Ex Parte Ewen et al

Patent Trial and Appeal Board

Nov 14, 2017

13565397 (P.T.A.B. Nov. 14, 2017)

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.
13/565,397 08/02/2012 John E. Ewen III SEN-P-12-002 9506
58898 7590 11/16/2017
Lempia Summerfield Katz LLC
20 South Clark
Suite 600
CHICAGO, IL 60603
EXAMINER
BUGG, GEORGE A
ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
docket-us @ lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk @ firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. EWEN III and SEAN P. BEHAN
Appeal 2017-004444
Application 13/565,397
Technology Center 2600
Before ROBERT E. NAPPI, DAVID M. KOHUT, and LYNNE E. PETTIGREW,
Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Appellants2 seek review under 35 U.S.C. § 134(a) of the Examiner’s
rejection of claims 1, 3—5, 7, 8, 10, 13, 15—17, and 19.3 We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision makes reference to Appellants’ Appeal Brief (“Br.,” filed February
4, 2016), and the Examiner’s Answer (“Ans.,” mailed November 7, 2016) and
Final Office Action (“Final Act.,” mailed September 11, 2015).
2 According to Appellants, the Real Party in Interest is Sennco Solutions, Inc. Br.
2.
3 Claims 2, 6, 9, 11, 12, 14, and 18 were cancelled previously. Br. 57—62.
Appeal 2017-004444
Application 13/565,397
INVENTION
Appellants’ invention is directed to a theft-deterrence apparatus. Spec. 1.
Claims 1,7, 10, 13, and 19 are the independent claims on appeal. An
understanding of the invention can be derived from illustrative claim 19.
19. An apparatus for securing an electronic device having an
alarm wherein the alarm is triggered indicative of
disconnection of the electronic device, the apparatus
comprising:
a cable having a length defined between a first end and a
second end wherein the second end is positioned opposite to
the first end wherein the first end of the cable has a first plug
wherein the second end of the cable has a second plug
wherein the electronic device has an input port that receives
the second plug of the cable and further wherein only the
cable is connected to the electronic device;
a sensor unit having an electrical port that receives the first
plug of the cable wherein the sensor unit has a capacitive
sensing circuit that detects connection of the first plug of the
cable to the sensor unit and connection of the second plug of
the cable to the electronic device wherein the sensor unit
receives power wherein the sensor unit transmits power to
the electronic device through the cable;
an alarm port associated with the sensor unit wherein the
alarm port is accessed through an aperture; and
a key that disarms the alarm upon insertion of the key
through the aperture of the alarm port.
Br. 57 (Claims Appendix).
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Appeal 2017-004444
Application 13/565,397
Rand et al.
Kuo et al.
Lytell
Marszalek et al.
Groth et al.
REFERENCES
US 6,459,374 B1
US 2007/0135157 Al
US 2008/0143892 Al
US 2010/0301998 Al
US 2011/0084689 Al
Oct. 1,2002
June 14, 2007
June 19, 2008
Dec. 2, 2010
Apr. 14, 2011
REJECTIONS
Claim 19 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Marszalek and Rand. Final Act. 3—5.
Claims 1, 3, 4, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Marszalek, Rand, and Lytell. Final Act. 5—8.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Marszalek, Rand, Lytell, and Kuo. Final Act. 8—9.
Claims 10, 13, and 15—17 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Marszalek, Rand, Lytell, and Groth. Final
Act. 9-11.
ANALYSIS
Claim 19 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Marszalek and Rand.
Independent claim 19 recites, “a cable . . . wherein the first end of the cable
has a first plug . . . ; a sensor unit having an electrical port that receives the first
plug of the cable wherein the sensor unit has a capacitive sensing circuit that
detects connection of the first plug of the cable to the sensor . . . wherein the sensor
unit transmits power to the electronic device through the cable.”
The Examiner finds that Marszalek teaches an alarm apparatus with an alarm
that is triggered when an electronic device, connected to the alarm apparatus via a
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Application 13/565,397
tethering cable and a charging cable with capacitive sensing, is disconnected.
Final Act. 3^4; Ans. 2. The Examiner finds that Marszalek does not teach that
only one cable is connected to the electronic device. Final Act. 4. However, the
Examiner finds that Rand teaches a security system which uses a cable that is
connected directly to a device to provide power and theft detection, via
disconnection or damage to the cable. Final Act. 4; Ans. 2. Thus, the Examiner
concludes that it would be obvious to one of ordinary skill in the art to use Rand’s
direct cable connection with the alarm apparatus of Marszalek in order provide an
immediate tampering alert and to simplify the system. Final Act. 5; Ans. 2.
Appellants contend the combination of Marszalek and Rand fails to teach the
disputed limitation. Br. 17-18. Specifically, Appellants argue that Marszalek
teaches a two cable system, rather than a one cable system, as required by the
claim. Br. 17. Additionally, Appellants argue that Rand’s cable uses an electro­
mechanical switch (EMS) rather than capacitive sensing to trigger an alarm. Br.
17. Thus, Appellants contend that the combination would render the apparatus
inoperable for its intended purpose. Br. 18.
These arguments are not persuasive because Appellants mischaracterize the
Examiner’s rejection. The Examiner relies on Marszalek to teach the capacitive
alarm system. Final Act. 3-4; Ans. 2. The Examiner admits that Marszalek’s
system requires two cables. Final Act. 3; Ans. 2. However, the Examiner finds
that the alarm system of Rand teaches using only one cable, directly connected to
the device, to both charge the phone and provide theft detection. Final Act. 4; Ans.
2. Therefore, the Examiner concludes that it would have been obvious to use the
one cable system of Rand with the capacitive alarm system of Marszalek to
provide power and theft detection “in order to simplify the system for manufacture
and installation.” Final Act. 3^4; Ans. 2.
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Application 13/565,397
Appellants argue the Examiner improperly relies on the cable in the alarm
system of Rand which uses a USB connector with a light emitting diode (LED)
controlled by an electro-mechanical switch to activate the alarm to teach the single
cable with a capacitive sensing circuit as required by claim 19. Br. 17—18. This
argument is not persuasive. The Examiner does not propose bodily incorporation
of the LED controlled alarm system of Rand into the alarm system of Marszalek.
Instead, as appropriate, the Examiner relies on what the combined references
would have taught to those skilled in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Additionally, Appellants argue that a person of ordinary skill in the art
would never have been motivated to combine Marszalek and Rand. Br. 18.
Appellants argue that the Examiner “piece-mealed” the references together and this
hindsight reconstruction is impermissible. Br. 18—19. We disagree with
Appellants.
Appellants’ arguments are unpersuasive because they are conclusory
arguments and do not address the Examiner’s findings and reasoning for
combining the references. The Examiner’s articulated reasoning to combine
Marszalek and Rand is supported by a rational underpinning. See Final Act. 3—5;
Ans. 2. “The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” KSR at
416.
For all of the reasons indicated above, we sustain the Examiner’s rejection of
claim 19.
Claims 1, 3, 4, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Marszalek, Rand, and Lytell.
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Claims 1 and 7
Independent claim 1 is similar to independent claim 19 and further recites,
“a cable provided by the original equipment manufacturer.” Appellants present
similar arguments for independent claims 1 and 7. Br. 20-27 and 29-36.
The Examiner finds that the combination of Marszalek, Rand, and Lytell
teaches or suggests a cable provided by an original equipment manufacturer
(OEM) for power and any other functions, as claimed. Final Act. 5—7; Ans. 3. The
Examiner relies on Lytell to support the finding that using an OEM is common
practice in order to prevent damage to the device based on manufacturer warranty,
licensing, and support. Final Act. 7; Ans. 3.
Appellants argue that the Examiner added Lytell from an unrelated field of
endeavor to the combination of Marszalek and Rand. Br. 23—24. The Examiner
finds that Marszalek and Lytell are in the field of communications, like the present
invention. Ans. 3. Therefore, Appellants’ argument is unpersuasive because it
does not address the Examiner’s specific finding that the references are in the same
field of endeavor. Geisler, 116 F.3d at 1470. Even so, the Examiner is merely
looking to the Lytell reference for the teaching of using an OEM cable for an
electronic device. Final Act. 7; Ans. 3.
Next, Appellants argue the combination of Marszalek, Rand, and Lytell fails
to teach or suggest a cable provided by an OEM and that the Examiner’s
motivation to combine is “spurious at best” and “entirely unrelated to the
limitations of Claim 1.” Br. 24. Appellants’ acknowledge the Examiner’s
motivation to combine the references but contend that there is no rationale for the
proposed motivation. Br. 24. We disagree with Appellants.
A legal conclusion of obviousness must be supported by “some articulated
reasoning with some rational underpinning.” KSR at 418. Specifically, the
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Application 13/565,397
Examiner finds that one of ordinary skill in the art would be motivated to combine
Marszalek, Rand, and Lytell to teach a single cable alarm system using an OEM
cable in order to use the manufacturer warranty, licensing, and product support.
Final Act. 5—7. Appellants fail to address the Examiner’s rationale or provide
sufficient evidence to explain why it is in error.
Further, we find that the manufacturer of the product does not establish the
patentability of the product. “[I]t is the patentability of the product claimed and
not of the recited process steps which must be established.” In re Brown, 459 F.2d
531, 535 (C.C.P.A. 1972). Appellants state that “the OEM cable may be
manufactured and/or provided by the manufacturer of the electronic device 40, a
third-party manufacturer, and/or the manufacturer of the sensor 10 and/or the
dongle 20.” Spec. 14. Because the final product cable will function the same no
matter what process steps a manufacturer uses to make the product, as noted in the
Specification, Appellants are implicitly claiming the product-by-process by
requiring an OEM cable. We find requiring the cable to be an OEM cable to be an
unpatentable distinction because the cable is the same as a cable from the prior art.
In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985) (If the product in a product-by­
process claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior art product was made by a different process.).
Appellants also argue that the combination of Marszalek and Rand would
render the apparatus inoperable. Br. 25. Appellants’ argument is unpersuasive
because it is mere attorney argument and does not address the Examiner’s findings
and reasoning for combining. Geisler, 116 F.3d at 1470.
Appellants argue that a person of ordinary skill in the art would never have
been motivated to combine Marszalek, Rand, and Lytell. Br. 26. Appellants’
argument is unpersuasive, because it is conclusory and does not address the
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Examiner’s findings and reasoning for combining. See Final Act. 5—7. The
Examiner provided articulated reasoning to combine Marszalek, Rand, and Lytell,
supporting the combination with a rational underpinning. See Final Act. 5—7; Ans.
3; KSR at 416, 418. Appellants argue that the Examiner “piece-mealed” the
references together where hindsight reconstruction is impermissible. Br. 26—27.
However, Appellants’ arguments are conclusory and fail to explain why the
Examiner’s proposed combination, including articulated reasoning having rational
underpinnings, is based on impermissible hindsight. See Final Act. 5—7; KSR at
416. Accordingly, this argument is unpersuasive.
Appellants’ arguments to claim 1 are unpersuasive and fail to show how the
Examiner is in error. Appellants make the same arguments with regard to similar
independent claim 7. Br. 29-36; see Final Act. 8; Ans. 3. Thus, for the reasons
indicated above, we sustain the Examiner’s rejection of claims 1 and 7.
Claims 3, 4, and 8
Regarding dependent claims 3, 4 and 8, Appellants argue the Examiner’s
rejection of each claim is in error without explaining why the rejection is in error.
Br. 27—29 and 36—37. For each of the dependent claims 3, 4, and 8, in their
separate sections in the brief, Appellants summarize the dependency of each claim
in the first paragraph, summarize the Examiner’s rejection in the second paragraph,
and make the conclusion that the references taken singly or in combination fail to
teach or suggest the limitations required by each claim in the final and third
paragraph. Br. 27—29 and 36—37. The Examiner made specific fact findings with
respect to each of the argued claims. Final Act. 7—8; Ans. 3^4. Appellants do not
particularly show error in the Examiner’s rejection and such conclusory arguments
are, therefore, unpersuasive. See 37 C.F.R. § 41.37(c)(l)(vii) (noting that an
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argument that merely points out what a claim recites is unpersuasive). Thus, we
sustain the Examiner’s rejection of claims 3, 4, and 8.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination
of Marszalek, Rand, Lytell, and Kuo.
Claim 5 depends from independent claim 1 and further recites, “wherein the
first plug of the cable is a universal serial bus connector.”
The Examiner relies on Kuo to teach a cable that transmits data with a
universal serial bus (USB) connector for the data connection and, therefore, finds
the combination of Marszalek, Rand, Lytell, and Kuo teaches or suggests a USB
connector, as claimed. Final Act. 8—9; Ans. 4. Further, the Examiner finds that a
USB connector would be a design choice for data connections. Final Act. 9.
Appellants argue the combination of Marszalek, Rand, Lytell, and Kuo fails
to teach or suggest a cable where the first plug of the cable is a USB connector.
Br. 38—39. Specifically, Appellants argue that while Marszalek teaches a charging
cable with a USB connector, the cable connects to the head unit and not directly to
the electronic device. Br. 38—39. Appellants further argue that the Examiner
merely added Kuo as another reference to the combination of Marszalek, Rand,
and Lytell, where Kuo merely teaches a USB connector. Br. 39. The Examiner
relies on the combination of Marszalek, Rand, and Lytell to teach the single cable
alarm system as claimed, and relies on Kuo to teach a data connection cable with a
USB connector, based on design choice. Final Act. 8—9. On the record before us,
Appellants have not demonstrated that a USB connector is of any functional
significance or serves a unique or critical purpose. Br. 37—41. Appellants also
have not demonstrated that a USB connector would provide an unexpected result
or advantage. Id. Accordingly, as the Examiner finds, and we agree, an alarm
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system with the first plug of the power cable as a USB connector, as recited in
claim 5, would be a design choice that is well within the level or ordinary skill in
the art at the time of the Appellants’ invention, as supported by the USB connector
as taught by Kuo. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed
feature solves no stated problem and presents no unexpected result and “would be
an obvious matter of design choice within the skill of the art” (citations omitted)).
Additionally, Appellants argue that claim 5 requires the first plug of the
cable to be directly connected to the electronic device. Br. 39. However, claim 1
recites “a sensor unit having a first electrical port that receives the first plug of the
cable.” Appellants have not provided sufficient evidence to support why the claim
should be interpreted to require a direct connection between the cable and the
device. We find claim 1, from which claim 5 depends, does not require a direct
connection and thus, we are not persuaded by Appellants’ argument.
Lastly, Appellants argue that a person of ordinary skill in the art would
never have been motivated to combine Marszalek, Rand, Lytell, and Kuo. Br. 39.
Further, Appellants argue that the Examiner “piece-mealed” the references together
where hindsight reconstruction is impermissible. Br. 39-41. However,
Appellants’ arguments are conclusory and fail to address the Examiner’s proposed
combination, including articulated reasoning having rational underpinnings. See
Final Act. 8—9; KSR at 416, 418. Accordingly, this argument is unpersuasive.
Thus, for the reasons indicated above, we sustain the Examiner’s rejection of
claim 5.
Claims 10, 13, and 15—17 stand rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Marszalek, Rand, Lytell, and Groth.
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Claim 10 recites “a capacitive sensing circuit that generates a signal having a
known frequency.” Claim 13 recites similar limitations to claim 10.
The Examiner rejected claim 10 in a similar fashion as claim 1 and rejected
claim 13 in a similar fashion as claim 10, relying on Groth to teach generating a
signal with a known frequency. Final Act. 9—10.
Appellants argue that the Examiner added Lytell from an unrelated field of
endeavor to the combination of Marszalek and Rand. Br. 45. We address
Appellants’ argument as a non-analogous art argument. As noted in our analysis
above for Claim 1, we agree that Marszalek and Lytell are in the same field of
endeavor, electrical communications, as the instant application. See Claim 1,
supra', Klein at 1348. We also find the mobile communications system of Lytell,
which addresses the needs of people having access to electronic devices while
traveling or on mass transportation, reasonably pertinent to deterring theft of an
electronic device, the problem with which Appellants are concerned. See Claim 1,
supra', Clay at 659. Thus, we find Appellants’ argument unpersuasive.
Appellants next argue that the combination of Marszalek, Rand, Lytell, and
Groth fails to teach or suggest a cable provided by an OEM and that the
Examiner’s motivation to combine is “spurious at best” and “entirely unrelated to
the limitations of Claim 10.” Br. 45 46. Appellants’ argument is unpersuasive.
Appellants’ argument fails to address the Examiner’s articulated reasoning with
rational underpinnings for the proposed combination and fails to explain why it is
in error. See Claim 1, supra', Final Act. 9-11; KSR at 418. Further, we find
requiring the cable to be an OEM cable to be an unpatentable limitation because
the cable is the same as a cable from the prior art. See Claim 1, supra', Brown at
535; Thorpe at 697.
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Appellants argue that the combination of Marszalek and Rand fails to teach
or suggest claim 10, and would render the apparatus inoperable. Br. 47.
Appellants’ argument is unpersuasive because it is mere attorney argument and
does not address the Examiner’s specific findings and reasoning for combining the
references. Geisler, 116 F.3d at 1470.
For claims 10, 13, and 15—17, Appellants argue that a person of ordinary
skill in the art would never have been motivated to combine Marszalek, Rand,
Fytell, and Groth. Br. 48, 52. Further, Appellants argue that the Examiner “piece-
mealed” the references together where hindsight reconstruction is impermissible.
Br. 48—50, 52—56. However, Appellants’ arguments are conclusory and fail to
address the Examiner’s proposed combination, including articulated reasoning
having rational underpinnings. See Final Act. 9-11; KSR at 416, 418.
Accordingly, these arguments are unpersuasive.
Thus, for the reasons indicated above, we sustain the Examiner’s rejection of
claims 10, 13, and 15—17.
DECISION
The Examiner’s decision to reject claim 19 under 35 U.S.C. § 103(a) as
obvious over the combination of Marszalek and Rand is affirmed.
The Examiner’s decision to reject claims 1, 3, 4, 7, and 8 under 35 U.S.C.
§ 103(a) as obvious over the combination of Marszalek, Rand, and Lytell is
affirmed.
The Examiner’s decision to reject claim 5 under 35 U.S.C. § 103(a) as
obvious over the combination of Marszalek, Rand, Lytell, and Kuo is affirmed.
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The Examiner’s decision to reject claims 10, 13, and 15—17 under 35 U.S.C.
§ 103(a) as obvious over the combination of Marszalek, Rand, Lytell, and Groth 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)(l)(iv).
AFFIRMED
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