Fitbit, Inc.Download PDFPatent Trials and Appeals BoardMar 19, 20212019006840 (P.T.A.B. Mar. 19, 2021) Copy Citation 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. Appeal 2019-006840 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). Appeal 2019-006840 Application 14/072,687 5 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 Appeal 2019-006840 Application 14/072,687 6 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 Copy with citationCopy as parenthetical citation