Ex Parte 7810729 et alDownload PDFPatent Trial and Appeal BoardJul 7, 201595001618 (P.T.A.B. Jul. 7, 2015) Copy Citation 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 Appeal 2013-009801 Application 95/001,618 Patent 7,810,729 2 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 Appeal 2013-009801 Application 95/001,618 Patent 7,810,729 3 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. Appeal 2013-009801 Application 95/001,618 Patent 7,810,729 4 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)]. Appeal 2013-009801 Application 95/001,618 Patent 7,810,729 5 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 Appeal 2013-009801 Application 95/001,618 Patent 7,810,729 6 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 Appeal 2013-009801 Application 95/001,618 Patent 7,810,729 7 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 Appeal 2013-009801 Application 95/001,618 Patent 7,810,729 8 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 Appeal 2013-009801 Application 95/001,618 Patent 7,810,729 9 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. Appeal 2013-009801 Application 95/001,618 Patent 7,810,729 10 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 Copy with citationCopy as parenthetical citation