Ex Parte 7679573 et al

Patent Trial and Appeal BoardJul 23, 2015

95000560 (P.T.A.B. Jul. 23, 2015)

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. 95/000,560 07/19/2010 7679573 5003.19REX02 2733 87197 7590 07/24/2015 Skaar Ulbrich Macari, P.A. 601 Carlson Parkway Suite 1050 Minneapolis, MN 55305 EXAMINER TON, MY TRANG ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 07/24/2015 PAPER 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 ____________ WINEGARD CO. Requester and Respondent v. ELECTRONIC CONTROLLED SYSTEMS d/b/a KING CONTROLS Patent Owner and Appellant ____________ Appeal 2014-003938 Inter partes Reexamination Control 95/000,560 United States Patent 7,679,573 B2 Technology Center 3900 ____________ Before JOHN A. JEFFERY, KARL D. EASTHOM, and MICHAEL W. KIM, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. Appeal 2014-003938 Reexamination Control 95/000,560 Patent US 7,769,573 B2 2 DECISION ON APPEAL In an earlier Decision (2012-009011) mailed November 27, 2012 (“Bd. Dec.”), another panel of this Board 1 affirmed the Examiner’s decision to reject claims 1–5, 8–17, and 19–25 in connection with this inter partes reexamination of U.S. Patent 7,679,573 (“’573 patent”). That panel later modified that decision to (1) reverse the Examiner’s rejection of claims 5 and 17, and (2) designate the obviousness rejection of claims 3, 4, 15, and 16 over King and TCS 2 as new grounds of rejection under 37 C.F.R. § 41.77(b). See King Controls v. Winegard Co., No. 2012-009011 (PTAB Mar. 7, 2013) (granting rehearing in part) (“Rh’g Dec.”). Patent Owner then requested to reopen prosecution in connection with the Board’s new ground of rejection, and submitted a Third Declaration of Lael King (“3d King Decl.”) with accompanying remarks. The claims were not amended. See Patent Owner’s Response Pursuant to 37 C.F.R. § 41.77(b) filed Apr. 5, 2013 (“PO Req.”). Requester filed comments under 37 C.F.R. § 41.77(c) responsive to Patent Owner’s request to reopen prosecution. Comments Filed By Third Party Requester Under 37 C.F.R. § 41.77(c) filed May 6, 2013 (“TPR Comments”). After the Board remanded the case to the Examiner to consider the new ground of rejection of claims 3, 4, 15, and 16 in light of the entered evidence and comments, the Examiner determined that this rejection should be maintained. Determination Under 37 C.F.R. § 41.77(d) mailed October 9, 2013 (“Ex’r Det.”). Under 37 C.F.R. § 41.77(e), Patent Owner and 1 Judge Jeffery replaces Judge Giannetti in the current panel. 2 For brevity, we refer to the full citations of these references on page 2 of the Board’s November 2012 decision. Appeal 2014-003938 Reexamination Control 95/000,560 Patent US 7,769,573 B2 3 Requester responded to the Examiner’s Determination. 3 The proceeding then returned to us under 37 C.F.R. § 41.77(f) to reconsider the matter and issue a new decision. Both independent claim 1 and dependent claim 3 are reproduced below: 1. A motorized antenna system, comprising: a generally rigid enclosure having a cover and a base, the cover comprised of an electromagnetic wave permeable material, wherein the cover and base define an enclosed a volume, the enclosure configured to enable both manual transportability of the motorized antenna system and automated operation of the motorized antenna system without a substantial change in the volume of the enclosure or repositioning of the cover or base, the enclosure having disposed within the enclosed volume of the enclosure: an antenna; a motorized drive system configured to selectively adjust a position of the antenna; and a control system connected to the motorized drive system to control automated operation of the motorized antenna system, wherein the motorized antenna system weighs less than 15 pounds. 3. The motorized antenna system of claim 1, further comprising one or more feet protruding generally downwardly from the enclosure. ANALYSIS This dispute turns on whether the Examiner erred by finding that the cited King reference comprises one or more feet protruding generally downwardly from the enclosure as recited in claim 3. In this regard, the 3 See Response By Third Party Requester Under 37 C.F.R. 41.77(e) With Respect To Determination Under 37 C.F.R. § 41.77(d) filed March 6, 2013 (“TPR Resp. to Ex’r Det.”); see also Patent Owner Comments Under 37 C.F.R. § 41.77(e) filed Nov. 12, 2013 (“PO Resp. to Ex’r Det.”); Patent Owner’s Reply Under 37 C.F.R. § 41.77(e) filed Dec. 12, 2013 (“PO Reply to TPR Response”). Appeal 2014-003938 Reexamination Control 95/000,560 Patent US 7,769,573 B2 4 earlier panel held that “King discloses holes in feet 36 which each include, inter alia, a bolt or screw (or threaded stud) and nut.” Bd. Dec. 11 (citing King, Fig. 3, item 41) (emphasis added). This inclusion of a bolt and nut as part of King’s feet is a crucial aspect of the Board’s rejection, for the Examiner interpreted the feet similarly, namely that the bolt and nut are included in King’s feet. See Ex’r Det. 13. That is, the Board and the Examiner mapped King’s feet 36–39 and their associated bolts and nuts to the feet protruding generally downwardly from the enclosure recited in claim 3. 4 Therefore, to say that the Board mapped the recited feet to solely the bolts 41 in the new ground of rejection as Patent Owner contends (PO Resp. to Ex’r Det. 2) misinterprets the Board’s decision, for this argument ignores the earlier panel’s reliance not only on Kings’ bolt and nut, but also the feet that each include the bolt and nut. See Bd. Dec. 11. So even assuming, without deciding, that the bolts themselves are not feet as Patent Owner contends, namely a terminal part of the antenna system on which the antenna system stands (PO Req. 2–4; 3d King Decl. ¶¶ 2–7), nothing on this record precludes feet that each include a bolt and nut consistent with the Board’s interpretation. The Examiner’s rejection based on this interpretation, then, does not exceed the Examiner’s authority under 37 C.F.R. 41.77 as Patent 4 Although the Board referred to only one mounting foot 36 in King as “feet,” the Board nonetheless found that these feet each include a bolt or screw (or threaded stud) and nut. Bd. Dec. 11. Therefore, the Examiner’s mapping King’s four mounting feet 36–39 and their associated bolts and nuts to the recited feet (Ex’r Det. 13) comports reasonably with the Board’s findings. Appeal 2014-003938 Reexamination Control 95/000,560 Patent US 7,769,573 B2 5 Owner contends (PO Resp. to Ex’r Det. 2), but rather is consistent with the Board’s interpretation. Therefore, we are not persuaded that the Examiner erred in maintaining the rejection of claim 3, and claims 4, 15, and 16 not argued separately with particularity. 5 CONCLUSION We affirm the Examiner’s decision to maintain the rejection of claims 3, 4, 15, and 16 under 35 U.S.C. § 103(a) as obvious over King and TCS. Under 37 C.F.R. § 41.77(f), we also incorporate by reference the earlier panel’s decisions of November 27, 2012 and March 7, 2013 (1) affirming the Examiner’s decision to reject claims 1, 2, 8–14, and 19–25, and (2) reversing the Examiner’s decision to reject claims 5 and 17. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED-IN-PART 5 Because Patent Owner did not argue claims 4 and 16 separately apart from their respective dependence on claims 3 and 15 (PO Resp. to Ex’r Det. 2 n.1), we group these claims accordingly. Accord Ex’r Det. 13–14 (noting that Patent Owner did not identify a specific error regarding the notch recited in claims 4 and 16); TPR Comments 4 (same). Appeal 2014-003938 Reexamination Control 95/000,560 Patent US 7,769,573 B2 6 For PATENT OWNER: SKAAR ULBRICH MACARI, P.A. 601 CARLSON PARKWAY MINNEAPOLIS, MN 55305 For THIRD PARTY REQUESTOR: OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P 1940 DUKE STREET ALEXANDRIA, VA 22314