Fitbit, Inc.

Patent Trials and Appeals Board

Apr 19, 2021

2021002652 (P.T.A.B. Apr. 19, 2021)

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.
15/624,613 06/15/2017 Peter Andrew Molettiere FTBTP072D3C1/
FB-0019D3C1
9092
119042 7590 04/19/2021
Dority and Manning PA and FITBIT
P.O. BOX 1449
Greenville, SC 29602
EXAMINER
LU, ZHIYU
ART UNIT PAPER NUMBER
2665
NOTIFICATION DATE DELIVERY MODE
04/19/2021 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte PETER ANDREW MOLETTIERE, JAMES PARK,
AISLINN ABIGAIL BILODEAUX-DEWEY, CHRISTINE BOOMER
BRUMBACK, ERIC NATHAN FRIEDMAN, ROBERT CURTIS COLE,
HEIKO GERNOT ALBERT PANTHER, and ANDREW COLE AXLEY
________________

Appeal 2021-002652
Application 15/624,613
Technology Center 2600
________________

Before STACEY G. WHITE, JASON J. CHUNG, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 15–28 and 32–34.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The invention relates to identifying and validating an electronic
device wirelessly in order to initiate a communication process with another

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Fitbit, Inc. is the real party in
interest. Appeal Br. 2.
2 Claims 1–14 and 29–31 are cancelled. Appeal Br. 17, 19 (Claims
Appendix).
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device or a service. Spec. 4:2–4. Claim 15 is illustrative of the invention
and is reproduced below with italics denoting the disputed limitations:
15. A method for initiating a pairing process between a
first portable biometric device and a second device, the first
portable biometric device comprising at least one sensor and
wireless communication circuitry, the first portable biometric
device configured to be worn about the body of a user, the
method comprising:
the second device wirelessly detecting the first portable
biometric device;
the second device requesting a response from the first
portable biometric device;
the second device receiving a response from the first
portable biometric device including a device identification that
identifies the first portable biometric device;
the second device forwarding the device identification to
a server;
the second device obtaining, from the server, an indication
of one or more detected devices eligible for pairing to the second
device;
in response to the first portable biometric device being
among the detected devices eligible for pairing, the second
device sending a command to the first portable biometric device
to enter pairing mode;
the first portable biometric device generating a cue
requesting a user validation input validating the pairing between
the first portable biometric device and the second device, the
validation input comprising a tap by the user on an exterior of
only the first portable biometric device;
the first portable biometric device receiving input
validating the pairing request;
in response to receiving the input validating the pairing
request, the first portable biometric device wirelessly signaling
the second device to complete the pairing process; and
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the second device and the first portable biometric device
wirelessly communicating to complete the pairing process;
wherein
the first portable device is configured to sense the tap, as
the validation input, irrespective of where on the exterior the tap
occurs.
Appeal Br. 17–18 (Claims Appendix) (emphases added).

REJECTIONS
The Examiner rejects claims 15–19, 24–26, 28, and 32–34 under
35 U.S.C. § 103 as being unpatentable over the combination of Luo (US
2008/0200774 A1; published Aug. 21, 2008), Cohen (US 2011/0258689 A1;
published Oct. 20, 2011), and Takatsuka (US 2012/0190299 A1; published
July 26, 2012). Final Act. 3–9.
The Examiner rejects claims 20–23 under 35 U.S.C. § 103 as being
unpatentable over the combination of Luo, Cohen, Takatsuka, and Bernini
(US 2012/0245438 A1; published Sept. 27, 2012). Final Act. 9–11.
The Examiner rejects claim 27 under 35 U.S.C. § 103 as being
unpatentable over the combination of Luo, Cohen, Takatsuka, Satoh (US
2011/0223862 A1; published Sept. 15, 2011), and King (US 2010/0052870
A1; published Mar. 4, 2010). Final Act. 11–12.
ANALYSIS
The Examiner finds Cohen teaches contact occurring with one device
to initiate pairing of devices and then prompting for user input to complete
the pairing process, which the Examiner maps to the limitation “the first
portable biometric device generating a cue requesting a user validation input
validating the pairing between the first portable biometric device and the
second device” recited in claim 15. Ans. 5, 14 (citing Cohen ¶¶ 97, 407);
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Final Act. 5 (citing Cohen ¶¶ 97, 407). Moreover, the Examiner finds
Takatsuka teaches tapping on a housing of a selected portable device to
generate a vibratory waveform to pair with another portable device
configured to sense a tap of matching vibratory waveforms, which the
Examiner maps to the limitations “the validation input comprising a tap by
the user on an exterior of only the first portable biometric device” and “the
first portable device is configured to sense the tap, as the validation input,
irrespective of where on the exterior the tap occurs” recited in claim 15.
Ans. 6, 15 (citing Takatsuka ¶¶ 13–16, 68, 72–94, Figs. 5–20, Abstr.); Final
Act. 6 (citing Takatsuka ¶¶ 13–16, Figs. 5–20).
Appellant argues Cohen fails to teach and in fact teaches away from
the recited “validation input comprising a tap by the user on an exterior of
only the first portable biometric device.” In particular, Cohen merely
teaches touching devices 102A, 104A together to pair devices 102A, 104A
rather than tapping on only one device. Appeal Br. 9; Reply Br. 3–4.
Further, Appellant argues that Cohen teaches away from the limitation via
this discussion of two devices touching each other. Reply Br. 4.3 Appellant
argues Takatsuka lacks the claimed single tap for validating a pairing,
instead teaching a tap for proposing a pairing. Appeal Br. 9–11; Reply Br.
4–5. Appellant argues the Examiner fails to indicate what deficiency in the

3 The Examiner cites to additional paragraphs of Cohen and Takatsuka in the
Answer that were not cited to in the Final Rejection. Compare Final Act. 3–
7 (lacking a citation to Cohen ¶¶ 241, 315, 319, 322, 324, 340, 341, 377,
455, 521–525, 564; lacking a citation to Takatsuka ¶¶ 4, 68, 72–94) with
Ans. 13–15 (citing Cohen ¶¶ 241, 315, 319, 322, 324, 340, 341, 377, 455,
521–525, 564; Takatsuka ¶¶ 4, 68, 72–94). Thus, Appellant’s new argument
is permitted under 37 C.F.R. § 41.41(b).
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combination of Luo and Cohen is cured by Takatsuka. Reply Br. 5.4 We
disagree with Appellant.
In particular, the Examiner relies on Cohen to teach contact occurring
with one device to initiate pairing of devices and then prompting (i.e.,
generating a cue) for user input (i.e., requesting user validation) to complete
the pairing process, which teaches the limitation, “the first portable
biometric device generating a cue requesting a user validation input
validating the pairing between the first portable biometric device and the
second device,” recited in claim 15. Ans. 5, 14 (citing Cohen ¶¶ 97, 407);
Final Act. 5 (citing Cohen ¶¶ 97, 407); see also Cohen ¶ 97 (discussing
“contact occurring with one or both devices”).
In addition, we agree with the Examiner’s finding that Takatsuka
teaches tapping on a housing of a selected portable device to generate a
vibratory waveform to pair with another portable device configured to sense
a tap of matching vibratory waveforms, which teaches the limitations “the
validation input comprising a tap by the user on an exterior of only the first
portable biometric device” and “the first portable device is configured to
sense the tap, as the validation input, irrespective of where on the exterior
the tap occurs” recited in claim 15. Ans. 6, 15 (citing Takatsuka ¶¶ 13–16,
68, 72–94, Figs. 5–20, abstract); Final Act. 6 (citing Takatsuka ¶¶ 13–16,
Figs. 5–20).
Moreover, one cannot show nonobviousness “by attacking references
individually” where the rejections are based on combinations of references.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re

4 See supra n.3.
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Keller, 642 F.2d 413, 425 (CCPA 1981)). In this case, the Examiner relies
on the combined teachings of Luo, Cohen, and Takatsuka to account for
limitations of claim 15.
We, therefore, disagree with Appellant’s argument that Cohen merely
teaches touching devices 102A, 104A together to pair devices 102A, 104A
rather than the italicized limitations on pages 2–3 above. Appeal Br. 9;
Reply Br. 3–4. For the reasons articulated in the above discussion, we also
disagree with Appellant’s argument that Takatsuka merely teaches a tap on a
first device is acoustically received by a second device and the pairing is
approved by the second device only when the waveform matches a reference
rather than the italicized limitations on pages 2–3 above. Appeal Br. 9–11;
Reply Br. 4–5.
Nor are we swayed by Appellant’s “teaching away” argument (Reply
Br. 4), because merely disclosing alternative designs does not, by itself,
teach away where such disclosure does not criticize, discredit, or otherwise
discourage the solution claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). The Federal Circuit has held that “[a] reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In this case, Cohen includes
multiple discussions describing the user tapping one device and then
prompting for user input to complete the pairing process via at least one of
user input from a keypad, voice input, or biometric input. See, e.g., 97, 340,
377, 407 (cited at Ans. 5, 13–14; Final Act. 5). Stated another way, simply
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because Cohen teaches a different way (i.e., at least one of user input from a
keypad, voice input, or biometric input) does not mean that Cohen
discourages a person having ordinary skill in the art to be led in a direction
divergent from the path that was taken by Appellant. Nor does Appellant
point to any portion of Cohen that would “criticize, discredit, or otherwise
discourage the solution claimed.” Fulton, 391 F.3d at 1201. We, therefore,
determine that Cohen does not teach away because it does not lead an artisan
in a divergent direction from the claimed invention.
Appellant’s argument that the Examiner fails to indicate what
deficiency in the combination of Luo and Cohen is cured by Takatsuka is
unavailing. Reply Br. 5. The Examiner articulates that a person having
ordinary skill in the art at the time of the invention would have recognized
Cohen’s validation includes voice input for identification and authentication
and, instead, used Takatsuka’s tapping in place of Cohen’s of voice input for
identification and authentication. Ans. 15.
Appellant does not argue claims 16–28 and 32–34 separately with
particularity. Accordingly, we sustain the Examiner’s rejections of:
(1) independent claims 15 and 32; and (2) dependent claims 16–28, 33, and
34 under 35 U.S.C. § 103.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv) (2020).

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CONCLUSION

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). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
15–19, 24–
26, 28, 32–
34
103 Luo, Cohen,
Takatsuka
15–19, 24–
26, 28, 32–
34

20–23 103 Luo, Cohen,
Takatsuka, Bernini
20–23
27 103 Luo, Cohen,
Takatsuka, Satoh,
King
27
Overall
Outcome
15–28, 32–
34