Ex Parte Sanpitak

Patent Trial and Appeal Board

May 7, 2013

11691568 (P.T.A.B. May. 7, 2013)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111691,568 03/27/2007
28524 7590 05/08/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD A VENUE SOUTH
!SELIN, NJ 08830
FIRST NAMED INVENTOR
Patanit Sanpitak
UNITED STA TES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2006P22868US 5885
EXAMINER
LEE, SHUNK
ART UNIT PAPER NUMBER
2884
MAILDATE DELIVERY MODE
05/08/2013 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 PAT ANIT SANPIT AK
Appeal 2011-003384
Application 11/691,568
Technology Center 2800
Before JOHN A. JEFFERY, BARBARA A. BENOIT, and
DAVID C. McKONE, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). 1 We
affirm.
1 Although an oral hearing was scheduled for this appeal on May 2, 2013,
Appellant's representative did not appear for the hearing. Accordingly, we
decide the present appeal on the Briefs and the Examiner's Answer.
Appeal2011-003384
Application 11/691,568
STATEMENT OF THE CASE
Appellant's invention provides a contactless interface for providing
electrical power and communication between cooperating system
components via circuit assemblies with respective inductive traces and
optical receiver/transmitters. See generally Spec. 3. Claim 1 is illustrative:
1. A contactless interface for providing a power supply and
communication between cooperating components of a system, comprising:
a first circuit assembly provided on a first system component,
including
a first optical transmitter/receiver for communicating with
another optical receiver/transmitter,
a storage medium for storing information pertaining to said first
system component,
a first inductive trace formed on said first circuit assembly, and
a first microcontroller for controlling operation of said
transmitter/receiver and controlling reading and writing of information from
and to said storage medium;
a second circuit assembly provided on a second system component,
including
a second optical transmitter/receiver for communicating \'l1ith
said first infrared transmitter/receiver;
a second inductive trace formed on said second circuit
assembly, for producing a near-field electromagnetic coupling and electrical
power transfer with said first inductive trace; and
a second microcontroller for controlling operation of said
second transmitter/receiver;
wherein said first microcontroller reads information from said storage
medium and transmits said read information to said second optical
transmitter/receiver through said first optical transmitter/receiver; and
wherein said first system component is securely fastened to said
second system component.
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Application 11/691,568
THE REJECTIONS
1. The Examiner rejected claims 1-4, 6, 7, 10-12, and 14-18 under 35
U.S.C. § 103(a) as unpatentable over Dina (US 6,055,062; Apr. 25, 2000)
and Englehardt (US 5,196,682; Mar. 23, 1993). Ans. 3-6.2
2. The Examiner rejected claims 5 and 13 under 35 U.S.C. § 103(a)
as unpatentable over Dina, Englehardt, and Kim (US 2005/0223148 Al; Oct.
6, 2005). Ans. 7.
3. The Examiner rejected claims 8, 9, and 19-22 under 35 U.S.C.
§ 103(a) as unpatentable over Dina, Englehardt, and Appellant's Admitted
Prior Art ("APA"). Ans. 8-9.3
4. The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Dina, Englehardt, AP A, and Kim. Ans. 9.
THE OBVIOUSNESS REJECTION OVER DINA AND ENGLEHARDT
The Examiner finds that Dina discloses a contactless interface with
every recited element of independent claims 1 and 11 including a "first
system component" (laser printer 101) and a "second system component"
(Multi-bin Mailbox (MBM) accessory 103) securely fastened thereto. Ans.
4. These components are said to have associated modules 105P, 105A
containing (1) infrared receiver/transmitters 409T, 409R, 509T, 509R; (2)
inductive coils 200A, 200P; and (3) microcontrollers 404, 504 for processing
2 Throughout this opinion, we refer to (1) the Appeal Brief filed June 16,
2010 ("App. Br."); (2) the Examiner's Answer mailed August 11, 2010
("Ans."); and (3) the Reply Brief filed October 11, 2010 ("Reply Br.").
3 Although the Examiner separately rejects claims 19-22 over Dina,
Englehardt, and APA (Ans. 9) from the rejection of claims 8 and 9 over
those references (Ans. 8), we nonetheless consolidate those rejections here
for clarity and brevity.
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Application 11/691,568
data and controlling receiver/transmitter operation. Id. Although the
Examiner acknowledges that (1) Dina's coils are not inductive traces of
respective printed circuit boards (PCBs); (2) at least one of the PCBs (a)
includes a storage medium containing component identification information;
and (b) transmits this information to another PCB via the microcontroller
and receiver/transmitter pair, the Examiner cites Englehardt as teaching
these features in concluding that the claims would have been obvious. Ans.
4-5, 10-14.
Appellant argues that Englehardt teaches away from the claimed
invention by requiring precise alignment of the data storage card 10 and
reader/programmer 14. App. Br. 11-12. Appellant adds that Dina is
similarly deficient in that it too requires precise interface alignment and, in
any event, the cited references are directed toward different technologies-
printers and portable card devices. App. Br. 12-13. As such, Appellant
reasons, skilled artisans would not be motivated to combine the references'
teachings as proposed. Id. Appellant separately argues claim 11 as noted
below. App. Br. 14-16; Reply Br. 8-9.
ISSUES
(1) Under§ 103, is the Examiner's combining the teachings of Dina
and Englehardt supported by articulated reasoning with some rational
underpinning to justify the Examiner's obviousness conclusion? This issue
turns on whether (a) Englehardt teaches away from the claimed invention,
and (b) Dina and Englehardt are analogous art.
(2) Under§ 103, has the Examiner erred by finding that Dina and
Englehardt collectively would have taught or suggested at least one PCB
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Application 11/691,568
includes a storage medium containing identification information of a system
component, where the medium transmits this information to another PCB via
the microcontroller and receiver/transmitter pair as recited in claim 11?
ANALYSIS
Claims 1-4, 6, 7, and 10
We begin by noting that Appellant's contentions in the Appeal Brief
regarding representative claim 1 are directed solely to the cited references'
combinability-not whether they collectively would have taught or
suggested the recited limitations if so combined. See App. Br. 10-13.
Appellant's Reply Brief, however, is strikingly different in its emphasis.
Although Appellant's Reply Brief maintains various combinability
contentions, it emphasizes that Dina and Englehardt teach away from
including a microcontroller and storage medium in a single component,
namely by adding a storage medium to Dina's coupling module 105A-a
point not made in connection with claim 1 in Appellant's principal brief.
Compare Reply Br. 3-6 with App. Br. 10-13. Appellant also contends for
the first time in the Reply Brief that Dina does not describe "securely
fastened" components as claimed. Reply Br. 6-7. Nor does the Reply Brief
focus on whether these references constitute analogous art-a key
contention asserted in the Appeal Brief. See App. Br. 12-13.
Appellant's newly-raised arguments in the Reply Brief are waived as
untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not."). Nevertheless, to the extent that
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Application 11/691,568
Appellant's newly-raised arguments are germane to Appellant's original
combinability contentions regarding whether (a) Dina and Englehardt teach
away from the claimed invention's eliminating precision requirements for
aligning electrical contacts, and (b) these references constitute analogous art,
we find these arguments unpersuasive essentially for the reasons indicated
by the Examiner. Ans. 10-14.
First, the Examiner cites Englehardt merely to show, in pertinent part,
that using an inductive trace 4 would have been an obvious enhancement to
Dina's inductive coils in respective coupling modules 105A, 105P to
inductively transfer electric power between these modules. Ans. 4-5. We
see no error in this reasoning, particularly since (1) Englehardt' s coil 18 is
etched into the copper of PCB 36 (Englehardt, col. 6, 11. 40-42), and (2)
Englehardt's inductive coupling performs a similar function to that of
Dina's, namely to provide electrical power between adjacent, cooperating
components via this coupling. This enhancement predictably uses prior art
elements according to their established functions-an obvious improvement.
See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Moreover, this inductive coupling would also eliminate the need to
precisely align exposed mating electrical contacts in a manner similar to
Appellant's improvement,5 for electrical coupling in the Dina/Englehardt
4 Although claim 1 does not recite a PCB (unlike claim 11 ), the Examiner
nonetheless finds that Englehardt likewise discloses an inductive trace of a
PCB. Ans. 4-5.
5 See Spec. 2:21-31 (noting the drawbacks of exposed electrical contacts of
conventional interface assemblies); see also Reply Br. 7-8 (noting these
drawbacks); Spec. 3 :2-6 (noting that the present invention eliminates
exposed electrical contacts on the circuit assemblies and precision tolerances
for aligning contacts between assemblies).
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system is achieved by inducing an electric current between two non-
contacting circuit assemblies in lieu of electrically coupling them by direct
electrical contact via exposed mating contacts, connecting cables, or
otherwise. Even assuming, without deciding, that Dina's printer cables are
not equivalent to exposed electrical mating contacts as Appellant contends
(Reply Br. 7-8), they nevertheless both electrically couple components
together via direct electrical contact. And like Appellant's invention, both
Dina and Englehardt avoid this direct electrical contact via inductive
coupling.
That Englehardt' s etched coil 18 is sandwiched between kapton layers
62, 64 and disposed within an insulating external case only bolsters this
conclusion. See Englehardt, col. 4, 11. 39-46; col. 6, 11. 40-43. Regardless of
whether Englehardt' s "proper" alignment is "precise, "6 nothing in the claim
precludes inductive coupling as in the Dina/Englehardt system, for even the
cooperating components in Appellant's system must be aligned to some
extent to inductively couple them. See Appellant's Figs. 3-4 (showing
alignment of inductive traces/coils 205, 209). We therefore do not find that
Englehardt teaches away from the claimed invention. And while Dina's
printer and Englehardt' s portable card reader are arguably in different fields
of endeavor as Appellant seems to suggest (App. Br. 12-13), the references
nonetheless constitute analogous art since they are reasonably pertinent to
6 See Ans. 11 (distinguishing "proper" from "precise" alignment). Although
the Examiner asserts that Englehardt requires only "proper" optical
alignment (Ans. 11), Englehardt's coils 18 and 20 must also be properly
aligned to induce current in the secondary coil. Englehardt, col. 3, 11. 60-64.
Nevertheless, we deem the Examiner's overstatement harmless, for we still
find that Englehardt does not teach away from the claimed invention for the
reasons indicated in the opinion.
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Application 11/691,568
Appellant's problem as the Examiner indicates. Ans. 14 (citing Jn re
Oetiker, 977 F.2d 1443 (Fed. Cir. 1992)).
Nor are we persuaded of error in the Examiner's position (Ans. 4-5,
12-13) that it would have been obvious to provide a storage medium and
microcontroller in the first system component as claimed. Leaving aside the
fact that Dina's accessory coupling module 105A has a gate array 507 that
stores data bytes which are read by microcontroller 504 (Dina, col. 5, 11. 3-9;
Fig. 5), we nonetheless see no reason why a storage medium could not be
included in this module, particularly since Englehardt's memory 12 (i.e.,
"storage medium") also contains a serial communications processor as the
Examiner indicates. Ans. 13 (citing Englehardt, col. 5, 11. 38-47); see also
Englehardt, Figs. 1, 4. Providing such a storage medium in connection with
Dina's accessory module as the Examiner proposes predictably uses prior art
elements according to their established functions-an obvious improvement.
See KSR, 550 U.S. at 417.
Dina does not teach away from this improvement as Appellant
contends (Reply Br. 3-5). Even assuming, without deciding, that Dina's
high-capacity output (HCO) controller 501 saves essential status data when
power is interrupted as part of its housekeeping duties (Dina, col. 5, 11. 52-
56), that hardly means that it would not have been obvious to provide a
storage medium, such as Englehardt's EEPROM-based memory, in Dina's
accessory module to serially communicate status data as the Examiner
proposes. Ans. 12-13. That Dina's gate array converts received parallel
status data to serial data for optical communication purposes (Dina, col. 5,
11. 27-34) only bolsters the Examiner's position in this regard.
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Application 11/691,568
Lastly, since Appellant's arguments regarding the "securely fastened"
limitation (Reply Br. 6-7) were presented for the first time in the Reply
Brief, we do not consider these arguments here, for they are waived as
untimely. See Borden, 93 USPQ2d at 1474.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2-4, 6, 7, and 10 not separately argued
with particularity.
Claims 11, 12, and 14-18
We also sustain the Examiner's rejection of representative claim 11
reciting, in pertinent part, that at least one PCB includes a storage medium
containing identification information of a system component, where the
medium transmits this information to another PCB via the microcontroller
and receiver/transmitter pair. Despite Appellant's arguments to the contrary
(App. Br. 14-16; Reply Br. 8-9), Appellant does not persuasively rebut the
Examiner's position based on Dina's and Englehardt's collective teachings.
Ans. 4-5, 15-16. Moreover, Appellant's contention that the Examiner
incorrectly equates identification information with status information (Reply
Br. 9) is unavailing, for this limitation merely labels the data and therefore
constitutes non-functional descriptive material. Such non-functional
descriptive material does not patentably distinguish over prior art that
otherwise renders the claims unpatentable. See In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-89
(BP AI 2008) (precedential) (discussing cases pertaining to non-functional
descriptive material).
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We are therefore not persuaded that the Examiner erred in rejecting
representative claim 11, and claims 12 and 14-18 not separately argued with
particularity.
THE OBVIOUSNESS REJECTION OVER DINA, ENGLEHARDT, AND AP A
We also sustain the Examiner's rejection of representative claim 19
reciting, in pertinent part, a collimator mounted to a camera head, where the
collimator and head include respective circuit assemblies. The Examiner
concludes that this feature would have been obvious in view of the known
collimator and camera head printed circuit assemblies in Appellant's Figure
2, and Appellant's admission that collimators typically have printed circuit
assemblies (PC As) mounted thereon including memory chips containing
collimator information. Ans. 8-9, 19 (referring to the rejection of claim 8 in
connection with claim 19 and citing Spec. 2:4-7; Fig. 2).
We see no error in this position. First, Appellant's argument that the
Examiner merely refers to stored system information on a memory chip and
not a collimator mounted to a camera head (App. Br. 18-19) ignores the
Examiner's reliance on Appellant's Figure 2 which shows a known interface
assembly for a collimator attached to a gamma camera head (Spec. 2: 12-
13}-an attachment shown in Appellant's Figure 1. See Spec. 1:25-27.
Second, Appellant's argument regarding the alleged impropriety of
combining Dina and the known gamma camera system by failing to identify
a problem in the known collimator assemblies to prompt the proposed
combination (Reply Br. 9) was presented for the first time in the Reply Brief
and is therefore waived as untimely. See Borden, 93 USPQ2d at 1474.
Nevertheless, even if we were to consider this belated argument, we find it
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Application 11/691,568
unpersuasive. In short, the Examiner's proposed enhancement in light of the
cited prior art, namely to inductively and optically couple the camera head
and mounted collimator such that signals are transferred between these
cooperating components without direct electrical contact, predictably uses
prior art elements according to their established functions-an obvious
improvement. See KSR, 550 U.S. at 417. And where, as here, a technique
has been used to improve one device (inductively and optically couple
adjacent, cooperating components together to transfer signals therebetween,
yet avoid direct electrical contact), and an ordinarily skilled artisan would
recognize that it would improve similar devices in the same way (a camera
head and mounted collimator that transfer signals therebetween), using the
technique is obvious unless its actual application is beyond his or her skill.
KSR, 550 U.S. at 417.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 19, and claims 8, 9, and 20-22 not separately argued
with particularity.
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner's obviousness rejections of claim 5, 13,
and 23. Ans. 7, 9, 20-21. Despite nominally arguing these claims
separately, Appellant reiterates similar arguments made previously and
alleges that Kim fails to cure those purported deficiencies. App. Br. 17-18,
20. We are not persuaded by these arguments, however, for the reasons
previously discussed.
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Application 11/691,568
CONCLUSION
The Examiner did not err in rejecting claims 1-23 under§ 103.
ORDER
The Examiner's decision rejecting claims 1-23 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
babe
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