Ex Parte Wojcik

Patent Trial and Appeal Board

Sep 25, 2018

15017894 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/017,894 02/08/2016
95011 7590 09/27/2018
Otter Products IP: Todd Adelmann
Otter Products, LLC
209 S. Meldrum Street
Fort Collins, CO 80521
FIRST NAMED INVENTOR
James J. Wojcik
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.
OTTR1073USU01 5955
EXAMINER
CHAKRABORTY,RAJARSHI
ART UNIT PAPER NUMBER
2666
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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@otterproducts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES J. WOJCIK
Appeal2018-003277
Application 15/017,894
Technology Center 2600
Before CARLA M. KRIVAK, JEREMY J. CURCURI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-19, 22, and 23. See Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b ).
Claims 1, 3---6, 10-13, 17, 19, 22, and 23 are rejected under 35 U.S.C.
§ 103 as obvious over Foster (US 9,153,109 Bl; Oct. 6, 2015) and Lapetina
(US 2015/0364938 Al; Dec. 17, 2015). Final Act. 4--18.
Claims 2 and 9 are rejected under 35 U.S.C. § 103 as obvious over
Foster, Lapetina, and Bell (US 2015/0111626 Al; Apr. 23, 2015). Final Act.
18-20.
1 According to the Appeal Brief, the real party in interest is Otter Products,
LLC. App. Br. 2.
Appeal2018-003277
Application 15/017,894
Claims 7 and 8 are rejected under 35 U.S.C. § 103 as obvious over
Foster, Lapetina, and Kamitani (US 2007 /0052600 Al; Mar. 8, 2007). Final
Act. 21-23.
Claims 14 and 18 are rejected under 35 U.S.C. § 103 as obvious over
Foster, Lapetina, and Lee (US 2010/0171234 Al; July 8, 2010). Final Act.
23-25.
Claims 15 and 16 are rejected under 35 U.S.C. § 103 as obvious over
Foster, Lapetina, and Wang (US 2016/0261133 Al; Sept. 8, 2016). Final
Act. 25-28.
We reverse.
STATEMENT OF THE CASE
Appellant's invention relates to "electronic device cases and covers
that enhance electromagnetic inductive interactions between the electronic
devices and other devices." Spec. ,r 2. Claim 1 is illustrative and reproduced
below:
1. A protective case for an electronic device, the
electronic device having a housing and wireless charging
circuitry and a wireless charging coil inside the housing
proximate a back surface of the electronic device, the protective
case compnsmg:
a shell for receiving and at least partially covering the
electronic device, the shell comprising a first material and
having a back portion and side portions extending from the
back portion, the back portion of the shell configured to be
adjacent to the back surface of the electronic device when the
electronic device is installed in the protective case; and
a core comprising a second material that has a magnetic
permeability substantially greater than a magnetic permeability
of the first material, the core affixed to the back portion of the
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Application 15/017,894
shell at a location on the back portion that coincides with a
center region of the wireless charging coil of the wireless
charging circuitry of the installed electronic device, the core to
increase magnetic inductive coupling between the wireless
charging coil of the installed electronic device and a source
charging coil when the protective case with the installed
electronic device is placed in proximity to the source charging
coil.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIMS 1, 3---6, 10-13, 17, 19, 22, and 23
OVER FOSTER AND LAPETINA
Contentions
The Examiner finds Foster and Lapetina teach all limitations of claim
1. Final Act. 4--8. In particular, the Examiner finds "Foster discloses a ferrite
core 706 in Fig. 7 at the center of its back 200 (Column 4 lines 32-35) but
does not explicitly disclose wireless charging in the manner claimed." Final
Act. 5 ( emphasis omitted). The Examiner finds Lapetina teaches the
limitations missing in Foster. See Final Act. 6-7. The Examiner reasons:
It would have been obvious to a person of ordinary skill
in the art at the time the invention was filed to incorporate the
teaching of Lapetina into the system of Foster, and include
Lapetina's wireless charging system into a mobile device's
protective cover of Foster, in order to recharge a battery of the
mobile device via electromagnetic energy (Lapetina Paragraph
28) efficiently via a ferrite sheet that increases electromagnetic
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Application 15/017,894
energy transfer (Lapetina Paragraphs 51 and 66) while reducing
heating of the mobile device via redirection of electromagnetic
flux (Lapetina Paragraph 66).
Final Act. 7-8 ( emphasis omitted).
Appellant presents the following principal argument: "Appellant
respectfully contends that one of ordinary skill would not have been
motivated to modify Foster in the manner proposed by the Final Office
Action because such a modification would have rendered Foster
unsatisfactory for its intended purpose as a theft-detection device." App. Br.
6.
However, Foster discloses that if the theft-detection
device interacts with a mobile device "such that one or more
portions of mobile device 102 provide a parasitic inductance or
parasitic capacitance that changes the overall inductance or
capacitance of the theft-detection device," and that this
interaction "would thereby change the harmonic response of the
theft-detection device." Id., col. 5 lines 7-13. Foster further
discloses that changing the harmonic response of the theft-
detection device would "caus[ e] the response signal to be
outside of the frequency band expected for the theft-detection
device." Id., col. 5 lines 13-15.
Modifying Foster to include a wireless charging system
into the cover to recharge the battery via electromagnetic
energy as proposed by the Examiner would necessarily result in
a change in the overall inductance or capacitance of the theft-
detection device, such as a parasitic inductance or capacitance.
Such a parasitic inductance or capacitance would change the
harmonic response of the theft-detection device, and Foster
itself teaches that such a change would cause the response
signal to be outside the expected frequency band for detection
by the EAS system. Id.
App. Br. 7.
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Application 15/017,894
In response, the Examiner explains: "If applicant wants to preclude
the scenario where no [sic] change in capacitance or inductance or harmonic
response ( or any of the other factors the appellant thinks should remain
constant) is allowed, it should be positively recited in the claim language."
Ans. 27.
In reply, Appellant explains: "While the combination would
necessarily result in such a change, Appellant respectfully submits that one
of ordinary skill would not have been motivated to make the proposed
modification because Foster itself teaches that such a change in inductance
and capacitance would render Foster's device unsuitable for its intended
purpose." Reply Br. 5-6.
Our Review
Foster discloses: "Theft-detection device 704 in one embodiment is
constructed of a conductor 708 wrapped around a ferrite core 706 as shown
in FIG. 7 ." Foster col. 4, 11. 31-33.
Foster further discloses:
Distance 1104 is provided so that the interrogating signal
provided by the electronic article surveillance system is less
likely to be shielded from theft-detection device 704 by mobile
device 102 and to make it less likely that the response signal
generated by theft-detection device 704 is shielded from the
electronic article surveillance system by mobile device 102. In
addition, distance 1104 reduces the likelihood that mobile
device 102 will alter the LC response of theft-detection device
704. Without distance 1104, it is possible for mobile device 102
to interact with theft-detection device 704 such that one or
more portions of mobile device 102 provide a parasitic
inductance or parasitic capacitance that changes the overall
inductance or capacitance of the theft-detection device. This
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Application 15/017,894
would thereby change the harmonic response of the theft-
detection device causing the response signal to be outside of the
frequency band expected for the theft-detection device.
Foster col. 4, 1. 66-col. 5, 1. 15 ( emphasis added).
Thus, Appellant's principal argument against the Examiner's
proposed modification is supported by evidence drawn from the record. See
Foster col. 5, 11. 12-15 ("[changing the overall inductance] would thereby
change the harmonic response of the theft-detection device causing the
response signal to be outside of the frequency band expected for the theft-
detection device"); see also Tee Air, Inc. v. Denso Mfg. Michigan Inc., 192
F.3d 1353, 1360 (Fed. Cir. 1999) (Where the proposed modification would
render the prior art invention being modified unsatisfactory for its intended
purpose, the proposed modification would not have been obvious.).
The Examiner's response to Appellant's argument does not address
Appellant's argument. The Examiner does not provide findings or reasoning
rebutting Appellant's argument. Instead, the Examiner takes the position that
the claims do not preclude changes to the harmonic response. See Ans. 27-
28. Appellant, however, did not argue that the claims preclude changes to
the harmonic response; Appellant argued that the proposed combination
rendered Foster unsatisfactory for its intended purpose and supported the
argument with evidence drawn from the record (i.e., Foster). See App. Br. 6-
8; see also Reply Br. 5---6.
Thus, on the record before us, weighing the Examiner's reasons for
combining the teachings of the references against Appellant's arguments
supported with evidence from Foster and unrebutted by the Examiner, we
disagree with the Examiner's conclusion of obviousness.
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We, therefore, do not sustain the Examiner's rejection of claim 1. We
also do not sustain the Examiner's rejection of claims 3-6, 10, 22, and 23,
which depend from claim 1.
In rejecting independent claims 11 and 17, the Examiner uses the
same reasons for combining the teachings of Foster and Lapetina. See Final
Act. 12-13, 15-16. We, therefore, also do not sustain the Examiner's
rejection of independent claims 11 and 17 or the rejection of claims 12, 13,
and 19, which variously depend from independent claims 11 and 17.
THE REMAINING REJECTIONS
As the remaining references do not cure the deficiency in the rejection
of the independent claims based on Foster and Lapetina (see Final Act. 18-
28; see also Ans. 28-30), we also do not sustain the Examiner's rejection of
claims 2 and 9 as obvious over Foster, Lapetina, and Bell; claims 7 and 8 as
obvious over Foster, Lapetina, and Kamitani; claims 14 and 18 as obvious
over Foster, Lapetina, and Lee; and claims 15 and 16 as obvious over Foster,
Lapetina, and Wang.
ORDER
The Examiner's decision rejecting claims 1-19, 22, and 23 is
reversed.
REVERSED
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