Ex Parte Thill et al

Patent Trial and Appeal Board

Sep 26, 2016

13387792 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/387,792 01/30/2012
41754 7590
THE JANSSON FIRM
3616 Far West Blvd
Ste 117-314
AUSTIN, TX 78731
09/28/2016
FIRST NAMED INVENTOR
Michel Thill
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GMT0344 1072
EXAMINER
TAYLOR, BROOKE JAZMOND
ART UNIT PAPER NUMBER
2181
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
law firm @thej anssonfirm. com
Pehr@thejanssonfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHEL THILL and ALAIN POMET
Appeal2015-004630
Application 13/387,792
Technology Center 2100
Before CATHERINE SHIANG, KAMRAN JIVANI, and
SCOTT B. HOWARD, Administrative Patent Judges.
JIV ANI, Administrative Patent Judge.
DECISION ON APPEAL
.6. .. .. , 1 .. • .. ,..... ,- T T r'1 I'\ l\ -1 ,..... Al / '\. I"" , "1
Appeuants' seeK our review unaer j) u.~.L. s U4~aJ or me
Examiner's final decisions rejecting claims 1-24, which are all the claims
pending in the present application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Gemalto N.V. as the real party in interest. App. Br. 1.
Appeal2015-004630
Application 13/387,792
STATEMENT OF THE CASE
The present application relates to the control of peripheral devices by
smartcards. Spec. 1 :4.
Claim 1 is illustrative (disputed limitations emphasized):
1. An electronic circuit for interconnecting a smartcard chip
with a peripheral device, comprising:
a dedicated communication interface adapted to
communicate with a smartcard chip;
[L 1] a configurable communication interface adapted to
communicate with a peripheral device according to a
communication protocol;
a configuration module adapted to receive on said
dedicated communication interface a request for configuring the
configurable communication interface, [L2] adapted to
configure the communication protocol of the configurable
communication interface with the peripheral device based on the
received request; and
[L3] a bridging module adapted for converting data
exchanged between the peripheral device and the smartcard chip
through the dedicated communication interface and the
configurable communication interface.
The Rejection
Claims 1-24 are rejected under 35 U.S.C. § 103(a) over Arya
(US 2010/0312926 Al; Dec. 9, 2010) and Kim (US 2008/0006704 Al;
Jan. 10, 2008).
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Appeal2015-004630
Application 13/387,792
ANALYSIS
Appellants argue independent claims 1, 9, and 10 together. See, e.g.,
App. Br. 15. Based on Appellants' arguments, we decide the appeal of
independent claims 1, 9, and 10 on the basis of representative claim 1. See
37 C.F.R. § 41.37(c)(l)(iv) (2012).
Appellants contend the Examiner errs in finding Arya' s input port 184
teaches or suggests the configurable communication interface of limitation
L 1 because "there is nothing to indicate that the interface 184 is configurable
in any way." App. Br. 16; Reply Br. 2. Appellants further contend Arya
and Kim do not meet limitation L2. App. Br. 18-19; Reply Br. 3--4.
Finally, Appellants contend limitation L3 does not read on Kim. App. Br.
20-21.
We have considered Appellants' arguments in the Appeal Brief and
the Reply Brief, as well as the Examiner's Answer thereto. We are not
persuaded by Appellants' arguments for at least the following reasons.
Initially, as a matter of claim construction, we find Appellants have
not defined explicitly the term configurable in the claim or the Specification.
In the absence of an explicit definition, Appellants identify "some examples
for what 'configuration of the interfaces' entails." App. Br. 17. We do not
read into the claim language exemplary, non-limiting statements from the
Specification such as those cited by Appellants. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Rather, we apply the broadest
reasonable interpretation of claim terms, consistent with the Specification, as
would be understood by one of ordinary skill in the art. Id. at 1364. Where,
as here, the Specification does not explicitly define a term, the term should
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Appeal2015-004630
Application 13/387,792
be given its ordinary meaning. In re Zletz, 893 F .2d 319, 3 21 (Fed. Cir.
1989).
In light of this determination, we are not persuaded by Appellants'
argument that Arya' s input port 184 does not meet limitation L 1. Rather, we
find the broadest reasonable interpretation of the term configurable
encompasses Arya' s input port 184 being capable of multiple configurations,
namely "either a path from the cell phone 100 via switches 162 and 182 or
on a path from the PC 170 via switches 172 and 162." App. Br. 16.
With regard to limitation L2, Appellants advance the same argument
discussed above, namely that "there is no configuration of the interface."
App. Br. 19. We are not persuaded by this argument for the reasons
previously discussed. We further are not persuaded by Appellants'
arguments regarding Kim failing to meet limitation L2. Id. The Examiner
cites Arya, not Kim, as teaching or suggesting limitation L2. Final Act. 3.
Appellants additionally contend the Examiner's reading of limitation
L3 on the Kim "is nonsense," but fail to explain persuasively why the
Examiner's findings are allegedly erroneous. App. Br. 20. A mere
recitation of the claim elements and a naked assertion that the corresponding
elements are not found in the prior art is insufficient to show error. 3 7
C.F.R. § 41.37(c)(iv) (2012); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). Accordingly, we sustain the Examiner's 35 U.S.C. § 103 rejection of
independent claims 1, 9, and 10.
With regard to dependent claims 5, 14, and 21, Appellants' contend
that power management unit 260 fails "to set the voltage levels applied" as
claimed. We disagree. As Appellants concede, the cited portions of Kim
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Application 13/387,792
make clear "the various interfaces receives [sic] VCC from the power
management unit 260." App. Br. 21. Appellants fail to explain persuasively
why the broadest reasonable interpretation of "to set the voltage levels
applied" would not encompass raising and lower the voltage levels with
switching inputs, as described by Kim. Accordingly, we sustain the
Examiner's 35 U.S.C. § 103 rejection of claims 5, 14, and 21.
Appellants advance no further arguments concerning claims 2--4, 6-8,
11-13, and 15-21. Accordingly, we sustain the Examiner's 35 U.S.C. § 103
rejection of these claims.
DECISION
We affirm the Examiner's decisions rejecting claims 1-24 as obvious.
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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