Ex Parte Ranta

Patent Trial and Appeal Board

Apr 19, 2017

14010612 (P.T.A.B. Apr. 19, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/010,612 08/27/2013 Steven W. Ranta 26256.0102NP-APD4419-2-US 5046
110506 7590 04/21/2017
Patent Capital Group - Analog
Attn: Bonnie Boyle
4524 Briar Hollow Drive
Plano, TX 75093
EXAMINER
OBERLY, ERIC T
ART UNIT PAPER NUMBER
2184
NOTIFICATION DATE DELIVERY MODE
04/21/2017 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):
bonnie @ pate apgroup .com
PAIR_110506@patcapgroup.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. RANTA1
Appeal 2017-000317
Application 14/010,612
Technology Center 2100
Before BRADLEY W. BAUMEISTER, MICHAEL M. BARRY, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—20. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Analog Devices, Inc.
See Appeal Br. 4.
Appeal 2017-000317
Application 14/010,612
STATEMENT OF THE CASE
According to Appellant, the claimed invention relates to universal
serial bus (“USB”) plug-in event detection using capacitive-sensing. See
Spec. 1, 9.2 Claims 1,11, and 17 are independent. Claims 1 and 17 are
representative and are reproduced below with disputed limitations in italics:
1. A universal serial bus (USB) system comprising:
a USB interface; and
a USB capacitive-sensing detection module coupled with
a data line of the USB interface, wherein the USB capacitance­
sensing detection module is configured to detect a USB plug-in
event by monitoring a change in capacitance on the data line.
Appeal Br. 23 (Claims App’x).
17. An apparatus comprising:
a USB host that includes:
a powered-down USB port; and
a USB capacitive-sensing detection module coupled
with a data line of the powered-down USB port, wherein
the USB capacitance-sensing detection module is
configured to detect when a USB device is attached to the
powered-down USB port.
Appeal Br. 26 (Claims App’x).
2 Throughout this Opinion, we refer to the following documents:
(1) Appellant’s Specification, filed August 27, 2013 (“Spec.”); (2) the Final
Office Action (“Final Act.”), mailed July 22, 2015; (3) the Appeal Brief
(“Appeal Br.”), filed January 15, 2016; (4) the Examiner’s Answer (“Ans.”),
mailed July 28, 2016; and (5) the Reply Brief (“Reply Br.”), filed
September 28, 2016.
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Application 14/010,612
REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Gamey et al. (“Gamey”)
Griffin, JR. et al. (“Griffin”)
Amm et al. (“Amm”)
Chandra et al. (“Chandra”)
US 5,890,015
US 2010/0146307 Al
US 2011/0012793 Al
US 2012/0268145 Al
Mar. 30, 1999
June 10, 2010
Jan. 20, 2011
Oct. 25, 2012
REJECTIONS
(1) Claims 17—19 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Griffin. Final Act. 2—3.
(2) Claims 1—6, 11, and 13—16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Griffin. Final Act. 3—8.
(3) Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Griffin and Gamey. Final Act. 8—10.
(4) Claims 9, 10, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Griffin and Amm. Final Act. 10—12.
(5) Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Griffin and Chandra. Final Act. 12—
13.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellant. We have not considered other possible issues
that have not been raised by Appellant and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
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Application 14/010,612
ISSUES
1. Does the Examiner err in finding Griffin discloses “a USB
capacitive-sensing detection module coupled with a data line of the
powered-down USB port,” as recited in claim 17?
2. Does the Examiner err in finding Griffin teaches or suggests “a
USB capacitive-sensing detection module coupled with a data line of the
USB interface, wherein the USB capacitance-sensing detection module is
configured to detect a USB plug-in event by monitoring a change in
capacitance on the data line,” as recited in claim 1?
CONTENTIONS AND ANALYSIS
We disagree with Appellant’s contentions, and we adopt as our own
(1) the findings and reasons set forth by the Examiner in the Final Office
Action from which this appeal is taken (Final Act. 3—16) and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief (Ans. 2—13). We highlight the following points for
emphasis.
Issue 1
The Examiner finds the limitation “a USB capacitive-sensing
detection module coupled with a data line of the powered-down USB port,”
as recited in claim 17, is disclosed by Griffin’s discussion of a
microcontroller 42 (which senses capacitance): “coupled with USB device
connectors 24 and therefore coupled with the data line.” Final Act. 2 (citing
Griffin Fig. 4 [szc] \recte Fig. 2], || 17, 22—25).
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Application 14/010,612
Appellant argues the Examiner errs in finding Griffin discloses the
disputed limitation because “the Final Office Action states that the
anticipation rejection does not rely on inherency, and Griffin does not
expressly disclose that microcontroller 42 is coupled with a data line of
device connector 24.” Appeal Br. 14.
Appellant’s arguments are unpersuasive because we agree with the
Examiner’s finding that Griffin discloses that microcontroller 42 is coupled
with a data line of device connector(s) 24. See Ans. 3. Specifically,
Griffin’s figure 2 illustrates that microcontroller 42 is coupled with USB
device connectors 24. Final Act. 2. By identifying the device connector as a
USB port of a USB 2.0 hub, Griffin discloses the port is designed according
to Universal Serial Bus Specification Revision 2.0, and as a result, includes
data lines D- and D+. Ans. 3 (citing Griffin 111).
To be sure, Griffin does not ipsissimis verbis discuss the term “data
line.” The test for anticipation, however, is whether Griffin discloses all
claim elements, as arranged in the claim, to one of ordinary skill. See, e.g.,
Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed.
Cir. 1987); see also In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (“These
elements must be arranged as in the claim under review, but this is not an
‘ipsissimis verbis’ test.”) (citations omitted); Kennametal, Inc. v. Ingersoll
Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (“a reference can
anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations
arranged or combined as in the claim, if a person of skill in the art, reading
the reference, would ‘at once envisage’ the claimed arrangement or
combination”) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)).
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We therefore agree with and adopt the Examiner’s findings, as
discussed above, as they persuade us Griffin discloses the limitation “a USB
capacitive-sensing detection module coupled with a data line of the
powered-down USB port,” as recited in claim 17. (Ans. 2—8). Accordingly,
we sustain the Examiner’s rejection of that claim, as well as claims 18 and
19, which are not argued separately. See 37 C.F.R. § 41.37(c)(l)(iv).
Issue 2
The Examiner finds Griffin teaches or suggests the limitation
“wherein the USB capacitance-sensing detection module is configured to
detect a USB plug-in event by monitoring a change in capacitance on the
data line,” as recited in claim 1. Final Act. 4 (citing Griffin || 26, 27, 31,
32). Specifically, the Examiner finds Griffin teaches detecting a plug-in
event by detecting a capacitance change on the USB device connectors 24;
and that the USB device connectors 24, designed according to the USB 2.0
specification, have at most 5 conductive connections including Vbus, D+,
D-, GND, and ID. Final Act. 4. The Examiner concludes
at the time of the invention, it would have been obvious to one
of ordinary skill in the art, having the teachings of the Griffin
before him or her, “To Try” the USB connector capacitance
sensing of Griffin on the data line because “a person of ordinary
skill has good reason to pursue the known options within his or
her technical grasp. If this leads to the anticipated success, it is
likely that product [was] not of innovation but of ordinary skill
and common sense” (MPEP 2143.E).
Id.
Appellant argues the Examiner’s rejection is erroneous because
Griffin “is completely silent as to how microcontroller 42 detects
capacitance change on device connector 24” (Appeal Br. 18; Reply Br. 2)
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and fails to provide “any specific guidance or direction on how to achieve
the capacitance sensing” (Appeal Br. 20).
Appellant’s arguments are unpersuasive because they are not
commensurate in scope with the limitation at issue. The disputed limitation
recites “detecting] a USB plug-in event by monitoring a change in
capacitance on the data line.” This limitation fails to set forth any manner
on how to monitor a change in capacitance. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (“[AJppellanf s arguments fail from the outset because
. . . they are not based on limitations appearing in the claims.”).
Because we agree with the Examiner’s finding that Griffin teaches
microcontroller 24 detecting a plug-in event “by detection of a capacitance
change [on a data line] on one of the downstream USB ports” (Final Act. 3
(citing Griffin 123)), we find Griffin’s teaching does provide sufficient
guidance to an ordinarily skilled artisan on how to achieve the USB plug-in
detection, at least to an extent that is commensurate in scope with claim 1.
Appellant additionally argues the Examiner “has failed to show that,
at the time of the claimed invention, a finite number of identified,
predictable solutions existed for detecting capacitance change on a USB
device connector.” Appeal Br. 18.
Our reviewing court guides, where “the problem is known, the
possible approaches to solving the problem are known and finite, and the
solution is predictable through use of a known option,” a solution that is
obvious to try may indeed be obvious. Abbott Labs. v. Sandoz, Inc., 544
F.3d 1341, 1351 (Fed. Cir. 2008) (citing KSR Int 7. Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007)).
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Appellant’s argument is unpersuasive. The Examiner finds that
Griffin’s general teaching of detecting a capacitance change on the USB
connector could be realized specifically by detecting a capacitance change
on one or more pins of the USB connector. Final Act. 4—5; Ans. 6—7. The
Examiner concludes such a specific implementation would have been well
within the ordinary level of skill of an artisan, for the reason that there are
only a finite number of possible ways to detect the capacitance change on
the connector. Id. Because the USB 2.0 connector has a finite number of
five pins (Vbus, D+, D-, GND, ID), we agree that there are only a finite
number of solutions for detecting a change in capacitance on a USB 2.0
connector, i.e., detecting a change on one or more of the connector’s limited
pins. We therefore agree with the Examiner’s conclusion that an artisan
would have found it obvious ‘“To Try’ the USB connector capacitance
sensing of Griffin on the data line because ‘a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.’”
Final Act. 4 (citing MPEP 2143.E). See also KSR, 550 U.S. at 421.
Appellant, moreover, fails to provide sufficient evidence of any
unexpected results associated with capacitance sensing of the data line or
sufficient evidence that selecting one of five lines would not result in a
reasonable likelihood of success. See Perfect Web Technologies, Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1331 (Fed. Cir. 2009).
Appellant does argue “an infinite, not finite, number of ways exist to
configure microcontroller 42 and/or device connector 24 so that
microcontroller 42 can detect capacitance changes on device connector 24.”
Appeal Br. 18 (citing Crumlin et al. US 2010/0057946 A1 (published
Mar. 4, 2010) (“Crumlin”)).
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Appellant provides only a single hypothetical example as evidence
that in Griffin “an infinite, not finite, number of ways exist to . . . detect
capacitance changes”—adding a pin or a mechanical switch to produce
capacitance changes. Appeal Br. 18—19 (citing Crumlin || 25, 39). We
disagree that the cited means sufficiently evidences that an infinite number
of ways exist for detecting capacitance changes in Griffin’s device. Even
assuming arguendo that Crumlin’s capacitance detection means is applicable
to Griffin’s device, Appellant has presented only one potential solution
beyond the finite potential solutions identified by the Examiner. This single
additional example is not persuasive evidence that an infinite number of
ways to detect capacitance changes exist.
Appellant argues the Examiner uses hindsight in the rejection,
asserting “the Examiner is aware of the alleged finite number of solutions
only because of knowledge gleaned from Applicant’s specification.”
Appeal Br. 21. We disagree that the Examiner’s rationale is based on
impermissible hindsight because the Examiner has articulated a reason
having rational underpinnings for the proposed combination—that the
connector has a limited number of pins. See Final Act. 4—5; Ans. 9—13.
Furthermore, Appellant fails to persuasively rebut this technical reasoning.
See generally Appeal Br. 14—22.
Accordingly, because we agree with the Examiner that Griffin teaches
or suggests “the USB capacitance-sensing detection module is configured to
detect a USB plug-in event by monitoring a change in capacitance on the
data line,” we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claim 1. We also sustain the Examiner’s § 103(a) rejection of independent
claim 11, the patentability of which is argued for similar reasons as
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independent claim 1. Appeal Br. 14—15. Dependent claims 2—10 and 12—
16, are not argued separately, or are only nominally argued separately (see
Reply Br. 33), so the rejection of these claims are sustained for the reasons
given for their respective independent claims. Appeal Br. 14—22. See
37 C.F.R. §41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision rejecting claims 1—20 under
35 U.S.C. §§ 102(b) and 103(a).
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
3 To the extent Appellant argues separate patentability of dependent claims
2—8, 15, and 16 in reply to the Answer, we decline to consider such an
argument raised for the first time in the Reply Brief. This is because, as the
Examiner has not been provided a chance to respond, and in the absence of a
showing of good cause by Appellant, these arguments are deemed waived.
See 37 C.F.R. § 41.41(b)(2) (2012); In re Hyatt, 211 F.3d 1367, 1373 (Fed.
Cir. 2000) (noting that an argument not first raised in the brief to the Board
is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837
(BPAI 2010) (informative) (explaining that arguments and evidence not
timely presented in the principal Brief, will not be considered when filed in a
Reply Brief, absent a showing of good cause). Appellant has provided this
record with no such showing of good cause.
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