Ex Parte Takagi

Patent Trial and Appeal Board

Apr 27, 2017

12489732 (P.T.A.B. Apr. 27, 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
vsovw.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
1946-0765 2163
EXAMINER
TALUKDER, MD K
ART UNIT PAPER NUMBER
2648
MAIL DATE DELIVERY MODE
04/27/2017 PAPER
12/489,732 06/23/2009
60803 7590 04/27/2017
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Comer, VA 22102
Yutaka TAKAGI
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
Ex parte YUTAKA TAKAGI
Appeal 2015-007186
Application 12/489,732
Technology Center 2600
Before JOSEPH L. DIXON, DENISE M. POTHIER, and
LINZY T. MCCARTNEY, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-7 and 9-13. App. Br. I.1 Claim 8 has been canceled.
January 10, 2012 Reply to Office Action 3. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
1 Throughout this opinion, we refer to (1) the Final Action (Final Act.)
mailed March 11, 2014, (2) the Appeal Brief (App. Br.) filed January 21,
2015, (3) the Examiner’s Answer (Ans.) mailed May 28, 2015, and (4) the
Reply Brief (Reply Br.) filed July 28, 2015.
Appeal 2015-007186
Application 12/489,732
Invention
Appellant’s invention concerns a communication apparatus using
electric or magnetic field coupling to communicate with other
communication apparatuses. See Spec. ^1,6. These type of
communications may detect a change in communication status between
devices and may control a magnet’s polarity (e.g., invert the polarity to
coincide with the magnet’s polarity of another communication apparatus)
and/or magnetic force (e.g., make reversely proportional to the change in the
communication rate with another communication apparatus) according the
communication status. Id. 8-18. Claim 1 is reproduced below with
emphasis:
1. A communication apparatus comprising:
a communication unit for performing communication through
electric field coupling or magnetic field coupling with other
communication apparatus',
at least one magnet arranged near the communication unit; and
a magnetic control unit for controlling a polarity and a magnetic
force of the magnet depending on a communication status between the
communication unit and the other communication apparatus,
wherein:
responsive to a determination of a change in a communication
rate with the other communication apparatus during
communication with the other communication apparatus, the
magnetic control unit changes the magnitude of the magnetic force
of the magnet, and
information regarding the determination of the change in the
communication rate is shared between the communication
apparatus and the other communication apparatus.
The Examiner relies on the following as evidence of unpatentability:
Finn US 2008/0014867 A1 Jan. 17,2008
Fukuoka US 7,577,402 B2 Aug. 18,2009
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Appeal 2015-007186
Application 12/489,732
The Rejection
Claims 1-7 and 9-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fukuoka and Finn. Final Act. 2-13.
THE CONTENTIONS
Regarding independent claim 1, the Examiner finds Fukuoka teaches
the claim’s limitations, except for the magnetic control unit controlling the
polarity of the magnet. Final Act. 2-3. The Examiner turns to Finn to teach
the missing features of claim 1. Id. at 3-4 (citing Finn ^ 21). Among the
arguments presented, Appellant asserts Fukuoka and Finn alone or in
combination fail to teach the recited “communication” with an “other
communication apparatus” using electric or magnetic field coupling as
recited. App. Br. 9-11 (citing to Spec, 2-3, 28-29, 34-35; Fukuoka
4:3-5, 9-33, 43^16).
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Fukuoka and Finn collectively would have taught or suggested “a
communication unit for performing communication through electric field
coupling or magnetic field coupling with other communication apparatus” as
recited?
ANALYSIS
The Examiner finds that Fukuoka’s devices 10 and 20 are connected
by attracted unit 12 and electromagnet 22 through electromagnetic force 33
and “[t]he devices are magnetically connected while they communicate.”
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Appeal 2015-007186
Application 12/489,732
Ans. 6. For this reason, the Examiner concludes “the communication
between device 10 and 20 is occurring through electric field coupling or
magnetic field coupling” as recited in claim 1. Id.; see also id. at 5 (citing
Fukuoka 3:17-24, Fig. 1). We disagree.
During examination of a patent application, a claim is given its
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) (citation omitted). We presume
that claim terms have their ordinary and customary meaning. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary
and customary meaning ‘is the meaning that the term would have to a person
of ordinary skill in the art in question.”’) (citation omitted). An applicant
may rebut this presumption by acting as her own lexicographer. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
Appellant has not defined “electric field coupling” or “magnetic field
coupling” {see generally Spec.) but points to the disclosure for an
understanding of these recited types of coupling. App. Br. 10. In particular,
the Specification distinguishes a communication system that uses electric or
magnetic field coupling from “a “radio wave communication system” that
uses “wireless radio wave.” Spec, 2-3, cited in App. Br. 10. The
disclosure states “radio wave communication” transmits and receives
wireless radio waves that may interfere “with a radio wave transmitted or
received therearound [and] may affect the communication itself.” Id. f 2.
The disclosure explains a communication system that uses electric or
magnetic field coupling (1) employs “couplers” and (2) is “more
advantageous than a radio wave communication system” by avoiding
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Appeal 2015-007186
Application 12/489,732
interference. Id. ^ 3 (citing JP 2006-60283 and JP 2008-99236); see also id.
^35 (also citing the same JPO documents). Specifically, these types of
couplers communicate over short distances (see Spec. If 35 (discussing
“short distance wireless communication”)), and “a signal is not transmitted
when another communication party does not approach” {id. 13).
Accordingly, a broad, but reasonably construction of “communication
through electric field coupling or magnetic field coupling” in light of the
disclosure is a communication that uses specific couplers that communicate
over short distances.
Additionally, we consider how the recited “communication through
electric field coupling or magnetic field coupling” would be interpreted by
one of ordinary skill in the art by consulting with two technical dictionaries.2
“Electrical coupling” is defined as “[t]he coupling of two or more circuits or
elements by means of electric-field effects”3 or “capacitive coupling.”4
“Magnetic coupling” is defined as “INDUCTIVE COUPLING,” which is
further defined as “[t]he transfer of energy between two inductors (or
inductive devices) by a linking electromagnetic field,”5 or “coupling,” which
is further defined as “magnetic (inductive) coupling.”6 The IEEE Dictionary
further distinguishes these types of coupling from “conductive (resistive)
coupling.”7 Accordingly, one skilled in the art would have understood the
2 IEEE, IEEE Dictionary - The Authoritative Dictionary of IEEE Standard
Terms (7th ed. 2000); Stan Gibilisco, The Illustrated Dictionary of
Electronics (8th ed. 2000).
3 Gibilisco, supra, at 231.
4 IEEE, supra, at 358, 247.
5 Gibilisco, supra, at 362, 426.
6 IEEE, supra, at 652, 247.
1 Id.
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Appeal 2015-007186
Application 12/489,732
recitation of “communication through electric field coupling or magnetic
field coupling” performed by the recited “communication unit”8 in light of
the disclosure as interpreted by an ordinary artisan includes near
communications using capacitive or inductive coupling.
Turning to the findings in the record, the Examiner determines the
magnetic connection in Fukuoka occurring “while [the devices]
communicate” corresponds to the recited “communication unit for
performing communication through electric field coupling or magnetic field
coupling.” Ans. 6 (emphasis added). We disagree. Granted, Fukuoka’s
attracted unit 12 is attracted with an electromagnetic force to
electromagnetic unit 22 and an activation instruction 31 is transmitted to
electromagnetic unit 22 to generate electromagnetic force 33. Fukuoka,
3:18-19, 62-65, 5:27-37, Fig. 1. However, we disagree that this activation
instruction and the resulting electromagnetic force between units 12 and 22
reasonably teach a unit or structure that “perform[s] communication through
electric field coupling or magnetic field coupling with [anjother
communication apparatus” in light of the disclosure and as understood by an
ordinary artisan. This attractive force brings devices 10 and 20 into “a state
of... contact” {id. at 5:38-39) and “ensure[s] the fixation” {id. at 62)
between the devices upon detecting devices 10 and 20 are close to each other
8 If prosecution continues, the Examiner should determine whether recited
“communication unit for performing communication through electric field
coupling or magnetic field coupling with other communication apparatus”
in claims 1 and 11 invokes 35 U.S.C. § 112, ^ 6, and if so, whether the
disclosure has disclosed sufficient structure corresponding to the claimed
function to satisfy 35 U.S.C. § 112, 2. See Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1348-54 (Fed. Cir. 2015).
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Appeal 2015-007186
Application 12/489,732
(id. at 4:66-5:4, 5:26-31). However, communications in Fukuoka are not
performed through these attractive forces or any type of magnetic or electric
field coupling. Even presuming the attractive force is a communication as
recited, claim 1 separately recites a magnet from the recited “communication
unit for performing communication through . . . magnetic coupling,” and
thus Fukuoka must disclose both “a communication unit” as recited and a
separate magnet.
Fukuoka teaches in Figure 1 two communication units in mobile
terminal device 10— wireless communication unit 11 and wireless
communication unit 13. Fukuoka, Fig. 1. Without providing any specifics
related to the type of coupling used to communicate, Fukuoka teaches radio
communication unit 11 and 13 perform “radio communications” with radio
communication unit 21 and radio communication unit 23 using antennas 14
and 15. See Fukuoka 3:20-34, Fig. 1. Granted, Fukuoka further discusses
device 10 can perform radio transmission to another device “in its very close
vicinity” and “it barely interferes with other radio devices.” Id. at 3:45, 49.
Even so, Fukuoka fails to discuss that the radio communications use
capacitive or inductive coupling as understood by an ordinary artisan. The
record therefore does not support sufficiently that these communications are
performed “through electric field coupling or magnetic field coupling” as
recited. Notably, whether substituting Fukuoka’s communication units for
known electric or magnetic field couplers would have been obvious to one
skilled in the art is not before us.
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Appeal 2015-007186
Application 12/489,732
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claim 1, (2) independent claims 11—13,9j10
which recite commensurate limitations, and (3) dependent claims 2-7, 9, and
10 for similar reasons.
DECISION
We reverse the Examiner’s rejection of claims 1-7 and 9-13 under
§ 103.
REVERSED
9 Claim 13 recites “[a] computer program for causing a computer to
perform” various steps. If prosecution continues, the Examiner may
evaluate claim 13 under 35 U.S.C. § 101 in light of Alice Corp. Pty. Ltd. v.
CLS Banklnt’l, 134 S. Ct. 2347 (2014), and subsequent Office guidance
related to patent-eligible subject matter. See 2014 Interim Guidance on
Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014), July
2015 Update: Subject Matter Eligibility, 80 Fed. Reg. 45529 (July 30,
2015), and May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27381
(May 6, 2016); see also Manual of Patent Examining Procedure
§ 2106(I)(iv), 9th ed. (Rev. 07.2015, Nov. 2015) (citing Gottschalkv.
Benson, 409 U.S. 63, 72 (1972)). Notably, the disclosure states the magnetic
control unit operations may be performed by computer programs, which
encompasses software. Spec. ^ 87. Software in the abstract does not fall
within any classes of eligible subject matter set forth in 35 U.S.C. § 101.
10 The recitation to “the magnetic control unit” in claims 12 and 13 does not
have antecedent basis. If prosecution continues, the Examiner may consider
whether these claims are indefinite under 35 U.S.C. § 112(b)/^f 2 (pre-AIA).
8