Intel Corporation

Patent Trials and Appeals Board

Jun 28, 2021

2020004949 (P.T.A.B. Jun. 28, 2021)

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.
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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
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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.
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Application 14/757,918

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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.

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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
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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
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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.
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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
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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
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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
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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
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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.
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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