Ex Parte Beardsmore et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201812982799 (P.T.A.B. Feb. 28, 2018) 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. 12/982,799 12/30/2010 Anthony P. Beardsmore RSW920100158US1 (683) 9075 46320 7590 CRGO LAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, EL 33434 EXAMINER TROTTER, SCOTT S ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 03/02/2018 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@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTHONY P. BEARDSMORE, OLIVER FENTON, and JONATHAN LEVELL Appeal 2016-007840 Application 12/982,799 Technology Center 3600 Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and MATTHEW J. McNEILL, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—19. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants’ invention manages power distribution in a wireless environment. In one aspect, power is delivered wirelessly to a device for (1) a limited duration until a device is authenticated, and (2) a lease period after authentication. See generally Abstract; Spec, 19—20. Claim 1 is illustrative: 1. A method for managing power distribution by a wireless power Appeal 2016-007840 Application 12/982,799 distribution base station, comprising: receiving a request from a device to connect to a wireless power distribution base station; determining whether a low battery condition exists for the device and also delivering power wirelessly for a limited duration to the device upon determining that the low battery condition exists for the device until the device is authenticated; authenticating the device; determining a lease period during which time power is to be delivered wirelessly to the device in response to authenticating the device; delivering power wirelessly from the wireless power distribution base station to the device for the duration of the lease period, but subsequent to the lease period, discontinuing delivery of power wirelessly to the device, wherein delivering power to the device is discontinued before expiration of the lease period upon determining one of a battery of the device reaches a full charge and the device disconnects from the wireless power distribution base station. THE REJECTIONS1 The Examiner rejected claims 6—10 and 17 under 35U.S.C. § 101 as directed to non-statutory subject matter. Ans. 3^4.2 1 Because the Examiner withdrew rejections of (1) claims 1—19 under § 112; and (2) claims 6—15 and 17—19 under § 101 as directed to an abstract idea (see Ans. 34), those grounds of rejection are not before us. 2 Throughout this opinion, we refer to (1) the Appeal Brief filed April 1, 2015 (“App. Br.”); (2) the Examiner’s Answer mailed June 17, 2016 (“Ans.”); and (3) the Reply Brief filed August 17, 2016 (“Reply Br.”). 2 Appeal 2016-007840 Application 12/982,799 The Examiner rejected claims 1—19 under 35 U.S.C. § 103 as unpatentable over Kim (US 2009/0156268 Al; June 18, 2009) and Gray (US 2011/0004549 Al; Jan. 6, 2011). Ans. A-34. THE § 101 REJECTION The Examiner concludes that independent claim 6 is ineligible under §101 because the recited computer readable storage medium includes transitory signals. Ans. 3—4, 34—35. Appellants argue that the recited computer readable storage media is statutory because it is distinguished from computer readable signal media in the Specification. App. Br. 12; Reply Br. 2—7. ISSUE Has the Examiner erred in rejecting claim 9 under § 101 by finding that the recited computer readable storage media includes non-statutory signals? ANALYSIS We will not sustain the Examiner’s § 101 rejection of claim 6 which recites, in pertinent part, a computer readable storage medium. Signals are patent-ineligible under § 101. In reNuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). According to U.S. Patent & Trademark Office (USPTO) guidelines, a claim whose broadest reasonable interpretation covers both statutory and non-statutory embodiments is directed to non- statutory subject matter and is, therefore, ineligible under § 101. Manual of Patent Examining Procedure (MPEP) § 2106.03(11) (9th ed. Rev. 3 Appeal 2016-007840 Application 12/982,799 08.2017, Jan. 2018). Accord Mentor Graphics v. EVE-USA, Inc., 851 F.3d 1275, 1294—95 (Fed. Cir. 2017) (acknowledging with approval this guidance from an earlier edition of the MPEP, and concluding that claims to a machine-readable medium were non-statutory because they encompassed both statutory random-access memory and non-statutory carrier waves). Moreover, an expanded panel of this Board has held that a recited machine- readable storage medium was ineligible under § 101 because it encompassed transitory media. See Ex parte Mewherter, 107USPQ2d 1857, 1862 (PTAB 2013) (precedential). But unlike the Specifications in Mentor Graphics and Mewherter, the Specification in the present appeal clearly and unambiguously distinguishes computer readable storage media from computer readable signal media in paragraphs 25 and 26, albeit with permissive, non-limiting language. That paragraph 26 states explicitly that a computer readable storage medium is not a computer readable signal medium only further underscores this distinction. Given this bright line of demarcation, we agree with Appellants (App. Br. 12; Reply Br. 2—7) that claim 6 is limited to non-transitory media, namely computer readable storage media, when interpreted in light of the Specification. Therefore, we are persuaded that the Examiner erred in rejecting claims 6—10 and 17 under § 101. THE OBVIOUSNESS REJECTION Regarding independent claim 1, the Examiner finds that Kim discloses, among other things, determining whether a low battery condition exists for a device, and, if so, delivering power wirelessly for a limited 4 Appeal 2016-007840 Application 12/982,799 duration until the device is authenticated. Ans. 4—7. According to the Examiner, it would have been obvious that Kim’s determining a unit’s recharge time includes recharging to authenticate the unit. Ans. 6. Although the Examiner acknowledges that Kim does not teach a subscription or lease explicitly, the Examiner cites Gray for teaching this feature in concluding that the claim would have been obvious. Ans. 7—8. Appellants argue that the cited prior art does not teach or suggest determining whether a low battery condition exists for a device, and, if so, delivering power wirelessly for a limited duration until the device is authenticated. App. Br. 13—22; Reply Br. 7—12. Although Appellants acknowledge that Kim recharges a device wirelessly responsive to a low- power condition, Appellants emphasize that this recharging is not for the recited limited duration, namely until the device is authenticated as claimed. Reply Br. 8—9. ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that Kim and Gray collectively would have taught or suggested determining whether a low battery condition exists for a device, and, if so, delivering power wirelessly for a limited duration until the device is authenticated? ANALYSIS A key aspect of the claimed invention is that power is delivered to a device in two distinct time periods: (1) a “limited duration” during authentication, and (2) a “lease period” after authentication. It is the first time period, namely the “limited duration,” on which this dispute is 5 Appeal 2016-007840 Application 12/982,799 centered, and, specifically, whether Kim teaches or suggests applying power to a device for a limited duration during authentication, that is, until the device is authenticated. As paragraph 19 of the Specification explains, a device’s low-battery condition can inhibit authentication. Therefore, power is delivered to the device temporarily during authentication to allow authentication to proceed. Spec. 119. This temporary power delivery is, therefore, essential to enable authentication to occur in the first instance when a device’s battery is low; otherwise, authentication may never complete in that condition. See id. Once authenticated, however, power is again delivered to the device for a “lease period.” Id. 120. Given these distinct power-delivery time periods, we find the Examiner’s reliance on Kim for teaching the first time period, namely the “limited duration,” problematic on this record. To be sure, Kim’s system wirelessly recharges a mobile terminal’s battery when the battery is low. Kim 11 115, 149-56; Fig. 9 (steps S31, S37-S40). But to say that it would have been obvious to provide sufficient power via this recharge to enable the device to authenticate automatically before it is recharged completely as the Examiner surmises (Ans. 6, 35) is, at best, speculative and unsubstantiated on this record. Accord Reply Br. 9 (noting that the Examiner did not prove this allegation). There is simply nothing in Kim that ties this recharging process to authentication, let alone recharging until a device is authenticated to ensure authentication completes properly— a key aspect of the claimed invention. To be sure, Kim’s recharge time is not based solely on recharge level; rather, recharging can also start at some unspecified “desired time.” Kim 6 Appeal 2016-007840 Application 12/982,799 1157. Despite this temporal flexibility, we cannot say—nor has the Examiner shown—that this “desired time” occurs during authentication, namely, until the device is authenticated, much less occurs again for a lease period after authentication as claimed. Given Kim’s silence in this regard, to the extent that the Examiner concludes that it would have been obvious to select recharge times both during and after authentication in the manner claimed (see Ans. 6, 35) is unsubstantiated and is the product of impermissible hindsight reconstruction. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious . . . .”). Nor has the Examiner shown that Gray cures these deficiencies. Therefore, we are persuaded that the Examiner erred in rejecting (1) independent claim 1; (2) independent claims 6 and 11 that recite commensurate limitations; and (3) the dependent claims for similar reasons. CONCLUSION The Examiner erred in rejecting claims 1—19 under §§101 and 103. DECISION We reverse the Examiner’s decision to reject claims 1—19. REVERSED 7 Copy with citationCopy as parenthetical citation