MONILE TECH INC ( PATENT OWNER) et al.

Patent Trials and Appeals Board

Feb 11, 2022

2022001034 (P.T.A.B. Feb. 11, 2022)

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. 90/014,363 08/09/2019 10026281 10463-023RX1 6155 34395 7590 02/11/2022 OLYMPIC PATENT WORKS PLLC 4979 Admiral Steet Gig Harbor, WA 98332 EXAMINER NGUYEN, LINH M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/11/2022 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 THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MOBILE TECH, INC. Patent Owner and Appellant ____________ Appeal 2022-001034 Reexamination Control 90/014,363 United States Patent 10,026,281 B2 Technology Center 3900 ____________ Before JOHN A. JEFFERY, TERRENCE W. McMILLIN, and MICHAEL J. ENGLE, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s decision to reject claims 1-30. We have jurisdiction under 35 U.S.C. §§ 134 and 306. We AFFIRM. 1 Appellant identifies the real party in interest as Mobile Tech, Inc. Appeal Br. 1. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 2 STATEMENT OF THE CASE This proceeding arose from a request for ex parte reexamination filed on August 9, 2019 of United States Patent 10,026,281 (“the ’281 patent”), issued to Henson et al. on July 17, 2018. The ’281 patent describes a display system for managing power and security of hand-held electronic devices sold to consumers at a retail location. The display supplies power to the devices and security sensors without continuous wiring or multi-conductor retractor cables. See Abstract. Claim 1 is illustrative and reproduced below: 1. A cable management apparatus for use in mounting an electronic device to a display the apparatus comprising: a puck assembly adapted to receive the electronic device; a base assembly; and a tether assembly adapted to connect the puck assembly with the base assembly; wherein the puck assembly is adapted to be moveable between (1) a rest position in which (i) the puck assembly is in engagement with the base assembly and (ii) the puck assembly and the base assembly are connected to the tether assembly, and (2) a lift position in which (i) the puck assembly is disengaged from the base assembly and (ii) the puck assembly and the base assembly are connected to the tether assembly; wherein the base assembly comprises a base assembly electrical contact, the base assembly electrical contact configured to receive power from a power source; wherein the puck assembly comprises (1) a puck assembly electrical contact, (2) a power storage device, and Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 3 (3) puck assembly circuitry connected to the puck assembly electrical contact and the power storage device; wherein the base assembly electrical contact and the puck assembly electrical contact are adapted to contact each other when the puck assembly is in the rest position to form an electrical connection between the puck assembly circuitry and the power source; wherein the puck assembly circuitry is configured to, when the puck assembly is in the rest position, draw power from the power source through the electrical connection and provide the drawn power to the power storage device to charge the power storage device; and wherein the base assembly electrical contact and the puck assembly electrical contact are adapted to lose contact with each other in response to movement of the puck assembly from the rest position to the lift position to thereby break the electrical connection. THE REJECTIONS The Examiner rejected claims 1 and 25 on the ground of nonstatutory double patenting over claims 13 and 47 of Henson (US 10,373,456 B2; issued Aug. 6, 2019) (“Henson ’456”). Final Act. 3-6.2 The Examiner rejected claims 1 and 25 on the ground of nonstatutory double patenting over claim 1 of U.S. Application No. 16/527,565 (“’565 2 Throughout this opinion, we refer to (1) the Final Rejection mailed April 14, 2021 (“Final Act.”); (2) the Appeal Brief filed August 16, 2021 (“Appeal Br.”); (3) the Examiner’s Answer mailed October 5, 2021 (“Ans.”); and (4) the Reply Brief filed December 6, 2021 (“Reply Br.”). Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 4 application”) and Deconinck (US 7,327,276 B1; issued Feb. 5, 2008). Final Act. 6-12. The Examiner rejected claims 1 and 25 on the ground of nonstatutory double patenting over claims 1 and 15 of Henson (US 10,083,583 B2; issued Sept. 25, 2018) (“Henson ’583”). Final Act. 12-14. The Examiner rejected claim 25 on the ground of nonstatutory double patenting over claim 26 of Henson (US 9,786,140 B2; issued Oct. 10, 2017) (“Henson ’140”). Final Act. 14-15. The Examiner rejected claims 1 and 25 on the ground of nonstatutory double patenting over claims 1 and 17 of Henson (US 10,217,338 B2; issued Feb. 26, 2019) (“Henson ’338”). Final Act. 15-17. The Examiner rejected claims 1 and 25 on the ground of nonstatutory double patenting over claims 1 and 19 of Henson (US 10,861,300 B2; issued Dec. 8, 2020) (“Henson ’300”). Final Act. 18-19. The Examiner rejected claims 1-30 under 35 U.S.C. § 103 as unpatentable over Deconinck and Hotelling (US 7,352,567 B2; issued Apr. 1, 2008). Final Act. 20-71. The Examiner rejected claims 1-30 under 35 U.S.C. § 103 as unpatentable over Deconinck, Hotelling, and Burke (US 6,799,994 B2; issued Oct. 5, 2004). Final Act. 71-73. The Examiner rejected claims 13-21, 24, 28, and 29 under 35 U.S.C. § 103 as unpatentable over Deconinck, Hotelling, Burke, and Taylor (US 6,314,236 B1; issued Nov. 6, 2001). Final Act. 73-98. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 5 THE DOUBLE PATENTING REJECTION OVER HENSON ’456 The Examiner concludes that claims 1 and 25 are unpatentable on the ground of nonstatutory double patenting over claims 13 and 47 of Henson ’456. Final Act. 3-6. To support this conclusion, the Examiner reproduces the claimed limitations of both the ’281 patent and Henson ’456 in respective table columns, where each table row contains certain limitations of each patent. See id. Appellant argues that there are significant differences between the language of Henson ’456’s claims 1 and 25 and the language of various claims that the Examiner apparently finds are taught or suggested by that recited in Henson ’456’s claims 1 and 25. Appeal Br. 20-21. According to Appellant, the Examiner does not justify nor explain these findings, much less explain why the differences in claim language are not patentably distinct. Appeal Br. 21. As an example of these differences, Appellant notes that Henson ’456’s claims 13 and 47 lack “puck assembly circuitry” recited in claims 1 and 25 of the ’281 patent, nor is this circuitry equivalent to electrical contacts or a conductive path between contacts, particularly when the term “puck assembly circuitry” is interpreted in light of the Specification and the meaning of “circuitry” in the art. Appeal Br. 21-21; Reply Br. 2-4. ISSUE Has the Examiner erred in rejecting claims 1 and 25 as unpatentable on the ground of nonstatutory double patenting over claims 13 and 47 of Henson ’456? Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 6 ANALYSIS We begin by noting that the body of the Examiner’s double patenting rejection consists solely of tables listing reproduced claim limitations of the ’281 patent next to reproduced claim limitations of Henson ’456. See Final Act. 3-6. That is, the rejection is limited to these tables and their reproduced claim language: there is no accompanying explanation or analysis. See id. Although these tables enable comparing each patent’s respective claim language side-by-side, the lack of accompanying explanation or analysis is problematic particularly where, as here, there are differences between the claims-differences that demand an explanation why they are not patentably distinct to render the claims obvious variations of each other, particularly when challenged on appeal as is the case here. We emphasize this point, for our reviewing court has acknowledged “the difficulty [that] arises in all obviousness-type double patenting cases of determining when a claim is or is not an obvious variation of another claim.” In re Braat, 937 F.2d 589, 592 (Fed. Cir. 1991) (original emphasis omitted; our emphasis added). Given this difficulty, an explanation accompanying the tables is needed to substantiate the Examiner’s conclusion that the ’281 patent claims are unpatentable over those of Henson ’456, particularly in light of the claims’ respective differences. To this end, the analysis for nonstatutory double patenting is “similar to, but not necessarily the same as, that undertaken under 35 USC § 103.” Id. at 592-93. Accord Manual of Patent Examining Procedure (MPEP) Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 7 § 804(II)(B)(2) (9th ed. rev. 10.2019 June 2020) (quoting Braat).3 Given these similarities, the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966), that are applied for establishing obviousness under 35 U.S.C. § 103 should be considered for a nonstatutory double patenting analysis based on obviousness, as is the case here. See MPEP § 804(II)(B)(2). These factual inquiries involve (1) determining the scope and content of a patent claim relative to a claim in the application or patent at issue; (2) determining the differences between the scope and content of the patent claim and the claim in the application or patent at issue; (3) determining the level of ordinary skill in the pertinent art; and (4) evaluating any objective indicia of nonobviousness. Id. To be sure, failing to articulate each Graham factor is not fatal to the propriety of a nonstatutory double patenting rejection. See In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371, 1379 (Fed. Cir. 2008) (finding no 3 Although the MPEP does not have the force of law as Appellant indicates (Appeal Br. 11), it nonetheless reflects the USPTO’s interpretation of substantive law, and is commonly relied upon as a guide to patent attorneys and patent examiners on procedural matters. See Airbus S.A.S. v. Firepass Corp., 793 F.3d 1376, 1380 (Fed. Cir. 2015); see also MPEP Foreword (noting that the MPEP “contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application”). Moreover, as the Federal Circuit explains, the MPEP is entitled to judicial notice “so far as it is an official interpretation of statutes or regulations with which it is not in conflict.” Airbus, 793 F.3d at 1380. Therefore, to the extent Appellant contends that the MPEP cannot be cited as authority in connection with claim rejections (see Appeal Br. 11, 54)-a fundamental aspect of patent examination-we disagree. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 8 basis to reverse Board’s decision to affirm the Examiner’s double patenting rejection merely because the Board did not articulate each Graham factor expressly in its analysis). But where, as here, the Examiner’s rejection fails to (1) articulate any analysis apart from merely quoting the language of the relied-upon claims; (2) acknowledge the differences in that language; and (3) explain why those differences would have been obvious to ordinarily skilled artisans, the Examiner has not established nonstatutory double patenting on this record. The rejection is, therefore, erroneous for that reason alone. As the MPEP explains: Any nonstatutory double patenting rejection made under the obviousness analysis should make clear: (A) The differences between the inventions defined by the conflicting claims - a claim in the patent compared to a claim in the application; and (B) The reasons why a person of ordinary skill in the art would conclude that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent. MPEP § 804(II)(B)(2) (emphasis added). The Examiner’s double patenting rejection lacks both these elements, at least to the extent that they are made clear on the record. We reach this conclusion despite the textual differences between the claims being ascertainable by comparing each claim’s limitations side-by-side in the table provided in the rejection. But absent an accompanying explanation, readers must not only ascertain each of those differences on their own-differences Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 9 that can be numerous and significant-but also infer that the Examiner concludes that each of those differences would have been obvious despite not knowing why that is so. In other words, the Examiner’s relying solely on a table or claim chart in the nonstatutory double patenting rejection does not relieve the Examiner of making clear (1) the relied-upon claims’ differences, and (2) why those differences would have been obvious to ordinarily skilled artisans. See MPEP § 804(II)(B)(2). To be sure, tables and claim charts can be useful tools in this regard and, indeed, are used routinely in reexamination requests to present claim language side-by-side with teachings of cited references to facilitate comparison on a limitation-by-limitation basis. See MPEP § 2217(I) (noting that an appropriately detailed claim chart can be provided in a reexamination request that compares, limitation by limitation, each claim for which reexamination is requested with the relevant teachings of each cited reference). These claim charts can even be bodily incorporated in an Examiner’s Office Action. See MPEP § 2262. But using a claim chart in connection with an obviousness determination does not obviate, or otherwise supplant, the requirement to explain why the claim limitations detailed in that chart would have been obvious. See MPEP § 2217(I) (“For proposed obviousness rejections, requester must provide at least one basis for combining the cited references, and a statement of why the claim(s) under reexamination would have been obvious over the proposed reference combination.”) (bolding omitted; emphasis added). Accord MPEP § 2262 (requiring Examiners to carefully review claim charts to ensure that any items incorporated in a rejection Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 10 statement address the claims’ patentability clearly and completely). In short, addressing patentability clearly and completely in obviousness determinations that use a claim chart still requires explaining why the claims would have been obvious. To the extent the Examiner concludes that no analysis is required in such determinations because the associated claim charts match the cited patents’ similar limitations,4 we disagree. The exemplary claim charts in MPEP § 2214 illustrate this point, particularly Examples 2 and 3 where the charts not only provide a side-by- side comparison of the claim language and the relied-upon teachings of the cited references, but also explain why the claim would have been obvious over those references. That the Examiner’s nonstatutory double patenting rejection is based on a single reference, namely the claims of Henson ’456, and not multiple references in combination, does not change our conclusion. It is well settled that regardless of whether a rejection is based on (1) combining disclosures from multiple references; (2) combining multiple embodiments from a single reference; or (3) selecting from large lists of elements in a single reference, there must nevertheless be (a) a motivation to make the combination, and (b) a reasonable expectation that such a combination would be successful. In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). Otherwise, an ordinarily skilled artisan would not arrive at the claimed combination. Id. 4 See Ans. 6 (admitting there was no analysis in connection with the double patenting rejections because “the claimed limitation[s] are clearly matched with similar limitations accordingly as shown”). Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 11 To be sure, this requirement to articulate a combinability rationale to establish obviousness over a single reference does not squarely fit the Examiner’s double patenting rejection that is not based on combining elements from a single reference, but rather comparing its claims to those of the ’281 patent. Nevertheless, Stepan underscores the fundamental point that, like obviousness determinations based on multiple references, concluding that a claimed invention would have been obvious over a single reference still requires explaining why that is so. See id. We see no reason why this fundamental reasoning would not apply to a single-reference nonstatutory double patenting rejection particularly where, as here, there are differences in the language of the cited patents’ relied-upon claims, and patentability turns on whether those differences would have been obvious to ordinarily skilled artisans. In short, where, as here, the Examiner does not explain why those differences would have been obvious to ordinarily skilled artisans, there is no basis to conclude that the ’281 patent’s claims are unpatentable over those of the single reference relied upon by the Examiner, namely the claims of Henson ’456. To the extent the Examiner concludes otherwise,5 we disagree. To be sure, the Examiner’s Answer responds to Appellant’s argument regarding Henson ’456’s claims 13 and 47 lacking “puck assembly circuitry” recited in claims 1 and 25 of the ’281 patent. See Ans. 4. The “puck assembly circuitry” limitation is, however, merely one example of the 5 See Ans. 6 (admitting there was no analysis in connection with the double patenting rejections because “the claimed limitation[s] are clearly matched with similar limitations accordingly as shown”). Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 12 differences between the language of the cited patents’ relied-upon claims that renders the rejection erroneous. See Appeal Br. 21 (“[T]he [Examiner’s nonstatutory double patenting rejection] is not supported by merely listing claim language in two tables. Consider, for example, the fifth row of the portion of the first table shown on page 4 of the Office Action.”) (emphasis added). So even if we were to accept the Examiner’s finding that the recited “puck assembly circuitry” is allegedly “inherent” in Henson ’456’s claimed apparatus to establish a conductive path between the recited electrical contacts (Ans. 4)-which we do not-the Examiner has still not addressed the other differences between the cited patents’ relied-upon claims, much less explained why they would have would have been obvious to ordinarily skilled artisans to substantiate the nonstatutory double patenting rejection. Nor will we perform that fact-intensive analysis here in the first instance on appeal. Therefore, we are persuaded that the Examiner erred in rejecting claims 1 and 25 on the ground of nonstatutory double patenting over claims 13 and 47 of Henson ’456. Because this issue is dispositive regarding our reversing the Examiner’s rejection of these claims, we need not address Appellant’s other associated arguments. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 13 THE DOUBLE PATENTING REJECTION OVER HENSON ’583 For similar reasons, we do not sustain the Examiner’s nonstatutory double patenting rejection of claims 1 and 25 over claims 1 and 15 of Henson ’583. See Final Act. 12-14. We reach this conclusion despite the fact that Henson ’583’s claims 1 and 15 recite “puck assembly circuitry,” thus rendering Appellant’s arguments regarding that particular limitation in connection with Henson ’456 that lacks that limitation inapplicable here. See Appeal Br. 21-28; Reply Br. 2-5. Nevertheless, because the Examiner’s rejection fails to (1) articulate any analysis apart from merely quoting the language of the relied-upon claims; (2) acknowledge the differences in that language; and (3) explain why those differences would have been obvious to ordinarily skilled artisans, the Examiner has not established nonstatutory double patenting on this record. The rejection is, therefore, erroneous for that reason alone. Nor will we perform that fact-intensive analysis here in the first instance on appeal. Therefore, we are persuaded that the Examiner erred in rejecting claims 1 and 25 over claims 1 and 15 of Henson ’583. Because this issue is dispositive regarding our reversing the Examiner’s rejection of these claims, we need not address Appellant’s other associated arguments. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 14 THE DOUBLE PATENTING REJECTION OVER HENSON ’140 For similar reasons, we do not sustain the Examiner’s nonstatutory double patenting rejection of claim 25 over claim 26 of Henson ’140. See Final Act. 14-15. We reach this conclusion despite the fact that Henson ’140’s claim 26 recites “puck assembly circuitry,” thus rendering Appellant’s arguments regarding that particular limitation in connection with Henson ’456 that lacks that limitation inapplicable here. See Appeal Br. 21-28; Reply Br. 2- 5. Nevertheless, because the Examiner’s rejection fails to (1) articulate any analysis apart from merely quoting the language of the relied-upon claims; (2) acknowledge the differences in that language; and (3) explain why those differences would have been obvious to ordinarily skilled artisans, the Examiner has not established nonstatutory double patenting on this record. The rejection is, therefore, erroneous for that reason alone. Nor will we perform that fact-intensive analysis here in the first instance on appeal. Therefore, we are persuaded that the Examiner erred in rejecting claim 25 over claim 26 of Henson ’140. Because this issue is dispositive regarding our reversing the Examiner’s rejection of this claim, we need not address Appellant’s other associated arguments. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 15 THE DOUBLE PATENTING REJECTION OVER HENSON ’338 For similar reasons, we do not sustain the Examiner’s nonstatutory double patenting rejection of claims 1 and 25 over claims 1 and 17 of Henson ’338. See Final Act. 15-17. We reach this conclusion despite the fact that Henson ’338’s claims 1 and 25 recite “puck assembly circuitry,” thus rendering Appellant’s arguments regarding that particular limitation in connection with Henson ’456 that lacks that limitation inapplicable here. See Appeal Br. 21-28; Reply Br. 2-5. Nevertheless, because the Examiner’s rejection fails to (1) articulate any analysis apart from merely quoting the language of the relied-upon claims; (2) acknowledge the differences in that language; and (3) explain why those differences would have been obvious to ordinarily skilled artisans, the Examiner has not established nonstatutory double patenting on this record. The rejection is, therefore, erroneous for that reason alone. Nor will we perform that fact-intensive analysis here in the first instance on appeal. Therefore, we are persuaded that the Examiner erred in rejecting claims 1 and 25 over claims 1 and 17 of Henson ’338. Because this issue is dispositive regarding our reversing the Examiner’s rejection of these claims, we need not address Appellant’s other associated arguments. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 16 THE DOUBLE PATENTING REJECTION OVER HENSON ’300 For similar reasons, we do not sustain the Examiner’s nonstatutory double patenting rejection of claims 1 and 25 over claims 1 and 19 of Henson ’300. See Final Act. 18-19. We reach this conclusion despite the fact that Henson ’300’s claims 1 and 25 recite “puck assembly circuitry,” thus rendering Appellant’s arguments regarding that particular limitation in connection with Henson ’456 that lacks that limitation inapplicable here. See Appeal Br. 21-28; Reply Br. 2-5. Nevertheless, because the Examiner’s rejection fails to (1) articulate any analysis apart from merely quoting the language of the relied-upon claims; (2) acknowledge the differences in that language; and (3) explain why those differences would have been obvious to ordinarily skilled artisans, the Examiner has not established nonstatutory double patenting on this record. The rejection is, therefore, erroneous for that reason alone. Nor will we perform that fact-intensive analysis here in the first instance on appeal. Therefore, we are persuaded that the Examiner erred in rejecting claims 1 and 25 over claims 1 and 19 of Henson ’300. Because this issue is dispositive regarding our reversing the Examiner’s rejection of these claims, we need not address Appellant’s other associated arguments. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 17 THE DOUBLE PATENTING REJECTION OVER THE ’565 APPLICATION AND DECONINCK We decline to reach the merits of the Examiner’s nonstatutory double patenting rejection of claims 1 and 25 over claim 1 of the ’565 application and Deconinck. See Final Act. 6-12. Because this rejection is based on a patent application-not a patent-it is effectively styled as a provisional rejection. See MPEP § 804(I)(B). Because provisional double patenting rejections are generally not ripe for decision, the Board can decline to reach them. See Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential); see also Ex parte Jerg, Appeal 2011-000044, at 6 (BPAI Apr. 17, 2012) (expanded panel) (informative) (“Panels have the flexibility to reach or not reach provisional obviousness-type double-patenting rejections.”); MPEP § 804(I)(B)(1)(b)(iv) (instructing Examiners on the procedure for treating provisional double patenting rejections after Board decisions not reaching those rejections). The Board’s flexibility to not reach provisional double patenting rejections is because, among other things, at least one relied-upon claim on appeal may differ in language or status from the claim(s) the Examiner relied upon when the rejection was made. See Jerg, at 5. That rationale applies here, despite the fact that the ’565 application on which the Examiner relies issued as U.S. Patent 10,977,914 on April 13, 2021-a date before the Examiner’s Final Office Action and Answer were mailed. Despite the ’914 patent’s issuing before the Examiner’s Final Office Action, neither the Examiner nor Appellant acknowledges this patent, much Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 18 less how its claim language compares to that of the ’565 application on which the double patenting rejection is based. See Appeal Br. 28-35; Reply Br. 12-13 (referring to the ’565 application); Ans. 4 (same). To the extent a double patenting rejection can be made over the claims of the ’914 patent, we decline to engage in that fact-intensive inquiry here in the first instance on appeal, for the Board’s primary role on appeal is to review the Examiner’s adverse decision for error-not to conduct its own separate examination of the claims. See MPEP § 1213.02. Rather, the Examiner is in the best position to assess the claims of the ’281 and ’914 patents and re-issue the provisional double patenting rejection as a nonprovisional rejection if appropriate. See MPEP § 804(I)(B)(1)(b)(iv) (instructing Examiners that if a reference patent application cited in a provisional double patenting rejection has issued, the provisional rejection should be re-issued as a nonprovisional rejection). We, therefore, decline to reach the merits of the Examiner’s nonstatutory double patenting rejection of claims 1 and 25 over claim 1 of the ’565 application and Deconinck. THE REJECTION OVER DECONINCK AND HOTELLING Regarding claim 1, the Examiner finds that Deconinck’s cable management apparatus has every recited element except for the recited electrical contacts that are adapted to contact and lose contact with each other in the rest and lift positions, respectively. See Final Act. 20-30. The Examiner, however, cites Hotelling for teaching this feature in concluding that the claim would have been obvious. Final Act. 20-30. According to the Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 19 Examiner, substituting Deconinck’s induction coils with Hotelling’s electrical contacts merely replaces one known power transfer means with another to yield predictable results. See Final Act. 25-30. Appellant argues that Deconinck fails to disclose a cable management apparatus comprising, among other things, the recited puck assembly including its electrical contact and circuitry, much less that this assembly is moveable between the rest and lift positions as claimed. Appeal Br. 37-38, 43-57; Reply Br. 14-21. Appellant contends that the Examiner did not construe the term “puck assembly,” much less show how Deconinck’s housing 30 teaches that assembly. Appeal Br. 38. According to Appellant, Deconinck not only fails to teach or suggest interconnecting the housing to stand assembly 10, such a connection would be impossible because the retractable cable must move freely within the stand assembly to lift the housing from that assembly. Appeal Br. 43-44. Appellant also argues that Deconinck fails to disclose the recited base assembly with its electrical contact. Appeal Br. 38-41, 44-45; Reply Br. 21-22. Appellant contends that the Examiner did not construe the term “base assembly,” much less show how Deconinck’s stand assembly teaches the recited base assembly. Appeal Br. 39-41, 44-45. According to Appellant, unlike the ’281 patent’s base assembly, Deconinck’s stand assembly is largely above a display counter and includes hollow sections through which a retractable cable is routed. Appeal Br. 39-41. Appellant also argues that Deconinck fails to disclose the recited tether assembly adapted to connect the puck assembly with the base assembly. Appeal Br. 41-43. According to Appellant, not only does Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 20 Deconinck’s retractable cable have connection elements that are external to, and not connected to, Deconinck’s stand assembly, the retractable cable cannot be attached or connected to the stand assembly because the cable runs freely through that hollow assembly. Appeal Br. 41-42. Appellant adds that Deconinck does not teach or suggest a tether assembly adapted to connect the puck assembly with the base assembly, particularly when this limitation is construed in light of the ’281 patent that, unlike Deconinck, mounts a retractor within the post-like base assembly to connect the puck and base assemblies. Appeal Br. 42-43. Appellant also argues that the cited prior art does not teach or suggest the puck and base assemblies have respective electrical contacts that (1) contact each other when the puck assembly is in rest position, and (2) lose contact with each other responsive to the puck assembly’s movement from the rest to lift position as claimed. Appeal Br. 44-58; Reply Br. 22-33. According to Appellant, substituting Deconinck’s inductive power transfer with Hotelling’s electrical contacts as the Examiner proposes is untenable because, among other things, (1) Deconinck does not disclose how its induction-type charger is incorporated in the system or how the charger receives power from a power supply; (2) electrical contacts are not interchangeable with inductive charging; and (3) Hotelling’s various electrical contacts are all planar, and can only work when planar surfaces with those planar contacts are mated flush with each other-planar surfaces that Deconinck’s housing and stand assembly lack. Appeal Br. 44-59; Reply Br. 22-34. Appellant adds that not only are Deconinck and Hotelling not combinable and directed to different systems, namely docking and Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 21 security systems, respectively, Hotelling prefers inductive power transfer over electrical contacts. Appeal Br. 54-59. Appellant argues other recited limitations summarized below. ISSUES I. Under § 103, has the Examiner erred by finding that Deconinck and Hotelling collectively would have taught or suggested: (1) a cable management apparatus for mounting an electronic device to a display with the elements recited in claim 1? (2) the two base assembly electrical contacts recited in claim 13? (3) the base assembly contacts extending outwardly from the base assembly surface as recited in claim 14? (4) the additional base assembly electrical contacts recited in claim 15? (5) the base assembly electrical contacts’ relative circumferential spacing recited in claim 17? (6) the method steps recited in claim 30? II. Is the Examiner’s combining the teachings of the cited references supported by articulated reasoning with rational underpinning to justify the Examiner’s obviousness conclusion? Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 22 ANALYSIS Claims 1-12 and 25-29 We begin by noting that, in rejecting claim 1, the Examiner relies on Deconinck for teaching every recited element, including a moveable puck assembly with respective rest and lift positions, but acknowledges that Deconinck transfers electric power to system components for battery charging via induction coils-not electrical contacts as claimed. See Final Act. 20-30. That is, the Examiner acknowledges that Deconinck lacks the recited electrical contacts in the puck and base assemblies and, in particular, those contacts’ role in establishing and breaking an electrical connection in the puck assembly’s rest and lift positions, respectively, as claimed. See Final Act. 20-30. The Examiner, however, concludes that substituting Deconinck’s induction coils with Hotelling’s electrical contacts would have been obvious by merely replacing one known power transfer means with another to yield predictable results. See Final Act. 25-30. On this record, we see no error in the Examiner’s rejection. First, Deconinck at least suggests a “cable management apparatus” even assuming, without deciding, that Deconinck does not articulate this cable management function explicitly as Appellant contends. See Reply Br. 15. It is well settled that a “prior inventor does not need to . . . . conceive of its invention using the same words as the patentee would later use to claim it.” Teva Pharm. Indus. Ltd. v. AstraZeneca Pharms. LP, 661 F.3d 1378, 1384 (Fed. Cir. 2011). Here, despite not using the term “cable management” explicitly, Deconinck is nonetheless replete with functionality that does just that. For example, Deconinck’s Figure 1 shows three cables 20 that are respectively Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 23 managed via their respective retractors 91 and associated output jacks 80, and the associated discussion describes additional cable management via this functionality. See, e.g., Deconinck col. 12, ll. 15-47. Therefore, to the extent Appellant contends that Deconinck lacks a “cable management apparatus” as recited in the preamble, such arguments are unavailing and not commensurate with the scope of the limitation. Nor do we find error in the Examiner’s mapping the recited “puck assembly” to Deconinck’s housing 30 despite Appellant’s arguments to the contrary. See Final Act. 21; Appeal Br. 37-38, 43-57; Reply Br. 14-21. Under the terms of claim 1, the puck assembly must be (1) adapted to receive an electronic device; and (2) moveable between rest and lift positions in which the puck assembly is engaged and disengaged with the base assembly, respectively. The puck assembly must also include (1) a puck assembly electrical contact; (2) a power storage device; and (3) puck assembly circuitry connected to that contact and storage device, where the circuitry is configured to (a) draw power from a power source through the recited electrical connection, and (b) provide the drawn power to the storage device to charge that device. In construing the term “puck assembly,” we note that the ’281 patent does not define that term, unlike other terms whose concrete definitions leave no doubt as to their meaning. See ’281 patent col. 3, l. 64 - col. 4, l. 5 (defining the terms “power signal” and “security signal” explicitly); col. 4, ll. 60-65 (defining the term “mechanical reel” explicitly). The ’281 patent does, however, note that a “puck” is a mounting member of a display post, and describes puck assembly 14, shown in Figure 1, that (1) houses a puck Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 24 electronics control board (ECB), and (2) carries a handheld device 46 mounted thereto. ’281 patent col. 4, ll. 32-33; col. 10, ll. 15-23. Although this description informs our understanding of the recited “puck assembly,” the term’s interpretation is not limited to that particular description; nor will we import that description into the claim. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace different subject matter than is illustrated in the specific embodiments in the specification.”) (citations and internal quotation marks omitted). We, therefore, construe the term “puck assembly” under its plain meaning consistent with its usage in the Specification. As noted above, a “puck” is a mounting member of a display post, ’281 patent col. 4, ll. 32-33, and an “assembly” is defined, in pertinent part, as “[a] unit containing the component parts of a mechanism, machine, or similar device.” MCGRAW- HILL DICTIONARY OF SCIENTIFIC & TECHNICAL TERMS 139 (5th ed. 1994 Sybil P. Parker ed.) (“McGraw-Hill Scientific Dictionary”). Under its broadest reasonable interpretation, then, a “puck assembly” is a unit that (1) is associated with a display post mounting member, and (2) contains the component parts of a mechanism, machine, or similar device. Given this interpretation, we see no error in the Examiner’s mapping the recited “puck assembly” to Deconinck’s housing 30. See Final Act. 21. As shown in Deconinck’s Figure 1, Deconinck’s security system displays a handheld electronic device 200, such as a digital camera or cellular phone, Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 25 and includes stand assembly 10 that (1) is mounted to support 100, such as a tabletop or counter, and (2) supports housing 30 and the electronic device. Deconinck col. 6, ll. 30-37; col. 7, ll. 28-30. Housing 30, detailed in Deconinck’s Figure 2, sits atop, and is removably mounted to, the stand assembly, and the electronic device is secured to the housing’s top surface 31 for display to prospective purchasers. Deconinck col. 6, ll. 37-39; col. 7, ll. 23-67. Given this functionality, Deconinck’s housing 30 is effectively a “puck assembly,” namely a unit that (1) is associated with a display post mounting member, and (2) contains the component parts of a mechanism, machine, or similar device. To the extent Appellant contends otherwise (see Appeal Br. 37-38; Reply Br. 17), such arguments are unavailing and not commensurate with the scope of the limitation. Deconinck’s housing 30 also includes many of the elements of the recited “puck assembly,” including its adaptation to (1) receive an electronic device; and (2) move between rest and lift positions in which the puck assembly is engaged and disengaged with the base assembly, respectively. First, as Appellant acknowledges and as shown in Figure 1, Deconinck’s housing 30 is adapted to receive an electronic device, namely handheld electronic device 200, that is secured to that housing for display to prospective purchasers. See Appeal Br. 38 (admitting that Deconinck’s housing 30 is adapted to receive a handheld electronic device). Second, because Deconinck’s housing 30 is removably mounted to stand assembly 10, which the Examiner maps to the recited “base assembly” (Final Act. 21), the housing 30 or “puck assembly” is effectively adapted to Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 26 move between “rest” and “lift” positions in which Deconinck’s housing 30 is engaged and disengaged with the stand assembly, respectively. Accord Final Act. 22-23 (noting this point). In this regard, we see no error in the Examiner’s mapping Deconinck’s stand assembly 10 to the recited “base assembly.” See Final Act. 21. In construing the term “base assembly,” we note that the ’281 patent does not define that term, unlike other terms whose concrete definitions leave no doubt as to their meaning. See ’281 patent col. 3, l. 64 - col. 4, l. 5 (defining the terms “power signal” and “security signal” explicitly); col. 4, ll. 60-65 (defining the term “mechanical reel” explicitly). The ’281 patent does, however, note that post assembly 10 includes a base assembly portion 126 as shown in Figure 1. ’281 patent col. 9, ll. 52-57. As shown in that figure, the post includes a base portion or fitting 16 mounted to countertop surface 18, where fitting’s threaded portion 22 carries bracket 24 that carries mechanical retractor 26. ’281 patent col. 9, ll. 58-65. Although this description informs our understanding of the recited “base assembly,” the term’s interpretation is not limited to that particular description; nor will we import that description into the claim. See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace different subject matter than is illustrated in the specific embodiments in the specification.”) (citations and internal quotation marks omitted). 6 The ’281 patent also refers to base assembly portion 12 as “base assembly” 12. See, e.g., ’281 patent col. 9, l. 58; col. 10, l. 3. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 27 We, therefore, construe the term “base assembly” under its plain meaning consistent with its usage in the Specification. The term “base” is defined, in pertinent part, as “[f]oundation or part upon which an object or instrument rests.” McGraw-Hill Scientific Dictionary, at 195. And as noted previously, the term “assembly” is defined, in pertinent part, as “[a] unit containing the component parts of a mechanism, machine, or similar device.” Id. at 139. Under its broadest reasonable interpretation, then, a “base assembly” is a unit that (1) is associated with a foundation or part upon which an object or instrument rests, and (2) contains the component parts of a mechanism, machine, or similar device. Given this interpretation, we see no error in the Examiner’s mapping the recited “base assembly” to Deconinck’s stand assembly 10. See Final Act. 21. As shown in Deconinck’s Figure 1, Deconinck’s stand assembly 10 (1) is mounted to support 100, such as a tabletop or counter; (2) supports housing 30 and the electronic device; and (3) comprises one or more sections 13 that each contain a bore for routing a retractable cable 20 therethrough. Deconinck col. 6, ll. 30-37, 57-65; col. 7, ll. 28-30. Given this functionality, Deconinck’s stand portion 10 is effectively a “base assembly,” namely a unit that (1) is associated with a foundation or part upon which an object or instrument rests, and (2) contains the component parts of a mechanism, machine, or similar device. To the extent Appellant contends otherwise (see Appeal Br. 39-41; Reply Br. 21-22), such arguments are unavailing and not commensurate with the scope of the limitation. That Deconinck’s stand portion 10 includes a base portion 11 as Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 28 noted in column 6, lines 43 and 44 only underscores the stand portion’s base assembly functionality. Nor do we find error in the Examiner’s mapping the recited “tether assembly” to Deconinck’s retractable cable 20 and retractor 91 collectively. See Final Act. 22. According to the Appeal Brief’s “Summary of Claimed Subject Matter” section, the recited tether assembly is (1) described in column 9, line 58 to column 10, line 14 of the ’281 patent, and (2) corresponds to (a) numerals 28 and 26 in Figure 1, and (b) numerals 281, 275, and 283 in Figure 36. See Appeal Br. 2. As the ’281 patent explains, mechanical retractor 26 includes a spring- loaded steel cable 28, the length of which is drawn from and returned to the retractor housing 30 as puck assembly 14 is lifted from and returned to base assembly 12. ’281 patent col. 9, l. 65 - col 10, l. 3. The ’281 patent’s Figure 36 also shows an embodiment with quick-connect mechanism 281 at the end of tether 275 associated with modular retractor 283. See ’281 patent col. 16, ll. 42-50. Although this description informs our understanding of the recited “tether assembly,” the term’s interpretation is not limited to that particular description; nor will we import that description into the claim. See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace different subject matter than is illustrated in the specific embodiments in the specification.”) (citations and internal quotation marks omitted). Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 29 We, therefore, construe the term “tether assembly” under its plain meaning consistent with its usage in the Specification. The term “tether” is defined, in pertinent part, as “a rope, cord, etc. fastened to something to prevent drifting, escape, etc.” WEBSTER’S NEW WORLD COLLEGE DICTIONARY 1480 (4th ed. 1999) (“Webster’s New World College Dictionary”). And as noted previously, the term “assembly” is defined, in pertinent part, as “[a] unit containing the component parts of a mechanism, machine, or similar device.” McGraw-Hill Scientific Dictionary, at 139. Under its broadest reasonable interpretation, then, a “tether assembly” is a unit that (1) is associated with a rope, cord, etc., fastened to something to prevent drifting, escape, etc., and (2) contains the component parts of a mechanism, machine, or similar device. Given this interpretation, we see no error in the Examiner’s mapping the recited “tether assembly” to Deconinck’s retractable cable 20 and retractor 91 collectively. See Final Act. 22. These elements collectively, like those in the ’281 patent that are said to correspond to the recited “tether assembly” on page 2 of the Appeal Brief, constitute a “tether assembly,” namely a unit that (1) is associated with a rope, cord, etc., fastened to something to prevent drifting, escape, etc., and (2) contains the component parts of a mechanism, machine, or similar device. To the extent Appellant contends otherwise (see Appeal Br. 41-43), such arguments are unavailing and not commensurate with the scope of the limitation. That the claimed “tether assembly” is adapted to connect the puck assembly with the base assembly does not change our conclusion. In construing the term “connect,” we note that the ’281 patent does not define Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 30 that term, unlike other terms whose concrete definitions leave no doubt as to their meaning. See ’281 patent col. 3, l. 64 - col. 4, l. 5 (defining the terms “power signal” and “security signal” explicitly); col. 4, ll. 60-65 (defining the term “mechanical reel” explicitly). The ’281 patent does, however, show that the retractor is mounted within the base assembly effectively connecting the puck and base assemblies. ’281 patent col. 9, ll. 58-65; col. 16, l. 38-49; Figs. 1, 34, 37. Although this description informs our understanding of the recited tether assembly connection, the term “connect” is not limited to that particular description; nor will we import that description into the claim. See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace different subject matter than is illustrated in the specific embodiments in the specification.”) (citations and internal quotation marks omitted). We, therefore, construe the term “connect” under its plain meaning consistent with its usage in the Specification. The term “connect” is defined, in pertinent part, as “to join or fasten (two things together, or one thing with or to another); link; couple.” Webster’s New World College Dictionary, at 309. That same dictionary defines the term “connected,” in pertinent part, as “linked together; united.” Id. Given this interpretation, Deconinck’s “tether assembly,” namely Deconinck’s retractable cable 20 and retractor 91, effectively joins, fastens, links, or couples Deconinck’s housing 30 and stand assembly 10, which the Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 31 Examiner maps to the recited puck and base assemblies, respectively. As the Examiner indicates, Deconinck’s retractable cable extends upwardly through a bore in the stand assembly and couples to the housing. See Deconinck col. 2, ll. 27-29; col. 6, ll. 37-39, 57-59; Fig. 1; see also Final Act. 22 (citing Request for Ex Parte Reexamination of U.S. Patent No. 10,026,281 By Third Party Requester filed Aug. 9, 2019 (“Request”), at 36- 38). Deconinck explains that a top portion of the stand assembly may have a collar with a cavity adapted to receive part of the housing such that the housing is centered in the stand assembly. Deconinck col. 2, ll. 24-27. As noted above, the stand assembly has a bore routing the retractable cable that is secured to the housing. Deconinck col. 2, ll. 27-30; col. 6, ll. 37-39, 57- 59. Although Deconinck’s retractable cable is coupled to (1) housing 30; (2) retractor 91; (3) detangler 90 (located on housing 30 as shown in Figure 2); and (4) output jack 81 of satellite 80 as noted in column 12, lines 34 and 35, Deconinck does not say that the retractable cable is also coupled to base assembly 10 despite accommodating the cable running through a bore in that assembly. Nevertheless, because (1) the cable is secured to housing 30 via retractor 91 positioned below the housing as shown in Figure 1; and (2) the stand assembly’s top portion includes a cavity that receives and centers the housing in the stand assembly as noted in column 2, lines 24 to 27, the downward force exerted on the housing via the cable tensioned by its retractor would at least contribute to joining, fastening, linking, or coupling the housing and stand assembly given their vertical alignment with respect to Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 32 each other and the cable. See Deconinck Figs. 1-2. Although the housing and stand assembly are connected mechanically via the cavity that receives and centers the housing in the stand assembly as noted in column 2, lines 24 to 27, a tensioned cable would nonetheless at least contribute to this mechanical connection by providing a downward force on the housing in the direction of its connection to the underlying stand assembly. To the extent Appellant contends that Deconinck’s retractor, which is effectively a cable reel, is somehow incapable of tensioning the cable to exert a downward force on the cable in the arrangement shown in Figure 1, or that such tensioning would have been uniquely challenging or otherwise beyond the level of ordinarily skilled artisans, namely engineers with several years of related industry experience as evidenced by the cited prior art references’ technical subject matter, see In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995), there is no persuasive evidence on this record to substantiate such a contention. We reach this conclusion noting that the ’281 patent admits that the disclosed mechanical retractor 26 and its spring- loaded steel cable 28 is “conventional in design” and “would be familiar to a person skilled in the art” in column 9, line 66 to column 10, line 5. On this record, using a conventional retractor for Deconinck’s retractor 91 such that its spring-loaded cable adds tension and exerts a downward force in the direction of the connection between the housing and its underlying stand assembly to at least contribute to that connection would have been at least an obvious variation. That Deconinck states explicitly in column 12, lines 43 to 47 that, in wireless implementations, retractable cable 20 can serve solely as a Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 33 mechanical tether for securing housing 30 to the system-a system that includes the stand assembly as noted in column 2, lines 13 to 15-only underscores the cable’s mechanical tethering capabilities with respect to system components, including the stand assembly. Therefore, despite Appellant’s arguments to the contrary (Appeal Br. 41-43), Deconinck at least suggests a tether assembly adapted to connect the puck assembly with the base assembly, albeit indirectly. But nothing in the claim precludes the tether assembly providing an indirect connection. Accord Request 38 (noting this point). Deconinck’s tether assembly is, therefore, at least indirectly connected to the puck and base assemblies such that they are linked together, at least to that extent. To the extent Appellant contends otherwise, such arguments are unavailing and not commensurate with the scope of the claim. Returning to the recited “puck assembly,” the claim requires that assembly also include (1) a puck assembly electrical contact; (2) a power storage device; and (3) puck assembly circuitry connected to that contact and storage device, where the circuitry is configured to (a) draw power from a power source through the recited electrical connection, and (b) provide the drawn power to the storage device to charge that device. On this record, we see no error in the Examiner’s findings and conclusions in connection with these limitations. As shown in Deconinck’s Figure 2, housing 30, which the Examiner maps to the recited “puck assembly,” includes rechargeable battery 44 that the Examiner maps to the recited “power storage device.” See Final Act. 26; Deconinck col. 8, l. 64 - col. 9, l. 26. We see no error in this finding. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 34 The Examiner, however, acknowledges that Deconinck’s puck and base assemblies lack the recited electrical contacts that are adapted to make and lose contact with each other in the rest and lift positions, respectively, but rather the battery is recharged via inductive electric power transfer. See Final Act. 20-30. According to the Examiner, substituting Deconinck’s induction coils with Hotelling’s electrical contacts merely replaces one known power transfer means with another to yield predictable results. See id. We see no error in these findings and conclusions. As Deconinck explains, the stand assembly 10 can include a wireless, induction-type battery charger, where respective parts of the housing 30 and stand assembly form a two-part transformer to charge battery 44. Deconinck col. 9, ll. 17- 21. To this end, the transformer can comprise one or more wire coils disposed on or in the housing and/or stand assembly. Deconinck col. 9, ll. 21-23. Our emphasis underscores that, in at least one implementation, Deconinck’s induction coils are disposed on both the housing and stand assembly-a disposition that does not dispose coils in those components, but rather on their exterior surfaces. With this disclosed disposition, when the housing is inserted into the stand assembly, their respective external coils would be positioned directly adjacent each other, yet still not electrically contact each other, thus supplying electric power to the stand assembly coil solely via induction to charge the battery. See Deconinck col. 9, ll. 17-26. Notably, by suitably designing these external coils to each have similar structures with a low profile with respect to their underlying Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 35 supporting surfaces, such as via small and/or thin electrical conductors, suitably patterned electrically-conductive films,7 foils,8 or the like, the housing’s and stand assembly’s coils would be positioned very close to one another such that their respective electrical conductors nearly contact one another when the housing is inserted in the stand assembly. Despite the coils’ close proximity to each other upon inserting the housing in the stand assembly in this implementation, the coils’ electrical conductors would still be spaced away from each other via a small air gap, or even separated solely by a thin insulative film or coating on the conductors themselves,9 to prevent 7 The term “thin film” is defined as “[a] deposition of resistive or conductive material less than one millionth of an inch thick (<10 µm) on an insulating substrate.” Neil Sclater & John Markus, MCGRAW-HILL ELECTRONICS DICTIONARY 470 (6th ed. 1997) (“McGraw-Hill Electronics Dictionary”). A “thin-film circuit” is “[a] hybrid microwave or RF microcircuit on which some or all of the resistors, capacitors, and inductors are fabricated from thin conductive and dielectric films, typically less than a few micrometers thick.” Id. (emphasis added). 8 The term “foil” is defined in the art as “[a] thin sheet of a metal. It may be defined as no thicker than a given amount, such as 0.15 mm. An example is the aluminum or tantalum foil utilized in electrolytic capacitors.” Steven M. Kaplan, WILEY ELECTRICAL & ELECTRONICS ENGINEERING DICTIONARY 295 (2004) (“Wiley Electrical Engineering Dictionary”). A “foil pattern” is “[a] pattern of thin sheets of metal which serve as conductors in a circuit, as opposed to wires. Utilized, for instance, in printed circuits. A foil pattern may be produced, for instance, via etching or plating.” Id. 9 Magnet wire, commonly used for induction coils, has such a thin insulative coating. See McGraw-Hill Electronics Dictionary 278 (defining “magnet wire” as “[c]opper wire with a varnish insulation in any of the sizes commonly used for winding the coils of transformers, relays, and other electromagnetic devices”) (emphasis added). Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 36 the coils’ conductors from shorting and ensure power transfer solely via induction. Given (1) the coils’ respective electrical conductors being on-not in-the housing and stand assembly in this disclosed implementation, and (2) the very close proximity of the coils’ respective electric conductors when the housing is inserted in the stand assembly to effect inductive electric power transfer for battery charging, effecting that power transfer via direct electrical contact using similarly situated electrical conductors or contacts on both the housing and stand assembly in lieu of Deconinck’s non-contact inductive power transfer would have been at least an obvious variation. We reach this conclusion noting Hotelling’s teachings regarding using both non- contact and contact-based means to transfer electric power to charge a device’s battery upon inserting the device in an associated docking system. See Hotelling col. 5, l. 55 - col. 7, l. 35. In short, the Examiner’s proposed enhancement to Deconinck uses prior art elements predictably according to their established functions-an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). That Hotelling may not state explicitly that an inductive electrical connection can be replaced with one that uses direct electrical contact as Appellant indicates (Appeal Br. 47) is of no consequence here, for ordinarily skilled artisans would nevertheless understand from Hotelling that both types of connections were well known in the art to transfer electrical power for battery charging-a predictable result-and, therefore, obvious variations. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 37 Nor are we persuaded by Appellant’s contention that there is allegedly no way to incorporate Hotelling’s planar interfaces with their associated electrical contacts onto the “highly curved” surfaces of Deconinck’s housing and stand assembly, and that doing so would render Hotelling’s contacts inoperable, particularly in various different docking system orientations with respect to the electronic device. See Appeal Br. 46-53; Reply Br. 23-27. First, Appellant’s arguments in this regard are speculative and unsubstantiated by any persuasive evidence on this record. Mere lawyer argument and conclusory statements that are unsupported by factual evidence, as is the case here, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). See also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). That Appellant’s arguments in this regard are replete with speculative terminology and unsupported assumptions underscores this point. See, e.g., Appeal Br. 52 (“[I]t is likely that both the electrical contacts disclosed by Hotelling would need to be redesigned for use on curved surfaces and Deconinck’s housing and stand assembly would need to be redesigned to ensure sufficiently precise alignment for electrical contacts to have any chance of working.”) (emphasis added); see also id. (“It is very likely that certain types of induction-type chargers may have less severe alignment requirements than Hotelling’s planar electrical contacts with center, point contacts.”) (emphasis added); id. at 53 (“The lack of robustness of Hotelling’s electrical contacts under such circumstances would likely preclude their use in Deconinck’s system.”) (emphasis added). Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 38 Second, even assuming, without deciding, that (1) Deconinck’s housing and stand assembly must have only curved surfaces, and (2) Hotelling’s contacts must be only planar as Appellant seems to suggest- structural constraints that are unsubstantiated on this record10-it is well settled that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test is what the references’ combined teachings would have suggested to ordinarily skilled artisans who, notably, are those of ordinary creativity-not automatons. See id.; see also KSR, 550 U.S. at 421. In short, the Examiner’s proposed combination uses prior art elements predictably according to their established functions to yield a predictable result. See KSR, 550 U.S. at 417. We reach this conclusion even assuming, without deciding, that Deconinck does not indicate how to incorporate an electrical contact within that system as Appellant contends. See Appeal Br. 55-56. Not only is bodily incorporation not the test for obviousness, Keller, 642 F.2d at 425, 10 Notably, Hotelling indicates that electrical contacts may be surface or flush mounted, and regarding flush mounts, the contacts may be flat planar contacts that lie flush on the housing’s surface. See Hotelling col. 6, ll. 21- 31. This teaching at least suggests that not only are flat planar contacts limited to flush mounts as the Examiner indicates (Ans. 11), but also that flat planar contacts need not be used for flush mounts given Hotelling’s permissive “may be” language emphasized in this passage. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 39 the reason to modify Deconinck, namely to use electrical contacts in lieu of induction coils to transfer power for battery charging, as the Examiner proposes need not be articulated expressly within the cited references. It is well settled that “[t]he motivation [to combine references] need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (citation omitted). Here, the rationale to modify Deconinck is based on at least the knowledge of ordinarily skilled artisans and the nature of the problem, particularly when considered in light of Hotelling. In short, this enhancement to Deconinck uses prior art elements predictably according to their established functions-an obvious improvement. See KSR, 550 U.S. at 417. We emphasize this point, for Hotelling was cited for a very limited purpose, namely merely to show that using direct electrical contact in lieu of non-contact techniques, such as induction, to transfer electric power to charge a battery when a device is positioned on an underlying support accommodating that device, such as a stand or docking station, would have been at least an obvious variation to ordinarily skilled artisans, particularly given Hotelling’s teachings regarding using both of these power transfer techniques in column 5, line 55 to column 7, line 35. Appellant’s arguments regarding Hotelling’s and Deconinck’s individual shortcomings are unavailing, for they do not show nonobviousness where, as here, the Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 40 rejection is based on the cited references’ collective teachings. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Notably, Appellant has not shown with persuasive evidence that ordinarily skilled artisans would somehow be incapable of providing electrical conductors on the respective curved surfaces of Deconinck’s housing and stand assembly such that those exposed conductors function as electrical contacts that substantially conform to the shape or profile of their underlying curved supporting surfaces. Nor has Appellant shown that such a contact mounting would have been uniquely challenging or otherwise beyond the skill level of ordinarily skilled artisans. As noted previously, given (1) Deconinck’s coils’ respective electrical conductors being on-not in-the housing and stand assembly in at least one disclosed implementation, and (2) the very close proximity of the coils’ respective electric conductors when the housing is inserted in the stand assembly to effect inductive electric power transfer for battery charging, effecting that power transfer via direct electrical contact using similarly situated electrical conductors or contacts on both the housing and stand assembly in lieu of Deconinck’s non-contact inductive power transfer would have been at least an obvious variation. We reach this conclusion noting that not only would the electrical conductors of Deconinck’s coils each have similar structures with a low profile with respect to their underlying curved supporting surfaces, such as via small and/or thin electrical conductors, suitably patterned electrically- conductive films, foils, or the like, the housing’s and stand assembly’s coils would be positioned very close to one another such that their respective Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 41 electrical conductors nearly contact one another when the housing is inserted in the stand assembly. Although the coils’ electrical conductors would be spaced away from each other in this implementation via a small air gap, or even separated solely by a thin insulative film or coating on the conductors themselves, ordinarily skilled artisans would have understood that direct electrical contact would be achieved by merely exposing the coils’ conductors such that they contact each other when the housing is inserted in the stand assembly. Notably, this would be achieved by merely removing the small gap, if any,11 between the housing’s and stand assembly’s conductors in this inserted condition and, if necessary, removing any insulation (such as a coating or film) on the conductors themselves. To the extent Appellant contends that ordinarily skilled artisans would somehow be incapable of such a modification, or that otherwise providing electrical contacts on Deconinck’s housing and stand assembly would have been uniquely challenging or beyond the skill level of ordinarily skilled artisans, there is no persuasive evidence on this record to substantiate such a contention. To be sure, Hotelling notes that inductive coils placed in each device to transfer power and data are typically hidden from view behind each 11 It is possible that an air gap would not exist when the coils’ conductors are separated solely by a thin insulative film or coating on the conductors themselves. As noted previously, magnet wire, commonly used for induction coils, has such a thin insulative coating. See McGraw-Hill Electronics Dictionary 278 (defining “magnet wire” as “[c]opper wire with a varnish insulation in any of the sizes commonly used for winding the coils of transformers, relays, and other electromagnetic devices”) (emphasis added). Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 42 device’s housing and, therefore, may be more aesthetically pleasing than exposed electrical contacts. Hotelling col. 6, ll. 41-46. But this preference presupposes that the coils are located in-not on-the devices and, therefore, is inapposite to Deconinck’s disclosed implementation discussed previously where the coils are located on-not in-the housing and stand assembly. But leaving this inconsistency aside, and despite Hotelling’s additional acknowledgment in column 6, lines 46 to 49 that inductively- based systems are more robust than electrical contacts that can wear out or oxidize, it is well settled that even if a disclosed alternative is inferior to or less desirable than another, that alone is insufficient to teach away from the inferior alternative unless the disclosure criticizes, discredits, or otherwise discourages that alternative. See In re Fulton, 391 F.3d 1195, 1200-01 (Fed. Cir. 2004). There is no such criticism, discrediting, or discouragement here, particularly given Hotelling’s actually using contact-based platforms to transfer electric power and data despite their disadvantages with respect to non-contact-based platforms. See Hotelling col. 6, ll. 10-17, 21-40, 62-64. But leaving Hotelling’s use of contact-based electric power transfer approaches aside, a known contact-based system “does not become patentable simply because it has been described as somewhat inferior to some other product for the same use,” such as a non-contact based system. Cf. Mouttet, 686 F.3d at 1334 (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In any event, weighing the relative advantages and disadvantages of using non-contact or contact-based approaches to transfer Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 43 electric power for battery charging amounts to an engineering trade-off well within the level of ordinarily skilled artisans. Cf. Mouttet, 686 F.3d at 1330 (noting that the Board found adequate reasons to combine the cited references because, among other things, the Board found that “the relative advantages and disadvantages in selecting electrical circuitry in lieu of optical circuitry amounts to an engineering tradeoff-a decision well within the level of ordinarily skilled artisans”). To the extent Appellant contends that Deconinck and Hotelling are non-analogous art because they pertain to security and docking systems, respectively (see Appeal Br. 54-56), we disagree. Prior art is analogous if it is (1) from the same field of endeavor regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Here, Hotelling is at least reasonably pertinent to Appellant’s problem, at least with respect to transferring electric power to charge a battery when a device is positioned on an underlying support accommodating that device. Hotelling is, therefore, analogous art. On this record, then, we find the Examiner’s combining the teachings of Deconinck and Hotelling is supported by articulated reasoning with rational underpinning to justify the Examiner’s obviousness conclusion. Lastly, we note that Appellant does not persuasively rebut the Examiner’s reliance on Hotelling for at least suggesting the recited “puck assembly circuitry,” and that providing such circuitry in Deconinck’s puck assembly as claimed would have been at least an obvious variation. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 44 In construing the term “circuitry,” we note that the ’281 patent does not define that term, unlike other terms whose concrete definitions leave no doubt as to their meaning. See ’281 patent col. 3, l. 64 - col. 4, l. 5 (defining the terms “power signal” and “security signal” explicitly); col. 4, ll. 60-65 (defining the term “mechanical reel” explicitly). The ’281 patent does, however, show in Figure 8 that male contacts 56 are connected to an electronics control board (ECB) 58 in puck part 44. ’281 patent col. 10, ll. 47-50, 60-61. The ’281 patent also explains that the ECB distributes power from source module 80 and passes one portion to the hand-held device 46 and another portion to ECB circuitry and battery 82, the latter charged by ECB circuitry when puck assembly 14 is at rest. ’281 patent col. 11, ll. 57- 66. Although this description informs our understanding of the recited puck assembly circuitry, and despite Appellant repeatedly emphasizing that this circuitry corresponds to the disclosed ECB (see Appeal Br. 3, 28; Reply Br. 18-20), the term “puck assembly circuitry” is not limited to that particular description; nor will we import that description into the claim. See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace different subject matter than is illustrated in the specific embodiments in the specification.”) (citations and internal quotation marks omitted). We, therefore, construe the term “puck assembly circuitry” under its plain meaning consistent with its usage in the Specification. The term Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 45 “circuit” is defined, in pertinent part, as “[a]n arrangement of interconnected electronic components that can perform specific functions upon application of proper voltages and signals.” IEEE 100: THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS 168 (7th ed. 2000) (“IEEE Dictionary”). Notably, that same dictionary also defines the term “circuit” more broadly as “[a]n interconnection of electrical elements,” or, alternatively, as “[a] conductor or system of conductors through which an electric current is intended to flow.” Id. Another electrical engineering dictionary also defines the term “circuit” quite broadly as “[o]ne or more conducting paths which serve to interconnect electrical elements, in order to perform a desired function such as amplification or filtering.” Wiley Electrical Engineering Dictionary, at 112. That same dictionary also defines the term “circuitry,” in pertinent part, as “[t]he physical arrangement of the electrical elements that are part of a given circuit.” Id. at 113. Moreover, the term “elements” in this context is defined, in pertinent part, as “[a]ny of the electrical components that are a part of a circuit. These may include resistors, capacitors, transistors, generators, electron tubes, and so on. Each element has terminals which allow it to be connected to the conducting path.” Id. at 252. Under its broadest reasonable interpretation, then, “puck assembly circuitry” is a physical arrangement of electrical elements (i.e., components) that are part of a given circuit, where the circuit is (1) one or more conducting paths that serve to interconnect those elements, and (2) is associated with a puck assembly. To the extent Appellant contends that the terms “circuit” and “circuitry” used in connection with the recited “puck Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 46 assembly circuitry” must be construed more narrowly, including to be limited to Appellant’s unsupported definitions and descriptions of those terms on pages 2 to 4 of the Reply Brief,12 we disagree. Moreover, to the extent Appellant contends that induction coils are somehow excluded from the electrical elements or components whose arrangement constitutes “circuitry” under our interpretation (see Appeal Br. 56; Reply Br. 20-21), such arguments are not commensurate with the scope of the term. Nevertheless, Appellant does not squarely address-let alone persuasively rebut-the Examiner’s reliance on Hotelling’s control board (e.g., PCB) that is connected to contacts either directly or indirectly, such that the contacts are wired to, or soldered directly to, the board. See Hotelling col. 6, ll. 34-40; see also Final Act. 26; Ans. 14 (referring to this control board functionality as “circuitry in conjunction with contacts”). Not only does this control board, with its interconnected electronic components, comport fully with our interpretation of “circuitry” noted above, it is strikingly similar, at least in a general sense, to the ECB in the ’281 patent that is said to correspond to the recited “puck assembly circuitry.” See Appeal Br. 3, 28; Reply Br. 18-20. Although Hotelling’s control board is not located in a puck assembly, the board is nonetheless located inside the respective devices, and contacts can be soldered directly to the board. Hotelling col. 6, ll. 34-40. Given these teachings, providing such a board in Deconinck’s housing or “puck 12 Although these arguments were made in connection with the Examiner’s double patenting rejection, they are nonetheless relevant here because they pertain to the construction of the term “puck assembly circuitry” that is also at issue in connection with the obviousness rejection. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 47 assembly” that likewise has contacts under the Examiner’s proposed combination would have been obvious to, among other things, provide controlling circuitry that is located close to-or even directly attached to- the puck assembly’s contacts, thus consolidating the components and reducing wiring. Such an enhancement uses prior art elements predictably according to their established functions-an obvious improvement. See KSR, 550 U.S. at 417. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2-12 and 25-29 not argued separately with particularity.13 Claims 13 and 19-24 We also sustain the Examiner’s rejection of claim 13 reciting first and second base assembly electrical contacts, where (1) the second base assembly contact is positioned on a base assembly surface diametrically opposite the first base assembly contact, and (2) both contacts each provide a conductive path for current to flow between the power source and puck assembly circuitry via the electrical connection when the puck assembly is engaged with the base assembly. Despite Appellant’s arguments to the contrary (Appeal Br. 61-65; Reply Br. 33), we see no error in the Examiner’s reliance on the cited prior 13 Although Appellant nominally argues claims 2-12 and 25 separately (see Appeal Br. 60-61, 70), Appellant reiterates arguments made for claim 1. We, therefore, group these claims accordingly. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 48 art for at least suggesting the recited limitations for the reasons noted above and by the Examiner. Final Act. 37-39 (citing Request 66-67); Ans. 15. Appellant’s contentions that (1) Hotelling’s planar contacts cannot be used on Deconinck’s curved surfaces; (2) Deconinck does not specify where the induction coils are located on the housing or how to apply power to them; (3) Deconinck lacks alignment features that are used in Hotelling to align electrical contacts; and (4) Deconinck lacks base assembly electrical contacts (Appeal Br. 61-65) are unavailing for the reasons noted previously and by the Examiner. See Final Act. 37-39 (citing Request 66-67). Moreover, Appellant’s arguments regarding Deconinck’s and Hotelling’s individual shortcomings in this regard (Appeal Br. 61-65) do not show nonobviousness where, as here, the rejection is based on the cited references’ collective teachings. See Merck, 800 F.2d at 1097. Furthermore, as noted previously, “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332 (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. Keller, 642 F.2d at 425. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. And here, the Examiner’s proposed combination uses prior art elements predictably according to their established functions to yield a predictable result. See KSR, 550 U.S. at 417. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 49 Therefore, we are not persuaded that the Examiner erred in rejecting claim 13, and claims 19-24 not argued separately with particularity.14 Claim 14 We also sustain the Examiner’s rejection of claim 14 reciting that the first and second base assembly contacts extend outwardly from the base assembly surface. Despite Appellant’s arguments to the contrary (Appeal Br. 65-66; Reply Br. 33), Appellant does not persuasively rebut the Examiner’s reliance on the cited prior art, including Hotelling’s tab- and pin-based electrical contacts, which can be spring-loaded, for at least suggesting the recited limitations for the reasons noted above and by the Examiner. Final Act. 40 (citing Hotelling col. 6, ll. 27-29; col. 15, ll. 36-44); Ans. 15. Moreover, Appellant’s arguments regarding Deconinck’s and Hotelling’s individual shortcomings in this regard (Appeal Br. 61-65) do not show nonobviousness where, as here, the rejection is based on the cited references’ collective teachings. See Merck, 800 F.2d at 1097. Furthermore, as noted previously, “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332 (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary 14 Although Appellant nominally argues claims 19-21 and 24 separately (see Appeal Br. 69-70), Appellant reiterates arguments made for claim 13. We, therefore, group these claims accordingly. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 50 reference. Keller, 642 F.2d at 425. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. And here, the Examiner’s proposed combination uses prior art elements predictably according to their established functions to yield a predictable result. See KSR, 550 U.S. at 417. Therefore, we are not persuaded that the Examiner erred in rejecting claim 14. Claims 15 and 16 We also sustain the Examiner’s rejection of claim 15 reciting third and fourth base assembly electrical contacts where (1) the fourth base assembly contact is positioned on a base assembly surface diametrically opposite the third base assembly contact, and (2) both contacts each provide a conductive path for current to flow between the power source and puck assembly circuitry via the electrical connection when the puck assembly is engaged with the base assembly. Despite Appellant’s arguments to the contrary (Appeal Br. 66-67; Reply Br. 33-34), Appellant does not persuasively rebut the Examiner’s reliance on the cited prior art, including Hotelling’s contacts 184B, 184D, for at least suggesting the recited limitations for the reasons noted above and by the Examiner. Final Act. 41 (citing Hotelling col. 15, ll. 51-59; Fig. 11); Ans. 15-17. Moreover, Appellant’s arguments regarding Deconinck’s and Hotelling’s individual shortcomings in this regard (Appeal Br. 66-67; Reply Br. 33-34) do not show nonobviousness where, as here, the rejection is Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 51 based on the cited references’ collective teachings. See Merck, 800 F.2d at 1097. Furthermore, as noted previously, “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332 (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. Keller, 642 F.2d at 425. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. And here, the Examiner’s proposed combination uses prior art elements predictably according to their established functions to yield a predictable result. See KSR, 550 U.S. at 417. Therefore, we are not persuaded that the Examiner erred in rejecting claim 15, and claim 16 not argued separately with particularity.15 Claims 17 and 18 We also sustain the Examiner’s rejection of claim 17 reciting the first base assembly electrical contact is circumferentially spaced from the third base assembly electrical contact a greater distance than the first base assembly electrical contact is circumferentially spaced from the fourth base assembly electrical contact. 15 Although Appellant nominally argues claim 16 separately (see Appeal Br. 67), Appellant reiterates arguments made for claim 15. We, therefore, group these claims accordingly. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 52 Despite Appellant’s arguments to the contrary (Appeal Br. 67-68; Reply Br. 34), Appellant does not persuasively rebut the Examiner’s reliance on the cited prior art for at least suggesting the recited limitations for the reasons noted above and by the Examiner. Final Act. 42-44 (citing Deconinck Fig. 3; Hotelling Fig. 11; Request 73-74); Ans. 15-17. That is, Appellant does not persuasively rebut the Examiner’s findings and conclusion that (1) placing electrical contacts around the opening of the collar of Deconinck’s stand assembly and corresponding housing structure, and (2) adjusting the contacts’ orientation, including providing orientations with the recited relative spacing, to account for the collar’s substantially oval circumferential configuration would have would have been at least an obvious variation to ordinarily skilled artisans. See Final Act. 42-44 (citing Deconinck Fig. 3; Hotelling Fig. 11; Request 73-74 (illustrating an exemplary contact arrangement consistent with this proposed modification)). We reach this conclusion even assuming, without deciding, that Deconinck does not state explicitly that the stand assembly can be designed in “any number of configurations” as Appellant contends. See Appeal Br. 67-68. Nevertheless, placing electrical contacts around the opening of the collar of Deconinck’s stand assembly and corresponding housing structure as the Examiner proposes would have been at least an obvious variation, particularly for the reasons noted above and those indicated by the Examiner. Like the particular placement of the electrical contacts in In re Kuhle, 526 F.2d 553, 555 (CCPA 1975), the recited contact placement here would have been an obvious variation, and the manner in which electrical contact is made, at least with respect to the contacts’ location and orientation Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 53 on Deconinck’s stand assembly and housing under the proposed combination, would have been an obvious matter of design choice well within the skill level of ordinarily skilled artisans. Accord MPEP § 2144.04(VI)(C) (noting that Kuhle held that the particular placement of a contact in a conductivity measuring device was an obvious matter of design choice). To the extent Appellant contends otherwise, there is no persuasive evidence on this record to substantiate such a contention. To be sure, “[m]erely stating that a particular placement of an element is a design choice does not make it obvious.” Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016) (non- precedential). But here, there is sufficient explanation why the proposed electrical contact placement would have been obvious, not only in light of the complementary structures of Deconinck’s stand assembly and housing on which the Examiner proposes to place the contacts-a placement that would provide sufficient electrical contact when the housing is inserted in the stand assembly-but also these structures’ substantially oval shapes that would be accounted for by orienting those contacts with the recited relative distance to ensure their electrical contact upon insertion. See Final Act. 42- 44; see also Request 71-74; Ans. 12 (citing Deconinck column 2, lines 24 to 29 and finding that Deconinck’s stand assembly has an opening, namely a collar with a cavity, that receives a portion of housing 30 that would provide a natural location for electric contacts). That the level of skill in the art is relatively high, namely that of engineers with several years of related industry experience as evidenced by the cited prior art references’ technical Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 54 subject matter, see GPAC, 57 F.3d at 1579, only further weighs in favor of the Examiner in this regard. Moreover, Appellant’s arguments regarding Deconinck’s and Hotelling’s individual shortcomings in this regard (Appeal Br. 67-68; Reply Br. 34) do not show nonobviousness where, as here, the rejection is based on the cited references’ collective teachings. See Merck, 800 F.2d at 1097. Furthermore, as noted previously, “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332 (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. Keller, 642 F.2d at 425. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. And here, the Examiner’s proposed combination uses prior art elements predictably according to their established functions to yield a predictable result. See KSR, 550 U.S. at 417. Therefore, we are not persuaded that the Examiner erred in rejecting claim 17, and claim 18 not argued separately with particularity.16 Claim 30 For the reasons indicated previously regarding claim 1, we also sustain the Examiner’s rejection of independent method claim 30 that recites 16 Although Appellant nominally argues claim 18 separately (see Appeal Br. 68-69), Appellant reiterates arguments made for claim 17. We, therefore, group these claims accordingly. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 55 commensurate limitations. See Final Act. 65-71. Rather than repeat our detailed analysis here in connection with claim 1, we incorporate it here by reference. Moreover, to the extent Appellant contends that the Examiner’s proposed combination does not at least suggest the recited method (see Appeal Br. 70; Reply Br. 34-35), we disagree for the reasons noted previously. Therefore, we are not persuaded that the Examiner erred in rejecting claim 30.17 THE REMAINING REJECTIONS Because our decision is dispositive regarding patentability of all appealed claims based on the Deconinck and Hotelling, we need not reach the merits of the Examiner’s decision to also reject (1) claims 1-30 as obvious over Deconinck, Hotelling, and Burke (Final Act. 71-73); and (2) claims 13-21, 24, 28, and 29 over Deconinck, Hotelling, Burke, and Taylor (Final Act. 73-98). See 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). CONCLUSION The Examiner’s decision to reject claims 1-30 is affirmed. 17 We note in passing that claim 30 contains an apparent typographical error in line 4 with a seemingly superfluous instance of the phrase “wherein the tether” in the recitation “wherein the tether wherein the base assembly electrical contact . . . ” (emphasis added). Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 56 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 25 Nonstatutory double patenting (Henson ’456) 1, 25 1, 25 Nonstatutory double patenting (’565 application, Deconinck)18 1, 25 Nonstatutory double patenting (Henson ’583) 1, 25 25 Nonstatutory double patenting (Henson ’140) 25 1, 25 Nonstatutory double patenting (Henson ’338) 1, 25 1, 25 Nonstatutory double patenting (Henson ’300) 1, 25 1-30 103 Deconinck, Hotelling 1-30 1-30 103 Deconinck, Hotelling, Burke 13-21, 24, 28, 29 103 Deconinck, Hotelling, Burke, Taylor Overall Outcome 1-30 18 Because we do not reach this rejection, its corresponding table cells are left blank. We likewise leave blank table cells corresponding to other rejections that we do not reach. Appeal 2022-001034 Reexamination Control 90/014,363 Patent US 10,026,281 B2 57 REQUESTS FOR EXTENSIONS OF TIME Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED For PATENT OWNER: Olympic Patent Works PLLC 4979 Admiral Street Gig Harbor, WA 98332 For THIRD-PARTY REQUESTER: Meunier Carlin & Curfman LLC 999 Peachtree Street NE, Ste. 1300 Atlanta, GA 30309