Van Bosch, James A. et al.

Patent Trials and Appeals Board

Feb 4, 2020

14797418 - (D) (P.T.A.B. Feb. 4, 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 02/04/2020
Loppnow & Chapa
[Motorola]
P.O. Box 7588
Libertyville, IL 60048
EXAMINER
PEREZ GUTIERREZ, RAFAEL
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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 APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1 and 4–20.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

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.
2 Claims 2 and 3 are cancelled. Final Act. 2.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure “relates generally to hand held electronic
devices with a near field communication element, and more particularly, to
hand held electronic devices which include a near field communication
element and an associated sensor, which can include a further near field
communication element.” Spec. 1, ll. 5–8.
Claims 1, 9, and 20 are independent claims. Claim 1 illustrates the
claimed subject matter on appeal.
1. A hand held electronic device comprising:
a near field communication element located at a top of
the device, which is selectively enabled;
a user identification sensor, which is a second near field
communication element, and which confirms the identity of an
authorized user of the device, the user identification sensor
being located at a back side surface of the device, where the
user identification sensor senses a user interaction in an area at
the back side surface of the device and receives as part of the
interaction, user identification information corresponding to a
particular user presently using the device, and determines
whether the user identification information corresponding to the
particular user matches identification information for a
predetermined authorized user;
wherein upon confirming the identity of an authorized
user of the device by the user identification sensor, the near
field communication element located at the top of the device is
enabled, and wherein when the identity of an authorized user of
the device is not confirmed by the user identification sensor, the
near field communication element located at the top of the
device is not enabled.
Appeal Br. (Claims App.).

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REJECTIONS
Claims 1, 4–8, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Li3, Anemikos4, and Lanc5. Final Act. 12.
Claims 9–13 and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over Li and Lanc. Final Act. 3.
Claims 14 and 15 are rejected under 35 U.S.C. § 103 as unpatentable
over Li, Lanc, and Hillan6. Final Act. 8.
Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable over Li,
Lanc, and Anemikos. Final Act. 9.
Claims 17 and 18 are rejected under 35 U.S.C. § 103 as unpatentable
over Li, Lanc, and Yang7. Final Act. 11.

ANALYSIS
Claims 1, 4–8, and 20 as unpatentable over Li, Anemikos, and Lanc
Claims 1 and 4–8
As for claim 1, the Examiner finds that Li discloses a hand held
electronic device comprising a near field communication (NFC) element
(NFC antenna 20) located at a top of the device and which is selectively
enabled, and a second near field communication element (NFC antenna 10)
located at a back side surface of the device. Final Act. 12 (citing Li Fig. 3).
The Examiner relies on Anemikos as teaching a user identification
authentication system, which is a near field communication element for

3 Li et al., US 2015/0295623 A1, published Oct. 15, 2015 (“Li”).
4 Anemikos, US 2010/0011211 A1, published Jan. 14, 2010 (“Anemikos”).
5 Lanc, US 2008/0103972 A1, published May 1, 2008 (“Lanc”).
6 Hillan et al., US 2012/0309303 A1, published Dec. 6, 2012 (“Hillan”).
7 Yang et al., KR 20120110662 A, published Oct. 10, 2012 (“Yang”).
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confirming the identity of an authorized user of the device, as claimed. Id. at
13–14 (citing Anemikos ¶¶ 18–20, Fig. 1). The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to apply these
teachings of Anemikos to Li’s hand held electronic device such that Li’s
near field communications are used for near field authentication, as taught
by Anemikos, to “‘allow[] a user to gain access to secured assets without
requiring the user to remember or keep track of passwords.’” Id. at 14–15.
The Examiner further relies 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 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 15 (citing Lanc
¶¶ 90, 102). The Examiner concludes that it further would have been
obvious to one of ordinary skill in the art to apply these teachings of Lanc to
Li/Anemikos such that the authentication is used for the contactless payment
of Lanc to allow secure financial transactions to be carried out. Id. at 16.
The Examiner’s explains that the proposed modification of Li is based on
the rationale of “‘[a]pplying a known technique to a known device (method,
or product) ready for improvement to yield predictable results.’” Id. (citing
MPEP § 2143).
In contesting the rejection, Appellant notes that claim 1 provides for a
user identification sensor, which confirms the identity of an authorized user
of the hand held electronic device, and a near field communication element,
which is selectively enabled dependent upon whether or not an authorized
user has been confirmed by the user identification sensor. Appeal Br. 8.
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Appellant also notes that the enabling of the near field communication
element located at the top of the device is linked to the successful
determination of the identity of an authorized user by the second near field
communication element. Id. As such, Appellant contends, the claimed near
field communication elements are “operated distinctly.” Id.
Appellant acknowledges that Li discloses the use of multiple near
field communication elements, but contends that “their use is linked or tied
together, so that they operate in a joint manner consistent with the operation
of a single element,” whereas the claimed “two near field communication
elements separately operate relative to each other.” Id. at 5–6 (emphasis
added). Appellant contends that Li’s NFC antennas are commonly driven by
the same communication unit, which precludes their “independent
operation” or “separate operation.” Id. at 6 (citing Li ¶ 20).
The Examiner disagrees that Li precludes “independent operation” of
its antennas, stating:
Paragraph 0020 [of Li] states that either of the antennas
can be selected for data exchange, which would be an example
of independent operation. Paragraph 0020 further states that the
communication unit is shared to spare costs, which further
shows that two independent communication units would not
violate the principle of operation (it would simply be a less
preferred approach as it would be more expensive).
Advisory Act. 2.
Appellant contests the Examiner’s reading of Li. Appeal Br. 6.
According to Appellant, in Li, the selection between the first NFC antenna
and the second NFC antenna does not relate to a selective activation of one
or both antennas by the device, but instead relates to a user selecting which
one of the two antennas the user will have the external NFC element interact
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with. Id. Appellant contends that this operation is made clearer by the
description in paragraph 19 of Li that “‘the user can choose the first NFC
antenna 10 or the second NFC antenna 20 for data exchange with the
external NFC device N.’” Id. According to Appellant, in order for a user to
have this selection option in Li, both NFC antennas need to be active and
operating in a joint manner, because if only one antenna is active, then the
user no longer has an option and can no longer make such a selection
between the two respective sets of inductive coupling directions. Id. at 6–7.
Appellant further contends that Li’s description involving the “‘more
effective inductive coupling directions . . . at multiple angles to enhance the
operational convenience,’” and “the sharing of a single communication unit
by the first and second NFC antenna,” provide the purpose of Li, which
would be frustrated by the Examiners’ proposed modification of Li. Id. at 7
(citing Li ¶ 20, Abstract).
Appellant’s contentions are unpersuasive. First, claim 1 does not
recite that the two near field communication elements provide “separate
operation.” Claim 1 recites that the near field communication device located
at the top of the device is “selectively enabled.” Appellant does not identify
any definition or description in the Specification that limits selective
enabling to “separate operation” in some way. The Examiner finds that, in
Li, second NFC antenna 20 is selectively enabled. Final Act. 12. Appellant
does not apprise us of error in this finding.
Second, we are unpersuaded by Appellant that Li’s NFC antennas 10,
20 fail to provide “separate operation.” Appeal Br. 5–6. Li describes, for
example, that “the user can optionally make the first NFC antenna 10 or the
second NFC antenna 20 of the mobile phone 1 inductively coupled with the
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input signal emitted by the external NFC device N” (Li ¶ 17, boldface
omitted, emphasis added); “the user can choose the first NFC antenna 10 or
the second NFC antenna 20 for data exchange with the external NFC device
N” (¶ 19, boldface omitted, emphasis added); and “[t]he first NFC antenna
10 or the second NFC antenna 20 can be selected for data exchange with the
external NFC device N” (¶ 20, boldface omitted, emphasis added). These
passages disclose 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. The particular one of these antennas providing such data
exchange can be considered to be “selectively enabled” by the user. In view
of these teachings, Appellant’s unsupported attorney argument that Li needs
to operate in a joint manner (Appeal Br. 6–7) is not persuasive. See Becton,
Dickinson and Co. v. Tyco Healthcare Gp., LP, 616 F.3d 1249, 1260 (Fed.
Cir. 2010) (“Unsupported attorney argument, presented for the first time on
appeal, is an inadequate substitute for record evidence.”).
Third, the Examiner concedes that Li alone does not disclose or
suggest all limitations of claim 1 and relies on Anemikos and Lanc to teach
or suggest the missing limitations. Particularly, the Examiner relies on
Anemikos and Lanc to teach the enablement of a near field communication
element of an electronic device by a second near field communication
element of the device upon the second near field communication element
confirming the identity of an authorized user of the electronic device. The
proposed modification, in effect, merely 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. Appellant provides no
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evidence that this proposed modification of Li was uniquely challenging or
difficult for one of ordinary skill in the art. See Leapfrog Enterprises v.
Fisher–Price, 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Fourth, Appellant explicitly addresses the Examiner’s reliance on Li
only and fails to specifically address the Examiner’s reliance on the
interrelated teachings of Anemikos and Lanc. Appeal Br. 7–8. In other
words, Appellant merely attacks Li individually without addressing the
proposed combination of teachings of the references in rejecting claim 1.
However, non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Consequently, Appellant fails to apprise us of error in the Examiner’s
findings for Anemikos or Lanc, or in the Examiner’s reasoning as to why it
would have been obvious to persons of ordinary skill in the art to combine
the teachings of Anemikos and Lanc with Li’s teachings to result in the
claimed hand held electronic device in which the near field communication
element located at the top of the device is enabled by a second near field
communication element located at a back side of the device upon the second
near field communication element confirming the identity of an authorized
user of an electronic device. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (“Often, it will be necessary for a court to look to interrelated
teachings of multiple patents . . . to determine whether there was an apparent
reason to combine the known elements in the fashion claimed”).
Appellant also states, “a suggestion that the primary reference teaches
away from the features being claimed in the present application is entirely
appropriate,” which seems to be a contention that Li teaches away from the
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claimed device. Appeal Br. 8. “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
Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (citation omitted). “A prior
art reference evidences teaching away if it ‘criticize[s], discredit[s], or
otherwise discourage[s] the solution claimed.’” In re Brandt, 886 F.3d
1171, 1178 (Fed. Cir. 2018) (quoting In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004)). Here, Appellant fails to explain persuasively how the
disclosures of the applied references show that its claimed invention is
unlikely to be productive of the desired result. In re Berg, 320 F.3d 1310,
1316 (Fed. Cir. 2003) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994)). Moreover, Appellant’s contentions are based on the unsupported
attorney argument that Li’s near field communication elements do not
provide “separate operation” or “selective enabling,” an argument we find
unpersuasive as discussed above.
For the foregoing reasons, we sustain the rejection of claim 1, and its
dependent claims 4–8 which are not separately argued, as unpatentable over
Li, Anemikos, and Lanc.
Claim 20
Claim 20 is directed to a method of managing the operation of
multiple near field communication elements in hand held device, and recites
similar limitations as claim 1. Appeal Br. (Claims App.). Similar to claim
1, the Examiner’s rejection of claim 20 relies on Li as disclosing a hand held
electronic device comprising two near field communication elements (NFC
antennas 20, 10) (Final Act. 17–18); relies on Anemikos as teaching a user
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identification sensor, which is a near field communication element, for
confirming the identity of an authorized user of the device (id. at 18–20);
and relies on Lanc as teaching that, upon confirming the identity of a user as
an authorized user of a device by a user identification sensor, enabling
selectively a near field communication element located at the top of the
device, and not enabling the selectively enableable near field communication
element when the identity of the user of the device is not confirmed by the
user identification sensor (id. at 21–22).
Appellant contends that, similar to claim 1, claim 20 provides for
“confirming an identity of the present user . . . by a user identification
sensor,” where the outcome of the determination is used to selectively
alternatively enable or not enable the near field communication element
located at the top of the device. Appeal Br. 9. Appellant asserts that “such
an alternative operation that makes the operation of the user identification
sensor distinct from the operation of the near field communication is at odds
with the teachings of Li.”
For reasons similar to those discussed for claim 1, these contentions
are unpersuasive. Accordingly, we sustain the rejection of claim 20 as
unpatentable over Li, Anemikos, and Lanc.

Claims 9–13 and 19 as unpatentable over Li and Lanc
Claim 9 is directed to a hand held electronic device comprising “a first
near field communication element located at a top of the device . . . [and
which] operates in a card emulation mode for supporting a contactless card
payment,” and “a second near field communication element located at a back
side surface of the device . . . [and which] operates in a mode different than
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the card emulation mode within which the first near field communication
element operates.” Appeal Br. (Claims App.) (emphasis added).
In rejecting claim 9, the Examiner finds that Li discloses a first near
field communication element (NFC antenna 20) located at a top of a hand
held electronic device, and a second near field communication element
(NFC antenna 10) located at a back side surface of the device, where the
second near field communication element operates in a mode different from
a card emulation mode. Final Act. 4. The Examiner relies on Lanc as
teaching a first near field communication element that operates in a card
emulation mode for supporting a contactless card payment. Id. at 4–5 (citing
Lanc ¶ 91). The Examiner concludes that it would have been obvious to
apply Lanc’s teachings to Li’s hand held electronic device to use near field
communication for contactless payment as taught by Lanc to allow secure
financial transactions. Id. at 5 (citing Lanc ¶ 6).
Appellant contends that the respective two modes of operation of the
two near field communication elements recited in claim 9 are expressly
different, whereas, in contrast, Li’s two near field elements operate the same.
Appeal Br. 8. According to Appellant, “[e]lements that are taught to operate
the same, as provided by Li . . . can not make known or obvious a feature
which includes them operating in different modes.” Id. at 9.
These contentions are unpersuasive for reasons similar to those
discussed for claim 1. First, the Examiner concedes that Li alone does not
disclose or suggest all limitations of claim 9 and relies on Anemikos and
Lanc to teach or suggest the missing limitations. Li describes that “[a]s the
NFC antenna is developed, more and more handheld devices, such as mobile
phones, are equipped with the NFC antennas to function as electronic tags or
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simulated credit cards.” Li ¶ 4 (emphasis added). Thus, Li discloses
“contactless card payment,” as claimed. The Examiner relies on Lanc to
teach a second near field communication element located at a back side
surface of the device that operates in a mode different than a card emulation
mode within which another near field communication element operates. The
proposed modification changes the mode of operation of Li’s NFC antenna
10 to be different from that of NFC antenna 20. Appellant provides no
evidence that the Examiner’s proposed modification of Li was uniquely
challenging or difficult for one of ordinary skill in the art.
Second, like for claim 1, Appellant explicitly addresses the
Examiner’s reliance on Li only and fails to specifically address the
Examiner’s reliance on the teachings of Lanc. However, non-obviousness
cannot be established by only attacking Li individually because the rejection
is based upon the teachings of a combination of references. In re Keller, 642
F.2d at 425. Consequently, because Appellant fails to apprise us of error in
the Examiner’s findings for Lanc, or in the Examiner’s reasoning as to why
it would have been obvious to persons of ordinary skill in the art to combine
the reference teachings to result in the claimed hand held electronic device,
we sustain the rejection of claim 9 as unpatentable over Li and Lanc.

Claims 14 and 15 as unpatentable over Li, Lanc, and Hillan
Claim 16 as unpatentable over Li, Lanc, and Anemikos
Claims 17 and 18 as unpatentable over Li, Lanc, and Yang
Appellant relies only on the dependency of claims 14–18 from parent
claim 9 for patentability. Appeal Br. 9. As Appellant does not apprise us of
error in the Examiner’s rejection of claim 9, we thus sustain the rejection of
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claims 14 and 15 as unpatentable over Li, Lanc, and Hillan, claim 16 as
unpatentable over Li, Lanc, and Anemikos, and claims 17 and 18 as
unpatentable over Li, Lanc, and Yang, for the same reasons as for claim 9.

DECISION SUMMARY
In summary:
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

FINALITY AND RESPONSE

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).

AFFIRMED