Ex Parte Parimal

Patent Trial and Appeal Board

Feb 21, 2019

15068994 (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/068,994 03/14/2016
11422 7590 02/25/2019
Polycom
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
FIRST NAMED INVENTOR
Sandeep Parimal
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.
199-1068US 301991-06801 3532
EXAMINER
NGUYEN, TUAN DUC
ART UNIT PAPER NUMBER
2656
NOTIFICATION DATE DELIVERY MODE
02/25/2019 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):
acollins@blankrome.com
houstonpatents@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDEEP P ARIMAL
Appeal2018-006719
Application 15/068,994 1
Technology Center 2600
Before ERIC S. FRAHM, MICHAEL R. ZECHER, and
MICHAEL T. CYGAN, Administrative Patent Judges.
CYGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1 and 3-20. See App. Br. 7-13. Claim 2 was
cancelled during prosecution. App. Br. 14. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Polycom, Inc. App. Br.
3.
Appeal2018-006719
Application 15/068,994
Disclosed Invention and Exemplary Claim
The disclosed invention relates to a telecommunication device having
a magnetically aligned handset. Spec. ,r 1. At least one magnetic alignment
element is included in the handset to mate with at least one corresponding
magnetic alignment element in the receiving cradle to align the handset and
cradle. Spec. ,r 4. The magnetic alignment elements also guide the handset
to the cradle through their magnetic attraction. Spec. ,r 5. The magnetic
attraction of the magnetic alignment elements also secure the handset to the
cradle. Spec. ,r 6.
Independent claim 1 is exemplary of the disclosed invention, and
reads as follows (with key limitations of the claim emphasized):
1. A communication device, comprising:
a handset having a first magnetic alignment element; and
a body, the body including a cradle portion capable of
receiving the handset and a hookswitch located in the cradle
portion, wherein the cradle portion includes a second magnetic
alignment element that magnetically couples with the first
magnetic alignment element to engage the hookswitch and
wherein the magnetic coupling of the first magnetic alignment
element and the second magnetic alignment element guides,
aligns and secures the handset within the cradle portion.
Independent claims 17 and 19 recite a handset and a body,
respectively, having limitations commensurate with independent
claim 1. Dependent claims 3-16, 18, and 20 recite or incorporate
limitations commensurate with the above-emphasized limitations of
independent claim 1.
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Application 15/068,994
Examiner's Rejection2
The Examiner rejects claims 1, 3-5, 7, and 9-20 under 35 U.S.C.
§ 103 as being obvious over Uchino et al. (US 4,782,526, issued November
1, 1988 (hereinafter "Uchino")) in view of Major (US 5,301,224, issued
April 5, 1994 (hereinafter "Major")). Final Act. 2-5.
The Examiner rejects claim 6 under 35 U.S.C. § 103 over the
combination ofUchino and Major, further in view of Mile (US 5,440,628,
issued August 8, 1995 (hereinafter "Mile")). Final Act. 5---6.
The Examiner rejects claim 8 under 35 U.S.C. § 103 over the
combination ofUchino and Major, further in view of Moquin et al. (US
2002/0028699 Al, published March 7, 2002 (hereinafter "Moquin")). Final
Act. 6-7.
ANALYSIS
We have reviewed the Examiner's obviousness rejections (Final Act.
2-7) in light of Appellant's contentions that the Examiner has erred (App.
Br. 7-12; Reply Br. 2-3). Further, we have reviewed the Examiner's
response to Appellant's arguments (Ans. 2-3). We disagree with
Appellant's contention that the Examiner erred in rejecting the pending
claims (1 and 3-20) under 35 U.S.C. § 103.
Obviousness Rejection Over Uchino and Major
The Examiner finds the incorporation of pairs of magnetic strips
acting to mate handset and cradle, as taught or suggested by Major, in a
telephone communications apparatus, as taught or suggested by Uchino,
2 The application, filed after March 16, 2013, is examined under the first
inventor to file provisions of the America Invents Act. Final Act. 2.
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Application 15/068,994
render the invention of independent claim 1 obvious. Final Act. 2-3; Ans.
3. 3 The Examiner finds Major to teach or suggest "magnetic elements for
securing and guiding the handset to a cradle." Final Act. 3; Ans. 3. The
Examiner further finds "it would have been obvious ... to use magnetic
elements by Major in Uchino for stronger locking, securing, and aligning the
handset to a cradle." Ans. 3; see also Final Act. 3.
Appellant contends the combination ofUchino and Major fails to
teach or suggest the claimed magnetic coupling between magnetic alignment
elements in handset and cradle, which "guides," "aligns," and "secures" the
handset in the cradle. App. Br. 9. Specifically, Appellant contends that
Uchino has no magnetic coupling, and that Major teaches or suggests two
magnetic elements in each of the handset and cradle that secure, but do not
guide or align the handset within the cradle. Id. at 11. Appellant further
contends that Major has structural features other than the magnetic elements
that provide securing and aligning functions, and that those other structural
features amount to a teaching away from the magnetic elements providing
those functions. Id. at 10-12.
We begin with Appellant's contention of error in the Examiner's
finding that Major's configuration of magnetic elements in handset and
cradle "aligns" and "guides" the handset in the cradle. To evaluate this
contention, we must first construe the disputed terms, which must be given
3 A Supplemental Examiner's Answer was mailed on May 8, 2018,
correcting typographical errors in the first paragraph of page 2 of the
Examiner's Answer mailed on April 26, 2018. Since the content was of the
Examiner's Answer was not repeated in the Supplemental Examiner's
Answer, all references to the Examiner's Answer ("Ans.") refer to the page
numbers of the Examiner's Answer mailed April 26, 2018.
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Application 15/068,994
their broadest reasonable interpretation. See In re Zietz, 893 F.2d 319, 321
(Fed. Cir. 1989) (stating that, during examination, "claims must be
interpreted as broadly as their terms reasonably allow"). Under the broadest
reasonable interpretation standard, and absent any special definitions, claim
terms generally are given their ordinary and customary meaning, as would
be understood by one of ordinary skill in the art, in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Upon reviewing the specification, we do not find an explicit
definition for either of these claim terms. The specification, however,
provides descriptions of their functions that are helpful in ascertaining the
scope and meaning of the "aligns" and "guides" terms.
Beginning with the term "aligns," Appellant's disclosure explains,
"having at least two magnetically coupled points [in both handset and
cradle] prevents rotational misalignment." Spec. ,r 3 5. As cited by the
Examiner, Major teaches or suggests a pair of magnetic elements in both
handset and cradle. Final Act. 3 (citing Major, Figs. 1, 2 and col. 3, 11. 24--
35); Ans. 3 (citing the same). These form two magnetically coupled points
in both handset and cradle, a structural feature that Appellant has related to
the function of preventing misalignment. Appellant has not explained
adequately, nor can we discern, why the magnetic elements of Major, having
the same structural feature, would not also perform the same alignment
function. We, therefore, are persuaded that the Examiner presents sufficient
evidence to support a finding that Major teaches or suggests magnetic
coupling through magnetic elements that perform the claimed function of
aligning the handset within the cradle portion.
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Appellant further contends that the magnetic elements in Major do not
perform an alignment function because Major teaches other elements ( e.g.,
rib 14 and its complementary recess) that perform that function. App. Br. 9.
The mere fact that other parts of Major may also act to align the handset and
cradle does not address whether the magnetic elements themselves perform
an aligning function. Furthermore, Appellant's claims do not require the
magnetic coupling to be the sole alignment feature. This contention is, thus,
unpersuasive as failing to be commensurate in scope with the language of
independent claim 1. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998) ("[The] proffered facts ... are not commensurate with the claim scope
and are therefore unpersuasive."); In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (limitations not appearing in the claims cannot be relied upon for
patentability). Accordingly, we are not persuaded by Appellant's argument
that Major fails to teach or suggest "the magnetic coupling of the first
magnetic alignment element and the second magnetic alignment element ...
aligns ... the handset within the cradle portion" as claimed.
In the Reply Brief, Appellant also contends that the Examiner's
Answer does not address all of the claim elements because the Answer fails
to assert that Major teaches the "aligning" function. Reply Br. 2-3.
However, the Examiner's Answer states, "it would have been obvious ... to
use magnetic elements by Major in Uchino for stronger locking, securing,
and aligning the handset to a cradle." Ans. 3 ( emphasis added).
Accordingly, we disagree that the Examiner's Answer fails to address all of
the claim elements.
Turning to the term "guides," Appellant's disclosure explains the
guiding function as being due to "the magnetic attraction between alignment
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elements snaps the handset into place within the cradle, mating the
alignment elements." Spec. ,r 5. As cited by the Examiner, Major teaches or
suggests a pair of magnetic elements in both handset and cradle that exhibit
a magnetic attraction strong enough to hold the handset and cradle together.
Final Act. 3 (citing Major, Figs. 1, 2 and col. 3, 11. 24--35); Ans. 3 (citing the
same). Appellant has not explained adequately, nor can we discern, why
Major's teaching or suggestion of two magnetic elements in both handset
and cradle would not perform the same guiding function. We, therefore, are
persuaded that the Examiner presents sufficient evidence to support a
finding that Major teaches or suggests magnetic coupling through magnetic
elements that perform the claimed function of guiding the handset within the
cradle portion.
Appellant further contends that the magnetic elements in Major do not
perform a guiding function because Major teaches other elements ( e.g.,
flanges 12) that perform that function. App. Br. 9. The mere fact that other
parts of Major may also act to guide the handset and cradle does not address
whether the magnetic elements themselves perform a guiding function.
Furthermore, Appellant's claims do not require the magnetic coupling to be
the sole guiding feature. This contention is, thus, unpersuasive as failing to
be commensurate in scope with the language of representative claim 1. See
Hiniker Co., 150 F.3d at 1369; Self, 671 F.2d at 1348. Accordingly, we are
not persuaded by Appellant's argument that Major fails to teach or suggest
"the magnetic coupling of the first magnetic alignment element and the
second magnetic alignment element guides ... the handset within the cradle
portion" as claimed.
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Appellant further contends that Major teaches away from the
magnetic elements performing the guiding and aligning functions. App. Br.
11-12. Where the prior art "teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious." KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).
A prior art reference may teach away from combining elements where the
reference criticizes, discredits, or otherwise discourages the claimed
invention. In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004).
We note that Appellant does not contend Major teaches away from the
magnetic elements themselves, or their function of securing the handset in
the cradle. App. Br. 12. However, the Examiner relies upon the same
structural feature in Major (i.e. the pairs of magnetic elements in both
handset and cradle shown in Figures 1 and 2 and described at column 3,
lines 24--35) to teach or suggest all three claimed functions of securing,
guiding, and aligning the handset in the cradle. We have agreed, supra, with
the Examiner's findings that Major's magnetic element also aligns and
guides the handset within the cradle, as those terms would be understood in
light of Appellant's specification to one having ordinary skill in the art.
Appellant has not pointed to any disclosure of Major that criticizes,
discredits, or otherwise discourages the pairs of magnetic elements from
performing an aligning or guiding function. Appellant, instead, points to
Major's rib 14 and its complementary recess as the components that align
the respective magnetic elements on handset and cradle, and to Major's
flanges 12 as the components that "receive the handset snugly
therebetween," which Appellant interprets as guiding the handset within the
cradle. App. Br. 8-9. Appellant contends that Major's teaching of guiding
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and aligning via the rib and flange structures, rather than by any function of
the magnetic elements that are also present in the handset and cradle,
amounts to a teaching away of combining Major's magnetic elements for
guiding and aligning.
However, a reference may "express a general preference for an
alternative invention" without teaching away from either alternative where it
does not "criticize, discredit, or otherwise discourage investigation into the
invention claimed." Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731,
738 (Fed. Cir. 2013). See also Meiresonne v. Google, Inc., 849 F.3d 1379
(Fed. Cir. 2017) (finding a reference did not teach away from either
alternative where it discussed the use of both descriptive text, described as
"cursory, if not cryptic," and graphical previews, described as "highly
desirable," for the same purpose without implying that they are mutually
exclusive or that either should be abandoned). Accordingly, the mere
presence of two alternatives for aligning and guiding that may operate
separately or in concert (i.e., by magnetic elements and/or by rib/flanges)
does not amount to a teaching away of either alternative.
Although Major uses additional structural elements to align and guide
the handset within the cradle, Appellant has not pointed to any disclosure in
Major that would criticize, discredit, disparage, or otherwise discourage the
use of Major's magnetic elements to align (through use of two points in
space preventing rotational misalignment) and guide (through magnetic
attraction) the handset within the cradle. Accordingly, Major's preference
for additional structural elements to align and guide the handset within the
cradle does not amount to a teaching away from Major's magnetic elements
acting, at least in part, to align and guide the handset within the cradle.
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For the above-described reasons, we sustain the Examiner's
obviousness rejection of independent claim 1. Appellant does not present
separate patentability arguments for dependent claims 3-5, 7, and 9-20 other
than those raised for independent claim 1. Accordingly, we sustain the
Examiner's obviousness rejection of 3-5, 7, and 9-20. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Remaining Obviousness Rejections
As to the rejection of dependent claim 6 as being obvious over the
combination of Uchino, Major, and Mile, and the rejection of dependent
claim 8 as being obvious over the combination of Uchino and Major, and
Moquin, Appellant contends that these claims are patentable for the same
reasons independent claim 1 is contended to be patentable. App. Br. 12.
Appellant's contentions regarding the limitations recited in independent
claim 1 have been considered and found unpersuasive, supra. Therefore, we
sustain the Examiner's obviousness rejection of dependent claims 6 and 8.
DECISION
For the above-described reasons, we affirm the Examiner's rejections
of claims 1 and 3-20 under 35 U.S.C. § 103.
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
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