Ex Parte Maugars et al

Patent Trial and Appeal Board

Sep 25, 2018

13738661 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/738,661 01/10/2013
65913 7590 09/27/2018
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
FIRST NAMED INVENTOR
Philippe Maugars
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.
AT050017US3 1654
EXAMINER
FLEMING-HALL, ERICA L
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
09/27/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE MAU GARS and PA TRICE GAMAND
Appeal2018-001608
Application 13/73 8,661
Technology Center 2600
Before MAHSHID D. SAADAT, JOHN A. EVANS, and ALEX S. YAP,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-5, 8, and 9. Claims Appx. Claims 6
and 7 are canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE. 2
1 NXP B.V. is identified as the applicant. See Bib. Data Sheet.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed June 7, 2017, "App. Br."), the Reply Brief
(filed November 30, 2017, "Reply Br."), the Examiner's Answer (mailed
October 5, 2017, "Ans."), the Final Action (mailed February 9, 2017, "Final
Act."), and the Specification (filed January 10, 2013, "Spec.") for their
respective details.
Appeal2018-001608
Application 13/73 8,661
Related Proceedings
The present Application was the subject of Appeal 2015-000487
heard by the present Panel of the Board. Our Decision of May 25, 2016
Affirmed the rejection of Claims 1-5 as obvious and of Claims 1, 2, 4, and 5
under the judicial doctrine of obviousness-type double patenting.
Subsequent to our Decision, Appellants amended the claims.
The Invention
The claims relate to a wireless mobile communication device having
short range functionality. See Abstract.
An understanding of the invention can be derived from a reading of
Claim 1, the sole independent claim, which is reproduced below some
formatting added:
1. A wireless mobile communication device having a short
range functionality comprising:
an antenna configured to receive and send short range
signals; a circuit configured to provide the short range
functionality for the wireless mobile communication device;
a first energy source configured to supply power for the
wireless mobile communication device including the circuit;
a second energy source connectable to the circuit to
supply power thereto, wherein the second energy source is
realized on a passive companion chip of the circuit embedded
with Power Integrated Circuit (PIC) technology;
a controller configured to monitor a charge state of the
first energy source, and configured to switch off the first energy
source and switch on the second energy source if the monitored
charge state of the first energy source falls below a threshold;
a detector configured to detect a charge state of the
second energy source, wherein the second energy source is
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Appeal2018-001608
Application 13/73 8,661
configured to be charged via a voltage induced by an external
short range signal received by the antenna if the detected charge
state of the second energy source is not sufficient to allow at
least one short range transaction.
References and Rejections
The Examiner relies upon the prior art as follows:
Palara, et al., us 5,735,254 Pub. Apr. 7, 1998
Koyama, et al. , US 2002/0171400 Al Filed Mar. 6, 2002
Palermo, et al., US 2003/0050011 Al Pub.Mar. 13,2003
Forster, et al. , US 2004/0106376 Al Pub. June 3, 2004
Lindsay US 2005/0148828 Al Pub. July 7, 2005
Hyde US 2005/0237844 Al Pub. Oct. 27, 2005
The claims stand rejected as follows:
1. Claims 1, 2, 4, and 5 stand rejected on the ground of non-statutory
obviousness-type double patenting over Claims 1 and 4 of
US 8,374,546 B2 and Claims 4, 7, and 12 of US 8,238,823 B2. Final
Act. 3-5.
2. Claims 1-3, 5, 8, and 9 stand rejected under 35 U.S.C. § I03(a) as
obvious over Palermo, Foster, Koyama, Lindsay, and Palara. Final
Act. 5-12.
3. Claim 4 stands rejected under 35 U.S.C. § I03(a) as obvious over
Palermo, Foster, Koyama, Hyde, Lindsay, and Palara. Final Act. 12.
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Appeal2018-001608
Application 13/73 8,661
ANALYSIS
We have reviewed the rejections of claims 1-5 in light of Appellants'
arguments that the Examiner erred. We consider Appellants' arguments
seriatim, as they are presented in the Appeal Brief, pages 4--11.
CLAIMS 1, 2, 4, AND 5: NON-STATUTORY, OBVIOUSNESS-TYPE
DOUBLE PA TENTING
Appellants contend the presently amended independent Claim 1
recites "'a passive companion chip of the circuit embedded with Power
Integrated Circuit (PIC) technology."' App. Br. 5. Appellants contend this
subject matter is absent from the two related patents. Id. Appellants argue
the Examiner has failed to provide any evidence for the supposed "'design
choice,"' particularly as this subject matter is not analogous to the
removability of a cap from a lipstick holder in Dulberg. 3 Id. at 4.
The Examiner finds that one of ordinary skill in the art at the time of
invention would have been motivated to substitute the short range circuit in
the instant application for an NFC circuit because it is a simple substitution
of one known element (i.e., short range circuit) for another (i.e., NFC
circuit) to obtain a predictable result. Ans. 13.
Appellants reply the Examiner's "simple substitution" argument fails
because the Power Integrated Circuit (PIC) technology is not present in
Appellants related patents. Reply Br. 1.
3 In re Dulberg, 289 F.2d 522, 523 (CCPA 1961) (cited by the Examiner).
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Appeal2018-001608
Application 13/73 8,661
The Examiner's finding substitutes a "short range circuit" for an
"NFC circuit." Ans. 13. However, the Examiner's finds fails to address
Appellants contention that the prior patents fail to teach PIC technology and
the Examiner's Answer has no showing that either the "short range circuit"
or the "NFC circuit" bears any relationship to the claimed PIC technology. 4
In view of the foregoing, we decline to sustain the rejection of Claims
1, 2, 4, and 5 under the judicial doctrine of obviousness-type double
patenting.
CLAIMS 1-3, 5, 8, AND 9: OBVIOUSNESS OVER PALERMO, FOSTER, KOYAMA,
LINDSAY, AND P ALARA
Claim 1 recites, inter alia: "a second energy source connectable to the
circuit to supply power thereto, wherein the second energy source is realized
on a passive companion chip of the circuit embedded with Power Integrated
Circuit (PIC) technology." Appellants contend the prior art fails to teach
specifically the PIC limitation. App. Br. 7.
To teach PIC technology, the Examiner cites paragraphs 90 and 100
of Lindsay. Ans. 14.
4 Power integrated circuits (PICs) are defined as ICs combining high-voltage
and/or high-current components monolithically with low-voltage/low-
current control components. See Satyen Mukherjee, Power integrated
circuits-progress, prospects and challenges, 36(11, Part 2) IEEE
Transactions on Electron Devices, Abstr. IA-4, 2599-2600 (November
1989).
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Appeal2018-001608
Application 13/73 8,661
We fail to find a teaching of PIC technology in the cited portions of
the prior art. In view of the foregoing, we decline to sustain the rejection of
Claims 1-5, 8, and 9.
DECISION
The rejection of Claims 1, 2, 4, and 5 under the judicial doctrine of
obviousness-type double patenting is REVERSED.
The rejection of Claims 1-5, 8, and 9 under 35 U.S.C. § 103 is
REVERSED.
REVERSED
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