Ex Parte Borret et al

Patent Trial and Appeal Board

May 17, 2016

11886530 (P.T.A.B. May. 17, 2016)

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.
11/886,530 05/30/2008 Marc Borret 2875.5200002 5587
49579 7590 05/18/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
MA, KAM WAN
ART UNIT PAPER NUMBER
2686
MAIL DATE DELIVERY MODE
05/18/2016 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
____________________

Ex parte MARC BORRET, COLIN BROOKS, ANDREW HILLS, and
HEIKKI HUOMO1
____________________

Appeal 2014-004645
Application 11/886,530
Technology Center 2600
____________________

Before ROBERT E. NAPPI, JAMES W. DEJMEK, and
GARTH D. BAER, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 27–33, 35, 36, and 38–56. Claims 1–26, 34, and 37 have been
canceled. App. Br. 17–19. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Broadcom Innovision Ltd. as the real party in interest.
App. Br. 3.
Appeal 2014-004645
Application 11/886,530

2
STATEMENT OF THE CASE
Introduction
Appellants’ invention is directed to a wireless near-field
communications device comprising a first and second near-field inductive
coupling member (i.e., antenna). Spec. 5. “Each of the first and second
coupling members are arranged to have a different coupling configuration
from each other.” Spec. 5. According to the Specification, different
coupling members may be designed to operate for different protocols and
formats. Spec. 6.
Claim 27 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
27. A wireless near-field communications device, comprising:
a first near-field inductive coupling member configured to use a
first protocol;
a second near-field inductive coupling member configured to
use a second protocol, each of said first and second coupling members
being arranged to have a different coupling configuration from each
other; and
a controller configured to generate control signals that
configure the first near-field inductive coupling member and the
second near-field inductive coupling member to be operable at
different times, wherein
said first coupling member is configured to communicate only
in compliance with a standard associated with the first protocol and
the second coupling member is configured to communicate only
application data associated with the second protocol and with an
application used by the wireless near-field communications device.

Appeal 2014-004645
Application 11/886,530

3
The Examiner’s Rejections2
1. Claims 27–33, 35, 36, 38–48, 50, and 51 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Klinefelter et al. (US
2004/0136768 A1; July 15, 2004) (“Klinefelter”) and Ryan et al. (US
2005/0109841 A1; May 26, 2005) (“Ryan”). Final Act. 3–8.
2. Claim 49 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klinefelter, Ryan, and Huomo (US 2004/0263319 A1;
Dec. 30, 2004). Final Act. 8–12.
3. Claims 52, 53, 55, and 56 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Klinefelter, Ryan, Strack et al. (US
5,461,320; Oct. 24, 1995) (“Strack”), and Eidson et al. (US 6,681,101 B1;
Jan. 20, 2004) (“Eidson”). Final Act. 12–14.
4. Claim 54 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klinefelter, Ryan, and Johnson (US 7,038,470 B1; May 2,
2006). Final Act. 15.

Issue on Appeal
Did the Examiner err in finding the combination of Klinefelter and
Ryan teaches or suggests “a controller configured to generate control signals
that configure the first near-field inductive coupling member and the second

2 We note that the Examiner had rejected claims 53 and 56 under 35 U.S.C.
§ 112, second paragraph as being indefinite. Final Act. 3. Appellants
amended the claims as suggested by the Examiner on March 4, 2013. Those
amendments were entered by the Examiner on March 12, 2013. Adv. Act. 1.
Although the Examiner did not formally withdraw the § 112 rejection, we
treat is as having been withdrawn.
Appeal 2014-004645
Application 11/886,530

4
near-field inductive coupling member to be operable at different times,” as
recited in claim 27?

ANALYSIS3
In rejecting claim 27, the Examiner finds the combination of
Klinefelter and Ryan do not teach the disputed limitation, but that “there is
no criticality to operate the first and second coupling members at different
times.” Final Act. 5. Further, the Examiner explains that “[o]perating the
first and second coupling members at different times is not an inventive
concept, rather based on subject requirements such as design specifications
and user discretions.” Id. The Examiner concludes, therefore, it would have
been obvious to an ordinarily-skilled artisan to modify the combined system
of Klinefelter and Ryan such that the first and second coupling members are
configured to operate at different times. Id.
Additionally, in the Advisory Action mailed March 12, 2013 (“Adv.
Act.”), the Examiner explains that Appellants “fail[] to disclose that
operating the coupling members at different times solves any stated problem
or is for any particular purpose.” Adv. Act. 2. Further, the Examiner notes
“operating coupling members at different times to reduce interference is well
known in the art of wireless communication” and, accordingly, it would
have been obvious to operate the coupling members at different times to
reduce interference. Id.

3 Throughout this Decision, we have considered the Appeal Brief filed
September 10, 2013 (“App. Br.”); the Reply Brief filed February 28, 2014
(“Reply Br.”); the Examiner’s Answer mailed December 30, 2013 (“Ans.”);
and the Final Office Action (“Final Act.”) mailed December 4, 2012, from
which this Appeal is taken.
Appeal 2014-004645
Application 11/886,530

5
Appellants contend the Examiner erred in determining there is no
criticality to operating the coupling members at different times. App.
Br. 10–12. Appellants direct our attention to pages 5–6 and 12–14 of the
Specification as providing support for a purpose for operating the first and
second coupling members at different times—namely “achieving poor
coupling, and preferably no coupling at all, between the first coupling
member and the second coupling member.” App. Br. 10 (citing Spec. 5–6).
We do not find this passage of the Specification, or Appellants’
arguments, persuasive of Examiner error. Pages 5 and 6 of the Specification
relate to the coupling of a coupling member and a “[r]espective
complementary coupling member” (e.g., the coupling member of a card and
the coupling member (complementary) of a card reader). Spec. 6. Further,
as identified by Appellants, the Specification recites:
Respective complementary coupling members may be arranged
to have near-field orientations or shapes which match those of
the first and second coupling members, thereby providing good
coupling between matched members and poor coupling,
preferably no coupling at all, between un-matched members.
App. Br. 11 (citing Spec. 6) (emphases omitted). Thus, the section of the
Specification that discusses “poor coupling, preferably no coupling at all”
refers to coupling between matched (coupling) members and un-matched
members, not to the degree of coupling between the first and second
coupling members. Additionally, we note there is no discussion in this
section of the Specification regarding the operation of the first and second
coupling members at different times.
Appellants identify at least two instances in the Specification
regarding operating the coupling members (i.e., antennas) at different times.
App. Br. 11–12 (citing Spec. 12–13 (“[t]ypically the antenna 6 and antenna
Appeal 2014-004645
Application 11/886,530

6
11 are operable as different times . . .”), Spec. 14 (“[t]he antennas may
operate at different times . . .”)) (emphases altered). Appellants conclude,
therefore, “the first coupling member is operable (and may operate) at
different times with respect to the second coupling member to achieve the
exemplary purpose of providing poor coupling, and preferably no coupling
at all, between the first coupling member and the second coupling member.”
App. Br. 12.
Appellants’ conclusion, however, attempts to combine disjointed
portions from the Specification. As discussed supra, the passage related to
poor, or preferably no coupling concerned coupling between un-matched
members. The other identified portions of the Specification merely indicate
that the first and second coupling members are operable at different times.
See Spec. 12–14. Contrary to Appellants’ assertions, this is not for the
purpose of achieving poor coupling between the two coupling members.
Rather, reduced coupling between the first and second members is achieved
by the particular arrangement of the members. See Spec. 6 (“the first
coupling member may be arranged to generate a near-field having an
orientation transverse, orthogonal or opposed to a near-field generated by the
second coupling member”). Thus, we agree with the Examiner that
Appellants do not disclose operating the coupling members at different times
is for the purpose of achieving poor coupling. Ans. 3–4.
Appellants additionally argue the Examiner failed to provide a
convincing line of reasoning to support the finding that “[o]perating the first
and second coupling members at different times is not an inventive concept,
rather based on subject requirements such as design specifications and user
discretions.” App. Br. 13 (emphasis omitted).
Appeal 2014-004645
Application 11/886,530

7
When determining whether a rejection based on design choice is
appropriate, the Examiner must review the Specification and ascertain if the
limitation in question is disclosed as serving any advantage or particular
purpose, or whether it solves a stated problem. See In re Kuhle, 526 F.2d
553 (CCPA 1975). The Examiner also should explain the reasoning used to
determine that the prior art would have performed equally as well as the
claimed invention. These two steps help present a “convincing line of
reasoning.” Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985).
Here, we find the Examiner has set forth a convincing line of
reasoning. As discussed supra, the Examiner finds, and we agree, the
Specification fails to disclose the limitation in question serves any advantage
or particular purpose. Ans. 2–4.
Second, the Examiner has adequately explained how the prior art
would have performed equally as well as Appellants’ claimed invention.
Ans. 4. Indeed, the Examiner finds Klinefelter teaches or reasonably
suggests the coupling members in Klinefelter are being used at different
times. Ans. 4 (citing Klinefelter ¶¶ 23, 34–37).
Contrary to Appellants’ assertions (Reply Br. 5–7), we are not
persuaded of Examiner error. Klinefelter teaches a device with two coupling
members—one to grant access to users of the printer, and another to monitor
the supply (e.g., toner) of the printer. Ans.4; Klinefelter ¶¶ 23, 34–37,
Abstract. As the Examiner explains, users’ smart cards (i.e., access rights)
are read prior to using the printer, whereas the coupling member associated
with the supply is active while the printer is in use. Ans. 4. Thus, we agree
with the Examiner that Klinefelter teaches or reasonably suggests operating
the coupling members at different times.
Appeal 2014-004645
Application 11/886,530

8
Appellants argue, for the first time in the Reply Brief, the Examiner
relies on impermissible hindsight in concluding Appellants’ claim is
obvious. Reply Br. 7–8. However, Appellants do not provide persuasive
evidence or argument to support their position, rather nakedly asserting “it is
only when the specification of the present Application is used as a blueprint
that a person of ordinary skill in the art would be motivated to use the
teachings of Klinefelter in the manner set forth in the Answer.” Reply Br. 7.
We are unpersuaded of Examiner error at least because the Examiner is
relying on the teaching and suggestions of Klinefelter—particularly as to
teaching the coupling members being used at different times (i.e., to gain
access to use the printer and then during use of the printer).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 27 and, for
similar reasons the rejection of independent claims 36 and 49, which contain
similar limitations and which were not argued separately. App. Br. 15.
Further, we sustain the rejections of dependent claims 28–33, 35, 38–48, and
50–56, which were not argued separately. App. Br. 15.

DECISION
We affirm the Examiner’s decision to reject claims 27–33, 35, 36, and
38–56.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED