Ex Parte 7810729 et al

Patent Trial and Appeal Board

Jul 7, 2015

95001618 (P.T.A.B. Jul. 7, 2015)

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 07/08/2015
The Law Office of Kirk D. Williams
PO BOX 39425
Denver, CO 80239-0425
EXAMINER
RUBIN, MARGARET R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/08/2015 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 APPEAL BOARD
____________

SQUARE, INC.,
Requester,

v.

REM HOLDINGS 3, LLC,
Owner
____________

Appeal 2013-009801
Application 95/001,618
Patent 7,810,729
Technology Center 3900
____________

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

POTHIER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.79, Owner has submitted a timely Request
for Rehearing dated April 28, 2014 (the “Request for Rh’g”), requesting
rehearing of the March 31, 2014 opinion (the “Opinion”) that affirmed
rejections of claims 1–22. Opinion (Op.) 3, 32. Requester timely submitted
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Requester Opposition to Rehearing Request (hereafter “3PR Opposition”) on
May 28, 2014.
We have reconsidered the Opinion in light of Owner’s discussions in
the Request for Rehearing and 3PR Opposition. We find no errors. We
therefore, decline to change our prior decision for the following reasons.
Initially, Owner requests termination of this reexamination
proceeding, because the Requester, Square, lacks standing. Request for
Rh’g 1–7. Specifically, Owner contends that Square asserts ownership in
U.S. Patent No. 7,810,729 (“the ’729 patent”) and, thus, for purposes of this
proceeding, is an owner or in privity with an owner of the ’729 patent. Id. at
3, 6–7 (citing 37 C.F.R. §§ 1.913 and 1.915). As indicated in the petition
decision of May 23, 2014 (hereafter “Petition Decision”), the Board does not
have the authority to terminate reexamination proceedings. Petition
Decision 5. Rather, such authority has been delegated to the Office of Patent
Legal Administration (OPLA). Id. As of yet, OPLA has not decided the
petition submitted July 9, 2014, requesting termination of this
reexamination. Moreover, as Owner indicates, ownership disputes are
resolved by the courts. Request for Rh’g 1. Accordingly, this proceeding
remains pending.
Owner next argues that the obviousness rejection based on Padilla I
and II in the Opinion was a new ground. Request for Rh’g 8–10. A similar
argument related to a new ground based on Padilla I and II was presented in
the Owner’s rebuttal brief and addressed in the Opinion. Owner Reb.
Br. 21; Op.19. In the Opinion, we noted that the reason presented to
combine the references (e.g., including an amplifier circuit that permits
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adjustment of a resistor’s value so as to obtain a maximum amplitude and
minimum noise) was supported by the RAN and the Request. Op. 19 (citing
RAN 8, which further cites to Appendix D, pp. 98–99). Owner contends
that this same finding in the Request is a new factual basis in the Opinion
and, thus, changes the thrust of the rejection. See Request for Rh’g 8–9.
Owner acknowledges the Request addresses an adjustable amplifier
but contests that this discussion “is not in the column labeled ‘Motivation to
Combine.’” Request for Rh’g 9. We are not persuaded. Owner’s argument
is one of form over substance. When viewing the rejection of claim 1
presented by Requester in Appendix D collectively (which only covers three
pages of Appendix D), the rejection discusses combining and including
variable resistors of Padilla II in Padilla I to optimize performance (e.g.,
maximum amplitude and minimum noise). Request, Evidence App’x,
Appendix D, pp. 98–99; 3PR Opposition 3–4.
Also, we disagree that the Examiner’s rejection that incorporates
Appendix D (RAN 8) failed to give Owner notice of the “adjustable-
amplifier grounds” in the Opinion. Request for Rh’g 9. As stated in In re
Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011), “all that is required of the office
to meet its prima facie burden of production is to set forth the statutory basis
of the rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132.” Id. As explained above, the Office has satisfied these requisites.
We conclude that the Opinion did not change the thrust of the
Examiner’s rejection.
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Owner further takes issue with our position that the argument related
to Padilla II’s use as a digitized joystick input and how it differs from a cell
phone in Padilla I, which can capture non-digitized signals, was untimely
raised and waived. Request for Rh’g 10–11 (citing Op. 19–20). To counter
this position, Owner cites to various responses and its respondent brief.
Request for Rh’g 11. We are not persuaded. Many of the quotes provided
by Owner are telling, as they do not relate to the argument raised in the
rebuttal brief and merely summarize Padilla II. See id.; see 3PR Opposition
5. Instead, Owner attempts to fill the gaps in these discussions by adding
commentary and asserting that the argument was raised in a timely fashion.
See id.
Nonetheless, even presuming this argument was raised timely, we find
Owner’s contentions unavailing. Request for Rh’g 11–12. As indicated in
the Opinion when addressing a similar argument, the Examiner is not
proposing a bodily or wholesale substitution of Padilla II’s amplifier circuit
and joystick input to a parallel port into Padilla I’s system, as Owner
contends. See Op. 20; Request for Rh’g 11–12. We stated:
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 . . ., 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. [398,]… 418[(2007)].

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Op. 20. This discussion is equally applicable to the Owner’s contentions in
the rebuttal brief related to the Padilla II’s digitized joystick input versus
Padilla I’s possible, non-digitized signals. See In re Mouttet, 686 F.3d 1322,
1332–33 (Fed. Cir. 2012) (indicating physical substitution of elements from
multiple references is not required). That is, when accounting for the
creative steps and inferences of an ordinarily skilled artisan, one would have
appreciated and recognized using an amplifier circuit that produces analog
or digital signals as input signals depending on the environment. See KSR
550 U.S. at 418.
Owner further contends that our discussion of von Mueller I in
combination with Antonio or Padilla I constituted a new ground of rejection.
Request for Rh’g 13. We disagree. In particular, Owner asserts the Opinion
“altered how the references are combined and relied on new factual
findings” and, more specifically, the Examiner “bodily incorporated the
second reference (Antonio or Padilla I) into von Mueller I to provide a
second data path during hot sync” while the Opinion does not. Request for
Rh’g 13 (citing RAN 4–13). We are not persuaded. Upon reviewing the
RAN, the Examiner did not merely bodily incorporating Antonio’s or Padilla
I’s features into von Mueller I. RAN 4–13; see also 3PR Opposition 5.
Indeed, the Examiner discusses modifying and altering the magnetic reader.
RAN 5, 7, 10, 12. Thus, we are not persuaded we deviated from the
Examiner’s findings as asserted by Owner.
In addition, Owner asserts that the finding related to von Mueller I’s
principle of operation in the Opinion is a “new finding.” See Request for
Rh’g 13 (discussing Op. 16). We disagree. This statement was included in
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the Opinion to respond to Owner’s position regarding the impossibility or
inoperability of the PDA in von Mueller I to receive data from another
source other than a PC during hot syncing. See App. Br. 24–25. Although
our statement in the Opinion related to von Mueller I’s operation assists in
understanding the references, we further disagree that the statement is
required to find the combination operable. See Request for Rh’g 13.
Moreover, we did not change the thrust of the rejections based on von
Mueller I. That is, as explained above, the rejection relies on the same basis
and same reasoning advanced by the Examiner. See also Op. 14–16.
Requester further indicates, and we agree, that the Opinion affirms the
Examiner. See 3PR Opposition 5.
Owner also asserts that we misapprehended its argument concerning
von Mueller I being inoperative. Request for Rh’g 15. We disagree. See
3PR Opposition 6 (quoting Op. 15–16). In particular, we stated that von
Mueller I would still permit normal serial communications between the PC
and personal digital assistant (PDA) through its serial port and prevent other
data from being sent though this connection during hot syncing. See
Op. 15–16. Yet, as noted, this teaching that prevents data from being sent
through its connection, does not preclude data from being sent through an
additional, second connection. See Op. 16 (stating “[t]he 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.”)
Owner further asserts the PDA and its processor “is completely consumed
with hot syncing,” such that no other data can be transmitted to or from the
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PDA and that one skilled in the art would have known the PDA cannot be
used for “any other function until hot sync is complete.” Request for
Rh’g 15. This argument is unavailing, because mere attorney arguments and
conclusory statements unsupported by sufficient factual evidence are entitled
to little probative value. Cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997).
Owner also argues “the Office’s new fact-finding is unsupported by
the record.” Request for Rh’g 15. Owner has not articulated clearly which
finding or findings in the Opinion are considered “new.” See id. In any
event, our position is supported by the record and is consistent with the
Examiner’s position. For example, the Opinion discusses the RAN at pages
six and seven. See Op. 14–15 (citing RAN 6–7). In turn, the RAN discusses
“an alternative when the cradle is already in use transmitting between a PC
and the PDA” (e.g., an additional connection discussed in the Opinion at
page 15) that uses the headset input of the PDA to receive data from a
magnetic stripe reader, as suggested by Padilla I. RAN 7.
Owner argues that the Opinion overlooked two arguments and
misapprehended a third argument. Request for Rh’g 14–16. We refer to our
previous discussion concerning the alleged misapprehension. As for the two
overlooked arguments (i.e., von Mueller I’s hot sync operation does not
justify a second path and von Mueller I’s digitizing amplifier is incompatible
with an analog microphone input), we disagree with Owner. Request for
Rh’g 14. In particular, we addressed a reason or justification for including a
second path in von Mueller I, even for short periods of time, to provide “the
ability to transfer data during hot syncing between the card reader and the
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PDA through another, additional input (e.g., a microphone input) widely
used with portable device[s].” Op. 15–16; see also 3PR Opposition (quoting
Op. 16).
Regarding the other point that Owner contends we overlooked (e.g.,
von Mueller I’s digitizing amplifier is incompatible with an analog
microphone input), we fail to find this argument in Owner’s appeal brief at
page 21. See Request for Rh’g 15 (citing App. Br. 21). In any event and to
extent Owner presented this argument in the appeal brief, we addressed in
the Opinion and above that one skilled in the art would have recognized how
to design a combined von Mueller I/Antonio or Padilla I system to function
in an analog or digital environment. See Op. 14–16, 20, 21 (referring back
to “previous-stated reasons”); see also 3PR Opposition 6.
Owner contends that our analysis of the objective evidence amounts to
a new ground of rejection. Request for Rh’g 16–18. First, we disagree that
our findings should be considered new merely “because the objective
evidence was not addressed in the RAN.” Request for Rh’g 16. The RAN
also refers to an April 2, 2012 ACP, which as noted discusses the objective
evidence (see Op. 22 (citing to ACP 19–25)), and indicates that all rejections
are maintained. Second, our discussion of the objective evidence is not
relying on new legal theories. Request for Rh’g 17. Specifically, we noted
that taking the Examiner’s statement related to “the critical feature” at pages
24 and 25 of the ACP alone does not apply the current test set forth in
Rambus Inc. v. Rea, 731 F.3d 1248, 1257-58 (Fed. Cir. 2013). Op. 28–29.
But, we further noted that the Examiner’s statement was not without legal
basis. Op. 29 (citing In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) and
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stating “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”) (emphasis added).
Moreover, we agreed with the Examiner’s ultimate conclusion
concerning the secondary evidence. Op. 31 (citing to ACP 20). Thus, the
Opinion’s discussion did not amount to change in the thrust of the
Examiner’s rejection, which like the Opinion, found the secondary evidence
did not outweigh the case of obviousness. Additionally, as Owner admits,
the objective evidence lacks the required nexus when the evidence relates to
a feature known in the prior art. Request for Rh’g 17 (citing Rambus, 731
F.3d at 1257). As discussed above and in the Opinion, the prior art teaches
the features to which the evidence relates. See Op. 21–31.
Lastly, Owner discusses purported errors in the Examiner’s findings.
See, e.g., Request for Rh’g 18. This, however, does not state a particular
point misapprehended or overlooked by the Board in rendering the Opinion.
See 37 C.F.R. § 41.79.
We have considered the arguments raised by Owner in the Request for
Rehearing, but the arguments are not persuasive to find that the original
decision was in error. Based on the record before us now and in the original
appeal, we are still of the view that the Examiner did not err in rejecting the
claims 1–22.
We have granted the Request for Rehearing to the extent that we have
reconsidered our decision of March 31, 2014, but we deny the request for
hearing with respect to making any changes therein.

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REHEARING DENIED

ack

FOR PATENT OWNER:

THE LAW OFFICE OF KIRK D. WILLIAMS
3196 DAYTON ST
DENVER, CO 80238-2933
FOR THIRD-PARTY REQUESTERS:

OBLON, SPIVAK, MCCLELLAND
MAIER & NEUSTADT, L.L.P
1940 DUKE STREET
ALEXANDRIA, VA 22314