Fitbit, Inc.

Patent Trials and Appeals Board

Mar 19, 2021

2019006840 (P.T.A.B. Mar. 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.
14/072,687 11/05/2013 Yoon Kean Wong 049242.000401/FB-0102 9473
146641 7590 03/19/2021
Jason Lohr-Fitbit
Hogan Lovells US LLP
Three Embarcadero Center Suite 1500
San Francisco, CA 94111
EXAMINER
LIAO, HSINCHUN
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
03/19/2021 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):
hlusdocketing@hoganlovells.com
ip@fitbit.com
teri.nelmark@hoganlovells.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YOON KEAN WONG, MATTHEW DAVID HORNYAK, HUY
QUANG TRAN, and RYAN JAMES CASE
____________________

Appeal 2019-006840
Application 14/072,687
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, ERIC B. CHEN, and
IRVIN E. BRANCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Rejection of claims 1–13 and 29–41. Appeal Br. 1. Claims 14–28 have
been cancelled. Appeal Br. 36. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as Pebble Technology, Corp.
Appeal Br. 3.
Appeal 2019-006840
Application 14/072,687

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, bracketed material added, and strikethrough deleted):
1. A method comprising:
[A.] detecting, by a first device, a wireless signal
originating from a second device, the wireless signal
indicating availability of a first communications link,
the first communications link being a wireless
communications link;
[B.] sending, by the first device, first communications
link setup information corresponding to establishing
the first communications link between the first device
and the second device;
[C.] sending, by the first device, a first command over the
first communications link,
[i.] the first command configured to cause the
second device to begin advertising availability
of a second communications link,
[ii.] the second communications link being another
wireless communications link having different
characteristics than the first communications
link;
[D.] receiving, by the first device over the first
communications link, information corresponding to
the second communications link; and
[E.] using, by the first device, the information
corresponding to the second communications link to
facilitate establishing the second communications
link.

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Application 14/072,687

3
REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Kurisko US 2003/0050009 A1 Mar. 13, 2003
Polo US 2013/0109315 A1 May 2, 2013
Ko US 2014/0073244 A1 Mar. 13, 2014

REJECTIONS
A.
The Examiner rejects claims3 1, 2, 5, 11, 29, 30, 33, and 39 under
35 U.S.C. § 102(a)(1) and (a)(2) as being anticipated by Ko. Final Act. 6–8.
We select claim 1 as the representative claim for this rejection. The
contentions discussed herein as to claim 1 are dispositive as to this rejection.
Therefore, except for our ultimate decision, we do not address the merits of
the § 102 rejection of claims 2, 5, 11, 29, 30, 33, and 39 further herein.
B.
The Examiner rejects claims 3–9, 12, 31–37 and 40 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Ko and Kurisko. Final
Act. 8–12.

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
3 The Examiner uses conflicting analyses to separately reject claims 5 and 33
under both sections 102 and 103. “Ko . . . discloses . . . to produce a
disabled communications link.” Final Act. 8. “Ko fails to teach
receiving . . . to produce a disabled communications link.” Final Act 10.
Due to our decision as to claim 1 being dispositive, we deem this
inconsistency to be moot.
Appeal 2019-006840
Application 14/072,687

4
The Examiner rejects claims 10 and 38 under 35 U.S.C. § 103 as
being unpatentable over the combination of Ko, Kurisko, and Polo. Final
Act. 12.
The Examiner rejects claims 13 and 41 under 35 U.S.C. § 103 as
being unpatentable over Ko. Final Act. 12–13.
The contentions discussed herein as to claim 1 are dispositive as to
these rejections. Therefore, except for our ultimate decision, we do not
address the merits of the § 103 rejections of claims 3–10, 12, 13, 31–38, 40,
and 41 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are dispositive as to the rejections on appeal. Therefore, Appellant’s other
contentions are not discussed in detail herein.
A.
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(a)(1)/(a)(2) because:
[T]he Examiner-asserted Fig. 2 and related disclosure of Ko does
not disclose:
1) “sending, by the first device, first communications
link setup information corresponding to establishing the
first communications link between the first device and
the second device”; or
2) “sending, by the first device, a first command over the
first communications link, the first command configured
to cause the second device to begin advertising
availability of a second communications link.”
Appeal Br. 20 (formatting added).
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Application 14/072,687

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B.
In response, as to the above argument, the Examiner finds:
Note: Step 703 is triggered by step 701, therefore the first
command causes second device to begin advertising availability
i.e. “connection information related to second short distance
communication”). Therefore, contrary to appellant's argument,
no general/inter relationship is assumed and the prior art
document discloses all elements of the claimed invention
arranged as they are in the claim.
Ans. 5. The Examiner’s Answer does not present further findings as to the
argued “sending, by the first device, first communications link setup
information.”
C.
As articulated by the Federal Circuit, “[a]nticipation requires the
presence in a single prior art disclosure of all elements of a claimed
invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722
F.2d 1542, 1548 (Fed. Cir. 1983). The requirement that the prior art
elements themselves be “arranged as in the claim” means that claims cannot
be “treated . . . as mere catalogs of separate parts, in disregard of the part-to-
part relationships set forth in the claims and that give the claims their
meaning.” Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
730 F.2d 1452, 1459 (Fed. Cir. 1984).
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.”
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(emphasis added). For a claim to be anticipated, each claim element must be
disclosed, either expressly or inherently, in a single prior art reference, and
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Application 14/072,687

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the claimed arrangement or combination of those elements must also be
disclosed, either expressly or inherently, in that same prior art reference.
D.
We agree with Appellant’s above argument, that the language of
claim 1 requires a “sending . . . a first command configured to cause the
second device to begin advertising availability of a second communications
link” and “sending . . . first communications link setup information,” and we
determine Ko relied on by the Examiner is not sufficient to show either such
a “first command” or “setup information” being sent as required by claim 1.
We conclude, consistent with Appellant’s arguments that there is
insufficient articulated reasoning to support the Examiner’s finding that Ko
teaches the “sending . . . first command” and “sending . . . setup
information” as required by claim 1. Therefore, we conclude that there is
insufficient articulated reasoning to support the Examiner’s final conclusion
that claim 1 was anticipated in the art at the time of Appellant’s invention.

CONCLUSION
The Examiner’s rejection of claims 1, 2, 5, 11, 29, 30, 33, and 39 as
being anticipated under 35 U.S.C. § 102(a)(1)/(2) is reversed.
The Examiner’s rejections of claims 3–10, 12, 13, 31–38, 40, and 41
as being unpatentable under 35 U.S.C. § 103 are reversed.

Appeal 2019-006840
Application 14/072,687

7
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 2, 5, 11,
29, 30, 33,
39
102(a)(1)/(2) Ko 1, 2, 5, 11, 29,
30, 33, 39
13, 41 103 Ko 13, 41
3–9, 12, 31–
37, 40
103 Ko, Kurisko 3–9, 12, 31–
37, 40
10, 38 103 Ko, Kurisko,
Polo
10, 38
Overall
Outcome

1–13, 29–41

REVERSED