Motorola Mobility LLC

Patent Trials and Appeals Board

May 29, 2020

14797418 - (R) (P.T.A.B. May. 29, 2020)

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.
14/797,418 07/13/2015 James A. Van Bosch MM01120 2871
73635 7590 05/29/2020
Loppnow & Chapa
[Motorola]
P.O. Box 7588
Libertyville, IL 60048
EXAMINER
PEREZ GUTIERREZ, RAFAEL
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
05/29/2020 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):
docketing.mobility@motorola.com
docketing@loppchap.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JAMES A. VAN BOSCH, IYENGAR SRIRAM KAUSHIK, and
PAVEL SHOSTAK
__________

Appeal 2019-003617
Application 14/797,418
Technology Center 2600
__________

Before EDWARD A. BROWN, JAMES P. CALVE, and
PAUL J. KORNICZKY, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
In reply to the Decision on Appeal (hereinafter “Dec.”), Appellant1
filed a Request for Rehearing pursuant to 37 C.F.R. § 41.52 (hereinafter
“Req.”), contending that the Board misapprehended and/or overlooked “at
least a couple of points” “[i]n sustaining the alleged obviousness in
combining the references.” Req. 1.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F .R. § 1.42. Appellant identifies the real party in interest as Motorola
Mobility LLC. Appeal Br. 2.
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Application 14/797,418

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A Request for Rehearing must comply with the following provisions
of 37 C.F.R. § 41.52(a)(l):
The request for rehearing must state with particularity the points
[of law or fact] believed to have been misapprehended or
overlooked by the Board. Arguments not raised, and Evidence
not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47
are not permitted in the request for rehearing except as permitted
by paragraphs (a)(2) through (a)(4) of this section.

For the reasons discussed below, the Request fails to establish that the
Board misapprehended or overlooked a point of fact or law in the Decision.
Consequently, the Request for Rehearing is denied.

ANALYSIS
First, Appellant contends that the Board erred in determining that
Appellant failed to apprise the Board of error in the Examiner’s findings in
regard to Anemikos or Lanc, or of error in the Examiner’s reasoning as to
why it would have been obvious to one of ordinary skill in the art to
combine the teachings of Anemikos and Lanc with Li’s. Req. 1; Dec. 8.
The Decision explained that Appellant explicitly addressed the
Examiner’s reliance on Li only, without also addressing the Examiner’s
reliance on the interrelated teachings of Anemikos and Lanc that were
combined with Li’s teachings. Dec. 8. Appellant explicitly addressing only
passages in Li did not apprise the Board of error in the Examiner’s specific
findings as to the other applied references, Anemikos and Lanc; in the
Examiner’s proposed combination of the specific teachings of the three
references; or in the Examiner’s articulated reasoning why it would have
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Application 14/797,418

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been obvious to combine the teachings the three references to result in the
claimed subject matter.
Second, Appellant’s statement that Li’s teachings “would actually
lead one away from the subject matter being claimed as part of the present
application” implies Appellant believes that Li teaches away from the
claimed subject matter. Req. 2 (emphasis added). As noted in the Decision,
Appellant previously argued that “‘a suggestion that the primary reference
teaches away from the features being claimed in the present application is
entirely appropriate,’” which the Board interpreted as “a contention that Li
teaches away from the claimed device.” Dec. 8–9 (emphasis added).
Appellant asserts, the Decision “seems to discount the argument made by . . .
[Appellant] because it is not directed to the solution being claimed.” Req. 2.
However, the Board addressed Appellant’s teaching away argument. The
Board found that argument unpersuasive, stating that “Appellant fail[ed] to
explain persuasively how the disclosures of the applied references show that
its claimed invention is unlikely to be productive of the desired result.” Dec.
9 (emphasis added). The Board maintains that Appellant failed to address
the combination of specific disclosures of the applied references relied on by
the Examiner.
Third, Appellant asserts, “it would not be obvious to combine the
references’ teachings, because the alleged combination and corresponding
modification in a manner that would make the claims obvious, would
frustrate at least some of the intended purposes of Li. . . .” Req. 1–2
(emphasis added). Appellant also states that the Examiner’s proposed
modification of Li “would preclude the primary reference [Li] from
continuing to function relative to at least some of its noted concerns and
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stated purposes.” Id. at 2 (emphasis added). According to Appellant, Li’s
stated purpose “serves to extend the operational transmission direction of the
RF transmissions to encompass multiple directions associated with multiple
NFC antennas and allow them to share one communication unit (see
abstract).” Id. at 4.
These contentions are also unpersuasive. As explained in the
Decision, the Examiner found Li discloses a hand held electronic device
comprising a near field communication element (second NFC antenna 20)
located at a top of the device and which is selectively enabled, and a second
near field communication element (first NFC antenna 10) located at a back
side surface of the device. Dec. 3. The Board was unpersuaded by
Appellant’s contention that Li’s near field communication elements do not
provide “separate operation” or “selective enabling.” Id. at 6–7. The
Decision also explained that Li “‘disclose[s] that either the first NFC
antenna 10 or the second NFC antenna 20 can optionally be selected for data
exchange with an external NFC device,” where “‘[t]he particular one of the
first NFC antenna 10 or the second NFC antenna 20 that provides such data
exchange can be considered to be ‘selectively enabled’ by the user.’” Id. at
7. As such, Li’s device provides for data exchange between NFC antenna 20
and an external NFC device that can be selectively enabled or controlled.
The Board also explained that the Examiner relied on Anemikos as
teaching a near field communication element for confirming the identity of
an authorized user of the device (Dec. 3–4), and relied on Lanc as teaching
that, upon confirming the identity of an authorized user of a device by a user
identification sensor, a near field communication element located at the top
of the device is enabled, and when the identity of an authorized user of the
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device is not confirmed by the user identification sensor, the near field
communication element located at the top of the device is not enabled (id. at
4). The Examiner concluded that it would have been obvious to combine
these teachings of Anemikos and Lanc with Li. Id.
The Examiner’s proposed combination would still allow data
exchange between Li’s NFC antenna 20 and an external NFC device to be
selectively enabled or controlled by a user identification sensor. Even if the
Examiner’s proposed combination may affect some intended purpose of Li’s
device, a combination of references may simultaneously have both
advantages and disadvantages, and the benefits, both lost and gained, are to
be weighed against each other. See Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006); see also In re Urbanski, 809 F.3d 1237,
1244 (Fed. Cir. 2016) (“As the Board properly found, one of ordinary skill
would have been motivated to pursue the desirable properties taught by
Wong, even if that meant foregoing the benefit taught by Gross. And
Urbanski’s claims do not require Gross’s benefit that is arguably lost by
combination with Wong.”). The Board explained that the proposed
combination, in effect, modifies Li’s “manual activation” of an NFC antenna
by a user’s selection with “automatic activation” of an NFC antenna of Li’s
device by the device itself. Dec. 7. The combination of teachings thus
provides the advantage of automatic activation, even if the combination may
simultaneously affect RF transmission directions provided by Li’s device.2

2 In regard to such RF transmissions, Li describes, “[i]n addition, one of
ordinary skill in the art can pull the third NFC antenna 40 out of the carrier
surface 12 to mount the third NFC antenna 40 to another position of the
mobile phone 1 to make the RF transmission direction of the third NFC
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Although the Examiner’s proposed modification of Li relies on the KSR-
supported rationale of applying a known technique to a known device ready
for improvement to yield predictable results (Dec. 4), Appellant appears to
disregard the advantage or improvement resulting from the combination.
Appellant’s assertion that the Board “discount[ed] the expressly noted
claimed concept of ‘selectively enabled’” is unpersuasive. Req. 3. The
Board specifically addressed this “concept,” but found Appellant’s argument
that Li lacks this concept to be unpersuasive. Appellant appears to also
contend that the Board did not appropriately consider the entire “wherein”
clause of claim 1. Id. However, the Board explained how the proposed
combination would include all limitations of the “wherein” clause.
For the above reasons, Appellant’s contention that the Board
overlooked or misapprehended a point of law or fact in regard to claim 1 is
unpersuasive. The Board remains unpersuaded that the Examiner erred in
rejecting claims 1 and 4–20 as unpatentable over Li in combination with one
or more of Anemikos, Lanc, Hillan, and Yang.

antenna 40 different from those of the first and second NFC antennas 10,
20.” See Li ¶ 22 (emphasis added), Fig. 3. Thus, Appellant’s contention
that the proposed modification of Li, which the Examiner does not appear to
indicate would affect the RF transmission direction of third NFC antenna 40,
would undermine Li’s stated purpose of extending RF transmissions to
encompass multiple directions with multiple antennas that share a
communication unit is unpersuasive. See Req. 4.
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Application 14/797,418

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DECISION SUMMARY
The Board has granted the Request to the extent the Decision has been
reconsidered, but the Request is denied as to making any changes thereto.

Outcome of Decision on Rehearing:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Denied Granted
1, 4–8, 20 103 Li, Lanc,
Anemikos
1, 4–8, 20
9–13, 19 103 Li, Lanc 9–13, 19
14, 15 103 Li, Lanc,
Hillan
14, 15
16 103 Li, Lanc,
Anemikos
16
17, 18 103 Li, Lanc,
Yang
17, 18
Overall
Outcome
1, 4–20

Final Outcome of Appeal after Rehearing:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 4–8, 20 103 Li, Lanc,
Anemikos
1, 4–8, 20
9–13, 19 103 Li, Lanc 9–13, 19
14, 15 103 Li, Lanc,
Hillan
14, 15
16 103 Li, Lanc,
Anemikos
16
17, 18 103 Li, Lanc,
Yang
17, 18
Overall
Outcome
1, 4–20

Appeal 2019-003617
Application 14/797,418

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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).

DENIED