Intel CorporationDownload PDFPatent Trials and Appeals BoardJun 28, 20212020004949 (P.T.A.B. Jun. 28, 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. 14/757,918 12/24/2015 Anand S. Konanur 42536-1325 5175 116341 7590 06/28/2021 Schiff Hardin LLP (Intel) c/o Laura C. Brutman Schiff Hardin LLP 1185 Avenue of the Americas, Suite 3000 New York, NY 10036 EXAMINER MCDANIEL, TYNESE V ART UNIT PAPER NUMBER 2859 NOTIFICATION DATE DELIVERY MODE 06/28/2021 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): Patents-NY@schiffhardin.com inteldocs_docketing@cpaglobal.com lbrutman@schiffhardin.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANAND S. KONANUR, LEI SHAO, STEVEN G. GASKILL, XINTIAN E. LIN, SONGNAN YANG, JASON KU, and JIE GAO Appeal 2020-004949 Application 14/757,918 Technology Center 2800 Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and JENNIFER R. GUPTA, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. Appeal 2020-004949 Application 14/757,918 2 DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–5, 7–13, 15–23, and 25. See Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER Appellant states the invention relates to techniques for wireless charging. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter (Appeal Br., Claims Appendix 20): 1. A method of wirelessly charging batteries of devices, comprising: detecting a wireless power receiving device being present on a charging apparatus; determining that the wireless power receiving device is communicating with the charging apparatus via a first communication protocol; determining that a Near Field Communication (NFC) device is in communication range of the charging apparatus, wherein the NFC device is configured to communicate via a second communication protocol different from the first communication protocol; 1 This Decision includes citations to the following documents: Specification filed December 24, 2015 (“Spec.”); Final Office Action mailed October 18, 2019 (“Final Act.”); Appeal Brief filed March 18, 2020 (“Appeal Br.”); Examiner’s Answer mailed June 1, 2020 (“Ans.”), and Reply Brief filed June 16, 2020 (“Reply Br.”). 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Intel Corporation. Appeal Br. 2. Appeal 2020-004949 Application 14/757,918 3 determining whether the NFC device is built into the wireless power receiving device based on information received from the wireless power receiving device via the first communication protocol that identifies the NFC device as a component of the wireless power receiving device; if determined that the NFC device is not built into the wireless power receiving device, mute a wireless power transfer from the charging apparatus; and if determined that the NFC device is built into the wireless power receiving device, enable a wireless power transfer from the charging apparatus. Claims 10 and 19 are also independent claims and recite a system and non-transitory computer-readable medium, respectively, with similar recitations as claim 1. Id. at 22–25. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Chen US 2008/0157909 A1 July 3, 2008 Boer US 2012/0068550 A1 Mar. 22, 2012 Drennen US 2012/0248891 A1 Oct. 4, 2012 Grant US 2014/0125355 A1 May 8, 2014 O’Donoghue US 2016/0295351 A1 Oct. 6, 2016 Lee US 2017/0353054 A1 Dec. 7, 2017 Won WO 2014/171774 A1 (US 2016/0065005 A1 used as English Equivalent) Oct. 23, 2014 REJECTIONS 1. Claims 1–5, 7–13, 15–23, and 25 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and Appeal 2020-004949 Application 14/757,918 4 distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Final Act. 6–8. 2. Claims 1, 5, 9, 19, and 23 are rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Drennen, and O’Donoghue. Final Act. 9–16. 3. Claims 2, 3, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Drennen, O’Donoghue, and Boer. Final Act. 16–19. 4. Claims 4, 7, 8, 22, and 253 are rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Drennen, O’Donoghue, and Won. Final Act. 19–24. 5. Claims 10, 11, and 15–18 are rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Drennen, O’Donoghue, Boer, and Won. Final Act. 24–31. 6. Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Drennen, O’Donoghue, Won, Boer, and Grant. Final Act. 31–32. 7. Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Drennen, O’Donoghue, Won, Boer, Chen. Final Act. 32–33. 8. Claim 21 is rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Drennen, O’Donoghue, Boer, and Grant. Final Act. 33–34. 3 Although listed in the Answer as rejected (Ans. 3), claim 24 was canceled in the Amendment and Response filed July 5, 2019. Appeal 2020-004949 Application 14/757,918 5 OPINION Rejection 1 We confine our discussion to claims 1 and 8, which is sufficient for disposition of this rejection. The Examiner’s Rejection In rejecting claim 1 as indefinite, the Examiner determined claim 1 recites the contradictory limitations: determining whether the NFC device is built into the wireless power receiving device based on information received from the wireless power receiving device via the first communication protocol that identifies the NFC device as a component of the wireless power receiving device [hereinafter the “determining whether” step] and if determined that the NFC device is not built into the wireless power receiving device, mute a wireless power transfer from the charging apparatus. Final Act. 7. The Examiner’s position is that the former limitation results in a determination that the NFC device is built in the wireless power receiving device, such that the latter limitation is contradictory. Id. The Examiner determined also that recitation of “a Bluetooth low energy standard” recited in claim 8 is indefinite because “Bluetooth” is a trademark, which does not identify or describe the lower energy standard, but rather indicates the source of the low energy standard rendering the claim scope uncertain. Id. at 7–8. Appeal 2020-004949 Application 14/757,918 6 Appellant’s Arguments Regarding claim 1, Appellant states that they do not concede the correctness of the Examiner’s position. Appeal Br. 8. Regarding claim 8, Appellant argues the term “Bluetooth” is not used to refer to a particular material or product, but rather to refer to a protocol specification for wireless communication, used by many different manufacturers. Appeal Br. 9. Discussion Claim 1 As to claim 1, we are persuaded that the above quoted recitations in claim 1 do not render the claim indefinite. In particular, claim 1 recites “determining whether the NFC device is built into the wireless power receiving device, a determination that is made “via the first protocol that identifies the HFC device as a component of the wireless power receiving device” (emphasis added). Thus, claim 1 does not recite that the NFC device is determined to be built into the wireless power receiving device, but rather recites that inquiry is conducted, and is done so by virtue of the first protocol that makes that identification. In other words, we view the recitation of “whether” to be controlling as to the entire “determining whether” step recited in claim 1. Accordingly, we do not view the step of “if determined that the NFC device is not built into the wireless power receiving device” to be contradictory to the “determining whether” step recited in claim 1. Claim 1 itself supports this interpretation as the “determining whether” step stands in contrast to the steps of “determining that the wireless Appeal 2020-004949 Application 14/757,918 7 power receiving device is communicating with the charging apparatus” and “determining that a Near Field Communication (NFC) device is in communication range of the charging apparatus,” which recite the presence of both a wireless charging device and a NFC device. As a result we reverse the Examiner’s decision to reject independent claim 1, as well as independent claims 10 and 19, which contain similar language. Claim 8 As to claim 8, we are persuaded by Appellant’s arguments. We understand that the use of a trademark or tradename in a claim is not necessarily improper and must be analyzed as to how it used in the claim. See MPEP § 2173.05(U). In the instant case, we agree with Appellant that the term “Bluetooth” as used in claim 8 refers to a protocol specification for wireless communication. Appeal Br. 9; see Spec. ¶ 34, referring to “Bluetooth low energy (BLE) response.” Appellant’s use of the term is consistent with the prior art cited in the record, which also uses the phrase “Bluetooth low energy.” See O’Donoghue ¶¶ 6, 43, 44. Accordingly, we are of the view that one of ordinary skill in the art would discern no uncertainty in the claim scope of claim 8. Indeed, our determination is consistent with other decisions from this Board on similar issues. See Ex Parte Regen, 2013 WL 6253158 *2 (Patent Tr. & App. Bd. 2013) (non-precedential) (holding that “the term ‘Bluetooth’ identifies a source of interoperability standards [such that] one skilled in the relevant art would have understood the terms ‘Bluetooth external wireless devices.’”); Ex Parte O’Farrell, 2014 WL 2112325 *4 (Patent Tr. & App. Bd. 2014) (non-precedential) (quoting Regen and holding Appeal 2020-004949 Application 14/757,918 8 that “‘Java’ is a well-known and widely-used term identifying a particular programming language.”). As a result, we do not sustain the Examiner’s rejection of claims 8 and 17. In sum, we reverse the Examiner’s decision to reject claims 1–5, 7– 13, 15–23, and 25 as indefinite. Rejection 2 We confine our discussion to claim 1, which is sufficient for disposition of this rejection. The Examiner’s Rejection In rejecting claim 1 as unpatentable over Lee, Drennen, and O’Donoghue, the Examiner found, inter alia, that Lee discloses a method of wirelessly charging batteries of devices including determining whether a Near Field Communication (NFC) device is in communication range of the charging apparatus. Final Act. 9–10. The Examiner found Lee discloses determining whether the NFC device is built into the wireless power receiving device. Id. at 10. The Examiner found Lee does not disclose determining whether the NFC device is built into the wireless power receiving device based on information received from the wireless power receiving device via the first communication protocol that identifies the NFC device as a component of the wireless power receiving device. Id. The Examiner found that Lee also does not disclose muting the wireless power transfer from the charging apparatus if it is determined that the NFC device is not built into the wireless power receiving device. Id. at 11. Appeal 2020-004949 Application 14/757,918 9 The Examiner relied on the combination of O’Donoghue and Drennen for the identified missing limitations. Final Act. 10–11. In particular, the Examiner found that Drennen discloses detecting if the NFC device is not built into the wireless power receiving device, because Drennen detects situations where a wireless power chargeable device exists within a charging region and where a communication device does not exist within a charging region. Id. at 11. Thus, the Examiner found one of ordinary skill in the art “can see that the NFC device is not built in [the] wireless power receiver.” Id. The Examiner found Drennen discloses muting a wireless power transfer from the charging apparatus in such a situation. Id. at 11–12. The Examiner determined that it would have been obvious to have modified Lee’s method to include the step of muting a wireless power transfer from a charging apparatus in order to transmit to other power receiving devices while monitoring the expected operation of the transmitter if it is determined that the NFC device is not built into the power receiving device in view of Drennen. Final Act. 12. Appellant’s Arguments Appellant argues that none of the references discloses a method for protecting an NFC communication device by enabling or disabling charging based on whether the NFC device is a component of the wireless power receiving device. Appeal Br. 12. In particular, Appellant contends that the Examiner relied on Drennen for the step of determining if the NFC device is not built into the wireless power receiving device, and if so determined, muting a wireless power transfer from the charging apparatus. Id. Appellant argues Drennen does not disclose this step, because Drennen Appeal 2020-004949 Application 14/757,918 10 operates in a different manner, and does not make a charging decision based on whether the communication device is a built-in component of the wireless power chargeable device. Id. at 12–13. Appellant contends Drennen bases the charging decision only on whether the NFC device is present in the charging region or not, regardless of whether the NFC device is a component of the wireless power receiver. Id. at 13–14. Issue Did the Examiner err in determining that claim 1’s recitation “determining whether the NFC device is built into the wireless power receiving device based on information received from the wireless power receiving device via the first communication protocol that identifies the NFC device as a component of the wireless power receiving device” would have been obvious in view of the prior art of record? Discussion We are persuaded by Appellant’s arguments. Claim 1 recites a method that requires “determining that the wireless power device is communicating with the charging apparatus via a first communication protocol.” Claim 1 further recites determining whether the NFC is built into the wireless power receiving device “based on information received from the wireless power receiving device via the first communication protocol that identifies the NFC device as a component of the wireless power receiving device.” Thus, according to claim 1, the determination as to whether the NFC device is a component of the wireless charging device occurs through Appeal 2020-004949 Application 14/757,918 11 information received via the first communication protocol between the wireless power receiving device and the charging apparatus. The Examiner relied on Drennen for a disclosure of determining whether the NFC device is built into the wireless receiving device, and to mute a wireless power transfer if the NFC device is not built into the wireless power receiving device. Ans. 9–12. The Examiner pointed to Drennen’s Figure 12, particularly steps 1204, 1206, 1224, and 1238 for support. Id. According to the Examiner, when the response in step 1224 is “no,” the ordinary skilled artisan “can see that NFC/communication device 188 is not built into receiver 184.” Id. at 11, citing Drennen ¶ 70. However, as discussed above, claim 1 requires the determination as to whether the NFC device is built into the wireless receiving device to be made as a result of information received via the first communication protocol. According to Drennen, the only determination made in step 1224 is whether there is an intermodulated tone above a threshold. Drennen, Fig. 12. Drennen discloses that detection of such a tone is to detect whether there is a communication device (NFC) 188 within the wireless transfer power region 190. Id. at ¶ 69; Figs. 4, 12. Thus, step 1224 appears to correspond to claim 1’s recitation “determining that a Near Field Communication (NFC) device is in communication range of the charging apparatus.” Although it may be true that the combination of steps 1206 (determining whether a wireless power receiver 184 is present) and 1224 would allow one of ordinary skill in the art to make a decision as to whether the wireless power receiver 184 contains a built-in NFC device (when the answer to step 1206 is “yes” and the answer to step 1224 is “no” there is a wireless power receiver 184 but not a communication device 188 in the Appeal 2020-004949 Application 14/757,918 12 wireless transfer region 190), such a decision in not based on communication between the wireless power received 184 and the charging apparatus via a first communication protocol as recited in claim 1. See Reply Br. 4. Indeed, the Examiner appears to acknowledge this by relying on the position that “one of ordinary skill in the art can see that the NFC device is not built in [the] wireless power receiver.” Final Act. 11. To further illustrate the deficiency in this line of reasoning, in situations where the answer to both steps 1206 and 1224 is “yes,” Drennen’s system would be unable to determine whether the NFC device is built into the power receiving device, and thus would not be able to either mute or enable a wireless power transfer from the charging apparatus as recited in claim 1. Drennen, ¶¶ 69, 70; Fig. 12, 1206, 1216, 1224. In addition, we agree with Appellant that Drennen’s decision process relating to the presence of an NFC device occurs in step 1224, such that the Examiner’s reliance on step 1238 for muting the wireless power transmission is insufficient to support the Examiner’s position that Drennen discloses muting the wireless power transmission in the manner recited in claim 1. Appeal Br. 13–14; Reply Br. 4–5. As discussed above, in step 1224, a determination is made as to whether any communication device (NFC) 188 is within the wireless transfer power region 190, whether part of wireless receiver 184 or not. Drennen, Figs. 4, 12. Drennen discloses that when any communication device (NFC) 188 is present, charging is stopped (answer “yes”, 1216) and that when there is not a communication device (NFC) 188 within the wireless transfer power region 190, charging is enabled (“no”, 1224, 1232). Id. ¶ 70; Fig. 12. In step 1238, Drennen Appeal 2020-004949 Application 14/757,918 13 discloses the wireless power is stopped only when the change in power is not what was expected. Id. ¶¶ 70, 72; Fig. 12. As a result, we reverse the Examiner’s decision to reject claim 1 as obvious over Lee, Drennen, and O’Donoghue. Rejections 3–8 In Rejections 3–8, the Examiner relies on similar rationale in rejecting the claims subject to these rejections, which also rely on the combination of Lee, Drennen, and O’Donoghue, citing other prior art for certain additional limitations recited in the claims. Final Act. 16–34. Thus, the additional prior art cited does not remedy the deficiencies discussed above with respect to the rejection of claim 1 in Rejection 2. Accordingly, we reverse Rejections 3–8 for similar reasons as discussed above with respect to Rejection 2. Appeal 2020-004949 Application 14/757,918 14 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–13, 15–23, 25 112(b) Indefiniteness 1–5, 7–13, 15–23, 25 1, 5, 9, 19, 23 103 Lee, Drennen, O’Donoghue 1, 5, 9, 19, 23 2, 3, 20 103 Lee, Drennen, O’Donoghue, Boer 2, 3, 20 4, 7, 8, 22, 25 103 Lee, Drennen, O’Donoghue, Won 4, 7, 8, 22, 25 10, 11, 15– 18 103 Lee, Drennen, O’Donoghue, Boer, Won 10, 11, 15– 18 12 103 Lee, Drennen, O’Donoghue, Won, Boer, Grant 12 13 103 Lee, Drennen, O’Donoghue, Won, Boer, Chen 13 21 103 Lee, Drennen, O’Donoghue, Boer, Grant 21 Overall Outcome 1–5, 7–13, 15–23, 25 REVERSED Copy with citationCopy as parenthetical citation