Ex Parte 5946647 et al

Patent Trial and Appeal Board

Dec 22, 2014

90011287 (P.T.A.B. Dec. 22, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/011,287 10/15/2010 5946647 031486.647 9354
77970 7590 12/23/2014
Apple Inc.
c/o Novak Druce Connolly Bove + Quigg LLP
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/23/2014 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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte APPLE, INC.,
Appellant and Patent Owner
____________

Appeal 2013-001460
Reexamination Control 90/011,287
Patent 5,946,647
Technology Center 3900
____________

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

SIU, Administrative Patent Judge

DECISION
This matter is remanded from the United States Court of Appeals for
the Federal Circuit for reconsideration of the rejection of claims 13 and 15–
31 in light of the court’s decision in Apple Inc. v. Motorola Inc., Appeal
Nos. 2012-1548, -1549 (2014 WL 1646435 (C.A.Fed. (Ill.)). See Order 1.

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STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on October 15, 2010 of United States Patent 5,946,647 (the ’647 Patent)
issued to James R. Miller, Thomas Bonura, Bonnie Nardi, and David Wright
on August 31, 1999. In a previous Decision dated June 20, 2013
(“Decision”), we affirmed the Examiner rejection of claims 13, 15, 16, 20-
22, and 24-31 under 35 U.S.C. § 102(b) as anticipated by Pensoft1 (App. Br.
6) and claims 13, 15, 17-23, and 25-31 under 35 U.S.C. § 102(b) as
anticipated by Nokia2 (App. Br. 10). Decision 10. In view of the court’s
decision in Apple Inc. v. Motorola Inc., Appeal Nos. 2012-1548, -1549
(2014 WL 1646435 (C.A.Fed. (Ill.)), we reconsider the Decision.
Patentee’s invention relates to performing actions on structures in
computer data (col. 1, ll. 10-11). Claim 13 reads as follows:

1 Pensoft Corporation, “Perspective Handbook,” November 1992,
(“Pensoft”).

2 EP0458563 A2, November 27, 1991 (“Nokia”)
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13. A program storage medium storing a computer
program for causing a computer to perform the steps of:
receiving computer data;
detecting a structure in the data;
linking at least one action to the detected structure;
enabling selection of the structure and a linked action;
and
executing the selected action linked to the selected
structure.

(App. Br. 23, Claims Appendix).

ISSUE
Did the Examiner err in rejecting claims 13 and 15–31?

PRINCIPLE OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

ANALYSIS
Pensoft – Claims 13, 15, 16, 20-22, and 24–31
Claim 13 recites “receiving computer data,” “detecting a structure in
the data,” and “linking at least one action to the detected structure.” In the
previous Decision, we stated that “we construe the term [“linking”] broadly
but reasonably and in light of the Specification to include ‘associated or
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connected with.’” Decision 5. Based on this broad but reasonable
construction and the lack of a specialized definition of the term “linking” in
the Specification, we concluded that Patent Owner failed to demonstrate
persuasively that Pensoft’s disclosure of launching a specific profile (i.e.,
performing the “at least one action” of launching a specific profile) upon
selection of “an item” (i.e., a “detected structure”) differs from the claim
limitation of linking at least one action (i.e., the “action” of launching a
profile) to a detected structure (i.e., the “item”). In other words, we
concluded that Pensoft’s “at least one action” of launching a profile was
“linked” (or associated or connected with) an item (i.e., a “detected
structure”) because the “at least one action” of launching the specific profile
was only performed upon selection of the “item.” Hence, the “item” was
connected or, at least, associated with the action since the action is only
triggered by selection of the item. See Decision 4-5.
In Apple Inc. v. Motorola Inc., 2014 WL 1646435 at 11 (C.A.Fed.
(Ill.)), the court adopted the district court’s construction of the term
“linking” as used in the ’647 patent to mean “creating a specified connection
between each detected structure and at least one computer subroutine that
causes the CPU to perform a sequence of operations on that detected
structure.” The court further identified passages from the Specification that
allegedly disclose that “linking” “is a more specific connection than merely
associating” and must occur “only after . . . grammars or patterns are
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‘detected.’” Id. (citing the ’647 Specification at 3:65-67; 5:31-33, 59-61;
and 7:38-39).
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification.” In re ICON Health & Fitness, 496 F.3d 1374, 1379 (Fed.
Cir. 2007), citing In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). Hence, our previous construction of the term “linking”
was based on the broadest reasonable construction consistent with the
specification. In construing claim terms, the district court adopts a different
standard. “In contrast to district court proceedings involving an issued
patent, claims under examination before the PTO are given their broadest
reasonable interpretation consistent with the specification.” In re Taylor,
484 Fed. Appx. 540, 2012 WL 2149776 at 542 (C.A.Fed.). Thus, our
construction of claim terms may be broader than that of the district court.
In any event, even assuming that the construction of the term
“linking” requires “creating a specified connection between each detected
structure and at least one computer subroutine” under an appropriately
adopted standard, Pensoft discloses this feature. As previously discussed,
Pensoft discloses opening or launching a profile (i.e., “at least one action”)
and a specified connection between the at least one action (performed by a
computer program) and an item. Pensoft discloses that there is a “specified
connection” between the action of opening or launching a profile and the
selected “item” because only the profile that corresponds to the item is
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launched or opened upon selection of the specific item (i.e., the performance
of the “action”) and the specified profile is launched (i.e., the “action” is
performed) only upon selection of the item that is functionally connected
(i.e., a “connection”) to the action of opening or launching the specific
profile. Hence, even adopting the court’s construction that “linking infers a
joining,” Pensoft still discloses this feature because the action of launching a
specific profile is “joined” with the item (since the action is only performed
upon selection of the item itself).
The court further differentiates “linking” from “associating” as “a
more specific connection than merely associating” based on the alleged
disclosure in the ’647 specification “that ‘linking’ occurs only after these
grammars or patterns are ‘detected’” and that “actions are ‘associated’ with
specific ‘grammars’ or ‘patterns’.” However, the ’647 specification does not
distinguish the term “linking” from the term “associating.” Instead, the ’647
specification merely discloses “detection of a structure” and a server that
“links actions . . . to the detected structure.” Spec. 3:64-67. No further
disclosure is identified in the ’647 specification that provides a specific
meaning of the term “link,” “linked,” or “linking” or how any such alleged
meaning might pertain to the term “associated” or “associating.” While the
’647 specification does use the term “associated,” the term is used merely as
a further qualifier for the “action” (i.e., that the “action” is “associated” with
a “pattern”) and does not define or even pertain to the term “link,” “linked,”
or “linking” (or, for that matter, the detected “structure”).
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Even assuming that the ’647 specification does disclose that “linking”
an action to a detected structure means “associating” the action with the
detected structure but only after “grammars or patterns” are detected (the
“grammars or patterns” being “associated” with the action), Pensoft
discloses this feature. As previously discussed, Pensoft discloses an “item.”
The “item” of Pensoft is identified because the user is cognizant of the
“item” and even selects the “item” in order to perform the “action” of
launching or opening a corresponding profile. Without initial detection of
the “item,” the user in Pensoft would not be aware of the “item” (the “item”
not having been “detected” earlier) and would be unable to select the item.
Also, initial detection of the “item” would have required previously
comparing the “item” with a “pattern” of criteria for a desired item in order
to identify the “item” as the item desired. Hence, the first component to be
“detected” in Pensoft would be the “grammars or patterns” that are then used
to identify the “item” that itself is subsequently selected to perform the
“associated” action of launching or opening a profile that corresponds to the
selected item or “structure.” In other words, Pensoft discloses “associating”
the action of launching or opening a specific profile after the “grammars or
patterns” are detected (that are used to identify initially the item in the first
place).
We have considered our previous Decision with respect to the
Examiner’s rejections of claims 13, 15, 16, 20–22, and 24–31 as anticipated
by Pensoft in view of the claim construction of the term “linking” as set
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forth in Apple Inc. v. Motorola Inc., 2014 WL 1646435 at 11 (C.A.Fed.
(Ill.)). We find no cause to modify our previous Decision with respect to
Pensoft.

Nokia- Claims 17–19 and 23
Appellant argues that Nokia fails to disclose linking (App. Br. 11–14).
Claim 15 (from which claims 17–19 and 23 depend), for example, recites
detecting a structure in computer data and linking an action to the detected
structure.
Nokia discloses an “RPK” that “searches out a telephone number
contained in [a] message” and contains a “third circuit . . . for transferring
the telephone number . . . to the memory for forming a call,” a “fourth
circuit, which can . . . recognize characters indicating the beginning and/or
end of a telephone number” or “recognize . . . a character string which . . . is
probably a telephone number” and “transferring the found number . . . to the
display,” a “fifth circuit . . . to scroll . . . an alphanumeric . . . message . . .
[and] halt in the display the desired portion of this message,” and a “sixth
circuit [for selecting] for operation the desired . . . telephone number tracing
methods pre-programmed in the fourth and fifth circuits.” Nokia, 5:28–29;
9:18–52.
The Examiner states that Nokia discloses linking an action to a
detected structure and “the selection of an action for performance on the
detected structure.” Ans. 20-21 (citing Nokia 7:32–39 and 8:1–15). In
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particular, the Examiner finds that “Nokia discloses a linking step . . . for
example by way of a 3rd, 4th, or 6th circuit” and “[a]n example selectable
linked action is given by methods programmed in the 4th and 5th circuits,
such as select for operation the desired one of the said telephone number
tracing methods (actions) preprogrammed.” Final. Rej. 18.
We agree with the Examiner that Nokia discloses a device that detects
a telephone number (i.e., a “structure”) in a message and that the device
contains 3rd, 4th, 5th, and 6th circuits. However, the Examiner has not shown
that Nokia also discloses an action that is “linked” to the “structure” (i.e.,
telephone number) that is detected, such that the action is “a more specific
connection than merely associating” with an inference of “a joining.” Apple
Inc. v. Motorola Inc., 2014 WL 1646435 at 11 (C.A.Fed. (Ill.)).
Instead, the “3rd circuit” of Nokia merely transfers a phone number to
memory, the “4th circuit” of Nokia recognizes a character string as a
telephone number, the “5th circuit” of Nokia scrolls a message in a display,
and the “6th circuit” of Nokia permits the selection of a “tracing method” in
one of the 4th or 5th circuit. The Examiner does not explain how any action
taken in any of the disclosed circuits of Nokia is “joined” with the detected
telephone number in “a specified connection.” Id.
We modify our previous Decision with respect to the Nokia reference
and conclude that the Examiner erred in rejecting claims 13, 15, 17–23, and
25–31 under 35 U.S.C. § 102(b) as anticipated by Nokia.

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CONCLUSION
We conclude that the Examiner did not err in rejecting claims 13, 15,
16, 20–22, and 24–31 but that the Examiner erred in rejecting claims 17–19
and 23.

DECISION
The decision of the Examiner to reject claims 13, 15, 16, 20–22, and
24–31 as anticipated by Pensoft is AFFIRMED. The decision of the
Examiner to reject claims 17–19 and 23 as anticipated by Nokia is
REVERSED.
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-IN-PART

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PATENT OWNER:

APPLE INC.
C/O NOVAK DRUCE + QUIGG LLP
1000 LOUISIANA STREET
FIFTY-THIRD FLOOR
HOUSTON, TX 77002

THIRD PARTY REQUESTER:

BRYAN CAVE LLP
1290 AVENUE OF THE AMERICAS
NEW YORK, NY 10104