Ex Parte Aldana et al

Patent Trial and Appeal Board

Sep 29, 2016

13474962 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/474,962 05/18/2012
85643 7590 10/03/2016
Guntin & Gust, PLC - BB DOCKET
117 S. Cook St.
No. 358
Barrington, IL 60010
FIRST NAMED INVENTOR
Leonardo ALDANA
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.
43751-US-PAT_l03-121 1998
EXAMINER
CHAKRABORTY,RAJARSHI
ART UNIT PAPER NUMBER
2648
NOTIFICATION DATE DELIVERY MODE
10/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@ggip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONARDO ALDANA, JOHN IV AN SCHARKOV, and
ANDREW DOUGLAS SMART1
Appeal2015-004243
Application 13/474,962
Technology Center 2600
Before KEVIN C. TROCK, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-23, which constitute all pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as RESEARCH IN MOTION
LIMITED. (App. Br. 1.)
Appeal2015-004243
Application 13/474,962
Introduction
Appellants state their disclosure relates "to wireless communications
systems and related methods." (Spec i-f 1.) Claim 1 is illustrative (emphasis
added):
1. A mobile wireless communications system comprising:
a mobile wireless communications device comprising
a portable housing,
a wireless transceiver carried by said portable
housing,
a processor carried by said portable housing and
coupled to said wireless transceiver, and
a near-field communication (NFC) device coupled
to said processor;
an NFC carrying case configured to carry and
communicate with said mobile wireless communications
device and comprising
a base panel configured to carry said mobile
• 1 • • ,..l • wlfeiess commumcat1ons uev1ce,
a removable cover panel coupled to said base panel
and configured to removably cover at least one side of
said mobile wireless communications device,
a plurality of pairs of discontinuous NFC circuit
segments carried by said removable cover panel, and
a plurality of switch assemblies each carried by
said removable cover panel, each switch assembly
configured to selectively couple a respective pair of
discontinuous NFC circuit segments to establish NFC
communication with said NFC device.
(App. Br. 13 (App'x A- Claims on Appeal).)
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Appeal2015-004243
Application 13/474,962
Rejections
Claims 1-3, 6-12, and 15-21 stand rejected under 35 U.S.C. § 103(a)
as obvious over Kough et al. (US 2010/0321255 Al; Dec. 23, 2010) and
Shimamoto et al. (US 2011/0109169 Al; May 12, 2011). (Final Act. 5-29.)
Claims 4, 5, 13, 14, 22, and 23 stand rejected as obvious over Kough,
Shimamoto, and Hall et al. (US 2013/0309964 Al; Nov. 21, 2013). (Final
Act. 29--43.)
ISSUES
Based on Appellants' arguments, the issues before us are whether: ( 1)
claim 12 would have been obvious over the combination of Kough and
Shimamoto (App. Br. 7-10); and (2) claim 53 would have been obvious over
the combination of Kough, Shimamoto, and Hall (App. Br. 10-11).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions and disagree with Appellants' conclusions. Except as noted
below, we adopt as our own: ( 1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 5--43) and
(2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief (Ans. 2-6). We concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
2 Appellants argue claims 2, 3, 6-12, and 15-21 together with claim 1; we
do not address these claims further except in the final disposition.
3 Appellants argue claims 4, 5, 13, 14, 22, and 23 together as a group; we
select claim 5 as representative; we do not address the remaining claims
further except in the final disposition.
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Appeal2015-004243
Application 13/474,962
In rejecting claim 1, the Examiner finds the housing 12 of the portable
mobile device 10 in Figure 1 of Kough teaches both the "NFC carrying
case" and the "portable housing" of the "mobile wireless communications
device" as recited. (Final Act. 5-7.) Appellants argue "[t]he Examiner is
improperly using the same structure to disclose two separate claim elements:
the portable housing of the mobile wireless communications device and the
claimed NFC carrying case" and that "[t]he Examiner cannot use the same
structure to disclose separate claim elements." (Id. at 9 .)
Appellants do not persuade us of Examiner error. It is settled law
that, absent a requirement to the contrary in the specification or the claims, a
single structure may satisfy two different claim limitations. See, e.g., In re
Kelley, 305 F.2d 909, 915-16 (1962) (two claim terms may read on a single
physical structure that satisfies the limitations of both terms); Intellectual
Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d
1308, 1320 n. 9 (Fed. Cir. 2003) (citing In re Kelly). Appellants point to
nothing in the Specification or Claims that requires the recited "portable
housing" and "NFC carrying case" structures to be separate and distinct. To
add this requirement would inappropriately import a limitation from the
Specification into the claim.
Appellants also argue the Examiner errs in finding motivation to
combine Shimamoto with Kough to achieve claim 1. (Id. at 9-10.)
Appellants argue that "[a]dding the RFID loop antennas of Shimamoto et al.
will not reduce the size of the device in Kough et al., but instead, will add to
the size" and that "[t Jo combine the loop antennas of Shimamoto et al. into
Kough et al. would result in a complete disregard for the slot antenna in the
housing of Kough et al." (Id. at 10.) We find this unpersuasive in view of
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Appeal2015-004243
Application 13/474,962
the lack of evidence contravening the Examiner's findings that the
combination of Kough and Shimamoto "does not necessarily increase the
size of the device" and "a wireless device can incorporate slot antennas for
high frequency communications and loop antennas for lower frequency
communications. (Ans. 4.)
Regarding claim 5,4 Appellants argue "the Examiner mischaracterized
Hall et al. as it fails to disclose each NFC controller of a plurality thereof
having a different function associated therewith, as recited." (App. Br. 11.)
Appellants further argue the combination of Hall with Kough and
Shimamoto is improper because one of ordinary skill "would not tum to an
NFC system that determines a function based upon a gesture with the RFID
tag system for a commodity shelf or showcase as in Shimamoto et al. and
further with the conductive antenna formed in a housing of an electronic
device as in Kough." (App. Br. 11.)
Appellants do not persuade us the Examiner errs in finding that Hall's
individual antenna controllers, each of which controls a different antenna,
has a different function as claimed. (Ans. 5.) Appellants also do not
persuade us of error in the Examiner's findings regarding why it was
obvious to combine Kough, Shimamoto, and Hall. (Id. at 4-5). We note
"[t ]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art." In re
4 "The mobile wireless communications system of Claim 4, wherein each
NFC controller has a different function associated therewith." (App. Br. 14
(App'x A-Claims on Appeal).)
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Appeal2015-004243
Application 13/474,962
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Appellants
have not provided persuasive evidence to show why combining features
from Hall, Kough, and Shimamoto would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'!
Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)).
We accordingly sustain the Examiner's rejections of claims 1 and 5.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1-23. No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2014).
AFFIRMED
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