Ex Parte Li et al

Patent Trials and Appeals Board

Nov 29, 2018

14394614 - (D) (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/394,614 10/15/2014
65040 7590 12/03/2018
MICHAEL BEST & FRIEDRICH LLP (Acco)
100 EAST WISCONSIN A VENUE
SUITE 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
QiuminLi
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
010399-9047-US02 1500
EXAMINER
DESROSIERS, EV ANS
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
12/03/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MKEIPDOCKET@MICHAELBEST.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QIUMIN LI and SAMSON LEE
Appeal2018-003920
Application 14/394,614
Technology Center 2400
Before ALLEN R. MacDONALD, IRVINE. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-22, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is ACCO Brands
Corporation. App. Br. 2.
Appeal2018-003920
Application 14/394,614
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to "systems and methods
providing for data synchronization and recharging." Spec. ,r 2. The
Specification provides that "there are cases in which data synchronization
needs to be controlled without affecting the charging cycle" and the
invention "allow[ s] enablement and disablement of data synchronization
between a host and one or more mobile devices." Spec. ,r,r 3, 4. Claim 1,
which is illustrative of the claimed invention, reads as follows:
1. A system for enabling data syncing between a host device
and an electronic device, the data syncing system comprising:
a first port selectively coupleable to a first electronic
device, the first port including a set of power terminals and a set
of data terminals;
a second port selectively coupleable to the host device;
a data sync switch coupled between the first port and the
second port, the data sync switch switchable between a first state,
in which data communication between the electronic device and
the host device is enabled, and a second state, in which data
communication between the electronic device and the host
device is disabled;
an authorization device configured to
selectively couple with an authorizing physical
object,
cause the data sync switch to be in the first state
when the authorization device is coupled with the
authorizing physical object, and
cause the data sync switch to be in the second state
when the authorization device is not coupled with the
authorizing physical object; and
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wherein the set of power terminals provides a charging
current to the first electronic device when the data sync switch is
in the first state and when the data sync switch is in the second
state.
References
The Examiner relies on the following prior art in rejecting the claims:
Liang
Hom
US 2002/0038394 Al
US 2005/0188425 Al
Rejection
Mar. 28, 2002
Aug. 25, 2005
Claims 1-22 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Liang and Hom. Final Act. 3-12.
ANALYSIS
Claim 1
Appellants contend the combination of Liang and Hom fails to teach
or suggest "wherein the set of power terminals provides a charging current
to the first electronic device when the data sync switch is in the first state
and when the data sync switch is in the second state," as recited in claim 1.
App. Br. 8-10; Reply Br. 2--4. Appellants argue Liang fails to teach the
disputed limitation "because Liang fails to disclose any data sync switch that
switches between a first state and a second state." App. Br. 9. Appellants
argue Hom fails to teach the disputed limitation because Hom "does not
disclose transferring power between any devices except for the relay 40."
App. Br. 9.
Although the Examiner initially relied upon Hom for teaching or
suggesting the disputed limitation (Final Act. 4--5 ( citing Hom, Figs. 1, 1 A,
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4; ,r,r 47--49, 76, 78)), in response to Appellants' arguments, the Examiner
finds Liang teaches "data and power transfer can occur automatically, such
that no particular activation mechanism is utilized, apart from connecting the
sync charger to the peripheral device and the computer." Ans. 8 (citing
Liang ,r 21) ( emphasis omitted). Based on this finding, the Examiner
reasons Liang teaches "the power transfer can be occurred [sic]
automatically even though the switch is closed or in disabled state" and,
therefore, that Liang teaches or suggests the disputed limitation. Id.
In the Reply Brief, Appellants initially point out that although the
Examiner's Answer does not include a new ground of rejection, the findings
included in the Examiner's Answer are significantly different from those
presented in the Final Office Action. Reply Br. 2-3. To the extent
Appellants argue that the Examiner's findings constitute a new ground of
rejection, we do not decide this issue herein because requests to review the
Examiner's failure to designate a rejection in the Examiner's Answer as a
new ground of rejection is a petitionable matter under 37 C.F.R. § 181 to the
Director of the USPTO. 37 C.F.R. § 41.40; see also MPEP § 1002.02(c)(6).
Regarding the Examiner's additional findings, Appellants argue the
Examiner fails to establish a prima facie case of obviousness because:
The argument presented in the Examiner's Answer
effectively requires a combination of three different examples:
(1) Liang' s device as illustrated in Fig. 3 ( with the
synchronization activation button), (2) Hom's locking device,
and (3) Liang's second example discussed in ,r [0021] (without
the synchronization activation button). However, the Examiner
fails to present any explanation or argument as to why it would
be obvious to further modify the combined teachings of Liang
and Hom in view of the second alternative example taught by
Liang.
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Reply Br. 3.
We are not persuaded. As discussed below, we find the embodiment
of Liang' s device as illustrated in Figure 3 teaches or suggests the disputed
limitations. Figure 3 illustrates a signal conversion device that converts
signals for communication between a computer and a peripheral
communication device. Lang ,r 20. Liang teaches the signal conversion
device includes three LED indicators 302, 304, 306. Id. Liang teaches that
LED indicator 302 "will illuminate, for example, when the sync-charger is
operatively connected to a computer via a USB or IEEE 1394 port, the
computer is turned on, and the sync-charger is drawing power through the
USB or IEEE 1394 port." Id. Liang teaches that LED indicators 304, 306
are signal indicators for indicating when data is being transmitted from the
communication device interface to the computer interface and from the
computer interface to the communication device interface, respectively. Id.
Figure 4 of Liang illustrates the flow of data and power within the signal
conversion device. Liang ,r 22. Figure 4 depicts power being supplied to the
communication device via a circuit that is separate from the circuit used for
data transmission. Liang Fig. 4. Because Liang teaches the use of a separate
LED indicator for indicating that the sync-charger is drawing power through
the USB or IEEE 1394 port and Liang depicts a separate circuit for
providing power to the communication device, Liang teaches, or at least
suggests, a set of power terminals provides a charging current to the
communication device prior to depression of the synchronization button
( e.g., when the data sync switch is in the second state) and after depression
of the synchronization button ( e.g., when the data sync switch is in the first
state).
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We are also not persuaded by Appellants' argument that "Liang does
not describe any examples where data communication between two devices
is 'disabled' by a 'switch"' and that Liang, instead, "only teaches
configurations and mechanisms for initiating a particular type of data
transfer between two devices that have already been communicatively
coupled (via Liang's sync-charger device)." Reply Br. 3. Liang teaches that
"alternative methods of activating the data transfer process may be practiced,
such as flipping a switch, toggle, or other engagement mechanism." Liang
,r 21 ( emphasis added). Thus, Liang teaches or suggests that the data
communication between the communication device and the computer is
disabled/enabled by a switch, as required by claim 1.
Appellants further contend "it would not have been obvious to a
person of ordinary skill at the time of the invention to use the key switch 36
to control the data sync of the Liang device, while allowing the charging of
an electronic device by the Liang device to remain active when the key
switch 36 is activated and when the key switch 36 is deactivated."
Appellants argue:
Neither Liang nor Hom provides a rationale for adding a security
( or control) feature, such as that provided by a data sync switch,
to a data connection between two devices while allowing a
charging connection to remain active even when the data
connection between the two devices is disabled. Only the present
application discloses such a separate control of the data
connection and the charging connection between two devices.
Accordingly, it would be improper use of hindsight to argue that
such a control is obvious over Liang and Hom.
App. Br. 10.
We are not persuaded. As discussed supra, Liang teaches that
"alternative methods of activating the data transfer process may be practiced,
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such as flipping a switch, toggle, or other engagement mechanism." Liang
,r 21. We agree with the Examiner (Final Act. 5), that modifying Liang' s
signal conversion device to include Hom's locking device 30 would have
predictably used prior art elements according to their established functions-
an obvious improvement (see KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007)).
The Examiner's findings are reasonable because the skilled artisan
would "be able to fit the teachings of multiple patents together like pieces of
a puzzle" because the skilled artisan is "a person of ordinary creativity, not
an automaton." KSR, 550 U.S. at 420, 421. Appellants do not present
evidence that the resulting arrangement was "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
step over the prior art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Accordingly, we are not persuaded the Examiner erred.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 1; and claims 2, 3, 5-14, and 17-20, which depend from
claim 1 and are not separately argued with particularity.
Claim 4
Claim 4 depends from claim 1 and recites "a third port configured to
be coupled to a second electronic device, and a hub configured to be coupled
to the first port and the third port." Claim 4. Appellants contend the
combination of Liang and Hom fails to teach or suggest the recited
limitations because Liang does not teach a hub configured to be coupled to a
first port and a third port, as required by claim 4. App. Br. 10-11.
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Appellants argue although Liang teaches a compact connection setup for
connecting a communication device to a computer and that the
communication device may be different types of communications device,
Liang "describe[ s] the operation of the compact connection setup 200 as
including only two devices." App. Br. 11 (citing Liang, Fig. 2).
The Examiner finds Liang teaches a single USB port can be used to
connect up to 127 peripheral devices through USB hubs. Ans. 10 (citing
Liang ,r 7). The Examiner further finds Liang teaches "as an alternative to
USB connection 402, the invention may be practiced with any of a number
of communication port configurations." Id. As such, the Examiner
essentially finds it would be obvious to modify Liang' s device to include a
third port configured to be coupled to a second electronic device, and a USB
hub configured to be coupled to the first port and the third port, as required
by claim 4. Appellants' arguments fail to address the combination of
teachings relied upon by the Examiner and, therefore, are unpersuasive of
error.
Claims 15 and 16
Claim 15 depends, indirectly, from claim 1 and recites "wherein the
authorization device is configured to cause the data sync switch to be in the
first state, and wherein data synchronization between the host device and the
first electronic device continues after the authorizing physical object is
decoupled from the authorization device." Claim 15. Claim 16 depends
from claim 15 and recites "wherein data synchronization between the host
device and the first electronic device stops when one of the host device and
the first electronic device is decoupled from the data syncing system."
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Claim 16. Appellants argue the Examiner fails to establish a prima facie
case of obviousness with respect to claim 16 because the Examiner merely
cites to Figure 2 of Liang and Figure 1 A of Hom without providing any
explanation as to how the cited Figures teach or suggest the limitations
recited in claims 15 and 16. App. Br. 11-12. Appellants argue:
Liang does not disclose a data sync switch or changing the state
of a data sync switch. It appears the Examiner interprets claim
16 on its own, and alleges that data syncing is stopped when the
communication device 202 is disconnected from the computer
204. Claim 16, however, depends from claim 15. Neither Liang
nor Hom discloses a system in which data synchronization
between the host device and the first electronic device continues
after the authorizing physical object is decoupled from the
authorization device and where data synchronization between
the host device and the first electronic device stops when one of
the host device and the first electronic device is decoupled from
the data syncing system ( e.g., after the authorizing physical
object was removed).
App. Br. 12.
We find Appellants' arguments persuasive. Regarding claim 15, the
Examiner relies on Figure 2 of Liang and Figure 1 A of Hom. Final Act. 11.
We are unable to determine how, and the Examiner fails to provide any
explanation, these Figures teach or suggest that data synchronization
between the host device and the first electronic device continues after the
authorizing physical object is decoupled from the authorization device, as
required by claim 15. Accordingly, we do not sustain the Examiner's
rejection of claim 15 and claim 16, which depends therefrom.
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Claims 21 and 22
In rejecting claims 21 and 22, the Examiner finds "claims 21-22 recite
the claimed [sic] that contain similar limitations as claim 1; therefore, they
are rejected under the same rationale." Final Act. 12. Appellants contend
the Examiner fails to establish a prima facie case of obviousness with
respect to claims 21 and 22 because claims 21 and 22 recite additional
limitations that are not recited in claim 1 and, therefore, are not addressed by
the Examiner. App. Br. 12-15.
In response to Appellants' arguments, the Examiner provides specific
findings regarding the additional limitations recited in claims 21 and 22.
Ans. 16-19, 20-21. The Examiner's findings are sufficient to establish a
prima facie case of obviousness and Appellants do not address the
Examiner's findings in the Reply Brief. Accordingly, we sustain the
Examiner's rejection of claims 21 and 22.
DECISION
We affirm the Examiner's rejection of claims 1-14 and 17-22.
We reverse the Examiner's rejection of claims 15 and 16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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