Ex Parte 7,120,462 B2 et al

Patent Trial and Appeal Board

May 31, 2016

90013204 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/013,204 04/09/2014
100766 7590 05/31/2016
NOV AK DRUCE +QUIGG LLP
1000 Louisiana Street, 53rd Floor
Houston, TX 77002
FIRST NAMED INVENTOR
7,120,462 B2
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
50862/904322 1027
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
05/31/2016 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)
lJ1..iITED STATES PATENT AND TRADE~vfARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INTELLECTUAL VENTURES II LLC,
Appellant.
Appeal2016-003089
Reexamination Control 90/013,204
Patent 7,120,462 B2
Technology Center 3900
Before JOHN A. JEFFERY, DAVID M. KOHUT, and
JENNIFER L. McKEOWN, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Intellectual Ventures II LLC ("Patent Owner") appeals from the Examiner's
decision, in the Final Action mailed February 26, 2015, to reject claims 1-3, 8, and
10-13 of U.S. Patent No. 7, 120,462 B2 (the "'462 patent"). App. Br. 1. 1
1 Throughout this opinion, we refer to (1) the Final Action, mailed February 26,
2015 ("Final Act."); (2) Patent Owner's Appeal Brief, filed July 27, 2015 ("App.
Br."); (3) the Examiner's Answer, mailed August 28, 2015 ("Ans."), and (4) Patent
Owner's Reply Brief, filed October 28, 2015 ("Reply Br.").
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Patent 7, 120,462 B2
I. STATEMENT OF CASE
Requester made a request for ex parte reexamination (the "Request") of the
'462 patent, issued to Rajendra Kumar on October 10, 2006.
We have been informed that the '462 patent was the subject of a district
court proceeding, namely Intellectual Ventures I LLC et al. v. Motorola Mobility,
LLC, No. 11-cv-908-SLR-MPT (D. Del.). See App. Br. 5.
Additionally, the '462 patent is also the subject of inter part es reexamination
control no. 95/002,075. In that case, we recently issued a decision
affirming-in-part the Examiner's decision and entering a new grounds of rejection.
See Motorola Mobility, LLC v. Intellectual Ventures I LLC, Appeal No. 2015-
007257 (PTAB Mar. 10, 2016). Namely, we affirmed the Examiner's decision to
reject claims 1 and 14--29 based on the combination of Kobayashi and Smith alone
and in combination with the additionally cited prior art references. Further, under
37 C.F.R. § 41.77(b), we entered new grounds of rejection of claims 2, 3, and 8-10
as unpatentable over Kobayashi and Smith alone (claim 2) and in combination with
the additionally cited prior art references (claims 3 and 8-10).
An oral hearing was conducted on April 27, 2016. The transcript of the oral
hearing will be made of record in due course. We have jurisdiction under 3 5
U.S.C. §§ 134 and 306.
We affirm.
II. THE '462 PATENT
The '462 patent relates generally to portable processor-based handheld
devices that provide communications, organizer, and/or entertainment functions, as
well as portable processor-based devices that provide general computing
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capabilities. '462 patent, col. 1, 11. 17-25. Specifically, the invention is directed to
"systems that detachably mate a plurality of portable processor[-]based devices to
provide their combined functionality in an integrated structure." '462 patent, col.
1, 11. 26-30.
For example, as shown in Figure 1 below, a detachable handset unit 20 may
be docked into the docking display unit 30.
Figure 1 of the'462 Patent Depicting an Exemplary
Device of the Claimed Invention
The '462 patent describes that "[t]he detachable handset unit is in a smaller
housing that is dimensioned for handheld grasping, and is sized to be carried in a
packet like an average cell phone." '462 patent, col. 5, 11. 19-21. Further, the
"[ d]ocking display unit 30 is shown as a clamshell style unit, including an auxiliary
display 31, in the lid portion and an auxiliary keyboard 32 in the base portion,
facing each other in the closed position." '462 patent, col. 4, 11. 19-22.
Claim 1 is illustrative and reads as follows:
1. A portable processing device comprising:
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a detachable handset unit sized for handheld graspmg and
including a central processor and a plurality of first circuits, said
processor controlling the operation of said first circuits, and said first
circuits including at least a video interface, a communication interface
and a data input interface;
a portable docking display unit dimensioned substantially larger
than said detachable handset unit, said portable docking display unit
including a first display and a plurality of second circuits, said plurality
of second circuits not including a central processor and including a
video interface, and a data input interface, and wherein said central
processor controls the operation of at least one of said second circuits
and said first display when said detachable handset unit is docked with
said docking display unit;
and the docking display unit is fully operable only when the
detachable handset is docked thereto.
PO App. Br., Claims App 'x.
III. REJECTIONS
A. Evidence Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Darnell
Nelson
Kobayashi
Obradovich
Smith
us 5,043,736
us 5,436,857
us 5,463,742
us 6,148,261
US 7,549,007 Bl
Aug. 27, 1991
July 25, 1995
Oct. 3 1, 199 5
Nov. 14, 2000
June 16, 2009
Motorola, Inc., Cellular Telephone Owner's Manual (1995) ("Motorola").
Patent Owner relies on the Declaration of Earl E. Swartzlander, Jr., dated
November 5, 2014 ("Swartzlander Deel.").
B. The Adopted Rejections
The Examiner maintains the following rejections:
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1. Claims 1-3 and 10-13 are rejected under 35 U.S.C. § 102(e) as being
anticipated over Smith.
2. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Motorola.
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Smith and Darnell.
4. Claims 1-3 and 11-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nelson and Smith.
5. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Nelson, Smith, and Motorola.
6. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Nelson, Smith, and Darnell.
7. Claims 1-3 and 10-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi and Obradovich.
8. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Kobayashi, Obradovich, and Motorola.
IV. ANALYSIS
A. The Obviousness Rejection Based on Kobayashi and Obradovich
Based on the record before us, we are not persuaded that the Examiner erred
in rejecting claims 1-3 and 10-13 under 35 U.S.C. § 103 as unpatentable over
Kobayashi and Obradovich.
Patent Owner asserts that the proposed combination of Kobayashi and
Obradovich is improper because the combination relies on the "incorrect
assumption that the features of the [personal computing device (PCD)] of
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Obradovich can be applied to the personal processor module (PPM) of
Kobayashi." App. Br. 52. According to Patent Owner, Kobayashi teaches a
system that provides one PPM to use at all docking stations to avoid the need for a
user to have different copies of software and to only need one software update for
all docking stations. App. Br. 52. Patent Owner then concludes that:
one of ordinary skill in the art would recognize that since (1) Kobayashi
contemplates that the docking station (not the PPM) includes the I/O
components and (2) the handset configuration of the PCD of
Obradovich is a device configuration I/O components for telephone
calls and other mobile activities, one skilled in the art would not
combine the Kobayashi PPM and the Obradovich PCD as the Examiner
proposes.
App. Br. 52-53; see also App. Br. 58-59; Swartzlander Deel. i-fi-168-70.
Using similar reasoning, Patent Owner also alleges that Kobayashi teaches
away from a complete system with processing, storage/memory, and I/O
components in a single unit or module and, thus, teaches away from the
combination with Obradovich. App. Br. 53. In particular, Patent Owner alleges
that Kobayashi's intent is to separate the processing/logic and storage/memory
components from the input/output components. According to the Patent Owner,
this separation allows "a user [to] easily move the processing and storage/memory
capabilities from docking station to docking station" and "that different
configurations of docking stations can be utilized by the user, to reduce costs of
upgrades, need for individual customization of different computers, etc." App. Br.
54; Swartzlander Deel. i-fi-173-74.
Because Obradovich is a one unit system, Patent Owner argues that "one of
ordinary skill in the art would conclude that adding the components of the PCD of
Obradovich to the PPM of Kobayashi would result in exactly the type of device
that Kobayashi is trying to get away from, a complete system with processing,
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storage/memory, and I/O components in a single unit or module." App. Br. 55; see
also App. Br. 56-57; Swartzlander Deel. i-fi-173-76.
We find these arguments unpersuasive. Contrary to Patent Owner's
assertions, it is not the separation of processing/memory components from the I/O
components that achieves Kobayashi's desired flexibility, but the use of a single
processing unit that can be easily transported to use at a variety of sites. See, e.g.,
Kobayashi, col. 1, 11. 6-14; col. 2, 11. 62-67. With this single processing unit,
software upgrades must only be performed once, saving cost and time.
Adding I/O interface components to Kobayashi's processing unit (PPM), as
taught for example by Obradovich, does not increase the number of processing
units, but merely allows Kobayashi's system to be independently operable in
addition to being used with each docking station. In other words, adding I/O
interface components to Kobayashi's processing unit merely adds another location
where the processing unit would be operable. Patent Owner fails to persuasively
identify any teaching of Kobayashi that discourages this expanded use, which
further increases the flexibility of the processing unit system. In fact, Kobayashi
expressly teaches the desirability of a flexible system that can be used with
different types of docking station at different locations. Kobayashi, col. 2, 1. 62-
col. 3, 1. 1.
Patent Owner's argument also fails to consider the teachings of Obradovich.
For example, Obradovich teaches a processing unit including I/O interface
components that provides additional functionality, i.e. a PCD that combines
multiple capabilities, such as cell phone and GPS receiver, in one compact unit.
Ans. 36; Obradovich, col. 2, 11. 53-56. Obradovich further notes that "people want
to be well informed" and that "[a]vailbility of up-to-date information is more
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important today than ever before." Obradovich, col. 1, 11. 13-18. As such,
Obradovich not only demonstrates that detachable handset units with video,
communication, and data input interfaces were well known at the time of the
invention, but also that such systems would add functionality, including, for
example, being able to provide a user with up-to-date information.
Given these teachings of Kobayashi and Obradovich, it would have been
readily apparent to a skilled artisan at the time of the invention to modify
Kobayashi to include a detachable handset unit including video, communication,
and data input interfaces to obtain the advantages of additional functionality, such
as having an independently operable detachable handset unit, and more robust
portability, as taught by Obradovich. Final Act. 35; Ans. 36. We agree with the
Examiner, then, that such a combination would merely be "applying a known
technique (Obradovich's portable device dimension and functionality) to a known
device (Kobayashi's device) ready for improvement to yield predictable results
(Achieve cellular communication capability and more robust portability)." Final
Act. 35.
Moreover, notably absent from Patent Owner's argument that Kobayashi
teaches away from Obradovich, is the identification of any teaching by Kobayashi
that discourages a processing unit that includes I/O interfaces components. 2 While
Kobayashi describes a preferred embodiment of a processing unit working with a
docking station that includes I/O components, this does not teach away from a
processing unit including I/O components. See DePuy Spine, Inc. v. Medtronic
2 We note that during the oral hearing, Patent Owner presented arguments
regarding a minimum size of Kobayashi's PPM and maximizing security. These
arguments, however, are absent from both Patent Owner's Appeal and Reply
Briefs and therefore waived as untimely. See, e.g., App. Br. 53-55; Reply Br 4.
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Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not
teach away [ ... ] if it merely expresses a general preference for an alternative
invention[.]"). Therefore, we find Patent Owner's argument unconvincing.
Patent Owner next alleges that Kobayashi does not teach a "detachable
handset unit." App. Br. 57-58. Namely, that Kobayashi's PPM is not a "handset"
unit because "[i]nterface components, such as audio input and audio output
components required for a handset, are located not in the PPM, but rather in the
docking station." App. Br. 58. The Examiner, however, relies on Kobayashi in
combination with Obradovich as teaching the recited detachable handset unit
including the recited interfaces. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, as Patent Owner
acknowledges, the Examiner also finds that Obradovich teaches the recited
detachable handset unit with video, communication, and data input interfaces.
Ans. 35-36, 40; see also Final Act. 58-59; App. Br. 57-58. Therefore, we find
Patent Owner's arguments unpersuasive.
Accordingly, we agree with the Examiner that claim 1 is unpatentable over
Kobayashi and Obradovich combined. Patent Owner presents no separate
arguments of patentability for claims 2, 3, and 10-13. See App. Br. 59. For the
same reasons discussed above with respect to claim 1, we determine that dependent
claims 2, 3, and 10-13 are also unpatentable over Kobayashi and Obradovich
combined.
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Accordingly, based on the reasons set forth above and presented by the
Examiner, we affirm the rejection of claims 1-3 and 10-13 based on the combination
of Kobayashi and Obradovich.
B. The Obviousness Rejections Based on Kobayashi, Obradovich, and Motorola
Patent Owner does not separately argue the obviousness rejection of claim 8
based on Kobayashi, Obradovich, and Motorola. See App. Br. 60. Therefore, for
the reasons discussed above, we are not persuaded of error and affirm this
rejection.
C. The Remaining Rejections
Because our decision regarding the rejections based on Kobayashi and
Obradovich alone and in combination with Motorola are dispositive regarding
patentability of claims 1-3, 8, and 10-13, we need not reach the merits of the
Examiner's decision to reject these claims based on the additionally cited prior art.
See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other
rejections after upholding an anticipation rejection); see also Beloit Corp. v.
Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC's determination
based on a single dispositive issue, and not reaching other issues not decided by the
lower tribunal).
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VI. CONCLUSION
We affirm the Examiner's decision to reject claims 1-3, 8, and 10-13 based
on the combination of Kobayashi and Obradovich alone and in combination with
Motorola.
AFFIRMED
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