Ex Parte Desfontaines et alDownload PDFPatent Trial and Appeal BoardMar 28, 201411082429 (P.T.A.B. Mar. 28, 2014) 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. 11/082,429 03/17/2005 Thierry Desfontaines G-89 7215 7590 03/28/2014 ROLAND PLOTTEL ROCKFELLER CENTER STN. P.O. BOX 293 NEW YORK, NY 10185-0293 EXAMINER NGUYEN, NAM V ART UNIT PAPER NUMBER 2682 MAIL DATE DELIVERY MODE 03/28/2014 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 THIERRY DESFONTAINES, PHILIPPE RINCEL, and NATHALIE CAYE ____________ Appeal 2011-011122 Application 11/082,429 Technology Center 2600 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1, 2, 10-15, 17-21, 23, 26, 27, and 30-35. Br. 5; Ans. 2. Claims 3-9, 16, 22, 24, 25, 28, and 29 are canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-011122 Application 11/082,429 2 Illustrative Claim Claim 1 is illustrative of Appellants’ disclosed invention, and reads as follows: 1. A electronic electromagnetic communication device comprising a card (40) having: - means (i0) for receiving electromagnetic signals, - means (18, 20, 24) for processing the electromagnetic signals received, and - means (26) for rectifying and filtering the electromagnetic signals received in order to supply at two output terminals (A, B), a supply voltage (Vcc) to the processing means (18, 20, 24), - two surface contacts (36, 38) on a surface of the card and, - means (32, 34) for connecting said two output terminals (A, B) to the two contacts (36, 38), said device also comprises a card holder (PC) having - means for supporting an electrical power source (48, 70), and - means (56, 58, 80, 82, i00, 102, 104, 106, 132, 140) for connecting said electrical power source (48, 70) via said two surface contacts (36,38) to said output terminals (A and B) of the rectifying and filtering means (26). Appeal 2011-011122 Application 11/082,429 3 REJECTIONS1 The Examiner rejected claims 1, 2, 10, 12, 13, 17-20, 26, and 27 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent No. 6,173,899 B1 to Rozin and U.S. Patent No. 5,729,000 to Sugimoto. Ans. 3-6. The Examiner rejected claims 11 and 35 under § 103(a) as unpatentable over Rozin, Sugimoto, and U.S. Patent No. 5,465,401 to Thompson. Id. at 6-9. The Examiner rejected claims 14 and 15 under § 103(a) as unpatentable over Rozin, Sugimoto, and U.S. Patent No. 6,202,927 B1 to Bashan. Id. at 9. The Examiner rejected claims 21, 23, and 32-34 under § 103(a) as unpatentable over Rozin, Sugimoto, and U.S. Patent No. 6,016,954 to Abe. Id. at 10-13.2 The Examiner rejected claims 30 and 31 under § 103(a) as unpatentable over Rozin, Sugimoto, and U.S. Patent No. 5,473,145 to Wallerstorfer. Id. at 11-12. 1 The Examiner has withdrawn a rejection of claim 35 as unpatentable under 35 U.S.C. § 112, first paragraph. Ans. 13. 2 For this rejection, the Examiner separately addresses claims 21 and 23 (id. at 10-11) and claims 32-34 (id. at 12-13). Appeal 2011-011122 Application 11/082,429 4 OBVIOUSNESS REJECTION OF CLAIMS 1, 2, 10, 12, 13, 17-20, 26, AND 27 OVER ROZIN AND SUGIMOTO Claims 1, 18, and 27 Appellants present arguments under separate heading for claims 1, 18, and 27 together as a group. Br. 21-25. Therefore, we select claim 1 as representative for the grouping. Though all but one claim limitation thereof are recited in means-plus- function format, the specific arguments for patentability do not identify the claimed invention’s corresponding structure described by the Specification. See Noah Systems, Inc. v. Intuit, Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012) (Means-plus-function “language covers only the corresponding structure, material, or acts described in the specification and equivalents thereof.” (quotation marks and citation omitted)). Thus, because Appellants present none of the claimed invention’s corresponding structure in Appellants’ specific arguments for our consideration, our analysis (below) does not account for any such corresponding structure. Rather, our analysis accounts for only the claimed invention’s expressly recited features. In this decision, we have considered only those arguments actually made by Appellants. Arguments which Appellants could have made but did not make in the Brief have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). "It is not the function of [the U.S. Court of Appeals for the Federal Circuit] to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art." In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). Appellants’ arguments are directed to the claimed invention’s connecting of an RF card Appeal 2011-011122 Application 11/082,429 5 and external battery. Br. 21-25. Appellants argue that: (i) Rozin’s and Appellants’ inventions inductively power an RF card for inductive data transfer at a first frequency; (ii) Appellants’ card has contact terminals that connect with an external power source (a battery) for greater powering of the same inductive data transfer at the first frequency; and (iii) Rozin’s card has terminals that capacitively connect with an external power source (a card reader) for a capacitive data transfer at a second frequency. Id. Appellants further argue that the above differences (ii) and (iii) permit a greater data transfer distance for Appellants’ card, but not Rozin’s card, when connected to the external power source. Id. The arguments fail to present any claim limitations that restrictively embody the differences (ii) and (iii) alleged as distinguishing over Rozin’s teachings. That is, the arguments do not establish any claim limitations requiring an RF card that is inductively powered for inductive data transfer at a first frequency and contact-terminal powered for the same inductive data transfer at the first frequency. Representative claim 1 recites that the RF card includes unspecified structure for rectifying/filtering electromagnetic signals, surface contacts for connecting an electrical power source, and terminals for receiving power via the electromagnetic signals and electrical power source. Neither these nor any other claim 1 limitations expressly require the differences (ii) and (iii) alleged as distinguishing over Rozin’s teachings. And, neither these nor any other claim 1 limitations are shown by Appellants to implicitly require the differences (e.g., via inherency or means-plus-function language). For the foregoing reasons, Appellants have shown no error in the rejection of representative claim 1 and claims 18 and 27. Appeal 2011-011122 Application 11/082,429 6 Claims 13, 17, and 26 Appellants present arguments under separate heading for claims 13, 17, and 26 together as a group. Br. 26. We select claim 17 as the representative claim. Appellants argue: Rozin goes to some effort to avoid using Applicants’ external contact terminals and their connections. … … Rozin teaches away from Applicants’ pair of external contact terminals, introducing instead, buried capacitors in his cards. Id. The argument fails to show that Rozin discredits the claimed use of external contacts, as opposed to merely prefer the capacitive terminals. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away […] if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.”). For the foregoing reasons, Appellants have shown no error in the rejection of representative claim 13 and claims 17 and 26. Claims 2, 10, 12, 19, and 20 Appellants present arguments under separate heading for claims 2, 10, 12, 19, and 20 together, but do not present additional specific arguments for patentability. Br. 27. Accordingly, Appellants have shown no error in the rejection of claims 2, 10, 12, 19, and 20. Appeal 2011-011122 Application 11/082,429 7 OBVIOUSNESS REJECTION OF CLAIMS 11 AND 35 OVER ROZIN, SUGIMOTO, AND THOMPSON Appellants present arguments under separate heading for claims 11 and 35 as a group. Id. at 28. We select claim 35 as representative. Appellants argue: “Thomson [sic] … does not teach that the cards’ input power contact terminals are connectable to the telephone’s contacts which are the same as those used for recharging the telephone[.]” Id. The argument is not commensurate in scope with claim 35. Contrary to the argument, claim 35 does not require the same phone contacts to be used for both powering the card and recharging the phone. Appellants also argue: “[A]lthough Thomson has cards insertable into a mobile telephone, the preferred embodiments have a power supply on those cards. Applicants have no power source, no battery, on their cards. Applicants’ invention is directed to a batteryless card.” Id. The argument is not persuasive, for each of two reasons. First, contrary to the argument, claim 35 does not require a battery-free card. Second, the Examiner’s proposed modification of Rozin’s card, in view of Thompson, does not incorporate the battery of Thompson’s card. Ans. 8-9. For the foregoing reasons, Appellants have shown no error in the rejection of representative claim 35 and claim 11. OBVIOUSNESS REJECTION OF CLAIMS 14 AND 15 OVER ROZIN, SUGIMOTO, AND BASHAN Appellants present arguments under separate heading for claims 14 and 15, but do not present additional specific arguments for patentability. Br. 29. Accordingly, Appellants have shown no error in the rejection of claims 14 and 15. Appeal 2011-011122 Application 11/082,429 8 OBVIOUSNESS REJECTION OF CLAIMS 21, 23, AND 32-34 OVER ROZIN, SUGIMOTO, AND ABE Appellants present arguments under separate heading for claims 21, 23, and 32-34, but do not present additional specific arguments for patentability. Id. at 30. Rather, Appellants argue only: “Electrical switches are old. It is the location of such switches in Applicants’ structure and with the distinctions over the primary and secondary references that this claim is allowable.” Id. Such mere allegations of patentability are not arguments on the merits nor, consequently, evaluated by the Board. See supra p. 3 (addressing Appellants’ burden). For the foregoing reasons, Appellants have shown no error in the rejection of claims 21, 23, and 32-34. OBVIOUSNESS REJECTION OF CLAIMS 30 AND 31 OVER ROZIN, SUGIMOTO, AND WALLERSTORFER Appellants present arguments under separate heading for claims 30 and 31. Br. 31. We select claim 30 as representative. Appellants argue: “Applicants’ invention has no power source, no battery, on the card. Wallerstorfer has a power source, a battery, on its card.” Id. The argument is not persuasive, for each of two reasons. First, contrary to the argument, claim 30 does not require a battery-free card. Second, the Examiner’s proposed modification of Rozin’s card, in view of Wallerstorfer, does not incorporate the battery of Wallerstorfer’s card. Ans. 11. Appeal 2011-011122 Application 11/082,429 9 Appellants also argue: Wallerstorfer does not have a wrist watch. Although his “data carrier” may include a time piece or watch, it remains an oval shaped data carrier, and there is no teaching and no suggestion to have it worn on the wrist. Br. 31. The argument is not persuasive. Wallerstorfer’s Figure 11 embodiment houses the data carrier and watch within the same personal timepiece-type encasement 1, 12. Wallerstorfer col. 4, ll. 60-66. In other words, the embodiment is a data-carrying personal timepiece. Implementation of a personal timepiece’s feature/s within a wristwatch clearly constitutes “application of a known technique to a piece of prior art ready for the improvement.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In such cases, unless implementation is beyond the ordinary technical skill in the art, the application of the known feature to the similar prior art is obvious. Id. Appellants have not shown that ordinarily skilled artisans could not, at the time of Appellants’ invention, implement Wallerstorfer’s cited features within a wristwatch. Appellants merely present unsupported attorney opinion that such implementation would be prohibitively impractical. Such opinion is immaterial. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case[.]” (citations omitted)); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). For the foregoing reasons, Appellants have shown no error in the rejection of representative claim 30 and claim 31. Appeal 2011-011122 Application 11/082,429 10 DECISION For the foregoing reasons, the Examiner’s decision rejecting claims 1, 2, 10-15, 17-21, 23, 26, 27, and 30-35 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED msc Copy with citationCopy as parenthetical citation