Case: 12-1470 Document: 26 Page: 1 Filed: 03/05/2013
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE MOTOROLA MOBILITY LLC
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2012-1470
(Reexamination No. 90/010,278)
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Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
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ON MOTION
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Before NEWMAN, LOURIE, and REYNA, Circuit Judges.
REYNA, Circuit Judge.
ORDER
The Director of the United States Patent and
Trademark Office moves to waive the requirements of
Fed. Cir. R. 27(f) and to remand for further proceedings.
Motorola Mobility, Inc. (Motorola) opposes remand and
requests that this court reverse the decision of the Board
of Patent Appeals and Interferences (Board) or allows this
matter to be heard by a merits panel without further
briefing. The Director responds.
Case: 12-1470 Document: 26 Page: 2 Filed: 03/05/2013
IN RE MOTOROLA MOBILITY LLC 2
Motorola’s patent is directed to a method and
apparatus in a communication receiver for producing
different alerts for different call-back numbers, such that
a user can identify a particular call-back number from its
corresponding alert. Independent claim 1 is a
communication receiver that includes a “processor means”
that is coupled to the receiver means for processing the
message to derive the received call-back number and
coupled to the storage means for comparing the received
call-back number with at least one user-programmed call-
back number.
The examiner rejected claims 1-5 as unpatentable for
obviousness under 35 U.S.C. § 103(a) based upon U.S.
Patent No. 5,066,949 to Breeden et al. (the Breeden
reference) in view of Japanese Examined Patent
Application Publication No. S61-288541 to Amamiya et
al. (the Amamiya reference). The Board found that the
Amamiya reference teaches the function and structure of
the processor means because “Amamiya’s device includes
a memory 6 that can store a programmed default audible
alert. Moreover, as explained by the examiner, Amamiya’s
device includes an audible alert generator means called a
sounding unit 18 that is controlled by the signal control
circuit 5 with the ringing volume switching circuit 15 and
the ringing tone switching circuit 16.” The Board
affirmed the examiner’s rejections.
The Director now concedes that both the examiner
and the Board failed to address whether or not the
algorithm in Figure 4 of Motorola’s patent specification
was part of the structure required under 35 U.S.C. § 112,
¶ 6 or shown by the Breeden reference and/or the
Amamiya reference. Although Motorola suggests that we
should reverse the Board’s decision, we deem it the better
course to remand for the Board to reassess its obviousness
Case: 12-1470 Document: 26 Page: 3 Filed: 03/05/2013
3 IN RE MOTOROLA MOBILITY LLC
analysis and its claim construction in light of the
Director’s concession of error.
Accordingly,
IT IS ORDERED THAT:
(1) The motion is granted. The appeal is remanded
for further proceedings consistent with this order.
(2) Each side shall bear its own costs.
FOR THE COURT
/s/ Jan Horbaly
Jan Horbaly
Clerk
s26
ISSUED AS A MANDATE: March 5, 2013