Ex Parte 6049796 et al

Patent Trial and Appeal Board

Apr 30, 2014

90012080 (P.T.A.B. Apr. 30, 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.
90/012,080 01/06/2012 6049796 51020-022USRX 6779
42532 7590 05/01/2014
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/01/2014 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 MOBILEMEDIA IDEAS LLC
Appellant
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Appeal 2014-001759
Reexamination Control 90/012,080
Patent 6,049,796
Technology Center 3900
________________

Before JOSEPH F. RUGGIERO, JASON V. MORGAN, and
JOHNNY A. KUMAR, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL1

1 An oral hearing for this appeal was held April 24, 2014.
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Introduction
This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s final
rejection of claims 17–28 of patent 6,049,796 (the “’796 patent”). Claims 1,
3–16, and 29 are canceled. Amend. After Fin. 2 (March 8, 2013). The
Examiner indicates claim 2 as amended is patentable. App. Br. 11; Adv.
Act. (Apr. 2, 2013). We have jurisdiction under 35 U.S.C. §§ 6(b), 134(b),
and 306. We AFFIRM.
Invention
Lasse Siitonen and Risto Ronkka invented “a method and an
apparatus for searching a personal digital assistant (PDA) data base [sic]
utilizing a search criteria and displaying the result so that the user can
determine whether the search yielded the intended result, whether the search
needs to be refined, or whether the outcome should be used . . . .” ’796
patent, Abstract.
Exemplary Claim
Claim 17, reproduced below with key limitations emphasized, is
representative:
17. A personal digital assistant device comprising:
a storage means having a data base for storing one or
more records, each of the records comprising data elements
defining an identifier of a party and communication information
required for communicating with the party through an
electronic communication link;
a first user input means, said first user input means being
operable by a user for inputting a search key corresponding to
at least one of the data elements of at least one of said records;
a search engine for comparing at least one of the data
elements of at least one of the records to the search key;
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a display for displaying at least a portion of those ones of
said records having at least one data element corresponding to
the search key;
a second user input means, said second user input means
being operable by the user for selecting one of the records
having at least one data element corresponding to the search
key; and
electronic communication means for initiating an
electronic communication to the party identified by the
identifier defined by data elements of the selected record, using
one of a plurality of types of electronic communication.
Rejection
The Examiner rejects claims 17–28 under 35 U.S.C. § 102(b) as being
anticipated by Simon Says “Here’s How!”, Simon™ Users Manual, IBM
Corp. (1994) (“Simon Users Manual”). Ans. 3 and 11–17.
ISSUE
Did the Examiner err in finding Simon Users Manual discloses “a
search engine for comparing at least one of the data elements of at least one
of the records to the search key,” as recited in claim 17?
ANALYSIS
Appellant contends the Examiner erred in relying on Simon Users
Manual to disclose the claimed search engine because Simon Users Manual
“is limited to disclosing a PDA performing a ‘passive’ search.” App. Br. 12.
Specifically, Appellant argues that “[i]n a ‘passive’ search, the search begins
only after the search key has been entered, the search function actuated by
pressing a key such as ‘enter’ or ‘search,’ and a completed compilation
produced.” Id. Appellant contrasts passive searches with active searches in
which “the characters are entered one by one, and the PDA instantly displays
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matching items each time a character is entered.” Id. Appellant contends
that “[a]ll the embodiments of the invention disclosed in the ’796
specification use an ‘active’ search engine that performs a search as soon as
a character is entered.” Id. at 20. Appellant further submits “the ’796
specification disparages the use of a ‘passive’ search in a PDF as too slow.”
Id. at 24. Thus, Appellant concludes the ’796 patent “includes a clear
disavowal of claim scope to exclude the disclosed prior art ‘passive’ search
engine, even if that disavowal is not considered to be in explicit definitional
format.” Id. at 25; see also id. at 16 (citing In re Abbott Diabetes Care Inc.,
696 F.3d 1142 (Fed. Cir. 2012)). We do not agree with Appellant’s
conclusion.
Appellant’s arguments are not persuasive of error because they are not
commensurate with the scope of the claimed invention. That is, unlike
Abbott Diabetes Care, where the disavowal related to the meaning of one of
the claim terms (“electrochemical sensor”) (696 F.3d at 1145–46 and 1149–
50), the alleged disavowal in this case relates to the meaning of non-existent
claim recitations. Specifically, the disputed claim recitation is merely
directed to “a search engine for comparing at least one of the data elements
of at least one of the records to the search key” (emphasis added), not to the
search process that invokes the claimed search engine. As the Examiner
correctly finds
the difference between the active search and the passive search,
as described in the specification of the ’796 Patent appears to be
how the search engine is activated. In this regard, the actual
search engine would appear to still have the same function . . .
regardless of the type of activation of the search engine.
Ans. 11.
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This delineation between a process that invokes a search engine,
whether the process represents a passive or active search process, and the
underlying search engine itself is supported by multiple disclosures in the
’796 patent. One portion of the ’796, cited by the Examiner (Ans. 11),
discloses that accomplishing a search in a PDA includes incorporating
“software or firmware to properly interpret the search commands, carry out
a search algorithm, and display lists of records that meet the search
specification.” ’796 patent col. 1, l. 66–col. 2, l. 2 (emphasis added). That
is, a search comprises software or firmware that provides an input interface
(to properly interpret the search commands), a search engine (to carry out a
search algorithm), and an output interface (to display lists of records that
meet the search specification).
The distinction between the input interface and the underlying search
engine is further illustrated in Figs. 6A–7B of the ’796 patent. Figures 6A
and 6B illustrate “a flowchart detailing the sequence following a command
to perform a search.” ’796 patent col. 4, ll. 3–4. This flowchart details how
the input interface interprets search commands in the form of key presses
(704) that have effects such as deleting a character (705), moving the cursor
(706–709), or adding a character to the search key (712). Id. Figs. 6A–B.
The process illustrated in Figures 6A and 6B does not carry out a search
algorithm. Instead, the process calls a reentrant subroutine 703, transferring
the search key to the subroutine as a parameter. Id. Fig. 6A and col. 7, ll.
36–38.
Figures 7A and 7B illustrate the reentrant subroutine 703. Id. col. 7, l.
36. Specifically, these figures depict “a flowchart detailing a search engine
sequence performed according to a user request to search based on a search
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key input.” Id. col. 4, ll. 5–7 (emphasis added). Once invoked, the search
engine sequence performs a new search based on the supplied search key—
without regard as to whether the search key was provided as part of a
passive search or as part of an active search process. See, e.g., id. Fig. 7A,
block 803 (after verifying the supplied key is not empty, the search engine
resets the number of matched records to zero). This search engine sequence,
being agnostic as to whether the invoking process is a passive or active
search process, supports the Examiner’s finding that “the structure of a
search engine described in the ’796 Patent appears to be exactly the same for
performing a passive search or for an active search.” Ans. 16.
Furthermore, the alleged ’796 patent disavowal of “passive search
engine” technologies does not relate to the type of search engines that may
be activated in the process of performing a passive search, but instead relates
to when a search begins in passive searching. In particular, the ’796 patent
merely discloses that:
For smaller data bases such as are utilized in PDA
applications, the approach has been to provide a simple search,
where the user activates the search function and types in the
search key or designator. The search is performed after the user
activates the search by, for example, pressing a key such as
enter or a specific ‘search’ key. This is referred to as a ‘passive
search’ and is characterized by the fact that it does not display
the result of the query as soon as the query search key activates
the search.
’796 patent col. 2, ll. 5–13 (emphasis added).
The ’796 patent further discloses that the active search method “is
distinguished from a passive search where the search begins only after the
search key has been entered, the search function actuated, and a completed
compilation produced.” ’796 patent col. 2, ll. 64–67 (emphasis added). The
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distinction between active and passive searching again is disclosed as the
difference between when the search begins (i.e., whether the search engine is
invoked after the key is modified or after a search key is entered) rather than
in the search engine itself.
As discussed above, the Examiner correctly finds the ’796 patent
distinguishes between software or firmware to properly interpret search
commands (i.e., an input interface) and to carry out a search algorithm (i.e.,
a search engine). While the ’796 patent distinguishes between passive and
active searches, the distinction is in when the search engine is invoked, not
in the search engine itself. Thus, to the extent the ’796 patent disavows
passive searches, such disavowal fails to narrow the scope of “a search
engine for comparing at least one of the data elements of at least one of the
records to the search key,” as recited in claim 17.
Appellant does not challenge the Examiner’s finding that Simon Users
Manual discloses a search engine. App. Br. 30. Appellant merely argues
that: (1) the search engine of Simon Users Manual is a passive search engine
and (2) when read in light of the ’796 patent Specification, the search engine
of claim 17 excludes passive search engines. Id. at 12. However, as detailed
above, a broad, but reasonable interpretation, in light of the ’796 patent
Specification, of the claimed “search engine” encompasses any search
engines that can compare record data elements to a search key, regardless of
whether the search engines are invoked through an active or a passive search
interface.
Appellant does not provide arguments or evidence rebutting the
Examiner’s finding that Simon Users Manual discloses such a search engine.
Ans. 12. Therefore, we agree with the Examiner the Simon Users Manual
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discloses “a search engine for comparing at least one of the data elements of
at least one of the records to the search key,” as recited in claim 17. Id.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(b) rejection
of claim 17, and of dependent claims 18–24, which Appellant does not argue
separately. Appellant argues with respect to independent claim 25, that the
claimed control means for “comparing the user-input search key to at least
one of the data elements of at least one of said records from said storage
means” (emphasis omitted) is similarly limited to “an ‘active’ search engine
and equivalents.” App. Br. 32. This argument is similarly unpersuasive of
error for the reasons detailed above. Thus, we also sustain the Examiner’s
35 U.S.C. § 102(b) rejection of claim 25, and dependent claims 26–28,
which Appellant does not argue separately.
DECISION
We affirm the Examiner’s decision rejecting claims 17–28.
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

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Reexamination Control 90/012,080
Patent 6,049,796
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