NXP B.V.

Patent Trials and Appeals Board

Dec 31, 2020

2019005252 (P.T.A.B. Dec. 31, 2020)

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.
15/062,034 03/04/2016 Swapnil Borgaonkar 81651824US03 5427
65913 7590 12/31/2020
Intellectual Property and Licensing
NXP B.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
LEWIS-TAYLOR, DAYTON A.
ART UNIT PAPER NUMBER
2181
NOTIFICATION DATE DELIVERY MODE
12/31/2020 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SWAPNIL BORGAONKAR, HARISH DIXIT,
SREEDHAR PATANGE, and SRIKANTH DANDAMUDI
Appeal 2019-005252
Application 15/062,034
Technology Center 2100
Before JAMESON LEE, JUSTIN T. ARBES, and
BARBARA A. BENOIT, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 6–13, and 15. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as NXP B.V.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claims 1, 4, 6–13, and 15 were finally rejected. Final Act. 3. Claims
2, 3, 5, and 14 were cancelled by the Appellant. Appeal Br. 3. The rejection
of claims 1, 4, 6–13, and 15 is on appeal. Id.
The invention relates to a toy and a method for controlling a toy.
Spec. 1. The Specification describes a toy comprising a central unit and at
least one peripheral unit which is operatively coupled to the central unit. Id.
The central unit is arranged to establish near field communication (“NFC”)
with the peripheral unit. Id. Further, the central unit is arranged to control
one or more functions of the peripheral unit based on control data received
from the peripheral unit via NFC. Id. Further, the peripheral unit includes
an NFC tag which contains the control data. Id. at 2. The central unit
includes an NFC device for establishing NFC between the central unit and
the peripheral unit. Id. at. 1. The central unit also includes a microcontroller
to control the functions of the peripheral unit. Id.
Claim 1 and claim 13 are independent. Claims 4, 6, 7–12, and 15
each depend, directly or indirectly, from claim 1. Claims 1 and 13 are
reproduced below:
1. A toy comprising a central unit and at least one
peripheral unit which is operatively coupled to said central unit,
wherein the central unit is arranged to establish Near Field
Communication, NFC, with the peripheral unit, and wherein the
central unit is further arranged to control one or more functions
of the peripheral unit in dependence on control data received,
via NFC, from said peripheral unit,
wherein the peripheral unit comprises an NFC tag which
contains said control data;

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wherein the central unit comprises an NFC device and at least
one NFC antenna, and wherein the NFC device is arranged to
establish said NFC via said NFC antenna and said NFC tag, and

wherein the central unit comprises a microcontroller which is
arranged to control said functions.
13. A method for controlling a toy, said toy comprising a
central unit and at least one peripheral unit which is operatively
coupled to said central unit, wherein the central unit establishes
Near Field Communication, NFC, with the peripheral unit, and
wherein the central unit controls one or more functions of the
peripheral unit in dependence on control data received, via
NFC, from said peripheral unit,
wherein the central unit comprises an NFC device and at
least one NFC antenna, and wherein the NFC device is arranged
to establish said NFC via said NFC antenna,
wherein the central unit comprises a microcontroller
which is arranged to control said functions, and
wherein the peripheral unit comprises an NFC tag which
contains said control data.
Appeal Br. 18, 19 (Claims App’x).
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Figures 1 and 2 of the Application are reproduced below:

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Figure 1 illustrates an embodiment of toy 100. Spec. 3. Figure 2
illustrate a more detailed embodiment through toy 200. Id. Toy 200
comprises central unit 202 and peripheral units 204, 214, 224. Id. The
peripheral units are coupled to central unit 202 and central unit 202 is
arranged to establish NFC 206, 216, 226 with the peripheral units. Id.
Central unit 202 is arranged to control functions of each of the peripheral
units based on the data received, via NFC, from the peripheral units. Id.
Each peripheral unit comprises an NFC tag 210, 220, 230 coupled to antenna
208, 218, 228. Id. at 4. Central unit 202 comprises microcontroller 238
which is coupled to NFC device 240. Id. NFC device 240 may forward the
control data to microcontroller 238 and microcontroller 238 may use the
control data to control motors 244, 246, 248 which move peripheral units
204, 214, 224. Id. Central unit 202 may also control the operation of
functional components 212, 222, 232 via NFC. Id.
REFERENCES
Yamada U.S. 2002/0081937 A1 Published June 27, 2002
Waldock U.S. 2011/0199194 A1 Published Aug. 18, 2011
Meade U.S. 2015/0065258 A1 Published Mar. 5, 2015

REJECTIONS
Claims 1, 4, 6, 9–13, and 15 were finally rejected under 35 U.S.C.
§ 103 as obvious over Waldock and in view of Meade. Final Act. 3.
Claims 7 and 8 were finally rejected under 35 U.S.C. § 103 as obvious
over Waldock in view of Meade and further in view of Yamada. Id. at 7.

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OPINION
A. The Obviousness Rejection of Claims 1, 4, 6, 9–13, and 15 over
Waldock and Meade
1. Overview of Waldock
Waldock discloses a programmable device, such as a robot toy,
comprising a controller for processing a sequence of program instructions to
control the programmable device. Waldock, code (57). The programmable
device, e.g., robot toy, also includes a NFC device for retrieving program
instructions from at least one transmission tag and for providing the
controller with the retrieved sequence of program instructions. Id. Waldock
explains that in one embodiment, there are multiple such transmission tags,
and that these transmission tags allow for easy programming of
programmable toys such as robots. Id. Waldock states that these
transmission tags are also referred to as NFC tags or near-field
communication tags. Id. ¶ 9.
Waldock discusses, as background, a pre-existing children’s toy that
requires programming by the end user. Id. ¶ 4. It is a programmable robotic
turtle found on the Internet. Id. Waldock explains that a disadvantage of
such a toy is that the child must have access to a computer, which may be
difficult to operate for the child, and that the child may be exposed to
content on the Internet that is harmful or inappropriate. Id. Waldock further
explains that operation of its programmable device does not require key-
based interfaces such as a computer or an integrated keyboard and also does
not require a visible programming interface. Id. ¶ 8.

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Figure 1 of Waldock is reproduced below:
Figure 1 of Waldock illustrates a programmable system including
programmable toy robot 10 and a set of NFC tags 24 each of which is
integrated in a respective carrier 22. Id. ¶ 28. Toy robot 10 comprises NFC
device 12 coupled to controller 14 which controls the movements of various
body parts of the toy robot, e.g., legs and arms. Id. The set of NFC tags 24
includes at least one containing instructions for programming controller 14
of the toy robot by communicating the instructions to the NFC device. Id.
In one embodiment, carrier 22 is a laminated printed card with an
NFC transmission tag encapsulated in between two layers of laminated
carrier 22. Id. ¶ 31. At least some transmission NFC tags would include
instruction sequences for toy robot 10. Id. ¶ 32. It is described that a child
playing with the robot acts as a programmer when he or she is enabled “to
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lay out a purposive route of carriers 22 such that the robot moves from a
previous carrier to the next carrier 22 when executing the instruction
retrieved from the transmission tag 24 in the previous carrier 22.” Id. ¶ 47.
Waldock states: “This can help increase special awareness of the child
playing with the toy robot, because the child needs to develop an
understanding of the location the robot will reach at the end of the executed
instruction such that a new instruction may be provided in this location.” Id.
2. Overview of Meade
Meade discloses a method and system for using an interactive toy.
Meade ¶ 3. The toy is “embedded with or attached to a microchip tag.” Id.
A toy company may provide an interactive application to the user, which
relates to the toy embedded with or attached to a microchip tag. Id. The
microchip tag includes information and commands which may be
communicated to the toy company. Id. Receipt by the toy company of such
information prompts the toy company to provide an action to the user, which
enhances the interactive experience of the user with the toy. Id. For
example, (1) a toy is provided with a scannable microchip tag, (2) a user
scans the microchip tag in the toy with a computing device, (3) a processing
device identifies a command in the scanned information it receives from the
computing device, and (4) the processing device provides, in response to the
identified command, a corresponding action to the user. Id. ¶ 7.

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Figure 2 of Meade is reproduced below:
Figure 2 illustrates an embodiment of Meade. Id. ¶ 35. One or more
user computer systems 20 are operatively coupled, via network 2, to toy
company system 10. Id. One or more users 4 may utilize user computer
systems 20 to access interactive website 15 or gameplay application 17 for
enhancing their interactive experience with the toy. Id. A portion, or all of,
interactive website 15 and gameplay application 17 may be stored on toy
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company system 10, user computer systems 20, or even third-party systems.
Id.
Figure 5 of Meade is reproduced below:

Figure 5 illustrates one embodiment of Meade’s toy system 5 in an
interactive toy and entertainment system. Id. ¶ 64.
As shown, toy system 5, in the form of a giraffe, includes microchip
tag 6 embedded within or attached to the front-left foot of the giraffe. Id. It
is described that microchip tag 6 may be embedded within or attached to toy
5 in any area, such as an arm, leg, wing, or tail. Id. Microchip tag 6 may be
encased within any type of material that allows for the signal from the
microchip tag to be read by a scanning device such as scanning device 21
shown in Figure 2. Id. In some embodiments of the invention, toy company
10 provides user 4 with toy system 5. Id. In one embodiment of the
invention, microchip tag 6 may provide multiple signals to scanning device
21 such that toy company 10 is directed to provide multiple actions to user 4
from a single scan of microchip tag 6. Id. In other embodiments, the toy
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company has provided multiple microchips embedded within or attached to
the toy, and the user may scan different microchip tags. Id. ¶¶ 55, 63. One
example of an action provided by the toy company in response to scanning a
microchip tag is to increase the jumping power of a virtual gaming character,
within gameplay application 17, by ten percent. Id. ¶¶ 33, 61. Meade states
that “[t]he toy company’s act of providing an action, stemming from a
scanned microchip, enhances the user’s interactive experience with the toy
and applications provided to the user by the toy company.” Id. ¶ 33.
3. Independent Claim 1
Claim 1 requires a central unit including a NFC device and an NFC
antenna, and a peripheral unit including an NFC tag. Appeal Br. (Claims
App’x). According to claim 1, the central unit and the peripheral unit
communicate with each other via NFC and the central unit controls a
function of the peripheral unit in dependence on the control data received
from the peripheral unit via NFC. Id. Waldock describes that NFC
communication occurs between NFC device 12 in the toy robot and an NFC
tag in external carrier 22. Waldock ¶ 28.
The Examiner determined that Waldock discloses a toy robot
comprising a central unit and a peripheral unit operatively coupled to the
central unit, wherein the central unit establishes near field communication
NFC, and further wherein the central unit controls a function of the
peripheral unit in dependence on control data received through NFC. Final
Act. 3. The determination is vague or incomplete, because it omits with
whom the central unit communicates via NFC and also from whom the
central unit receives the control data. The determination also is incorrect in
finding that “the central unit is arranged to establish Near Field
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Communication, NFC.” Id. The Examiner regards Waldock’s controller 14
as the central unit. Id. However, Waldock describes NFC device 12, not
controller 14, as establishing NFC communication. Waldock ¶ 30. The
Examiner has not explained why it constitutes a central unit which
establishes NFC communication. Waldock’s NFC device 12 is not within
controller 14. Waldock, Fig. 1.
The Examiner acknowledges that Waldock does not disclose a central
unit establishing NFC communication with a peripheral unit, the central unit
controlling the peripheral unit in dependence on control data received, via
NFC, from the peripheral unit, and the peripheral unit comprising an NFC
tag containing the control data. Final Act. 4.
In summary, with respect to claim 1, Waldock lacks disclosure for
(1) a central unit including an NFC device and NFC antenna, (2) the central
unit establishing NFC communication between the central unit and
peripheral unit, (3) the central unit controlling one or more functions of the
peripheral unit in dependence on control data received, via NFC, from the
peripheral unit, and (4) the peripheral unit comprising an NFC tag
containing the control data. These features constitute the bulk of claim 1.
With respect to Meade, the Examiner finds that it discloses
establishing NFC between a peripheral unit, such as a toy’s arm, leg, wing,
or tail, and a scanning device external to the toy. Id. at 4–5. The Examiner
also finds that Meade discloses a peripheral unit, e.g., arm, leg, wing, or tail
of the toy, comprising an NFC tag. Id. at 5. The Examiner identifies
Meade’s microchip tag 6, embedded in the leg of Meade’s toy giraffe, as an
NFC tag. Id. The Examiner cites to paragraph 38 of Meade (Final Act. 5),
which states, in part: “As illustrated in FIG. 2, the toy systems 5 generally
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comprise one or more microchip tags 6. As used herein, the term ‘microchip
tag’ generally includes apparatuses configured to communicate a signal to
the scanning device 21 of the user computer systems 20.” Meade ¶ 38. The
Examiner also cites to paragraph 64 of Meade (Final Act. 5), which states, in
part: “The microchip tag 6 may be embedded within or attached to the toy 5
in any area, such as an arm, leg, wing, tail, or the like.” Meade ¶ 64.
Notably missing from both Waldock and Meade is any teaching that
the central unit within a toy establishes NFC communication with another
unit.
To arrive at the claimed subject matter of claim 1 based on Waldock
and Meade, the Examiner explains as follows:
It would have been obvious to one with ordinary skill in
the art, at the time the invention was made/before the effective
filing date of the claimed invention, to include Waldock’s
teachings of an NFC tag having control data for movement of a
peripheral into Meade’s teachings of a peripheral unit comprising
an NFC tag for the benefit of providing one or more scannable
microchips embedded in a toy allowing for an interactive play
experience (Meade - Abstract).
Final Act. 5.
The initial burden is on the Examiner to present a prima facie case of
unpatentability. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Based on the above-quoted reasoning, we understand the Examiner to
propose combining Waldock’s teaching of an NFC tag providing control
data to a central unit of a toy for controlling the functions of a peripheral unit
of the toy with Meade’s teaching of locating an NFC tag in a peripheral unit
of a toy, for the benefit of providing an interactive play experience allegedly
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as noted in Meade.2 In other words, according to the Examiner, in light of
Meade’s teaching of locating an NFC tag in the peripheral unit of a toy, one
with ordinary skill in the art would have wanted to do the same with
Waldock’s NFC tag. There are two deficiencies with the Examiner’s
approach, as we discuss below.
First, even assuming the Examiner’s proposed combination of
Waldock and Meade is supported by reasoning with rational underpinning,
the resulting combination at most would place Waldock’s NFC tag in a
peripheral unit of Waldock’s toy but still would not meet the claim
requirement of a central unit comprising an NFC device and an NFC antenna
and a central unit establishing NFC.
In the Examiner’s Answer, it is explained that “[t]he placement of the
NFC device of Waldock can be viewed as a design choice and . . . one of
ordinary skill in the art in the art would have been able to place the NFC
device within the controller (14) instead.” Ans. 4. The record, however,
does not support the Examiner’s finding that placement of an NFC device
(with an NFC antenna) within Waldock’s controller 14 would have been an
ordinary design choice, or basic skill, for one with ordinary skill in the art.
The Examiner has cited to nothing which indicates the location of an
NFC device on a toy is not of functional or technical significance. Likewise,
the Examiner has cited to nothing which indicates that it would have been
desirable to place an NFC device (with an NFC antenna) within the
controller in a toy. Further, an electronic controller is not simply a physical
location like the head or torso of a toy. Placing an NFC device (with an

2 If the Examiner intended some other approach or combination of teachings,
that has not been sufficiently articulated for review.
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NFC antenna) within an electronic controller is fundamentally a different
task from simply relocating it from one place on the toy to another.
The issue has been over-simplified by the Examiner, who likens
placing an NFC device (with an NFC antenna) within an electronic
controller to moving the NFC device from within a limb of the toy to
another part of the toy. To accommodate the move, the electronic controller
would have to be redesigned. Even assuming that one with ordinary skill in
the art would have known how to perform the task, the need to make such
accommodation or adaptation undermines the assertion that it would be an
ordinary design choice to place the NFC tag on the limb of a toy or within
the electronic controller of the toy.
For the foregoing reasons, the Examiner’s determination that
placement of an NFC device (with an NFC antenna) within Waldock’s
controller 14 would have been an ordinary design choice, or basic skill, for
one with ordinary skill in the art, is insufficiently supported by evidence, and
unpersuasive.
Second, a conclusion of obviousness based on more than one
reference requires articulation of sufficient reasoning with rational
underpinning to combine teachings. See KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007). The Examiner’s stated reasoning for applying
Meade’s teaching of placing a microchip tag on the limb of a toy to
Waldock’s NFC tag and toy, i.e., to “allow[] for an interactive play
experience” as taught by Meade (Final Act. 5), lacks a rational
underpinning.
The Examiner has not explained what interactive experience described
in Meade depends on the location on the toy of the microchip tag. It appears
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that the interactive experience in Meade does not have much, if anything, to
do with the precise location of the microchip tag on the toy. The interactive
experience in Meade comes from the user scanning the microchip tag on the
toy to obtain the information in the tag to cause a change in virtual
characters within a gameplay application being played by the user on a
computer. Meade ¶¶ 3, 61. The scanning does not require a specific
location of the tag on the toy, such as a limb of the toy. Further, Waldock’s
robot toy, without change, already provides substantial interactive playing
experience for the user, because a child would purposefully place the NFC
tags to form a route for the robot to follow as the NFC device in the robot
reads each tag and executes the instructions provided through the tag.
Waldock ¶ 47. Absent additional explanation, we do not see why affixing
one or more NFC tags to the robot toy (instead of in a route on the floor)
would enhance the interactive experience provided by Waldock’s robot toy.
In summary, claim 1 requires two NFC units (an NFC tag on a
peripheral unit and a central unit including an NFC device and antenna) to
be located on the same toy, which communicate with each other by NFC.
On this record, the Examiner has not explained sufficiently how that
requirement is taught or suggested by the combination of Waldock and
Meade.
For the foregoing reasons, the rejection of claim 1 as obvious over
Waldock and Meade cannot be sustained.
4. Independent Claim 13
Claim 13 is independent and similar to the subject matter recited in
claim 1. Specifically, claim 13 recites a method for controlling a toy. For
claim 13, the Examiner relies on the same reasoning presented with respect
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to the corresponding limitations in claim 1. Final Act 7. We have discussed
and rejected that reasoning above in the context of claim 1. It is equally
unpersuasive here in the context of claim 13. Thus, the rejection of claim 13
as obvious over Waldock and Meade cannot be sustained.
5. Claims 4, 6, 9–12, and 15
Claims 4, 6, 9–12, and 15 each depend directly or indirectly from
claim 1 and thus incorporate all of the limitations of claim 1. Thus, the
deficiency of the Examiner’s analysis of claim 1 as obvious over Waldock
and Meade, as discussed above, equally applies to claims 4, 6, 9–12, and 15.
The rejection of these claims cannot be sustained.
B. The Obviousness Rejection of Claims 7 and 8 over Waldock, Meade,
and Yamada
Claims 7 and 8 each depend indirectly from claim 1 and thus
incorporate all the limitations of claim 1. Thus, the deficiency of the
Examiner’s analysis of claim 1 as obvious over Waldock and Meade, as
discussed above, equally applies to claims 7 and 8. Yamada, as applied by
the Examiner, does not cure that deficiency. The rejection of claims 7 and 8
cannot be sustained.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
References Affirmed Reversed
1, 4, 6, 9 –
13, 15
103 Waldock, Meade 1, 4, 6, 9 –
13, 15
7, 8 103 Waldock, Meade,
Yamada
7, 8
Overall
Outcome
1, 4, 6–13,
15
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REVERSED