Ex Parte 7,999,412 B2 et al

Patent Trial and Appeal Board

Mar 30, 2016

90013231 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/013,231 05/05/2014
112006 7590 03/31/2016
Graham Curtin, P,A,
4 Headquarters Plaza
Morristown, NJ 07962
FIRST NAMED INVENTOR
7,999,412 B2
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
COM0064 2451
EXAMINER
REICHLE, KARIN M
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
03/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE PATENT TRIAL AND APPEAL BOARD
Exparte COMARCO WIRELESS TECHNOLOGIES, INC.,
Appellant and Assignee
Appeal2016-000356
Reexamination Control 90/013,231
Patent 7,999,412 B2
Technology Center 3900
Before DENISE M. POTHIER, ANDREW J. DILLON, and
JENNIFER L. McKEOWN, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination of
U.S. Patent 7,999,412 B2 (the "'412 patent") issued to Thomas W. Lanni on
August 16, 2011. Reexamination of claims 1 and 21 was requested. The
rejection of claims 1 and 21 is the subject of the instant appeal.
THE '412 PATENT
The '412 patent generally relates to a detachable tip for coupling
Direct Current (DC) power adapters to electronic devices and having the tip
provide communication to power adapters and electronic devices. '412
patent, col. 1, 11. 15-18. More specifically, the claimed invention is directed
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Patent 7,999,412 B2
Reexamination Control 90/013 ,231
to a tip including circuitry that transmits to the electronic device, via the
output connector, a power output indication signal representative of an
amount of power available to be supplied to the electronic device by the
adapter. '412 patent, Abstract.
Claim 1, which is illustrative of the appealed subject matter, has not
been amended during reexamination and reads as follows:
1. A tip for transferring DC power generated by an adapter
to an electronic device, the tip comprising:
an input connector which is detachably mateable to a
connector which is electrically coupled to the DC power
generated by the adapter;
an output connector which is detachably mateable to the
electronic device;
a plurality of conductors to transfer the DC power from the
input connector to the output connector to provide the DC power
to the electronic device; and
power indication circuitry to transmit to the electronic
device via the output connector a power output indication signal
representative of an amount of power available to be supplied to
the electronic device by the adapter.
App. Br. 29 (Claims App'x).
PRIOR ART REJECTIONS
The Examiner relies on the following references:
Chen
Long
Sawyers
us 5,783,927
US 2004/0018774 Al
US 2006/0174143 Al
July 21, 1998
Jan.29,2004
Aug. 3, 2006
The Examiner rejected the appealed claims on the following bases:
1. Claims 1and21under35 U.S.C. § 102(b) as being anticipated by
Long.
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Patent 7,999,412 B2
Reexamination Control 90/013 ,231
2. Claim 1under35 U.S.C. §§ 102(a) or 102(e) as being anticipated
by Sawyers.
3. Claim 21under35 U.S.C. § 103(a) as being unpatentable over
Sawyers, Chen, and Long.
Ans. 3. 1
The Patent Owner additionally relies on the Declaration of Douglas
Bennett ("Bennett Deel.") in support of the presented arguments.
ISSUE
Does Long disclose power indication circuitry to transmit to the
electronic device via the output connector a power output indication signal
representative of an amount of power available to be supplied to the
electronic device by the adapter, as recited in claim 1?
ANALYSIS
THE ANTICIPATION REJECTION BASED ON LONG
Based on the record before us, we are not persuaded that the Examiner
erred in finding that Long anticipates claims 1 and 21 of the '412 patent.
Figure 5 of Long is reproduced below.
1 The Examiner indicates the rejections of claims 41--43 have been
withdrawn. Ans. 3-5.
3
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Patent 7,999,412 B2
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f
I \ ' VREF
FIG. 5
I
f
140
,. __ ,., ........ /
In Long, the notebook computer, i.e., the electronic device, includes
an internal reference resistor (RREF 142) that is in series with an adapter ID
resistor (Rm 218) when the electronic device and adapter are connected.
The notebook computer applies a known voltage V APP across the ground and
adapter contacts and measures the voltage at the internal reference resister
(RREF 142). Long i-f 38. The notebook computer uses this measured voltage
to calculate the voltage across the adapter ID resistor, Vm, and the value of
the ID resistor, Rm, which represents the power rating of the adapter. Id.
The Patent Owner contends that Long fails to disclose transmitting to
the electronic device a power output indication signal representative of an
amount of power available to be supplied to the electronic device by the
adapter. App. Br. 12. According to the Patent Owner, "[b]ecause the
measured voltage [in Long] is generated across a component inside a
notebook computer (i.e., an electronic device), no signal can be said to be
transmitted to an electronic device." Id.; see also App. Br. 13 ("Because the
measured voltage signal V REF is generated across the reference resistor RREF
inside the electronic device, the measured reference voltage V REF is not
generated by an adapter or tip, and is not transmitted by a tip to an electronic
device") (bolding and emphasis in original); App. Br. 19 ("Thus, in Long, a
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Patent 7,999,412 B2
Reexamination Control 90/013 ,231
notebook computer applies a known voltage across a resistor in the notebook
computer. The signal originates and is measured in the electronic device.
The measured voltage cannot be said to be 'transmitted to' the electronic
device, as required by claims 1 and 21 "); Bennet Deel. i-fi-f 18-21, 24.
The Examiner, however, explains that "information/signal of the
resistance by R[InJ to flow of current in the circuit [is] transmitted to [the]
point of measurement ofV[REFJ." Ans. 42--43 (citing Long i138) (emphasis
added). As such, the Examiner does not identify VREF as the recited signal
but instead relies on the transmission of Rm information/signal to the point
of measurement within the notebook computer. In other words, the Rm
information/signal in Long is transmitted or conveyed2 to the notebook
computer, i.e., the electronic device.
The Patent Owner fails to persuasively address to these findings.
Namely, Patent Owner does not present any arguments with respect to the
transmission or conveyance of Rm information/signal to the notebook
computer. Instead, Patent Owner asserts that the Examiner interprets the
claims as to not require transmission of the recited signal to the electronic
device. See, e.g., App. Br. 15-18; App. Br. 17 ("Thus, the Examiner would
broadly expand the scope of claims 1 and 21 to include the transmission of
the power availability signal from an electronic device to a tip"); Reply Br.
3--4; Bennett Deel. i-fi-f 15-17.
2 See, e.g., App. Br. 15 ("To one of ordinary skill in the power supply art,
'transmit' means to send, or '[t]o convey or dispatch from one person, thing,
or place to another.' Webster's Collegiate Dictionary (Tenth Ed.
1997)")(footnote omitted).
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First, Patent Owner's characterization are unpersuasive to identify
error because, as discussed above, the Examiner finds that Long discloses
transmission of the Rm information/signal to the electronic device. See Ans.
42--43.
Moreover, we disagree with Patent Owner's characterization of the
Examiner's interpretation. The Examiner, rather, determines that the Patent
Owner's arguments are not commensurate with the scope of the claim. Ans.
42; Final Act. 7-8. For example, the Examiner determines that the claims
do not require the adapter to generate the power output indication signal or
transmit through the tip such signal, i.e., a signal generated by the adapter.
See Final Act. 8; see also Ans. 42 (noting the same).
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded that the Examiner erred in rejecting claims 1 and 21 as
anticipated by Long.
THE REMAINING REJECTIONS
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing prior art reference, we need not
reach the merits of the Examiner's decision to reject the claims based on the
additionally cited prior art. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir.
2009) (not reaching other rejections after upholding an anticipation
rejection); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed.
Cir. 1984) (approving ITC's determination based on a single dispositive
issue, and not reaching other issues not decided by the lower tribunal).
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DECISION
The Examiner's decision to reject claims 1 and 21 is affirmed.
Requests for extensions of time in this ex partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
PATENT OWNER:
GRAHAM CURTIN; P.A.
4 HEADQUARTERS PLAZA
MORRISTOWN, NJ 07962
THIRD-PARTY REQUESTER:
STOEL RIVES LLP - SLC
ONE UTAH CENTER
AFFIRMED
201 SOUTH MAIN STREET, SUITE 1100
SALT LAKE CITY, UT 84111
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