Ex Parte Nesemeier et al

Patent Trial and Appeal Board

Oct 23, 2018

15090334 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/090,334 04/04/2016 Frederick G. Nesemeier
64711 7590 10/23/2018
D.C. WILLIAMS
P.O. BOX 2400
CARSON CITY, NV 89702
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.
BB-SSl-CIPl-2016-001 3758
EXAMINER
EUSTAQUIO, CAL J
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
10/23/2018 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
ExparteFREDERICKG. NESEMEIER, GARYF. NESEMEIER, and
DAVID C. WILLIAMS
Appeal2018-002752
Application 15/090,334
Technology Center 2600
Before MAHSHID D. SAADAT, ERIC S. FRAHM, and
JAMES W. DEJMEKAdministrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL 1
1 The Appeal Brief states the Appellants, Frederick G. Nesemeier, Gary F.
Nesemeier, and David C. Williams, are the real parties in interest. App. Br.
2.
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Application 15/090,334
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § I34(a) from the Examiner's final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse the Examiners' non-statutory, obvious double patenting
rejection of claims 1-22, and we affirm the Examiner's (i) anticipation
rejection of claims 1-5, 9-12, 16-18, 21, and22; and (ii) obviousness
rejections of claims 6-8, 13-15, 19, and 20 which are all based on the
teachings of Fullam (US 2015/0077234 Al; published March 19, 2015).
Disclosed Invention
The invention concerns a method and system for sending and
receiving signals for communicating with multiple receivers, such as players
in a game, where the system is reconfigurable (Figs. 2A-D, 3A-F, 4; Spec.
,r,r 2-12; Abs.; claims 1, 9, and 15).
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 9, which are reproduced below with emphases
added:
1. A system for configurable data communication, the
system comprising:
A. at least one signaling device comprising a first
stored communication configuration comprising:
(i) one or more first configuration elements
selected by a user, and
(ii) one or more second configuration elements
comprising data selected or provided by a user;
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B. at least one receiving device comprising:
(i) one or more external stimuli generator(s); and
(ii) a second stored communication configuration
comprising one or more third configuration elements
selected by a user;
wherein the at least one signaling device is capable of:
a. generating at least one signal comprising said first
stored communication configuration; and
b. transmitting said at least one signal;
and
wherein the at least one receiving device is capable of:
c. receiving said at least one signal;
d. activating at least one of said one or more external
stimuli generator( s) when said at least one signal comprises at
least one of said one or more first configuration elements
identical to at least one of said one or more third configuration
elements; and
e. receiving the data in said one or more second
configuration elements.
9. A method for sending and receiving data using a
signaling device comprising a first communication
configuration and a receiving device comprising one or more
external stimuli generator(s) and a second communication
configuration, the method comprising:
A. storing, by a user, (i) one or more first configuration
element(s) and (ii) one or more second configuration element(s)
comprising data, in said first communication configuration;
B. storing, by a user, one or more third configuration
element(s) in said second communication configuration;
C. generating, by the signaling device, a signal
comprising said one or more first configuration element( s) and
said one or more second configuration element(s);
D. transmitting, by the signaling device, said signal;
E. receiving, by the receiving device, said signal;
F. activating, by the receiving device, at least one of the one
or more external stimuli generator(s) if said received signal comprises
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any of said one or more first configuration element( s) identical to any
of said one or more third configuration element(s); and
G. storing, presenting, or storing and presenting, by the
receiving device, the data in said one or more second configuration
element(s).
The Examiner's Rejections
(1) The Examiner rejected claims 1-22 based on the judicially created
doctrine of non-statutory obviousness-type double patenting, over claims 1-
20 ofNesemeier (US 9,305,442 Bl; issued April 5, 2016). Final Act. 2-17.
(2) The Examiner rejected claims 1, 2, 7, 15, 16, 21, 22, 26, and 27
under 35 U.S.C. § I02(a)(l) as being anticipated by Fullam
(US 2015/0077234 Al; published March 19, 2015). 2 Final Act. 17-20. 3
2 With regard to the anticipation rejection, Appellants only present
arguments as to independent claims 1 (App. Br. 7-11; Reply Br. 2-12), 9
(App. Br. 11-12), and 16 (App. Br. 12-13; Reply Br. 2-12), relying on the
same arguments presented for claim 1 as to claim 16 ( claims 1 and 16 recite
similar subject matter concerning user selection of the configuration
elements, whereas claim 9 differs in that it recites a user storing the
configuration elements). Because claims 1 and 16 each contain similar
subject matter pertaining to user configuration of configuration elements for
a communication configuration, and the remaining claims rejected based on
anticipation all depend from claims 1, 9, or 16, we select claim 1 as
representative of the group of claims 1-5 and 16-18, and 21 rejected under
§ I02(a)(l). Because (i) claim 9 differs in scope from claims 1 and 16;
(ii) Appellants rely on the arguments for claim 9 as to the patentability of
claims 10-12 and 22 with respect to the anticipation rejection of claim 9; we
select claim 9 as representative of the group of claims 9-12 and 22 rejected
for anticipation. Therefore, our analysis herein will only address
representative claims 1 and 9.
3 We note that the heading for the statement of the anticipation rejection
found in the Final Office Action does not mention claims 21 and 22 (Final
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(3) The Examiner rejected claims 6, 7, 13, 14, 19, and 20 under
35 U.S.C. § 103 as being unpatentable over the combination of Fullam
alone. Final Act. 20-21.
( 4) The Examiner rejected claims 8 and 15 under 35 U.S.C. § 103 as
being unpatentable over the combination of Fullam and Longinotti-Buitoni
(US 2014/0070957 Al; published March 13, 2014). Final Act. 21-22.
Issues on Appeal
Based on Appellants' arguments in the Appeal Brief (App. Br. 4--11)
and the Reply Brief (Reply Br. 2-5), the following issue is presented on
appeal:
(1) Did the Examiner err in rejecting claims 1-22 for obviousness-
type double patenting, over claims 1-20 ofNesemeier?
(2) Have Appellants shown the Examiner erred in rejecting (i) claims
1-5, 9-12, and 16-18 under 35 U.S.C. § I02(a)(l) for anticipation, and/or
(ii) claims 6-8, 13-15, 19, and 20 as being unpatentable under 35 U.S.C.
§ 103 for obviousness, because Fullam fails to disclose:
(a) user selection of configuration elements, as recited in
independent claims 1 and 16; and
(b) storing configurations, as recited in independent claim 9?
Act. 18). We consider this to be harmless error on the part of the Examiner,
because the body of the rejection (Final Act. 19-20) provides a rejection on
the merits, i.e., a prima facie case. Appellants, in the Reply Brief (Reply
Br. 12), recognize that claims 21 and 22 stand rejected, and rely on the
arguments presented as to claims 1 and 9 from which claims 21 and 22
respectively depend for the patentability of claims 21 and 22 (see App.
Br. 14). Therefore, we consider claims 21 and 22 to be rejected under
anticipation, and grouped with respective claims 1 and 9.
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ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 2-22) in light
of Appellants' contentions in the Appeal Brief (App. Br. 6-25) and the
Reply Brief (Reply Br. 2-14) that the Examiner has erred, as well as the
Examiner's response to Appellants' arguments (Ans. 4--26). For the reasons
that follow, we agree with Appellants' arguments with respect to the obvious
double patenting rejection, and we disagree with Appellants' arguments with
respect to the anticipation and obviousness rejections.
Non-Statutory Obviousness-type Double Patenting
Appellants contend (App. Br. 20-25; Reply Br. 13-14) the Examiner
erred in rejecting claims 1-22 under the doctrine of non-statutory
obviousness-type double patenting. We agree.
Specifically, we agree with Appellants that the Examiner in this case
has not met the required burden of showing the inventions of claims 1-22 in
the instant application are similar to, or obvious in view of, claims 1-20 of
U.S. Patent No. 9,305,442 (see App. Br. 20-25; Reply Br. 13-14). In
particular, we agree with Appellants that the Examiner fails to address
elements of the pending claims which render them patentably distinct over
the claims of the reference patent (see App. Br. 21 ). We find the Examiner
fails to address the salient features of the independent claims, namely (i) the
user selection of configuration elements recited in independent claims 1 and
16 on appeal; and (ii) the recitation in independent claim 9 of user storage of
configuration elements, accompanied by the failure to recite user selection
(see generally Final Act. 2-17; Ans. 24--26).
In sum, we agree with Appellants (Reply Br. 14) that the "the co-
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owned reference patent neither teaches nor suggests all of the elements of
any of Appellant's claims, [therefore] the non-statutory (obviousness-type)
double patenting [ rejection is] improper." In view of the foregoing, we do
not sustain the Examiner's rejection of claims 1-22 under the doctrine of
non-statutory obviousness-type double patenting.
Anticipation and Obviousness Rejections
In rejecting claims under 35 U.S.C. §§ 102 and 103, it is incumbent
upon the Examiner to establish a factual basis to support the prior art
rejection - the so-called "prima facie" case. See In re Piasecki, 7 45 F .2d
1468, 1472 (Fed. Cir. 1984) (the USPTO has the initial burden of proof "to
produce the factual basis for its rejection of an application under sections
102 and 103." (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967))).
"[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability." In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the opportunity on appeal to the Patent Trial and
Appeal Board (PTAB) to demonstrate error in the Examiner's position. See
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998)). "[A]nticipation of a claim under§ 102
can be found only if the prior art reference discloses every element of the
claim .... " In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1458 (Fed. Cir. 1984)). "[A]bsence from the reference of any
claimed element negates anticipation." Kloster Speedsteel AB v. Crucible,
Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986).
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"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
scope of the claim. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly
interpreted claim must then be compared with the prior art.
Representative Claim 1:
With regard to the anticipation rejection of independent claim 1, we
agree with the Examiner's conclusion that Fullam discloses user selection of
configuration elements, as recited in independent claim 1. More
specifically, Fullam discloses the same purpose as Appellants' disclosed
invention - namely that of allowing a user to reconfigure a data
communication device to provide data communications between a leader and
plural followers using mechanical switches (compare Fullam ,r,r 42, 45,
Figs. 3A-H, 4A-D, and Abs., with Spec. ,r,r 2-12, Figs. 3A-F; Abs.).
The Examiner has made a prima facie case of anticipation of
representative claim 1 in view of the teachings of Fullam (Final Act. 18-19;
Ans. 4--7), including a determination that Fullam discloses a user providing
or selecting configuration elements (Final Act. 18, Ans. 6 ( citing Fullam
,r,r 45-51, Figs. A-D)). Notably, Fullam's paragraph 45 describes, and
Figures 4A-D show, the configuration and reconfiguration of leader and
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follower communication devices lOOL and lOOf (shown in Figure 4A) as
follows:
The devices 100 may be permanently configured as leader lOOL
or follower lOOf devices, or may be re-configurable (e.g., via
switches 170 or communications interface 130) to be a leader
device lOOL, or a follower device 100/
Fullam ,r 45 (underlining emphasis added). Switches 170 are shown in
Fullam's Figure 3C, and described in paragraph 42, as follows:
[D]evices 100 hav[e] housings 199 [and] may be worn like a
band or wristwatch on the body of the user. In FIG. 3C,
configuration 300c may include a housing 199 having a shape
similar to that of a wristband or wristwatch. Housing 199 may
include a portion for positioning one or more switches 170 that
may be actuated by the user to activate one or more functions
(e.g., activating display 137) of device 100.
Fullam ,r 42 (underlining emphasis added). Thus, putting paragraphs
42 and 45 together, Fullam discloses using switches 170 on devices
100 to allow a user to select a configuration or reconfiguration of
leader and follower devices 1 OOL and 100/
In addition, Appellants describe the recited user selection of
configurations in paragraph 15 of the Specification as follows:
[T]he communication configurations of each device may be
easily changed as desired by the users via any combination of
mechanical or electrical means, including but not limited to the
use of mechanical switches, configurable software or firmware,
or by any other preferred means.
Spec. ,r 15 ( emphasis added). In this light, it can be seen that Fullam
discloses user selectability being performed in the data
communications system/devices in the same manner, i.e., by
mechanical switches. Therefore, Appellants' arguments (App. Br. 7-
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11; Reply Br. 2-12) that Fullam fails to disclose, and is silent in
regards to, user selectability of configuration elements, are
unpersuasive.
Representative Claim 9:
With regard to the anticipation rejection of independent claim 9, we
agree with the Examiner's finding that Fullam discloses user storage of
configuration elements, as recited in independent claim 9. The Examiner
has made a prima facie case of anticipation of representative claim 9 in view
of the teachings of Fullam (Final Act. 18-19; Ans. 7-10), including a
determination that Fullam discloses a data storage 120 for storing
configuration elements and data, as recited in claim 9 (Ans. 9-10 (citing
Fullam Fig. IA, data storage 120)). Fullam describes data storage 120 as
storing data and configurations in the following manner:
Data storage 120 may include a non-transitory computer
readable medium ( e.g., Flash memory) for storing data
and algorithms used by processor 110 and other components
of device 100. Data storage may include a plurality of different
types of data and algorithms 122-126. There may be more
or fewer types of data and algorithms as denoted by 129. Data
storage 120 may include other forms of data such as an
operating system (OS), boot code, BIOS, firmware, encryption
code, decryption code, applications (APP), wireless
communication protocols ( e.g., Bluetooth, NFC, WiFi, Ad
Hoc WiFi, HackRF, USE-powered software-defined radio
(SDR), etc.), for use by processor 110 or other components of
device 100. Data storage 120 may include storage space used
by processor 110 and/or other components of device 100 for
general data storage space, scratch pads, hash tables, look-up
tables, buffers, cache memory, registers, or the like. Data
storage 120 may include volatile memory, non-volatile memory
or both.
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Fullam ,r 30 (underlining emphases added). Appellants do not dispute these
findings by the Examiner in the Reply Brief with persuasive evidence or
argument. Therefore, Appellants' arguments (App. Br. 11-12) that Fullam
fails to disclose storing, by a user, configuration elements, are unpersuasive.
Summary
In view of the foregoing, we sustain the Examiner's anticipation
rejection of representative claims 1 and 9, as well as claims 2-5, 10-12, 16-
18, 21, and 22 grouped therewith, based on Fullam. For similar reasons, and
because (i) claims 6, 7, 13, 14, 19, and 20 each ultimately depend from
respective ones of independent claims 1, 9, and 16; and (ii) we agree with
the Examiner (Final Act. 21-22; Ans. 21-24) that Loginotti-Buitoni cures
the deficiencies of Fullam with regard to dependent claims 8 and 15, we also
sustain the Examiner's obviousness rejections of claims 6-8, 13-15, 19, and
20.
CONCLUSIONS
(1) Appellants have shown that the Examiner erred in rejecting claims
1-22 based on the judicially created doctrine of non-statutory obviousness-
type double patenting.
(2) Appellants have not adequately demonstrated that the Examiner
erred in rejecting (i) claims 1-5, 9-12, and 16-18 under 35 U.S.C.
§ 102(a)(l) for anticipation, and/or (ii) claims 6-8, 13-15, 19, and 20 as
being unpatentable under 35 U.S.C. § 103(a) for obviousness.
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DECISION
We reverse the Examiner's rejection of claims 1-22 based on the
judicially created doctrine of non-statutory obviousness-type double
patenting, over claims 1-20 ofNesemeier.
We affirm the Examiner's (i) anticipation rejection of claims 1-5, 9-
12, and 16-18, and (ii) obviousness rejections of claims 6-8, 13-15, 19, and
20.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
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