Ex Parte Malcolm

Board of Patent Appeals and Interferences

Feb 6, 2008

10422661 (B.P.A.I. Feb. 6, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JERRY WALTER MALCOM
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Appeal 2007-1630
Application 10/422,661
Technology Center 2600
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Decided: February 6, 2008
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Before JOSEPH L. DIXON, ANITA PELLMAN GROSS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1)(2006) for reconsideration of our Decision of October 24, 2007.
The Decision affirmed the Examiner’s rejections of claims 1-18, as follows:
Appeal 2007-1630
Application 10/422,661

1. We affirmed the Examiner’s rejection of claims 1-3, 7-9, and 13-
15 as being anticipated by Pombo.
2. We affirmed the Examiner’s rejection of claims 4, 5, 10, 11, 16,
and 17 as being unpatentable over the teachings of Pombo in view
of Croft.
3. We affirmed the Examiner’s rejection of claims 6, 12, and 18 as
being unpatentable over the teachings of Pombo in view of Ariga.

We have reconsidered our Decision of October 24, 2007, in light of
Appellant’s comments in the Request for Rehearing, and Appellant has not
convinced us that we misapprehended or overlooked any points in rendering
our Decision. We decline to change our prior Decision for the reasons
discussed infra.
A. Appellant presents the following argument:
Applicant requests the Board to consider that Pombo's
"sleep mode" is not merely slowing the rate of search for a
control signal, but that Pombo's "sleep mode" includes
decoupling the receiver and the transmitter from the battery
(col. 11 lines 24 - 25), which is described as a "very low power
mode" (col. 6 line 9) during which the mobile device is largely
powered down but not turned off (col. 6 lines 14 - 15).
However, as agreed by the Board in the Decision, Pombo does
not enter such a "very low power mode" as a result of a signal
loss, but only slows the searching process, which saves some
amount of power, as agreed by Appellant.
Appellant respectfully submits, though, that Pombo's
non-sleep-mode "no control activity" mode is not read upon by
Appellant's claims because Appellant has not only claimed
saving of power, but has claimed a "nap mode". The scope of
this term is first set forth in paragraph 0038:

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Application 10/422,661

". . . a special sleep mode referred to as a 'nap'. "
Appellant has used the term "sleep mode" in the
conventional sense (paras. 0018) in which nonessential portions
of the handset are powered down (para. 0018). For example,
ordinarily skilled persons would read and interpret the term
"nap mode" according to the specification as being a type of
"sleep mode", and thus would use a definition such as:

Dictionary: sleep mode An energy-saving mode of
operation in which all unnecessary components are
shut down . . . . When a notebook computer goes
into sleep mode, it shuts down the display screen
and disk drive . . .
(Request 2).

In response, we find no reference to any portion of the Briefs where
Appellant has previously presented the argument that the claimed “nap
mode” (claim 1), when interpreted as “a special sleep mode,” as disclosed in
Appellant’s Specification at paragraph [0038], does not read on Pombo's
non-sleep-mode “no control activity” mode (see Request 2). Thus, after
examining the arguments previously presented in the Briefs, we conclude
that Appellant has presented a new argument in the Request for Rehearing.
Because such a new argument is not made regarding a “recent relevant
decision of the Board or a Federal Court” or in response to a new ground of
rejection under 37 C.F.R. § 41.50(b), Appellant’s newly advanced argument
has not been considered. See 37 C.F.R. § 41.52.1 Pursuant to

1 See 37 C.F.R. § 41.52(a)(1): “Arguments not raised in the briefs before the
Board and evidence not previously relied upon in the brief and any reply
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Application 10/422,661

37 C.F.R. § 41.52(a)(1), we decline to consider Appellant’s newly
presented dictionary definition for “sleep mode” as extrinsic evidence.
Moreover, because our Decision did not raise a new ground of
rejection under § 41.50(b), we deny Appellant’s request to remand the
application to the Examiner for further consideration (see Request 3).
B. Appellant presents the following argument:
Appellant respectfully submits that in order to anticipate
the claims under 35 U.S.C. §102, Pombo must teach entering a
sleep mode by powering down portions of the mobile device
upon loss of control signal detection in order to anticipate
Appellant's claim of entering a "nap mode", and that merely and
only meeting the claim limitation of saving some degree of
power through slowed signal searching fails to teach all claim
limitations.
(Request 3).

We disagree. We note that representative claim 1 is silent regarding
the “sleep mode” argued by Appellant (see Request 3). Nor does
representative claim 1 recite “powering down portions of the mobile device
upon loss of control signal detection,” as also argued by Appellant (id.).
Contrary to Appellant’s arguments, the language of claim 1 broadly recites

brief(s) are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) and (a)(3) of this section.”

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Appeal 2007-1630
Application 10/422,661

“entering a nap mode . . . during said nap mode a state of lower power
consumption being achieved . . . .” (claim 1, emphasis added). 2
As stated in our Decision, Appellant has acknowledged in the Brief
that Pombo’s “no control activity” process will result in a state of lower
power consumption and will defeat searching for the calculated time
interval, as follows:
There is no mention of entering “sleep mode” during this
period, only of delaying the next search until the next search
time, which would save some battery power, but not as much as
going into “sleep mode.”
(App. Br. 5, para. 1, emphasis added).
We note again that a particular degree or amount of battery power
saving is not claimed. Thus, we conclude that Appellant’s arguments are not
commensurate in scope with what is claimed. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (“Many of appellant’s arguments fail from the outset
because, . . . they are not based on limitations appearing in the claims . . . .”).
Moreover, limitations appearing in the specification but not recited in the
claim are not read into the claim. See E-Pass Techs., Inc. v. 3Com Corp.,
343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view
of the specification” without importing limitations from the specification
into the claims unnecessarily).

2 We respond here only regarding the express limitations of claim 1 since
we selected independent claim 1 as the representative claim in our Decision.
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Application 10/422,661

C. Appellant presents the following argument:
With respect to the fourth point of argument presented by
the Appellant regarding the length of time of the nap mode,
Appellant requests rehearing because it is believed that the
argument and the Pombo disclosure were misapprehended. The
Board noted that determination of a "length of time" to sleep
were not actually claimed in the broadest claim. Appellant
concurs that a broader term  a "condition for termination" of
the sleep mode  was claimed, encompasses the condition of a
"length of time" (see Claim 4 for other termination conditions,
as well). The discussion regarding "length of time" was
intended to illustrate the Appellant's argument regarding a
transient control signal scenario where length of time was the
selected termination condition according to the Appellant's
invention, but in which Pombo's system bounces between non-
sleeping modes without going to sleep (Appeal Brief, pg. 5, last
full paragraph)
(Request 3-4).
In response, we again conclude that Appellant is reading limitations
from the Specification into the claims. We note that patentability is based
upon the language of the claims. “It is the claims that measure the
invention.” SRI Int’l v. Matsushita Elec. Corp. of America, 775 F.2d 1107,
1121 (Fed. Cir. 1985) (en banc). Moreover, the “other termination
conditions” purportedly recited in claim 4 were not argued in the Briefs and
will not be considered here.3 See 37 C.F.R. § 41.52(a)(1).

(See Decision 4).
3 See dependent claim 4: “The method as set forth in Claim 1 further
comprising the step of providing a user interface for manipulating said event
records.”
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Application 10/422,661

Here, we reaffirm our agreement with the Examiner’s position, and
we note that representative claim 1 does not require determination of a
length of time of finding or losing a signal (i.e., “a transient control signal
scenario”), as argued by Appellant (see Request 4-5). Instead, representative
claim 1 broadly recites: “determining that a period of signal intermittence
has started by detecting threshold conditions for a transient network signal
being intermittently found and intermittently lost;” (claim 1, emphasis
added). Thus, we find this portion of claim 1 broadly but reasonably reads
on Pombo’s detection of each control channel signal from a particular base
station, since each control channel signal is intermittent, and Pombo records
the time it was initially detected in the control activity table (see Pombo,
col. 5, ll. 34-38; col. 6, ll. 31-35). Moreover, we reaffirm our finding that
representative claim 1 broadly but reasonably reads on the Pombo reference,
as described in detail on page 9 of our Decision of October 24, 2007.

CONCLUSION
We have considered the arguments raised by Appellant in the
Request for Rehearing, but Appellant has not convinced us that we
misapprehended or overlooked any points in rendering our Decision.
Because our Decision of October 24, 2007 did not raise a new ground
of rejection under § 41.50(b), we deny Appellant’s request to remand
the application to the Examiner for further consideration (see Request
3).

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Application 10/422,661

DECISION
We have granted Appellant’s request to the extent that we have
reconsidered our Decision of October 24, 2007, but we deny the request with
respect to making any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006). See
also 37 C.F.R. § 41.52(b).

DENIED

clj
IBM CORPORATION (RHF)
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