Ex Parte Raken et al

Patent Trial and Appeal Board

Jul 30, 2018

14697501 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/697,501 04/27/2015
69316 7590 08/01/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Jan Raken
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.
336788-US-DIV 9433
EXAMINER
WU,JERRY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN RAKEN, ANDREW W. HILL,
ROBERT J. BINGHAM JR., PETER KYRIACOU, and
ROBYN REBECCA REED MCLAUGHLIN
Appeal2017-009733
Application 14/697,501
Technology Center 2800
Before BEYERL YA. FRANKLIN, JENNIFER R. GUPTA,
LILAN REN, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm-in-part.
1 In this Decision, we refer to the Specification filed April 27,
2015("Spec."), the Final Office Action dated April 18, 2016 ("Final Act."),
the Appeal Brief filed December 9, 2016 ("Br."), and the Examiner's
Answer dated April 7, 2017 ("Ans.").
2 Appellant is the Applicant, Microsoft Technology Licensing LLC, which,
according to the Appeal Brief, is the real party in interest. Br. 3.
Appeal2017-009733
Application 14/697,501
The subject matter on appeal relates to a peripheral device, such as a
stylus, that includes a protrusion configured to form a physical coupling
bond with a power connection port of a computing device sufficient to retain
the peripheral device against the housing of the device. Spec. ,r 4. Claim 1,
reproduced below, is illustrative of the claims on appeal.
1. A stylus comprising:
a housing configured to be grasped by a hand of a user;
and
a protrusion disposed on the housing, the protrusion
configured for insertion into a power connection port formed as
a recess within a computing device and configured to form a
physical coupling, to the power connection port, that retains the
housing against the computing device.
Br. 27 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1, 3, 5, 7, 8, 9, 12, 14--17, 19, and20underpre-
AIA 35 U.S.C. § I02(b) as anticipated by Andreas Odegard, My iPad
MagPad concept, (February 26, 2011),
http://www.pocketables.com/2011/02/my-ipad-magpad-concept.html
("Andreas");
Rejection 2: Claims 2 and 10 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Andreas in view of Singh (US 2008/0224659 Al,
published September 18, 2008);
Rejection 3: Claims 4 and 11 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Andreas in view ofMandle (US 2004/0100457 Al,
published May 27, 2004);
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Application 14/697,501
Rejection 4: Claims 6 and 13 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Andreas in view ofDupelle (US 2004/0267323 Al,
published December 30, 2004); and
Rejection 5: Claim 18 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Andreas in view of Shimokawa (US 2010/0244577 Al,
published September 30, 2010).
DISCUSSION
Appellant argues the claims in the following groups: (1) claims 1-5,
7, and 8, (2) claims 9-12, 14, and 15, (3) claims 6 and 13, and (4) claims 16-
20. See Br. generally. We discuss each group of claims below under
separate subheadings.
Claims 1-5, 7 & 8
The Examiner finds that Andreas discloses claim 1 's stylus, including
"a protrusion disposed on the housing, the protrusion configured for
insertion into a power connection port formed as a recess within a
computing device and configured to form a physical coupling," as required
by the claim. Final Act. 2-3. Andreas teaches a MagPad, shown in Figure 2
reproduced below, that is a small magnetic connector that can sit in you
iPad's power connection port all the time without being in the way, and a
MagPad connector, shown in Figure 4 reproduced below, that magnetically
attaches to the MagPad to charge and sync the iPad. Andreas 1 (Fig. 2), 2
(Fig. 4).
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Application 14/697,501
Andreas' s Figure 2 provides an illustration of a MagPad, and Figure 4
provides an illustration of a MagPad connector of a charge/sync cable.
Andreas also teaches a MagPad Stylus that has a MagPad connector
built in to connect with the MagPad system, as shown in Figure 7 and 8
reproduced below. Andreas 2 (Fig. 7, Fig. 8).
Andreas's Figure 7 depicts a MagPad Stylus, and Figure 8 depicts the
MagPad Stylus attached to the MagPad system of an iPad.
Appellant argues that:
There is no illustration or discussion in Andreas to suggest that
Andreas' stylus includes a 'protrusion configured for insertion
into a power connection port formed as a recess within a
computing device.' In point of fact, the only component that
Andreas describes as being insertable into the power connection
port of an iPad is the MagPad piece, which is an entirely
separate piece of hardware than Andreas' stylus.
Br. 14.
According to Appellant's Specification, the protrusion of the stylus
may be secured against the housing of the computing device using
magnetism such that a protrusion of the stylus is received within and formed
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complementary to the power connection port. Spec. ,r 27. According to the
Specification, this may include use of magnets on one or both of the power
connection port or the stylus, ferrous materials, and so on. Id. Thus, when
given its broadest reasonable interpretation, "a protrusion configured for
insertion into a power connection port formed as a recess" encompasses the
protrusions depicted on Andreas' s MagPad connector.
Andreas's Figure 2, reproduced above, clearly depicts a power
connection port formed as a recess within a computing device, and Andreas
teaches a small magnetic connector, the MagPad, that sits in the power
connection port and is configured to form a physical coupling with a
charge/sync cable or MagPad Stylus. Andreas 2-3; see, e.g., Andreas
Figs. 5, 8. Andreas's Figure 4, reproduced above, clearly depicts protrusions
disposed on the MagPad connector of a charge/sync cable that attach to the
MagPad. Based on Andreas' s drawings and its corresponding disclosure
describing the embodiments of its MagPad and MagPad Stylus, we agree
with the Examiner that Andreas teaches that the connector (MagPad
connector) built into Andreas's MagPad Stylus includes "a protrusion
configured for insertion into a power connection port formed as a recess
within a computing device and configured to form a physical coupling,"
similar to the protrusions on the charge/sync cable depicted in Andreas's
Figure 4, reproduced above. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972)
( explaining that features clearly shown by patent drawings cannot be
disregarded). Thus, we are not persuaded by Appellant's argument of
reversible error in the rejection of claim 1.
Appellant argues that Andreas fails to enable one of ordinary skill in
the art to make its MagPad and MagPad Stylus without undue
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experimentation because Andreas states that "this is my personal concept
art," "these aren't concepts made by anyone who can do anything with them
so don't expect them to become reality," and describes the ideas about the
MagPad concept as "delusional." Br. 14--15; Andreas 1, 6.
"In order to anticipate, a prior art disclosure must also be enabling,
such that one of ordinary skill in the art could practice the invention without
undue experimentation. The standard for enablement of a prior art reference
for purposes of anticipation under section 102 differs from the enablement
standard under 35 U.S.C. § 112." Novo Nordisk Pharms., Inc. v. Bio-Tech.
Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005) (citations omitted). While
section 112 states that the specification must enable one skilled in the art to
'use' the invention, "'section 102 makes no such requirement as to an
anticipatory disclosure,' . . . . Rather, anticipation only requires that those
suggestions be enabled to one of skill in the art." Id.; see also In re
Donohue, 766 F.2d 531, 533 (Fed.Cir.1985) ("It is not, however, necessary
that an invention disclosed in a publication shall have actually been made in
order to satisfy the enablement requirement.").
As the Examiner correctly explains, the mere fact that the Andreas did
not expect the MagPad and MagPad Stylus to become a reality is not
germane to whether Andreas provides an enabling disclosure. Andreas
provides detailed pictures and description regarding its MagPad and MagPad
Stylus. On this record, Appellant has not directed us to sufficient evidence
to establish that one of ordinary skill in the art would not have been able to
make Andreas MagPad and MagPad Stylus based on Andreas' s disclosure.
In view of the foregoing, we sustain the rejection of claim 1 based on
Andreas.
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Appellant argues that claims 2-5, 7, and 8 are allowable because of
their dependency on claim 1. Br. 16. Appellant does not present any
arguments regarding Singh and Mandle, which are used in combination with
Andreas to reject claims 2 and 4, respectively. Id. Thus, for the reasons
discussed above, we also sustain the anticipation rejection of claims 3, 5, 7,
and 8 based on Andreas, the obviousness rejection of claim 2 over Andreas
over Singh, and the obviousness rejection of claim 4 over Andreas and
Mandle.
Claims 9-12, 14 & 15
Claim 9 is reproduced below from the Claims Appendix of the Appeal
Brief.
9. A peripheral device comprising:
a housing configured to be grasped by a hand of a user;
and
a protrusion disposed on the housing, the protrusion
configured for insertion into a power connection port formed as
a recess within a computing device and configured to form a
physical coupling, to the power connection port, that retains
the housing against the computing device.
Br. 29 (Claims App.).
Like claim 1, Appellant argues that Andreas fails to teach "a
protrusion disposed on the housing, the protrusion configured for insertion
into a power connection port formed as a recess within a computing device."
Br. 19-20. Appellant also argues that Andreas fails to enable one of
ordinary skill in the art to make its MagPad and MagPad Stylus without
undue experimentation. Id. at 20-21.
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For the same reasons as discussed with respect to claim 1, we do not
find Appellant's arguments regarding claim 9 persuasive. Thus, we sustain
the rejection of claim 9 over Andreas.
Appellant argues that claims 10-12, 14, and 15 are allowable because
of their dependency on claim 9. Br. 21-22. Appellant does not present any
arguments regarding Singh and Mandle, which are relied upon by the
Examiner in combination with Andreas in the rejection of claims 10 and 11,
respectively. Id. Thus, for the reasons discussed above, we also sustain the
anticipation rejection of claims 12, 14, and 15 based on Andreas, the
obviousness rejection of claims 10 over Andreas over Singh, and the
obviousness rejection of claim 11 over Andreas and Mandle.
Claims 6 & 13
Claim 6 is reproduced below from the Claims Appendix of the Appeal
Brief.
6. A stylus as described in claim 1, wherein the
protrusion is configured to avoid contact with one or more pins
of the power connection portion, the one or more pins
configured to support an electrical coupling between the power
connection port and an adapter.
Br. 28 (Claims App.).
Claim 13 depends from claim 9, and includes the same recitations as
claim 6.
Dupelle teaches a defibrillation connector. Dupelle, Abstract. The
Examiner finds that Dupelle teaches that its defibrillation connector can be
configured so that unused electrical terminal elements are electrically
isolated. Final Act. 8 ( citing Dupelle ,r,r 6-9, 18, 27). The Examiner then
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concludes that it would have been obvious to one of ordinary skill in the art,
based on Dupelle, to modify Andreas by electrically isolating the pins of its
power connection portion so that a protrusion disposed on Andreas' s
MagPad Stylus is configured to avoid contact with one or more pins of the
power connection portion, the one or more pins configured to support an
electrical coupling between the power connection port and an adapter. Final
Act. 8.
Appellant argues that there is simply no motivation to modify the pins
of Andreas's iPad power connection port to be spring-loaded in a manner
described by Dupelle. Br. 17-18.
Appellant's argument is persuasive of reversible error. According to
Andreas, its MagPad connector, and thus the protrusions disposed thereon, is
designed to physically, not electrically attach the MagPad Stylus to the
MagPad system to keep it close while not in use. Andreas 2. On this record,
the Examiner has not provided a sufficient reason supported by rational
underpinnings for one of ordinary skill in the art to electrically isolate the
pins of Andreas' s power connection port so that a protrusion disposed on the
MagPad connector built into Andreas' s MagPad Stylus avoids contact with
one or more pins of the power connection port. Although the Examiner
finds the motivation to modify Andreas is "to protect the circuit of the
device" (Ans. 5), the Examiner has not explained a reason to do so. In fact,
electrically isolating the pins of Andreas' s power connection port to avoid
contact with the protrusions disposed on the housing of its stylus appears to
be contrary to the teachings of Andreas that the MagPad connector
"completes the connection to charge and sync." Andreas 2. Thus, the
Examiner's reason for combining Andreas and Dupelle appears to be based
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solely on impermissible hindsight reasoning. Accordingly, we do not
sustain the rejection of claims 6 and 13 as obvious over Andreas and
Dupelle.
Claims 16-20
Claim 16 is reproduced below from the Claims Appendix of the
Appeal Brief.
16. A system comprising:
a device having a protrusion; and
a computing device having a power connection port
formed as a recess within the computing device that is
configured to:
receive the protrusion of the device;
form a magnetic physical coupling to the protrusion of
the device sufficient to retain the stylus against the computing
device; and
form an electrical coupling configured to receive power
at the computing device from a power adapter.
Br. 31 (Claims App.).
Like claims 1 and 9, Appellant argues that Andreas fails to teach a
"computing device having a power connection port formed as a recess
within the computing device that is configured to: receive the protrusion of
the device." Br. 22-24. Appellant also argues that Andreas fails to enable
one of ordinary skill in the art to make its MagPad and MagPad Stylus
without undue experimentation. Id. at 24--25.
For the same reasons as discussed with respect to claim 1, we do not
find Appellant's arguments regarding claim 16 persuasive. Thus, we sustain
the rejection of claim 16 over Andreas.
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Appellant argues that claims 1 7-20 are allowable because of their
dependency on claim 16. Br. 25. Appellant does not present any arguments
regarding Shimokawa, which is relied on by the Examiner in combination
with Andreas in the rejection of claim 18. Id. Thus, for the reasons
discussed above, we also sustain the anticipation rejection of claims 17, 19,
and 20 based on Andreas, and the obviousness rejection of claims 18 over
Andreas over Shimokawa.
DECISION
The rejection of claims 1, 3, 5, 7, 8, 9, 12, 14--17, 19, and 20 under
35 U.S.C. § 102(b) based on Andreas is affirmed.
The rejection of claims 2 and 10 under 35 U.S.C. § 103(a) over
Andreas and Singh is affirmed.
The rejection of claims 4 and 11 under 35 U.S.C. § 103(a) over
Andreas and Mandle is affirmed.
The rejection of claims 6 and 13 under 35 U.S.C. § 103(a) over
Andreas and Dupelle is reversed.
The rejection of claim 18 under 35 U.S.C. § 103(a) over Andreas and
Shimokawa is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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