owner’s admitted
prior art.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wanner and Zicker, patent owner’s admitted prior art, and
Hooper.
Rejections based on Mizikovsky, Lee, and Zicker (Final Action 15–
23):
Claims 1–4, 22, 25, and 31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mizikovsky, Lee, and Zicker.
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Claims 5, 6, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mizikovsky, Lee, Zicker, and Takahashi.
Claims 23, 24, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mizikovsky, Lee, Zicker, and JP ‘106.
Claims 28 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mizikovsky, Lee, Zicker, JP ‘106, and patent owner’s
admitted prior art.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mizikovsky, Lee, Zicker, JP ‘106, and patent owner’s
admitted prior art.

ANALYSIS
Claim Construction: “Silent Service Mode”
Appellant contends the Examiner’s construction of the claim term
“silent service mode” is based on reading the claims in a vacuum and is
inconsistent with the term usage in the disclosure of the ‘219 patent in light
of other references from the relevant time (App. Br. 14). As discussed
during the oral hearing (Transcript 4–10), Appellant relies on extrinsic
evidence to define the disclosed “Silent Service Mode” as “a situation in
which the normal audible alert is replaced with a non-audible alert” (id.).
The extrinsic evidence provided by Appellant includes “manuals for four
Nokia phone models and two patent documents” describing that during the
silent service mode some sort of non-audible alert is generated for each
incoming call (App. Br. 15–19). Appellant further relies on excerpts from
column 1, lines 12–19, of the ‘219 patent disclosure stating “[o]ne user-
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selectable feature that is provided in some mobile stations is known as a
Silent Service Mode (SSM), wherein a user can disable the mobile station
from generating an audible alerting tone when an incoming call is received”
and concludes that “conventional SSM is a known mode, with a well
understood meaning” (App. Br. 20).
In response, the Examiner takes the position that the presented
extrinsic evidence is insufficient to support interpreting the claimed “silent
service mode” to require notifying the user by a non-audible alert, rather
than an audible alert, when each incoming call arrives (Ans. 2). The
Examiner finds even the extrinsic evidence provides inconsistent
information with respect to the non-audible alert and specifically points to
the documentations for Nokia Model No. 239 and No. 638, where, instead of
the ringing tone, a short beep is used to alert the user when SSM is activated
(Ans. 2–3).
We agree with the Examiner that the extrinsic evidence presented by
Appellant does not limit the claim term “silent service mode” to only “a
situation in which the normal audible alert is replaced with a non-audible
alert” for each call, or preclude absolute silence from being within the scope
of the claim. We observe that the evidence relied on by Appellant relates to
other models and products Appellant marketed and, therefore, is insufficient
to show the term “silent service mode” possesses any industry-wide meaning
or requirements related to specific functionality of the device. Additionally,
Appellant’s reliance on the discussion of “silent service mode” in the ‘219
patent disclosure merely highlights different options and situations for
alerting a user when the ringing tone is disabled such as displaying the
incoming call number or providing tactile alerting (‘219 patent col. 1, ll. 12–
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27). As such, Appellant’s arguments addressing whether important
incoming calls “can be missed” or “would always be missed” (App. Br. 22)
are not discussed in the ‘219 patent disclosure. As explained by the
Examiner (Ans. 6–8), examples of how the user may still miss the incoming
call with tactile alert or be aware of the call when the incoming call number
is displayed only indicate additional options to further enhance the SSM
feature.
Therefore, we agree with the Examiner (Ans. 3–8) that the claimed
term “silent service mode” is to be given its broadest reasonable
interpretation such that using a non-audible alert for some calls, in contrast
to each call, as well as absolute silence or short beeps are within the scope of
the claims.
Claim Rejections based on Wanner and Zicker
With respect to claim 3, Appellant’s challenge to the combination of
Wanner and Zicker is premised on the interpretation of “silent service mode”
as “a mode in which the user is notified when each incoming call arrives
using a non-audible alert, rather than an audible alert” (App. Br. 27).
Appellant contends that claim 3 requires using a “conventional SSM, in
which the user is notified when each incoming call arrives using a non-
audible alert, rather than an audible alert” wherein the ordinary behavior of
SSM is overridden if a number match is detected (App. Br. 28).
In addressing the teachings of Wanner, Appellant acknowledges the
phone rings if the caller’s phone number appears on the stored acceptable
phone list (App. Br. 29–30). However, Appellant asserts that the ring alerts
the user of only calls from the recognized phone numbers and blocks out all
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other calls. (App. Br. 30 (citing Wanner, col. 4, ll. 6–38)). With respect to
Zicker, Appellant’s arguments are focused on element 78 in Figure 5 of
Zicker that relates to a situation wherein the phone rings without displaying
information to indicate whether a caller ID message or a caller ID disable
message is received (App. Br. 31). Appellant concludes that the
combination of Wanner and Zicker “results in a system in which no alerts
are generated whatsoever for some calls” (App. Br. 32).
As discussed above with respect to the claim term “silent service
mode,” we are unpersuaded by Appellant’s arguments requiring that the
proposed combination teaches or suggests notifying the user when each
incoming call arrives using a non-audible alert. Therefore, we agree with
the Examiner’s findings and conclusion that the combination of Wanner and
Zicker teaches or suggests the subject matter of claim 3. As further
explained by the Examiner (Ans. 8), the situation shown in Figure 5 of
Zicker, where the call goes through without displaying either a caller ID
message or a disable message in step 78, is merely one of the available
options. Based on the above-outlined interpretation of SSM that a non-
audible alert for each call is not necessary and contrary to Appellant’s
assertion (Reply Br. 7), other situations shown in Figure 5 of Zicker where
the non-audible alert is shown in steps 74 or 80 meet the claimed
requirement of generating a non-audible alert that informs the user of
incoming calls.
Claim Rejections based on Mizikovsky in view of Lee and Zicker
Appellant’s contention is based on similar challenges to the
combination of Wanner and Zicker, namely interpreting “silent service
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mode” as “a mode in which the user is notified when each incoming call
arrives using a non-audible alert, rather than an audible alert” (App. Br. 36,
Reply Br. 6–7). For the same reasons stated above in discussing the
teachings of Wanner and Zicker, we are unpersuaded by Appellant’s
contentions that the alleged deficiencies of Zicker results in improper
combination with Mizikovsky, Lee and other applied prior art.
Claim Rejections based on JP ‘106
Similar to the discussion of other applied prior art above, Appellant
challenges the rejections based on JP ‘106 according to the limited claim
construction of “silent service mode” as “a mode in which the user is
notified when each incoming call arrives using a non-audible alert, rather
than an audible alert” (App. Br. 36). Appellant specifically points to
paragraphs 7, 13, and 14 of JP ‘106 (App. Br. 36–38) and contends that the
scenario where the telephone exits from the call channel if the caller ID does
not match any of the stored numbers is not the same as the claimed SSM
feature because “the user is not notified when each incoming call arrives
using a non-audible alert” (id. at 38).
In response, the Examiner repeats that the limited interpretation of
SSM as a system that notifies the user of each incoming call is not supported
by the record (Ans. 9). The Examiner further points to paragraphs 7 and 16
of JP ‘106 and explains that, other than generating an audible alert when the
incoming call number matches a stored number, JP ‘106 informs a user of an
incoming call by vibrating when the number does not match and the phone
exits the call channel (Ans. 9–10).
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Based on our discussion above regarding the interpretation of the
claimed term “silent service mode,” we agree with the Examiner’s
explanation that the vibrating signal at the time of exiting the call channel
meets the claimed “inhibiting the generation of an audible alert.” Contrary
to Appellant’s argument (Reply Br. 8) that the claimed SSM requires
providing a non-audible alert to inform the presence of the incoming alert,
not a call that is terminated, vibrating the phone when exiting the call
channel or terminating the call is within the scope of claim 3 when given its
broadest reasonable interpretation. In fact, claim 3 merely recites inhibiting
the generation of an audible alert if the incoming call does not match the
stored numbers, which reads on the vibrating option disclosed in JP ‘106.
We also observe that Appellant’s discussion of other features described in JP
‘106, such as storing a number discussed in paragraph 14, are unpersuasive
because the discussed features are merely additional options for informing
the user of an incoming call using vibration or displayed calling number
notification options, which are not precluded by the appealed claims.
Next, Appellant argues that combining JP ‘106 with Telesis would not
have been obvious or resulted in the claimed invention. With respect to
Telesis, Appellant contends the reference is silent regarding notifying the
user for non-emergency calls (App. Br. 41). Appellant further asserts Telesis
does not indicate when the message shown on page 8 is displayed, or
whether the message is generated when the incoming call does not match a
stored number (App. Br. 42). The Examiner responds that Telesis was not
relied on for notifying the user of non-emergency calls, but used for
providing the user with a non-audible alert while the call is active and
allowing the user device to send the call to voicemail (Ans. 10). We agree
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with the Examiner (id.) that the teaching value of Telesis is keeping the
incoming call active for a longer period so that the appropriate action is
taken, whether sending the message to the voicemail or notifying the user by
using a non-audible alert.
Lastly, Appellant contends the teachings of JP ‘105 relate to a
conventional silent service mode wherein, without playing an audible alert,
the user is notified of incoming calls (App. Br. 43) or a reply is sent to the
caller if the automatic reply mode is used (id. at 44). Appellant further
challenges the combination of JP ‘106 with JP ‘105 and asserts the only time
JP ‘106 uses a non-audible alert is when the phone exits the call channel.
We again agree with the Examiner that JP ‘105 improves the silent mode by
providing an automatic answer to the caller (Ans. 11 (citing JP ‘105 ¶ 16)).
We are also unpersuaded by Appellant’s arguments challenging the proposed
combination (App. Br. 44–47, Reply Br. 9–10). As stated by the Examiner
(Ans. 11–12), the combination is not based on explicit disclosure of the
references or bodily incorporation of the situations requiring the non-audible
alert of Telesis or JP ‘105 in JP ‘106 and, instead, takes into account the
inferences a skilled person would make, see KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 418–19 (2007). In other words, the test is what the combined
teaching of the references would have suggested to one of ordinary skill in
the art, see In re Keller, 642 F.2d 413, 425 (CCPA 1981).

DECISION
On the record before us, we conclude that the Examiner did not err in
rejecting claims 1–6 and 20–31 under 35 U.S.C. §§ 102(b) and 103(a).
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Accordingly, the Examiner’s decision that claims 1–6 and 20–31 are
unpatentable is affirmed.

TIME PERIOD FOR RESPONSE
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

FOR PATENT OWNER:

PROSKAUER ROSE LLP
PATENT DEPARTMENT
ONE INTERNATIONAL PLACE
BOSTON, MA 02110-2600

FOR THIRD PARTY REQUESTER:

FINNEGAN, HENDERSON,
FARABOW GARRETT & DUNNER LLP
901 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20001-4413

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