12379726 (P.T.A.B. Feb. 27, 2015)

Ex Parte Takaya

Patent Trial and Appeal BoardFeb 27, 2015

12379726 (P.T.A.B. Feb. 27, 2015)

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. 12/379,726 02/27/2009 Norifumi Takaya SONY-00000 1415 102824 7590 02/27/2015 HAVERSTOCK & OWENS, LLP 162 N. WOLFE ROAD SUNNYVALE, CA 94086 EXAMINER SNYDER, STEVEN G ART UNIT PAPER NUMBER 2184 MAIL DATE DELIVERY MODE 02/27/2015 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 NORIFUMI TAKAYA ____________________ Appeal 2012-011700 Application 12/379,726 Technology Center 2100 ____________________ Before JOHN A. JEFFERY, STEVEN D.A. MCCARTHY, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-011700 Application 12/379,726 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Illustrative Claim Appellant’s claimed subject matter relates to packaging for housing and shipping a device that allows for service upgrades while the packaging container remains closed. Abstract. Claim 1, reproduced below with the disputed limitation italicized, is illustrative of the claimed subject matter: 1. A product packaging shipping container for housing and shipping a device and allowing connection to device interfaces while the product packaging container remains closed, the product packaging container comprising: a set of container interfaces, attached to the product packaging container, configured to be accessible from an exterior of the product packaging container and respectively corresponding to a set of device interfaces; and a set of connections that wirelessly connect the set of container interfaces to the set of device interfaces, such that an external connection to the set of device interfaces is provided while the product packaging container remains closed and wherein the set of device interfaces are wireless accessible from the exterior of the product packaging container via the set of container interfaces. Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Boonen (US 2004/0196997 A1; published Oct. 7, 2004) and Metze (US 5,754,948; issued May 19, 1998). Ans. 4–7. Appeal 2012-011700 Application 12/379,726 3 Claim 2–16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Boonen, Metze, and Barker (EP 1 266 834 A1; published Dec. 18, 2002). Ans. 7–20. Claim 17–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Boonen, Metze, Barker, and Killian (US 2008/0129504 A1; June 5, 2008). Ans. 20–24. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments in the Appeal Brief (“App. Br.” filed Mar. 30, 2012) and Reply Brief (“Reply Br.” filed Aug. 10, 2012). We refer to the Briefs and the Answer (“Ans.” mailed June 13, 2012) for the respective positions of Appellant and the Examiner. Claim 1 Over Boonen and Metze Appellant contends the Examiner’s rejection of claim 1 is improper because the combination of Boonen and Metze fails to teach or suggest the disputed limitation. App. Br. 13–17. See also Reply Br. 3–5. Appellant’s arguments regarding the remaining claims rely on arguments presented with respect to claim 1 and/or argue that Barker and/or Killian do not cure the deficiencies of Boonen and Metze as to the disputed limitation. App. Br. 17–21; Reply Br. 6–8. Hence, the dispositive issue before us is whether the combination of Boonen and Metze teaches or suggests the disputed limitation. The Examiner finds all limitations of claim 1 are taught or suggested by Boonen, except that Boonen does not explicitly teach or suggest “a set of connections that wirelessly connect the set of container interfaces to the set Appeal 2012-011700 Application 12/379,726 4 of device interfaces,” and “wherein the set of device interfaces are wireless accessible from the exterior of the product packaging container via the set of container interfaces.” Ans. 5–7 (citing, inter alia, Boonen Fig. 3). The Examiner finds, however, that Metze discloses a wireless connection inside an enclosure (id. at 6 (citing Metze Fig. 1)) and that replacing Boonen’s connections 13’ and 13” (Fig. 3) with Metze’s wireless connection would have been an obvious modification. Ans. 7. Appellant argues that the combination of Boonen and Metze would not result in “the set of device interfaces [being] wireless accessible from the exterior of the product packaging container via the set of container interfaces.” App. Br. 16–17. Reply Br. 3–5. The Examiner, however, has proposed a wireless connection from the container interface to the device interface in view of Metze. We are unpersuaded of error. If Boonen’s container interfaces 21’ and 21” were fully outside the package, the wireless connection to the packaged device nevertheless could transmit wirelessly to the device inside the package. Boonen also does not negate that the package interfaces 21’ and 21” penetrate the packaging such that a wired or wireless signal received at the package interface could be propagated through the packaging by the package interface before being wirelessly retransmitted within the package. Accordingly, to the extent Appellant argues one skilled in the art would not realize that signals received at Boonen’s connections 21’ and 21” (the container interfaces) from outside the package (whether received wired or wirelessly) could be transmitted to the packaged device via the Examiner’s proposed wireless connection, we are unpersuaded of error. The combination of familiar elements according Appeal 2012-011700 Application 12/379,726 5 to known methods is likely to be obvious when it does no more than yield predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We also are unpersuaded that “Metze would provide no motivation to replace connections 13’ and 13” with wireless connections.” Reply Br. 4–5. Appellant’s argument does not persuasively rebut the Examiner’s proposed motivations of “avoid[ing] the disadvantage of inductances, resistances, and capacitances associated with wired connections” and “provid[ing] an easily modifiable or reconfigurable connection.” Ans. 7 (citing Metze 1:46–63). Hence, based on the record before us, we are unpersuaded of error and sustain the Examiner’s rejection of claim 1. We also sustain the Examiner’s rejections of claims 2–20, which Appellant argues on the same basis as claim 1, adding only that Barker and/or Killian do not cure the deficiencies of Boonen and Metze. 1 DECISION We sustain the Examiner’s rejection of claims 1–20. 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 rvb 1 Should further prosecution ensure, the Examiner might consider whether claims 9 and 10, which recite a method, are inconsistent with the claim from which they depend, claim 7, which recites a container.