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           NOTE: This order is nonprecedential.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
                 __________________________

          IN RE MOTOROLA MOBILITY LLC
              __________________________

                          2012-1470
                (Reexamination No. 90/010,278)
                  __________________________

     Appeal from the United States Patent and Trademark
 Office, Board of Patent Appeals and Interferences.
                 __________________________

                       ON MOTION
                 __________________________

   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
