Ex Parte Hwang et al

Patent Trial and Appeal Board

Feb 7, 2018

12988964 (P.T.A.B. Feb. 7, 2018)

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.
12/988,964 10/21/2010 Jung-Hwan Hwang 0201-0298 5863
02/09/201868103 7590
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
BUGG, GEORGE A
ART UNIT PAPER NUMBER
2911
NOTIFICATION DATE DELIVERY MODE
02/09/2018 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):
u sdocketing @ j effersonip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNG-HWAN HWANG, SUNG-WEON KANG,
KYUNG-SOO KIM, JUNG-BUM KIM, IN-GI LIM,
CHANG-HEE HYOUNG, SUNG-EUN KIM,
JIN-KYUNG KIM, HYUNG-IL PARK, TAE-WOOK KANG,
and HEY-JIN MYOUNG
Appeal 2016-000937
Application 12/988,9641
Technology Center 2600
Before CARL W. WHITEHEAD JR., JOHN R. KENNY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 3, 5, 6, 8, 11, and 15, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Samsung Electronics
Co., Ltd. App. Br. 2.
Appeal 2016-000937
Application 12/988,964
Technology
The application relates to “using a human body as a transmission
medium” and specifically to “measuring [a] phase response characteristic of
a human body in human-body communication.” Spec. 1 5, Abstract.
Illustrative Claim
Claim 3 is illustrative and reproduced below with certain limitations at
issue emphasized:
3. A system for measuring a phase response characteristic of a
human body in human-body communication, the system
comprising:
a reference signal transmitter configured to distribute a
reference signal into first and second reference signals, to
transmit the first reference signal through a human body and to
transmit the second reference signal through an optical cable,
an optical signal receiver configured to receive the second
reference signal from the reference signal transmitter through the
optical cable, and to convert the second reference signal into an
electrical signal; and
a phase measurer configured to measure phases of each of
the first reference signal transmitted through the human body and
the electrical signal converted from the second reference signal
transmitted through the optical cable and to calculate a phase
response characteristic of the human body by comparing the two
measured phases.
Rejections
Claims 3, 6, 8, 11, and 15 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Hwang et al. (US 2010/0094159 Al; Apr.
15, 2010), Tajima (US 7,088,267 B2; Aug. 8, 2006), and Yoshida et al. (US
5,615,033; Mar. 25, 1997). Final Act. 3.
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Application 12/988,964
Claim 5 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Hwang, Tajima, Yoshida, and Decker et al. (US 5,206,500;
Apr. 27, 1993). Final Act. 13.
ISSUE
Did the Examiner err in finding a person of ordinary skill in the art
would have had reason to modify Hwang to use Yoshida’s “optical cable”
for the “second reference signal,” as recited in claim 3?
ANALYSIS
Claims 3, 6, 8, 11, and 15
Claim 3 recites “to transmit the first reference signal through a human
body and to transmit the second reference signal through an optical cable.”
Hwang—which shares many of the same named inventors as the
present application—discloses “measuring the phase response characteristic
of a human body in human body communication.” Hwang Abstract. In a
section titled “BACKGROUND ART,” Hwang discloses Figure 1 as
showing a first reference signal “through a human body” and a second
reference signal “transmitted by electromagnetic coupling.” Hwang | 8.
Figure 3 of Hwang, on the other hand, depicts “an embodiment of the
present invention” that instead transmits the second reference signal
“wirelessly.” Hwang || 30, 32.
However, Hwang “do[es] not explicitly show optical [cables].” Final
Act. 5. Instead, the Examiner relies on Yoshida for teaching the claimed
optical cable. Id. at 6.
Appellants argue that “one of the main purposes of. . . Hwang is to
provide a system that can wirelessly transmit” and therefore “Hwang
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Application 12/988,964
essentially teaches away from having a wired communication” and “would
not work for its intended purpose by adding the wired communication.”
App. Br. 6 (some emphasis omitted).
We are not persuaded by Appellants’ argument. “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.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation
omitted). Moreover, “a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006). Here, Hwang expressly acknowledges tradeoffs
between “wired” and “wireless” methods:
[T]he wired transmission method is favorable in terms of security
of data to be transmitted and transmission rate, but unfortunately,
it is necessary to always carry a wired device, such as a cable.
. . . [T]he wireless transmission method is convenient to perform
data transmission. However it needs additional circuits for
wireless transmission and thus, it is difficult to provide at low
costs.
Hwang || 4—5. Appellants have not persuaded us that Hwang’s use of
wireless transmission (e.g., for convenience) necessarily teaches away from
wired transmissions (e.g., for increased “security” or “transmission rate”).
Moreover, Appellants have not addressed sufficiently the Examiner’s
finding that modifying Hwang with Yoshida’s wired connection would
“achieve a predictable result.” Ans. 3. For example, Appellants do not point
to any unexpected result from replacing Hwang’s wireless transmission with
an optical cable. See Reply Br. 2—3. To the contrary, Hwang supports the
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Examiner’s finding that these were known and predictable methods: “As
methods of transmitting various data between these devices, there are (1) a
wired transmission method using a cable and (2) a wireless transmission
method using radio wave or light.” Hwang | 3; see also Hwang | 8, Fig. 1
(showing a reference signal “transmitted through electromagnetic
coupling”). As the Supreme Court has held, “when a patent simply arranges
old elements with each performing the same function it had been known to
perform and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSRInt’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (quotation omitted).
Appellants further argue that the claimed optical cable solves
Hwang’s problem of reflected wireless signals. App. Br. 7. However,
Appellants fail to explain the relevance of this to the motivation of a person
of ordinary skill in the art at the time of the invention. For example,
Appellants do not explain whether reflection was a known problem that
would have motivated a person of ordinary skill in the art to use an optical
cable rather than a wireless transmission, nor whether the “electromagnetic
coupling” shown in Figure 1 of Hwang already resolved such reflections.
Appellants also argue that “Yoshida is directed to a completely
different field of endeavor and should be removed as a prior art reference.”
App. Br. 8. First, “[t]he field of endeavor of a patent is not limited to the
specific point of novelty, the narrowest possible conception of the field, or
the particular focus within a given field.” Unwired Planet, LLC v. Google
Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). Here, the Examiner finds
Yoshida’s optical cable “can be used in any communication device.” Ans. 7
(emphasis added). Second, being in the same “field of endeavor” is merely
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one way for a reference to be analogous prior art; it is not the only way. In
re Ethicon, Inc., 844 F.3d 1344, 1349 (Fed. Cir. 2017) (“Prior art is
analogous where either (1) the art is from the same field of endeavor,
regardless of the problem addressed or (2) even if the reference is not within
the same field of endeavor, the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.”) (quotations
omitted). Thus, even if Yoshida were not in the same field of endeavor, it
would still be reasonably pertinent to the particular problem with which the
inventor is involved (i.e., the transmission of a reference signal).
Accordingly, we sustain the Examiner’s rejection of claim 3, and
claims 6, 8, 11, and 15, which Appellants argue are patentable for similar
reasons. See App. Br. 9—13; 37 C.F.R. § 41.37(c)(l)(iv).
Claim 5
Claim 5 depends from claim 3, and Appellants argue “Decker adds
nothing to cure the deficiencies of Hwang, Tajima and Yoshida.” App. Br.
13. We do not agree that Hwang, Tajima, and Yoshida are deficient for the
reasons discussed above.
Accordingly, we sustain the Examiner’s rejection of claim 5.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 3, 5, 6, 8, 11, and 15.
No time for taking 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
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