Ex Parte 7810729 et al

Patent Trial and Appeal Board

Mar 28, 2014

95001618 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
95/001,618 05/10/2011 7810729 85729-9 1281
120728 7590 03/31/2014
The Law Office of Kirk D. Williams
3196 Dayton St
Denver, CO 80238
EXAMINER
RUBIN, MARGARET R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/31/2014 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 APPEALS BOARD
____________________

SQUARE, INCORPORATED,
Requester and Respondent

v.

REM HOLDINGS 3, LLC,
Patent Owner and Appellant
____________________

Appeal 2013-009801
Reexamination Control Nos. 95/001,618
United States Patent No. 7,810,729 B2
Technology Center 3900
____________________

Before JEFFERY B. ROBERTSON, DENISE M. POTHIER, and
ANDREW J. DILLON, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Requester, Square Incorporated (“Requester”) made a third party request for
inter partes reexamination of U.S. Patent No. 7,810,729 B2 (“the 729 patent”) to
Robert E. Morley, Jr., entitled Card Reader Device for a Cell Phone and Method
of Use issued October 12, 2010 and assigned to Rem Holdings 3, LLC.
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2
Patent Owner, Rem Holdings 3, LLC (“Owner”) appeals under 35 U.S.C.
§§ 134(b) and 315 (2002) from the decision in the Examiner’s Right of Appeal
Notice (RAN) rejecting claims 1-22 of the 729 patent. Owner App. Br. 6.
Requester filed a Respondent Brief disputing contentions by Owner and supporting
the Examiner’s decision. Requester Resp. Br. 8-22.
Requester also cross-appeals from the Examiner’s decision in the RAN not
to adopt specific rejections of claims 1-22 or to withdraw specific rejections.
Requester App. Br. 11-30. Owner filed a Respondent Brief repeating arguments
made in the Appeal Brief, opposing the cross-appeal, and supporting the
Examiner’s decision not to adopt certain proposed rejections. Owner Resp.
Br. 8-35.
Owner filed a Rebuttal Brief. Owner Reb. Br.
The Examiner’s Answer relies solely on the RAN mailed July 17, 2012,
incorporating it by reference. Ans. 1.
An oral hearing was conducted on January 8, 2014. The transcript of the
oral hearing will be made of record in due course.
Requester identifies a related reexamination, Reexamination Control No.
95/001,619 of U.S. Patent No. 7,918,394 B2, which is couched as a continuation
application of the application issuing as the 729 patent and resulted in a
Reexamination Certificate canceling all claims of U.S. Patent No. 7,918,394.
Requester App.
Br. 2.
Owner identifies a related reexamination of U.S. Patent No. 7,896,248 B2,
Reexamination Control No. 95/001,620, which is also on appeal and has been
assigned Appeal No. 2013-010534.
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3
We are informed that the 729 Patent is involved in pending litigation,
Square, Inc. and James McKelvey v. Rem Holdings 3, LLC, Civil Action No. 4:10-
cv-2243 SNLJ, which is before the U.S. District Court for the Eastern District of
Missouri and has been stayed pending the outcome of this reexamination
proceeding.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We AFFIRM.
Claim 1 on appeal reads as follows:
1. A card reader device for reading a card having data stored on a magnetic
stripe incorporated into the card the device comprising:
a read head for passing a magnetic stripe of a card by to read data stored
on a magnetic stripe and for producing a signal indicative of data stored on a
magnetic stripe;
a signal setting device for setting an amplitude of the signal indicative of
data stored on a magnetic stripe; and
an output jack adapted to be inserted into a microphone input associated
with a cell phone for providing the signal indicative of data stored on a
magnetic stripe to a cell phone.

Owner App. Br., Claims App’x 63.
A. Prior Art Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Von Mueller
(“Von Mueller I”)
US 2005/0247787 Nov. 10, 2005
Antonio US 2006/0223580 Oct. 5, 2006

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Luis Padilla Visdómine, Magnetic Stripe Reader Circuit 1-7
1
(2003), available at
http://classic-
Pdweb.archive.org/web/20030218183546/http://www.gae.ucm.es/~padilla/extrawo
rk/magamp.html (“Padilla II”).

Luis Padilla Visdómine, Turning Your Mobile Into a Magnetic Stripe Reader 1-4
2

(2007), available at http://classic-
web.archive.org/web/20041027001715/http://www.gae.ucm.es/~padilla/extrawork/
mobilesoundtrack.html (“Padilla I”).

Siemens Blog, Siemens MC60 cell phone 1-2
3
(September 2, 2008), available at
http://siemphones.blogspot.com/2008/09/siemens-mc60-review.html (last visited Feb. 18,
2014) (“siemphones”).

Philip Berne, Full LG Rumor2 Review 1-3
4
(May 16, 2009), on file (“Rumor 2”).

B. The Adopted Rejections
The Examiner maintains the following proposed rejections:
Reference(s) Basis Claims Presented
Von Mueller I and
Antonio
§ 103(a) 1-3 and 6-22 RAN 4-7
Von Mueller I, Antonio,
and Rumor 2
§ 103(a) 4 RAN 8
Padilla I, Padilla II, and
siemphones
§ 103(a)
1-3, 5-7, 11-
13, and 15-18
RAN 8

1
Three printed pages of this reference were provided, and these page numbers
correspond sequentially to the pages provided.
2
Four printed pages of this reference were provided, and these page numbers
correspond sequentially to the pages provided.
3
Two printed pages of this reference were provided, and these page numbers
correspond sequentially to the pages provided.
4
Three pages of this reference were provided, and these page numbers correspond
sequentially to the pages provided.
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Padilla I, Padilla II,
siemphones, and Rumor 2
§ 103(a) 4 and 10 RAN 9
Von Mueller I, Padilla I,
and siemphones
§ 103(a)
1-3, 6-9, and
11-22
RAN 9-12
Von Mueller I, Padilla I,
siemphones, and Rumor 2
§ 103(a) 4 and 10 RAN 12-13

C. The Proposed Rejections Not Adopted or Withdrawn
The Examiner has not adopted or has withdrawn the following rejections:
Reference(s) Basis Claims
Last
Presented
Lekernel § 103(a) 1-22
Request 7-
12, App. A
Lekernel/Tyner § 103(a)
6-9, 13-15,
20, and 22
Request 12-
18, App. B
Lekernel/Gullickson § 103(a) 4 and 10
Request 19-
20, App. C
Padilla I and II § 103(a)
8, 9, 14, and
19-22
Request 20-
23, App. D
Wallner, Padilla I,
siemphones
§ 103(a)
1-3, 5-8, and
11-22
Non-Final
Rej. 18-19
Wallner, Padilla I,
siemphones, Rumor 2
§ 103(a) 4 and 10
Non-Final
Rej. 19
Von Mueller and Antonio § 103(a) 5
December
13, 2011
Action
Closing
Prosecution
8-9
Von Mueller, Padilla I,
siemphones
§ 103(a) 5
December
13, 2011
Action
Closing
Prosecution
11-12

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II. ISSUES ON APPEAL
Owner and Requester raise the following issues of whether the Examiner
erred in finding that:
(1) von Mueller I teaches “a signal setting device for setting an amplitude of
the signal indicative of data stored on a magnetic stripe” found in independent
claims 1 and 19?
(2) Padilla I teaches “a signal setting device for setting an amplitude of the
signal indicative of data stored on a magnetic stripe” found in independent claims 1
and 19?
(3) One of ordinary skill in the art would have combined teachings of von
Mueller I and Antonio?
(4) One of ordinary skill in the art would have combined teachings of
Padilla I, Padilla II, and siemphones?
(5) the secondary considerations fail to weigh against obviousness?

III. ANALYSIS
A. Preliminary Matters
On January 6, 2014, Owner filed a petition to expunge certain information
from the record. The Office granted the petition on February 25, 2014. We will
confine our opinion to the contentions presented in the briefs. See 37 C.F.R.
§ 41.67.
B. Claim Construction
As Requester notes (see Requester Resp. Br. 11), Owner argues for the first
time in the Appeal Brief that the recitation, “a signal setting device for setting an
amplitude of the signal indicative of data stored on a magnetic stripe” found in
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claims 1 and 19, invokes 35 U.S.C. § 112, sixth paragraph. Owner App. Br. 12-18.
Owner specifically asserts that the Examiner erred in failing to construe this
recitation as a means-plus-function limitation. Id. Notably, claims 11-18, 21, and
22 fail to recite the limitation, “a signal setting device for setting an amplitude of
the signal . . .,” and Owner’s arguments in this regard are inapplicable to these
claims.
The failure to use the word “means” creates a strong rebuttable presumption
that the drafter did not intend a claim to be governed by § 112, sixth paragraph.
See Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373-74 (Fed. Cir.
2012). In particular, 35 U.S.C. § 112, sixth paragraph has been determined not to
be invoked when the drafter fails to signal an intent to apply the provision. See id.
at 1374. Until the filing of the Appeal Brief, Owner did not signal any intent to
apply 35 U.S.C. § 112, sixth paragraph to the phrase, “a signal setting device for
setting an amplitude of the signal . . . .”
Even so, generic terms, such as “device for . . ,” may invoke 35 U.S.C.
§ 112, sixth paragraph when the phrase is considered a non-structural term that is
not modified by sufficient structure. See Welker Bearing Co., v. PHD, Inc., 550
F.3d 1090, 1096 (Fed. Cir. 2008). A limitation lacking the term, “means,” may
overcome a presumption that 35 U.S.C. § 112, sixth paragraph is not invoked by
showing that “the claim term fails to recite sufficiently definite structure or else
recites function without reciting sufficient structure for permitting that function.”
See Flo Healthcare, 597 F.3d at 1374. Owner makes this precise contention.
Owner App. Br. 12; Owner Resp. Br. 13-14; Owner Reb. Br. 11-12.
Owner argues the phrase, “signal setting device” has no meaning in the
electrical arts and that the phrase, “a signal setting device for setting amplitude of
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the signal indicative of data stored on a magnetic stripe,” describes insufficient
structure for performing the recited function. Owner App. Br. 12; Owner Resp. Br.
13-14. Accordingly, Owner asserts the structure corresponding to the purported
means-plus-function limitation is “a resistance coupled to the output jack” (Owner
App. Br. 16) that passively attenuates the signal without using power. Owner App.
Br. 15. Given this understanding, Owner contends that the recited “signal setting
device for setting an amplitude of the signal . . .” excludes an amplifier. Owner
App. Br. 16; Owner Reb. Br. 5-8. Requester disagrees, asserting the limitation
does not invoke § 112, sixth paragraph, and recites sufficient structure that
includes an amplifier. Requester Resp. Br. 10-12.
Assuming 35 U.S.C. § 112, sixth paragraph has been invoked for the recited
“signal setting device for setting an amplitude,” we find both a resistor and an
amplifier are corresponding structures to this recitation when considering the 729
patent’s disclosure as interpreted by an ordinarily skilled artisan. See In re
Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). Notably, the
precise function in claims 1 and 11 is “setting an amplitude of the signal indicative
of data stored on a magnetic stripe.” There is no restriction in claims 1 or 19 that
the signal’s amplitude is set by attenuating the signal passively or without using
power. See Requester Resp. Br. 12-13.
When considering the structure in the 729 patent’s disclosure that performs
the function of “setting an amplitude of the signal,” the 729 patent discusses “a
signal setting device for setting amplitude of the signal indicative of data stored on
a magnetic stripe” in several places. The 729 patent describes “a signal amplitude
setting device 26[,] such as resistor which is connected to jack 16,” “resistor 26
with the resistor setting the amplitude of the waveform,” “[t]he resistor 26 sets the
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amplitude of this signal and this signal is provided to the cell phone 20,” and “[t]he
waveform then has its amplitude set by the resistor 26 in step 106.” The 729 patent
4:24-25, 42-43, 4:67-5:1, 5:64-65; Fig. 2. The 729 patent therefore includes a
resistor as an example of the structure that performs the function of “setting an
amplitude of the signal[.]”
The 729 patent describes another embodiment shown in Figure 3 devoid of
any resistors. The 729 patent 3:54-56, 5:22-57; Fig. 3. Owner states this
embodiment uses an amplifier “in place of the ‘signal setting device for setting . . .’
of FIG. 2.” Owner App. Br. 17. In this embodiment, card reader device 80 has
coil 86 to read the data stored on the magnetic stripe and to produce a waveform
indicative of the signal (i.e., the “read head . . . for producing a signal indicative of
data stored on a magnetic stripe[.]”) The 729 patent 5:23-24, 32-35; Fig. 3. The
signal is then amplified using amplifier 88 and transmitted to a cell phone or other
device through jack 90.
5
The 729 patent 5:35-37; Fig. 3. Amplifier 88 thus adjusts
or sets the signal’s amplitude prior to transmitting the signal to a cell phone or
other device (e.g., a host device). See Requester Resp. Br. 12.
The phrase, “signal setting” is not used in the 729 patent when describing
the Figure 3 embodiment and the symbols for resistor and amplifier are different.
Owner App. Br. 17. Yet, amplifier 88 still performs the function of “setting an
amplitude” as recited in independent claims 1 and 19. That is, an ordinarily skilled
artisan would have recognized that a resistor generally sets amplitude through
attenuation, and an amplifier generally sets amplitude through amplification. See
Requester Resp. Reply Br. 12-13. Although these devices set amplitude
differently, they both perform the recited function of “setting an amplitude of the

5
We presume the reference to “jack 88” in line 37 is a typographical error.
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signal . . .” as broadly as recited and as one skilled in the art would interpret in
light of the disclosure. We therefore find that the 729 patent describes a second
structure (i.e., an amplifier) that one skilled in the art would have understood in
light of the disclosure as corresponding to the recited “signal setting device for
setting an amplitude . . .” in claims 1 and 19.
Owner contends that one skilled in the art would interpret the phrase, “signal
setting device for setting an amplitude of the signal . . .” in the 729 patent to be
restricted to a resistance that can only passively attenuate. Owner App. Br. 14-15;
Owner Reb. Br. 6-7. For example, Owner presents a supplemental declaration of
the inventor of the 729 Patent, Robert E. Morley, Jr., Ph.D.,
6
to support that one
skilled in the art would understand that a “signal setting device for setting an
amplitude of the signal” is only a resistance that passively attenuates a signal. See
Owner App. Br. 14-15 (citing Evidence App’x, Ex. 18, ¶ 26). Requester presents a
competing declaration by David A. Thompson, Ph.D. dated September 29, 2011
(“the Thompson declaration”) supporting the position that an ordinarily skilled
artisan would have understood “a signal setting device for setting an amplitude of
the signal” to include more than a device that attenuates (e.g., a resistor) and
includes both resistors and amplifiers. Requester Resp. Br. 12, 14 (citing Evidence
App’x, Ex. 1, ¶¶ 20-24 and 29).

6
Owner presents two declarations by Robert E. Morley, Jr. In Owner’s Appeal
Brief and Respondent Brief, the two declarations are submitted as Exhibit 1 dated
September 1, 2011 (“the Morley declaration”) and Exhibit 18 dated January 17,
2012 (“the supplemental Morley declaration”). When citing to these declarations,
we will refer to them by their respective exhibits number (i.e., Exs. 1 and 18) listed
in the Evidence Appendix of Owner’s Appeal Brief.
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We are not persuaded by the supplemental Morley declaration. As noted
above, the recited function in claim 1 is that of “setting an amplitude of the signal”
– not setting an amplitude of a signal by passively attenuating. The supplemental
Morley declaration accounts only for devices that set amplitude using passive
attenuation, which is not claimed. Also, the quoted statements from Stephen R.
Wood
7
similarly focus only on devices that set an amplitude through passive
attenuation. On the other hand, we find the Thompson declaration has some
persuasive value, because the declaration does not unduly limit claim 1 to devices
that set an amplitude only through passive attenuation and also addresses what an
ordinarily skilled in the art would understand a “signal setting device for setting an
amplitude of the signal” to be in light of the 729 patent’s disclosure. See Requester
Resp. Br., Evidence App’x, Ex. 1, ¶¶ 9, 20-21.
Owner asserts that the Thompson declaration is not probative, because it
fails to consider what an ordinarily skilled artisan would have known at the time of
the invention but rather considers a “2009 time frame,” which encompasses time
after the invention. Owner Resp. Br. 17-18; Owner Reb. Br. 14-15. We are not
persuaded. The “2009 time frame” reasonably includes dates in 2009 prior to the
June 10, 2009 filing date of the 729 patent.
Also, as indicated by Requester, the recitation of “the signal setting device
for setting an amplitude of the signal . . .” in claim 1 is broader in scope than that
recited claim 3, which specifically recites the signal setting device comprise a

7
Owner refers to a declaration of Stephen R. Wood presented in another
reexamination, Control No. 95/001,620. Owner Reb. Br. 8. Given that this
declaration is not evidence submitted with the briefs of this appeal, we will not
consider its contents, other than the quoted portions found in the Rebuttal Brief.
See 37 C.F.R. § 41.67(c)(1)(ix).
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resistor. Requester Resp. Br. 13-14. Owner retorts that the “signal setting device”
in claim 1 simply includes “any resistance” and in claim 3 distinctly recites “a
resistor.” See Owner Resp. Br. 16; Owner Reb. Br. 11. We are more persuaded by
Requester’s position. Using the doctrine of claim differentiation, which creates a
presumption that each claim in a patent has a different scope, we agree that the
“signal setting device” in claim 1 includes more structure than a resistor or
resistance and, based on the disclosure as discussed above, includes amplifiers.
See Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1351 (Fed. Cir.
2005).
Alternatively, assuming 35 U.S.C. § 112, sixth paragraph has not been
invoked, we find that one skilled in the art would have understood that the
structures in the 729 patent’s disclosure corresponding to the “signal setting device
for setting an amplitude of the signal . . .” recited in independent claims 1 and 19
include resistors and amplifiers under the broadest reasonable construction
standard set forth in In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004. We refer to the above discussion for support. With this understanding,
we turn to the art rejections.

C. Art Rejections
The “obviousness inquiry centers on whether ‘the claimed invention as a
whole’ would have been obvious . . . . ” Rambus Inc. v. Rea, 731 F.3d 1248, 1257-
58 (Fed. Cir. 2013). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the prior
art, (2) any differences between the claimed subject matter and the prior art, (3) the
level of skill in the art, and (4) where in evidence, so-called secondary
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considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 406-07. Additionally, “[t]he obviousness assessment depends on
what the prior art teaches and on what the non-prior-art evidence of ‘secondary
considerations’ (or objective indicia) may indicate about whether the invention
would have been obvious at the relevant time.” Institut Pasteur and Universite
Pierre et Marie Curie v. Focarino and Precision Biosciences, Inc., 738 F.3d 1337,
1344 (Fed. Cir. 2013) (citing KSR, 550 U.S. at 406-07).
The evidentiary standard for findings in proceedings before the United
States Patent Office is preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988).
1. von Mueller I and Antonio under § 103
a. Claims 1-3 and 6-22
Claims 2, 3, and 6-22 are not separately argued and accordingly are grouped
with representative independent claim 1. Concerning claim 1, the Examiner
concludes that claim 1 would have been obvious over the combination of von
Mueller I and Antonio. RAN 4-7 (incorporating to Request, App. J). Owner
asserts that the amplifier disclosed in von Mueller I is not a “signal setting device”
as recited in claim 1. Owner App. Br. 19-22. Requester argues that Owner’s
interpretation of the claims is too narrow. Requester Resp. Br. 12-14. We agree
with Requester for the same reasons discussed above in the section entitled “Claim
Construction.”
Specifically, given the above claim construction of the phrase, “a signal
setting device for setting an amplitude of the signal,” the von Mueller I teaching of
magnetic head amplifier schematic diagram 90 is a card reader device having
signal setting device for setting an amplitude. RAN 4 (referring to Request 43-47,
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App. J 243-244). Additionally, von Mueller I teaches magnetic head amplifier
schematic diagram 90, which reads magnetic stripe information on a credit card,
includes resistors. See RAN 4 (referring to Request, App. J 243-44 (citing von
Mueller I ¶¶ 31, 38, Figs. 1, 8)). Thus, von Mueller I has “a signal setting device
for setting an amplitude of the signal” that includes both amplifiers and resistors.
We stress that claims 11-18, 21, and 22 fail to recite “a signal setting device”
and instead claim “an amplifier.” Appellant does not argue that von Mueller I is
missing an amplifier. Thus, the above-discussed argument concerning von Mueller
I failing to teach “a signal setting device for setting am amplitude of the signal,” is
not applicable to claims 11-18, 21, and 22.
Additionally, Owner contends there is no motivation to modify von
Mueller I as proposed, because von Mueller I is designed such that no data
communication can take place between the card reader and the personal data
assistant (PDA) when data is being transferred between the PDA and a personal
computer (PC) (i.e., when “hot syncing.”) Owner App. Br. 22-29; Owner Reb. Br.
17-18. Owner particularly emphasizes von Mueller I’s discussion that data cannot
be transferred between a card reader and a PDA during hot syncing and asserts the
proposed combination does not solve how to transfer data to the PDA from the
card reader during hot syncing. Owner App. Br. 23-25 (citing von Mueller I ¶ 37).
We are not persuaded that these statements in von Mueller I would dissuade one of
ordinary skill in the art form combining Antonio’s teachings with von Mueller I.
As Requester and the Examiner indicate, the restriction in von Mueller I of
not providing data transfer between the card reader and the PDA during hot
syncing provides a precise reason with some rational underpinning to combine
Antonio with von Mueller I. See RAN 6-7; Requester Resp. Br. 14-16. That is,
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Antonio’s teaching provides the von Mueller I/Antonio system the ability to
transfer data during hot syncing between the card reader and the PDA through
another, additional input (e.g., a microphone input) widely used with portable
device. RAN 6-7. Also, we agree with the Examiner’s reasoning that “the
ubiquitous presence of mobile devices makes them ideal input devices as pointed
out by Antonio and using the earphone/microphone inputs provided [in these
mobile devices] allows convenience and flexibility in collecting and processing
data.” RAN 5.
Owner argues that von Mueller I already solves this problem by storing data
for later retrieval. Owner App. Br. 25. Owner asserts that there is no need for
simultaneously communication, because one can use the card reader when the
device is not hot syncing. See id. and Owner Reb. Br. 17. We disagree. The
proposed modification would have improved on von Mueller I’s techniques and
provides a reason for obviousness. See KSR Int’l Co v. Teleflex Inc., 550 U.S. 398,
417 (2007). Also, von Muller I does not criticize, discredit, or otherwise
discourage a solution of permitting simultaneous communication between the PDA
and PC as well as between a PDA and card reader.
Owner further asserts that the proposed combination would have rendered
von Mueller I inoperable, would have changed the device’s principle of operation
from one that does not transfer data during hot syncing to one that does, and would
have required significant changes. Owner App. Br. 24-25. First, we note that
bodily incorporation of the features of Antonio into von Mueller I is not required.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Second, contrary to Appellant’s
assertions (Owner Reb. Br. 16), the Examiner has not proposed a substitution of
one element for another. See RAN 5. Third, we disagree that von Mueller I’s
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16
principle of operation is to stop data from transferring between the PDA and the
card reader during hot syncing. Rather, von Mueller I’s principle of operation is
data communication between the PDA and other devices.
We further agree with Requester that the combination of teachings results in
a device with components having the same functions and yields a predictable
result. See Respondent Resp. Br. 14-15. That is, von Mueller I’s connection (i.e.,
the serial port) will still permit normal serial communications between PC and
PDA and prevent other data for being sent through this connection during hot
syncing (von Mueller I ¶ 37). The additional, second connection, as suggested by
Antonio and as explained above, provides for improved data communication
techniques by permit contemporaneous data communication between the card
reader and the PDA during hot syncing. See Requester Resp. Br. 15. Thus, the
Examiner’s reasoning is sufficiently supported by the references. As a result, we
disagree with Owner that the Examiner is using impermissible hindsight in
formulating the obviousness rejection. Owner App. Br. 27-29.

b. Claim 4
Claim 4 is rejected based on von Mueller I, Antonio, and Rumor 2 under
§ 103. RAN 8. Owner refers to the arguments made for claim 1, namely those
presented in Subsection vii.1. Owner App. Br. 29. We are not persuaded for the
reasons previously set forth when addressing von Mueller I and Antonio.

2. Padilla I, Padilla II, and siemphones
a. Claims 1-3, 5-7, 11-13, and 15-18
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We select independent claim 1 as representative and group claims 2, 3, 6, 7,
11-13, and 15-18, not separately argued, with claim 1. The Examiner finds that
Padilla I, Padilla II, and siemphones teach the limitations found in claim 1. RAN 8
(incorporating to Request 20-23, App. D).
Like von Mueller I above, Owner argues that the amplifier disclosed in
Padilla II is not a “signal setting device” as recited in claim 1. Owner App. Br. 35-
36; Owner Reb. Br. 19-21. Requester argues that Owner’s interpretation of the
claims is too narrow. Requester Resp. Br. 16. We agree with Requester for the
same reasons discussed in the above section entitled “Claim Construction.”
Specifically, given the above claim construction to the phrase, “a signal
setting device for setting an amplitude of the signal,” Padilla II teaches an
amplifier, which is a card reader device having signal setting device for setting an
amplitude. RAN 8 (referring to Request 20-23, App. D 98-99). Additionally,
Padilla II teaches adjusting the amplifier circuit by changing R2 (i.e., a resistor) to
get an optimal signal (e.g., maximum amplitude and minimum noise). Padilla II 2.
Thus, even assuming that the “signal setting device” was restricted to resistors,
Padilla II has “a signal setting device for setting an amplitude of the signal” that
includes both amplifiers and resistors.
Owner notes that claims 11-13 and 15-18 recite an amplifier and not “a
signal setting device for setting an amplitude[.]” Owner App. Br. 37. Thus, the
above-discussed argument concerning Padilla II failing to teach “a signal setting
device for setting an amplitude of the signal, “ is not applicable to claims 11-13
and 15-18. We further stress that Owner does not dispute that Padilla II is missing
an amplifier.
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Owner also asserts that Padilla I fails to teach including a “signal setting
device” within a card reader and Padilla II does not suggest including such a
feature within Padilla I. Owner App. Br. 30-34. Owner describes how Padilla’s
invention evolved between Padilla I, Padilla II, and Padilla III
8
and argues this
chronology suggests to an ordinarily skilled artisan that there is no need to add any
intervening circuitry (i.e., the recited signal setting device) between a read head
and an output jack as the Examiner proposes. Owner App. Br. 31-32; Owner Reb.
Br. 19-20. Specifically, Owner asserts that Padilla III describes sound cards being
common used and renders including an amplifier within Padilla I’s circuit
unnecessary. Id. We are not persuaded.
First, although Owner provides some evidence that amplifier may not be
required between a device having soundcards and a magnetic card reader (Owner
App. Br. 31-32 (citing Evidence App’x, Ex. 31)), Padilla III does not discourage
including such a structure. See Requester Resp. Br. 17, Evidence App’x, Ex. 1,
¶¶ 29, 32-33. Second, as Requester contends, Padilla I does not indicate that all
output signals from the read head of the card reader will have an acceptable
amplitude for a cell phone. Id. Third, Padilla III states that the “impedances of
both devices are usually similar” (emphasis added), suggesting to an ordinarily
skilled artisan that there are occasions where an amplifier would assist in adjusting
the signal and to turn to the teachings of Padilla II for a known technique to adjust
weak signals. Owner App. Br., Evidence App’x, Ex. 31, p. 1; see also Requester
Resp. Br. 17, Evidence App’x, Ex. 1, ¶¶ 27, 29, 31.

8
Padilla III, entitled “The simplest magnetic stripe reader,” has not been relied
upon by the Examiner in the rejection but has been provided by Owner as
evidence. Owner App. Br., Evidence App’x, Ex. 31.
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Additionally, Owner further contends that the Examiner’s motivation is
facially insufficient and that the Examiner is engaging in impermissible hindsight
to make the combination. Owner App. Br. 33-34; Owner Reb. Br. 20. Although a
“motivation” is not needed to support an obviousness rejection, “there must be
some articulated reasoning with some rational basis underpinning to support the
legal conclusion of obviousness.” KSR, 550 U.S. at 418 (internal quotes and
citations omitted). As indicated by the Requester, Padilla II provides a suggestion
to one skilled in the art that including an amplifier circuit within a device (e.g.,
Padilla I’s card reader) would assist in setting the amplitude to an acceptable level.
See Requester Resp. Br. 17.
Owner contends that this is a rejection with a new motivation that was not
presented in the RAN. Owner Reb. Br. 21. Yet, the Examiner incorporates the
Request 20-23 and Appendix D for this rejection. See RAN 8. Appendix D states
Padilla II teaches including an amplifier circuit, which is adjusted by changing the
value of resistors within the circuit to obtain a maximum amplitude and minimum
noise. Request, App. D 98-99. As such, the Request, which is incorporated by
reference into the RAN, provides at least one reason with a rational underpinning
to include an amplifier circuit (e.g., “a signal setting device for setting an
amplitude”) within Padilla I, so that a maximum amplitude and minimum noise is
obtained. Padilla II 2. As such, we conclude that the Examiner has provided a
sufficient reason for combining Padilla II with Padilla I and that the Examiner is
not relying on impermissible hindsight.
For the first time in the Rebuttal Brief, Owner argues one skilled in the art
would not turn to Padilla II because Padilla II is used for a joystick input and
differs from a cell phone in Padilla I. Owner Reb. Br. 21. This argument is
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untimely and has been waived. See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative).
To the extent claim 11 is separately argued (Owner App. Br. 37), we refer to
the above discussion.
Concerning claim 5, Owner contends that Padilla I and II fail to teach the
signal indicative of data stored on a magnetic stripe is an analog signal as recited.
Owner App. Br. 8; Owner Reb. Br. 22-23. Focusing on Padilla II, Owner argues
that the Padilla II outputs a digitized signal out of the amplifier circuit. Owner
App. Br. 38 (discussing Dr. Morley’s simulation). However, bodily incorporation
of Padilla II within Padilla I is not required. “Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill in the
art.” Keller, 642 F.2d at 425.
As Requester notes, there is no dispute that Padilla I’s output jack produces
an analog signal that is indicative of data stored on a magnetic stripe to a cell
phone. See Requester Resp. Br. 18. Thus, when combining Padilla II’s teaching of
using an amplifier to optimize amplitude and minimize noise with Padilla I analog
system, one skilled in the art would have recognized making the signal indicative
of data stored on a magnetic strip analog. Moreover, although described in the
context of von Mueller I and Antonio (see Requester Resp. Br. 18, Evidence
App’x, Ex. 1, ¶ 23), we agree that an ordinarily skilled artisan would have
recognized using analog or digital signals as an input signal into a cell phone’s
microphone input, such as Padilla I’s, when accounting for the creative steps and
inferences of an ordinarily skilled artisan would have employed. See KSR, 550
U.S. at 418.

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b. Claims 4 and 10
Claims 4 and 10 are rejected based on Padilla I, Padilla II, siemphones, and
Rumor 2 under § 103. RAN 9. Owner relies on the arguments made for claim 1,
specifically Subsection vii.3. Owner App. Br. 38. We are not persuaded for the
reasons previously set forth when addressing Padilla I and II.

3. von Mueller I, Padilla I, and siemphones
a. Claims 1-3, 6-9, and 11-22
Claims 1-3, 6-9, and 11-22 are rejected as being unpatentable over von
Mueller I, Padilla I, and siemphones. RAN 9-12 (incorporating Request 23-32,
App. E). For this rejection, Owner refers to the arguments made in Subsections
vii.1.1-1.2, that address the § 103 rejection of von Mueller I and Antonio. Owner
App. Br. 39-40. We are not persuaded for the previously-stated reasons.

b. Claims 4 and 10
Claims 4 and 10 are rejected based on von Mueller I, Padilla II, siemphones,
and Rumor 2 under § 103. RAN 12-13. Owner relies on the arguments made for
claim 1, especially Subsection vii.5. Owner App. Br. 41. We are not persuaded
for the previously-stated reasons.

4. Consideration of Secondary Evidence in Determining Obviousness
Having considered the evidence supporting a conclusion of obviousness, we
now turn to the arguments concerning objective evidence of nonobviousness.
Owner asserts that uncontroverted objective evidence, including evidence of
copying and commercial success, has been provided to weigh against the
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obviousness of the claims in the 729 patent. Owner App. Br. 42-61. Requester
takes the opposing position, asserting Requester did not copy the invention and that
the evidence fails to provide a sufficient nexus between the claimed invention and
the Requester’s commercial success. Requester Resp. Br. 19-22. Requester asserts
the success of the product is due to “many factors that have nothing to do with a
card reader[,]” including its transaction platform that includes software
components, services provided beyond the card reader, and the fact that the card
reader is free. Requester Resp. Br. 20-22.
We disagree with Owner that the Examiner has not considered the submitted
evidence within the record in arriving at the conclusion that claims 1-22 are
obvious. See Owner App. Br. 45. The ACP specifically discusses the evidence
over several pages. See ACP 19-25. The Examiner stresses, in particular, that the
presented evidence of secondary considerations is not sufficient to overcome the
obviousness rejections because “the present circumstances are believed to
demonstrate strong obviousness rejections where the evidence for maintaining the
rejections that are in place is stronger than the presented evidence regarding
secondary considerations.” ACP 20; see Newell Cos. v. Kenney Mfg. Co., 864 F.2d
757, 768-69 (Fed. Cir. 1988). We agree with the Examiner.
All the evidence of secondary considerations is directed toward claims 1-10,
19, and 20. See Owner App. Br. 42 and 54-59. As such, for claims 11-18, 21, and
22, there is no evidence of secondary considerations on the record to outweigh the
obviousness rejections of these claims. For the remaining claims, the evidence
presented by Owner falls into three general categories: (1) alleged copying by
Requester of the claimed invention (Owner App. Br. 46-52); (2) commercial
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success of Requester’s reader (Owner App. Br. 52-60); and (3) other
considerations (Owner App. Br. 60-61).

A. Alleged Copying by Requester
Owner discusses the Morley declaration and the supplemental Morley
declaration, asserting that these declarations demonstrate that the Requester’s
reader has the claimed features recited in claims 1 through 10, 19 and 20 and that
Requester copied Owner’s reader. Owner App. Br. 44 (citing Evidence App’x,
Exs. 1 and 18), 46 (citing Evidence App’x, Ex. 1, ¶¶ 9-16 and Ex. 18, ¶¶ 6-8);
Owner Resp. Br. 31-34; Owner Reb. Br. 27-30. Requester provides a different
story contending that Mssrs. Morley and McKelvey collaborated and are co-
inventors of the claimed invention. See Requester Resp. Br. 19.
Specifically, Owner contends Mr. James McKelvey, a founder at Square,
approach Dr. Morley in February 2009 with an idea of processing credit cards
using an iPhone as a host device by taking a picture of the card. Between February
and the fall of 2009, Dr. Morley further asserts that he designed a card reader that
uses a headset jack’s microphone input to send a signal indicative of the card’s
data and includes the features in claims 1 through 6 of the 729 patent. Owner App.
Br., Evidence App’x, Ex. 1, ¶¶ 9-12. In the supplemental Morley declaration, Dr.
Morley also maps Requester’s card reader to the limitations in claim 1. Owner
App. Br. 46-48, Evidence App’x, Ex. 18, ¶¶ 6-8. Notably, Owner does not assert
or provide evidence that dependent claims 7-9 or 20 were copied. See id; see also
Owner App. Br., Evidence App’x, Ex. 1.
Contrary to Owner’s contentions (Owner App. Br. 42, 45; Owner Reb.
Br. 25), the Examiner considered the evidence that Requester copied Owner’s
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reader. See ACP 22 (discussing Ex. 1
9
¶ 9, and Ex. 21
10
in Owner’s Appeal Brief,
Evidence App’x). Specifically, the Examiner finds evidence that Requester’s
reader has some of the features of the claimed invention. See ACP 24. The
Examiner also finds some evidence that there were discussions between Dr.
Morley and Mr. McKelvey and that the base patent disclosure was provided to
someone in advance of June 10, 2009. ACP 22 (discussing Ex. 21 in Owner’s
Appeal Brief, Evidence App’x). Additionally, the Examiner further discusses the
conflicting versions of what occurred between Mssrs. Morley and McKelvey.
ACP 22 (discussing to Ex. 1 ¶ 9 and Ex. 21 in Owner’s Appeal Brief, Evidence
App’x). Namely, the Examiner notes the complaint provided by Requester
asserting that Mssrs. Morley and McKelvey are co-inventors of the 729 patent.
ACP 22 (citing Ex. 24 in Owner’s Appeal Brief, Evidence App’x). Thus,
Requester provides some evidence to contradict Owner’s evidence of copying.
Citing to the Manual of Patent Examining Procedure (“MPEP”) § 2137.01,
Owner further asserts that the 729 patent issued to Dr. Morley creates a
presumption that the he is the sole inventor. See Owner App. Br. 51; Owner Reb.
Br. 29-30. Yet, other evidence counters this purported presumption. First, Mr.

9
At times in the record, both the Examiner and Owner refer to the same exhibits
using letters or numbers. For example, the Examiner refers to “exhibit Q” and
“Exhibit V[.]” See ACP 22. As another example, Owner refers to Exhibits 2-17 as
Exhibits A-P respectively and Exhibits 19-30 as Exhibits Q-AB respectively. See,
e.g., Owner App. Br. 44. For purposes of this opinion and for consistency, we will
only refer to the exhibits using the numbers listed in the Evidence Appendix of
Owner’s Appeal Brief.
10
Owner points out reference to “exhibit Q” in the ACP seems to refer to another
exhibit, Exhibit W. See Owner App. Br. 49. Because of the reference to “June 10,
2009” in the ACP, we disagree and presume the Examiner intended to refer to
Exhibit 21 which was sent “06/10/2009.”
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McKelvey sent an email to Dr. Morley on April 23, 2009, stating that “[Dr.
Morley] figured out a way to both simplify the circuit AND amplify the signal.”
Owner App. Br., Evidence App’x, Ex. 25. We note that the email does not provide
sufficient detail to ascertain whether “simplify[ing] the circuit” includes the recited
“signal setting device.” This email and the June 10, 2009 email also provide
further support that Mssrs. Morley and McKelvey were collaborating on the
claimed invention that became part of a card reader patent application. Owner
App. Br., Evidence App’x, Exs. 21 and 25.
Moreover, we note that the evidence fails to show that the features could
have been included within the Requester’s reader by some other attributable
factors, such as a general lack of concern for patent property, which weighs neither
for nor against the nonobviousness of a specific patent. See Cable Elec. Prods.
Inc. v. Genmark Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985) overruled on other
grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1358-61
(Fed. Cir. 1999)(en banc).
In view of the above, we agree with the Examiner, that the provided
evidence of copying is insufficient to outweigh the obviousness rejection. See
ACP 22.

B. Commercial Success of Requester and Other Card Readers
Owner argues the overwhelming objective evidence establishes a nexus
between the claimed invention of claims 1-10, 19, and 20 and the commercial
success of Requester’s reader. Owner App. Br. 52-60; Owner Resp. Br. 34-35;
Owner Reb. Br. 31-34. The Examiner, on the other hand, states Owner has not
presented a convincing nexus between the secondary considerations and the
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claimed invention. See ACP 23-25. Requester also contends that the evidence
does not provide the requisite nexus. Requester Resp. Br. 20-22.
Owner refers to various exhibits to support its position. See Owner App. Br.
44, Evidence App’x, Exs. 1-30. Owner asserts that the commercial success
evidence includes 800,000 card readers embodying the invention in claims 1
through 9, 19, and 20 were sold by Requester in a twelve-month period and were
offered for sale at 10,000 retail outlets. Owner App. Br. 56-57 (referring to
Evidence App., Exs. 19 and 27). Owner states that over one million merchants
were using Requester’s card reader embodying the invention in claims 1 through 9,
19, and 20 to accept credit card payments, and payments over two billion dollars
and, two months later, four billion dollars annually were being processed using the
readers embodying the invention in claims 1 through 9, 19, and 20. Owner App.
Br. 54, 56-57 (referring to Evidence App., Exs. 19, 23, and 27). These arguments
do not address claim 10.
Contrary to Owner’s contentions, the Examiner considered this evidence and
concluded it did not outweigh the obviousness rejection. See ACP 23-25.
Notably, “evidence related solely to the number of units sold provides a very weak
showing of commercial success, if any[,]” because such evidence provides no
indication of whether these sales are substantial with respect to the market. In re
Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (citations omitted). The above exhibits
mainly relate to the number of units, and Owner fails to show whether these sales
were substantial with respect to the market. See ACP 23 (requesting a comparison
between Square and other companies who sold readers).
Specifically, we do not agree with Owner’s statement that the evidence
shows the market share went from zero to 12.5 percent. Owner App. Br. 57,
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Evidence App’x, Exs. 19 and 23. Rather, the evidence states there are only eight
million merchants currently accepting credit cards in the United States, and Square
has added one million. This evidence demonstrates that Square has added to or
grown the market within the United States. Owner App. Br. 57, Evidence App’x,
Ex. 23. On the other hand, Square has described its customer base as about ten
percent, but this number is limited to Visa and MasterCard customers, excluding
American Express, Discover and others in the market. Owner App.
Br. 57, Evidence App’x, Ex. 19. On the whole, this evidence fails to demonstrate
adequately commercial success of Requester’s card readers. Accordingly,
evidence of units sold and sales in Exhibits 19, 23, and 27 (Owner App. Br. 54, 56-
57) are insufficient to indicate whether these sales are substantial in the market,
providing at best a weak showing of commercial success.
The provided evidence further indicates that Requester’s card reader success
is tied to reasons other than the claimed invention. For example, the evidence
attributes Requester’s product popularity in part to the position that many
businesses found the overhead of traditional merchant accounts were too
burdensome. See Owner App. Br., Evidence App., Ex. 19. As another example,
the card readers were given away for free. See Owner App. Br. 56-58, Evidence
App’x., Exs. 19 and 27 (stating “Branson ‘took an interest in Requester’s rapid
growth and novel technology, in particular its free hardware . . . .”) This illustrates
that the free reader – not the merits of the claimed invention itself –contributed to
Requester’s commercial success. See Requester Resp. Br. 19-21. Owner also
discusses that the Requester reader has “garner[ed] significant attention for its bite-
size credit card reader.” Owner App. Br. 58 (citing Evidence App., Ex. 5). This
article indicates the reader’s size, which finds no corresponding limitation in
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independent claims 1 and 19, is why the card readers are popular. Requester
further states other factors (e.g., its transaction platform, software) attributed to its
card reader’s success. See Requester Resp. Br. 20-21.
To demonstrate commercial success, Owner also relies on the Morley
declaration and the Morley supplemental declaration. Owner App. Br. 55-57,
Evidence App’x., Exs. 1 and 18. Specifically, Owner cites to paragraphs 42
through 52 of the Morley declaration and specifically discusses Intuit’s card
readers. Owner App. Br. 57, Evidence App’x, Ex. 1. However, just as stated
above when discussing Requester’s card reader, any of Intuit’s or other companies’
alleged commercial success is arguably related to the card reader being offered for
free. Owner App. Br. 57-58, Evidence App., Ex. 1 ¶¶ 44-45 and Ex. 10.
Additionally, the Morley declaration has no supporting information that the Intuit
reader (i.e., “the Mophie reader”), when it cost $79.95, was “not successful in the
marketplace.” Owner App. Br., Ex. 1, ¶ 44. Also, other than the mere allegation
that the supplemental Morley declaration (Owner App. Br., Evidence App’x, Ex.
18) demonstrates commercial success, it has not been discussed further. See
Owner App. Br. 55-60.
Moreover, Owner argues that demonstrating these card readers embody the
claimed features (see Owner App. Br., Evidence App., Exs. 1 and 18) is sufficient
to presume a nexus between commercial success and the claimed features See
Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1129
(Fed. Circ. 2000) and Oral H’g 20. We find that other evidence has rebutted this
presumed nexus as explained in the above discussion.
Lastly, the Examiner discusses a claimed feature that distinguishes over the
prior art – the output jack – and asserts that this “critical” feature is not shown to
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have a nexus to the commercial success of Requester’s reader. ACP 24-25.
Owner argues this statement demonstrates that the Examiner applied the incorrect
standard. Owner App. Br. 52-53. We agree that this statement taken alone does
not apply the current test set forth in Rambus, which states “the obviousness
inquiry centers on whether ‘the claimed invention as a whole’ would have been
obvious” and that evidence that touts the patented design as a whole must be
considered. Rambus, 731 F.3d at 1257-58.
Yet, the Examiner’s statements are not without any legal basis. For
example, “[e]ven assuming that [Owner] has sufficiently demonstrated commercial
success, that success is relevant in the obviousness context only if there is proof
that the sales were a direct result of the unique characteristics of the claimed
invention – as opposed to other economic and commercial factors unrelated to the
quality of the patented subject matter.” See Huang, 100 F.3d at 140. Also, In re
Kao, 639 F.3d 1057 (Fed. Cir. 2011) supports the notion that “[w]here the offered
secondary considerations actually results from something other than what is both
claimed and novel in the claim, there is no nexus to the merits of the claimed
invention.” Id. at 1068. As discussed above, we find evidence that the sales were
the results of other commercial factors and not a direct result of the characteristics
of the claimed invention.

C. Other Evidence
Owner also contends the provided evidence illustrates the failure of others,
disruptive technology, and recognition by others. Owner App. Br. 42, 60-61.
Regarding the evidence of disruptive technology, we are unaware of and Owner
provides us with no case law to support the notion that a disruptive technology
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provides evidence to outweigh an obviousness rejection. See Owner App. Br. 44-
45, 60-61; see Owner App. Br., Evidence App’x, Ex. 1 ¶ 29. Similarly, the
Examiner states that she is unclear what point Owner is making concerning
disrupting the market by giving away free card readers. ACP 23. To the extent
Owner is attempting to show that disruption demonstrates substantial sales in the
market, we find that the relied-upon evidence for this premise states, “if this is
disruptive technology” (emphasis added), and not that the technology is disruptive.
See Owner App. Br., Evidence App’x, Ex. 6, p. 2. Thus, any connection between
disruption in the market and substantial sales with this evidence of record is
tenuous.
Also, Owner has asserted that there is a causal relationship between the
claimed invention and commercial success due to the reader’s size and the need for
other companies to give the card reader away for free in order to enter the mobile
credit card field (see Owner App. Br. 56-58, Evidence App’x, Ex. 1 ¶¶ 34-36).
We, like the Examiner, are not persuaded that this evidence demonstrates a
sufficient nexus between commercial success and the claimed invention. For
example, Owner asserts that the statements made by Mimi Hart, CEO of Magtek
Inc., demonstrate appreciation of customers and evidence whether the invention
would have been obvious. Owner App. Br. 60-61 (citing Evidence App., Ex. 6).
Ms. Hart indicates that “capturing the analog waveform” and decoding “further
down the pipe” permits for a low-cost product. The feature of capturing an analog
waveform is not found independent claims 1 and 19, and thus does not establish a
nexus between the claimed invention of these claims and the commercial success.
Moreover, this exhibit further states that the Requester has “great press” and
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“hype,” suggesting that the marketing of the reader has attributed to the card
reader’s success. Owner App. Br., Evidence App., Ex. 6.
Concerning demonstrating long felt need and failure of others, Owner fails
to point specifically to evidence that supports these positions. See Owner App. Br.
42-61. To the extent that what is discussed in the briefs demonstrates a long-felt
need, failure of others, or recognition by other, we disagree and further refer to our
above discussion.
In conclusion, the Board is given broad deference in its weighing of the
evidence of secondary considerations. See In re Inland Steel Co., 265 F.3d 1354,
1366 (Fed. Cir. 2001). Even when some evidence of commercial success is
provided, such evidence may not outweigh a strong case of obviousness. See id. at
1366. As illustrated discussed above, the claimed invention as whole has been
considered, such that the overall conclusion by the Examiner that the presented
evidence of secondary considerations is not sufficient to overcome the obviousness
rejections is sound. See ACP 20. Based on the above discussion, we are not
persuaded that the presented secondary evidence outweighs the case of
obviousness for claims 1-22.
Accordingly, we are not persuaded that the Examiner erred in rejecting: (1)
claims 1-3 and 6-22 as being obvious over von Mueller I and Antonio, (2) claims
1-3, 5-7, 11-13, and 15-18 as being obvious over Padilla I, Padilla II, and
siemphones, (3) claims 1-3, 6-9, and 11-12 as being obvious over von Mueller I,
Padilla I, and siemphones, (4) claim 4 as being obvious over von Mueller I,
Antonio, and Rumor 2, and (5) claims 4 and 10 as being obvious over (a) Padilla I,
Padilla II, siemphones, and Rumor 2 or (b) von Mueller I, Padilla I, siemphones,
and Rumor 2.
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5. Non-Adopted Rejections – Cross Appeal by Requester
Requester argues that the Examiner erred in refusing to adopt various
proposed rejections of claims 1-22 based on (1) Lekernel alone and in combination
with other references, (2) Padilla I and II, (3) Wallner, Padilla I, and siemphones
alone and in combination with Rumor 2, and (4) von Mueller I and Antonio, and
(5) von Mueller I, Padilla I, and siemphones. Requester App. Br. 13-30. Our
conclusion that the Examiner did not err in adopting the rejections of claims 1-22
as discussed above renders it unnecessary to reach the propriety of the Examiner’s
decision to not adopt or withdraw certain rejections of those claims on different
bases. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need
not reach the propriety of the Examiner’s non-adoption or withdrawal of the
rejections discussed in the Requester’s Appeal Brief. See Tempo Lighting v. Tivoli,
LLC, No. 2013-1140, 2014 WL 503128, at *4-5 (Fed. Cir. February 10, 2014).

IV. CONCLUSIONS
Owner did not demonstrate that the Examiner erred in adopting the
above-identified rejections of claims 1-22.
We do not reach the issue of the propriety of the Examiner’s non-adoption or
withdrawal of specific proposed rejections.

V. DECISION
The Examiner’s decision to reject claims 1-22 is affirmed.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable
under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
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on the Director of the United States Patent and Trademark Office. See 37 C.F.R.
§§ 90.1 and 1.983.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

FOR OWNER:
Robert Greene Sterne
Sterne Kessler Goldstein Fox
1100 New York Avenue, N.W.
Washington, DC 20005

FOR THIRD-PARTY REQUESTER:
Scott A. McKeown
Oblon, Spivak, McClelland, Maier & Neustadt, LLP
1940 Duke Street
Alexandria, Virginia 22314