Ex Parte Faith et al

Patent Trials and Appeals Board

Mar 20, 2019

12953368 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/953,368 11/23/2010 Patrick Faith
66945 7590 03/22/2019
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
79900-788807 3352
EXAMINER
NILFOROUSH, MOHAMMAD A
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/22/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PA TRICK FAITH, MARK CARLSON, A YMAN HAMMAD,
BEN REWIS, and KRIS KOGANTI
Appeal2018-000637
Application 12/953,368 1
Technology Center 3600
Before JUSTIN BUSCH, STACEY G. WHITE, and SCOTT B. HOW ARD,
Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 31, 32, 36-41, and 45--48, which constitute all of the claims
pending in this application. Claims 1-30, 33-35, and 42--44 have been
cancelled. App. Br. 16-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Visa International Service Association as the real party
in interest. App. Br. 3.
Appeal2018-000637
Application 12/953,368
THE INVENTION
The disclosed and claimed invention is "directed to systems,
apparatuses and methods for conducting a financial transaction, payment
transaction, or any money transfer transaction." Spec. ,r 6.
Claim 31, reproduced below, is illustrative of the claimed subject
matter:
3 1. A method comprising:
receiving, by an interaction terminal at a contact surface
of the interaction terminal, physical contact causing movement
of the contact surface of the interaction terminal relative to an
attachment member portion of the interaction terminal that
couples the interaction terminal to a fixed location;
generating, by the interaction terminal, first interaction
data including at least:
first sensor data by a sensor of the interaction
terminal measuring the movement caused by the physical
contact; and
first location data of the interaction terminal;
initiating, by the interaction terminal, a comparison of the
first interaction data with second interaction data including
second sensor data and second location data from a mobile
device, the comparison determining the mobile device made
physical contact with the interaction terminal by determining
that the first location data and the second location data
correspond to each other, and that durations of acceleration and
still time, and a rate of change in acceleration values of the first
sensor data match those of the second sensor data after the first
location data and the second location data have been
determined to correspond to each other; and
initiating, by the interaction terminal, transmission of a
transaction authorization request message in response to
determining that the interaction terminal and the mobile device
made physical contact.
2
Appeal2018-000637
Application 12/953,368
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Lin
Sinclair
Fry
Zettner
Galvin
US 2007 /0109672 Al
US 2007 /0188323 Al
US 2007 /0223476 Al
US 7,669,759 Bl
US 7,861,985 B2
REJECTIONS 2
May 17, 2007
Aug. 16, 2007
Sept. 27, 2007
Mar. 2, 2010
Jan. 4, 2011
Claims 31, 32, 37--41, and 45--47 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Sinclair in view of Zettner, Fry,
and Galvin. Final Act. 9-14.
Claims 36 and 48 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Sinclair in view of Zettner, Fry, Galvin, and Lin.
Final Act. 14--15.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants' arguments regarding the pending
claims.
2 In addition to the rejections recited below, the Examiner also rejected
claims 31, 32, 36--41, and 45--48 under pre-AIA 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 8-9. The Examiner withdrew the rejection in the Answer.
Ans. 10.
3
Appeal2018-000637
Application 12/953,368
Claims 31, 37-39, 40, and 45-47
The Examiner finds Sinclair teaches, inter alia,
initiation of a comparison of the first interaction data with
second interaction data including second sensor data from the
external device, the comparison determining the external device
made physical contact with the interaction terminal (Sinclair
,r,r 19, 26, 27-28, 66-68, 70, 75) by determining that the
interaction terminal and the mobile device are proximate to
each other (Sinclair ,r,r 25-26, 66, 72), and that durations of
acceleration of the first sensor data match those of the second
sensor data (Sinclair ,r,r 27-28, 43, 46-54) after the interaction
terminal and the mobile device have been determined to be
proximate to each other (Sinclair ,r,r 25-26, 66, 72).
Final Act. 10.
The Examiner notes that, although Sinclair teaches many of the
elements of the initiation step, Sinclair does not teach "that the information
that is matched in the first and second sensor data includes a duration of still
time and a rate of change of acceleration." Id. at 11. The Examiner,
however, finds "Fry [teaches] matching the duration of still time and a rate
of change of acceleration of two devices to determine physical contact." Id.
at 12 (citing Fry Figs. 4-6, ,r,r 20, 26, 27, 32-35, 40, 58). The Examiner
further finds that a person of ordinary skill in the art would have modified
Sinclair to use a
duration of still time and a rate of change of acceleration in
determining whether two devices made physical contact, as
disclosed in Fry, in order to provide a pattern of physical
contact between two devices that is unique to the pair of
devices and to be able to differentiate valid taps from false
positives.
Final Act. 12-13 (citing Fry ,r,r 27, 32, 34--37).
4
Appeal2018-000637
Application 12/953,368
The Examiner also finds that Galvin teaches "a terminal that includes
a flexible attachment member for coupling the interaction terminal to a fixed
location while allowing the contact surface of the interaction terminal to
move within a range of movement, and that the movement of the contact
surface is relative to the attachment member." Id. at 13 ( citations omitted);
see also Ans. 15-16 ("Galvin discloses that 'Flexibility and distortion of
flexible shaft 22 is accomplished by the user positioning flexible jointed
spines 41 as indicated by phantom arrow 44 (shown in FIG. 4)' (Galvin
11 :41--43) and 'Flexible shaft 22 and vis-a-vis flexible jointed spines 41 flex
to adjustable angles and height, and operate as gooseneck cords commonly
utilized for personal lamps and the like' (Galvin 12: 7-1 0). "). The Examiner
also finds that "Galvin's gooseneck moves in response to physical contact
because Galvin's gooseneck can be manually adjusted" (Ans. at 16), and that
Galvin is intended to stay in place and maintain its position except when a
user makes physical contact with it to move it:
Id.
Although Galvin states that "the position of the screen is
relatively stable and free from vibrations and movements" and
can "maintain a position for comfortably viewing the screen,"
this describes the behavior of the gooseneck when there is no
physical contact made with it, rather than when a user makes
physical contact with it to move it. Therefore, the combination
of the prior art does not render Galvin unsatisfactory for its
intended purpose.
The Examiner further finds a person of ordinary skill in the art would
have used Galvin's flexible attachment member with the terminal of Sinclair
"in order to provide a means to hold a portable terminal at eye-level in a
fixed location while adjusting its position, without requiring it to be held by
a user." Final Act. 13 (citing Galvin 9:7-25, 10:44--61, 11:10-14).
5
Appeal2018-000637
Application 12/953,368
Appellants argue that Examiner erred in finding claim 31 unpatentable
over the prior art. See App. Br. 10-13; Reply Br. 2-6. Appellants make
four arguments, which we address in the order they are presented in the
Appeal Brief.
First, Appellants argue "Fry is directed to a technique establishing a
communication channel between a pair of devices" that allows the devices to
communicate with each other. App. Br. 1 O; see also Reply Br. 2-3. More
specifically, Appellants argue "Fry does not compare the acceleration
information but instead uses the acceleration information to generate
network addresses." App. Br. 11; see also Reply Br.3 ("The duration of still
time and a rate of change of acceleration of the two devices are never
brought together for comparison to determine whether they match each
other.").
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Because Appellants' argument is directed to Fry alone
and does not address the combination of Sinclair and Fry, we are not
persuaded the Examiner erred. Instead, we agree with the Examiner that a
person of ordinary skill in the art would consider the still time and
acceleration data generated in Fry and use that data as part of Sinclair's
6
Appeal2018-000637
Application 12/953,368
determination that the devices made contact. See Final Act. 10, 12-13;
Ans. 11-14.
Second, Appellants argue Fry teaches that "communications between
two devices in Fry [is] accomplished 'without the need to compare gesture
information between devices in order for communication to occur between
two devices."' App. Br. 11 ( quoting Fry ,r 20). Appellants further argue that
"Fry explicitly disparages the comparison of gesture information ( e.g.,
acceleration information) to pair devices as adding unnecessary processing
overhead." App. Br. 11; see also Reply Br. 4 ("As pointed out on page 11 of
the Appeal Brief, Fry criticizes systems that require a comparison of gesture
information (i.e., acceleration data from sensors)."). Therefore, according to
Appellants, "one reading the disclosure of Fry would be discouraged from
using a comparison of acceleration data to establish communications
between devices, because such technique 'adds unnecessary processing
overhead' and is not scalable according to Fry." Reply Br. 4.
A reference teaches away when "a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994).
We are not persuaded by Appellants' argument that Fry teaches away from
the claimed invention.
Appellants' teaching away argument is premised on acceleration
information being an example of gesture information. See App. Br. 11 ("Fry
explicitly disparages the comparison of gesture information (e.g.,
acceleration information) .... ") ( emphasis added); Reply Br. ("Fry
criticizes systems that require a comparison of gesture information (i.e.,
7
Appeal2018-000637
Application 12/953,368
acceleration data from sensors)."). However, Appellants provide no
evidence to support the argument that acceleration information is a type of
gesture information. It is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
( attorney argument is not evidence).
Moreover, Appellants' argument is inconsistent with the discussion of
gesture information in Fry. Although gesture information is not defined in
Fry, it is discussed in the "Background." See Fry ,r,r 1--4. For example, Fry
states that "[ s ]ynchronous gestures may be defined as patterns of activity
performed on two or more devices in a distributed system that have a certain
meaning when they occur together in time." Id. ,r 1. As an example of
gesture information, Fry cites a paper which "describes a technique that
allows a user to connect a pair of accelerometer- augmented handheld
devices by holding the two devices together and shaking them to get
common movement data." Id. ,r 2. Another example in Fry is pressing and
releasing a button in real time. Id. ,r 3. Nothing in the various examples
discussed in Fry supports Appellants' argument that acceleration
information is an example of gesture information. See id. ,r,r 1--4.
Furthermore, as the Examiner finds, instead of criticizing or
discouraging the use of acceleration information, Fry explicitly teaches
using acceleration information. See Ans. 15 ("However, Fry does not teach
away from matching the duration of still time and a rate of change of
acceleration between two devices, because the routing of messages in Fry
depends on these values matching."). Because Fry explicitly teaches using
8
Appeal2018-000637
Application 12/953,368
acceleration data (see Fry ,r 27), Fry "does not 'criticize, discredit, or
otherwise discourage' investigation into the invention claimed," and
therefore does not teach away from the claimed invention. See DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Third, Appellants argue the purpose of Galvin's flexible or gooseneck
connector "is to maintain the desired position so that the electronic device
does not flap around." App. Br 12. ( citing Galvin 11 :24--27). That is,
according to Appellants, "once set into the desired position, the electronic
device holder in Galvin is designed to maintain that position and prevent any
vibration or movement." Id. Appellants further argue that the modification
proposed by the Examiner-"such that the electronic device moves around
in response to the taps on the electronic device so that meaningful movement
can be measured and compared with those of another device"-runs
contrary to Galvin's intended purpose. Id.; see also Reply Br. 4--5.
If a proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, then there is no suggestion
or motivation to make the proposed modification. In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984). For example, the Court of Customs and Patent
Appeals held that an invention was not obvious where the prior taught the
device required rigidity for operation whereas the claimed invention required
resiliency. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). However, as the
Federal Circuit explained, the proposition set forth in Ratti is inapplicable
where the modified apparatus will operate "on the same principles as
before." See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In
re Umbarger, 407 F .2d 425, 430-31 (CCP A 1969)).
9
Appeal2018-000637
Application 12/953,368
Appellants have not established that the proposed combination would
change the principle of operation of the prior art such that the claimed
invention is nonobvious. Based on the current record, we agree with the
Examiner that the purpose of Galvin's gooseneck is to allow movement
when a force is applied but to remain fixed when no force is applied. See
Galvin 11 :41--43, 12:7-10. Accordingly, Galvin's connection in
combination with Sinclair and the other references will operate on the simple
principle as on its own.
Fourth, Appellants argue the Examiner relied on improper hindsight
when combing Galvin with the other references. See App. Br. 13; Reply
Br. 5---6. Appellants argue "Galvin has nothing to do with measuring
interaction data resulting from movement caused by physical contact, and
makes no mention of comparing that interaction data to pair devices." App.
Br. 13. Appellants further argue that without using improper hindsight and
relying on the Specification, "one looking at the isolated teachings of Galvin
and the other cited art would have no reason to incorporate the flexible
gooseneck of Galvin that is design[ ed] to prevent vibration and movement
into a system that relies on measuring physical motion data to pair devices."
Id.
Rejections based on obviousness must be supported by "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(citations omitted), cited with approval in KSR, 550 U.S. at 418. The
requirement for a reason to combine the references acts as a check on the
potential for the improper use of hindsight. See Plantronics, Inc. v. Aliph,
Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (holding that an articulated
10
Appeal2018-000637
Application 12/953,368
reasoning "is especially important to guard against the dangers of hindsight
bias"). Although Appellants contend that the Examiner has engaged in
hindsight reconstruction, Appellants do not address the reasoning provided
by the Examiner. See Final Act. 14; Ans. 16-17. Instead, we agree with the
Examiner's reasons for combining the teachings and, therefore, are not
persuaded by Appellants' argument that the Examiner impermissibly used
hindsight.
Accordingly, we sustain the Examiner's rejection of claim 31, along
with the rejection of claim 40, for which Appellant relies on the same
arguments as discussed above for claim 31 (App. Br. 14), and dependent
claims 37-39 and 45--47, which are not argued separately (see generally id.).
Claims 32 and 41
Claim 32 depends from claim 31 and recites "after determining that
the mobile device and the interaction terminal made contact, prompting a
user of the mobile device for entry of a motion-based PIN, the motion-based
PIN being a pattern of movement of the mobile device for authenticating the
user." App. Br. 16.
The Examiner finds Sinclair teaches the additional limitations recited
in claim 32. See Final Act. 3, 14--15 (citing Sinclair ,r,r 41, 58-60, 74, 75);
Ans. 17-19. More specifically, the Examiner finds Sinclair teaches that
passwords can include a preset series of bumps. Ans. 18 ( citing Sinclair
,r 41 ). The Examiner further finds Sinclair teaches that "the bumps used for
the creation of an encryption key [are] performed (Sinclair ,r,r 74--75) after
determining that the devices made contact (Sinclair ,r,r 70-73)." Id.
11
Appeal2018-000637
Application 12/953,368
In support of the finding, the Examiner construes certain limitations
recited in claim 32. Based on the ordinary meaning of the words of the
claim, the Examiner concludes that, although the prompting step happens
"after determining that the mobile device and the interaction terminal made
contact," the claim is broad enough to encompass prompting prior to the
devices being paired. Ans. 17-18. The Examiner further concludes that the
"motion-based PIN" recited in claim 32 is broad enough to encompass a
random pattern and does not require a specific motion. Id. at 18. The
Examiner also concludes that "the motion-based PIN being a pattern of
movement of the external device for authenticating the user" recited in claim
32 is nonfunctional descriptive material that is not entitled to patentable
weight. Final Act. 3.
Appellants argue Sinclair does not teach the limitation recited in claim
32. See App. Br. 13-14; Reply Br. 6-7. Specifically, Appellants argue that
"the password being described in Sinclair is required before determining the
two devices made contact with each other. In contrast, claim 32 recites
prom[p ]ting a user for entry of a motion-based PIN after determining the
two devices made contact." App. Br. 13-14 (citing Sinclairi-f 41); see also
Reply Br. 6-7).
Appellants further argue that because the encryption key is made from
successive bumps, "if a user was prompted at all, the user would be
prompted before the bump contacts are made, and before a determination
can be made that the two devices bumped each other." Reply Br. 6-7 ( citing
Sinclair ,r 74). Therefore, according to Appellants, "Sinclair does not teach
prompting a user for entry of bumps to generate an encryption key after
determining the devices made contact." Id. at 7.
12
Appeal2018-000637
Application 12/953,368
Appellants further argue that the "motion-based PIN" is not
nonfunctional description material. See id.
We start by construing the claims. During prosecution, claims must
be given their broadest reasonable interpretation while reading claim
language 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). Under this standard, we interpret claim terms using
"the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
However, "the protocol of giving claims their broadest reasonable
interpretation ... does not include giving claims a legally incorrect
interpretation" "divorced from the specification and the record evidence."
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(quoting In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) and In re
NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)), overruled on other
grounds by Aqua Products, Inc. v. Mata!, 872 F.3d 1290 (Fed. Cir. 2017).
Claim 32 recites "prompting a user" "after determining that the
mobile device and the interaction terminal made contact." App. Br. 16
(Claims App'x) (emphases added). Based on the ordinary meaning of the
claim, the only determination that needs to be made is whether there has
been contact. Accordingly, we agree with the Examiner that the broadest
reasonable interpretation of claim 32 is broad enough to encompass
13
Appeal2018-000637
Application 12/953,368
prompting after determining contact has been made, but before the devices
have been paired. See Ans. 17-18.
We disagree with the Examiner's conclusion that claim 32
encompasses random movement as a "motion-based PIN." According to the
Specification, a motion-based PIN is created prior to the transaction and is
then performed as part of the transaction to authenticate the user. Spec.
,r 108. That is consistent with the ordinary meaning of PIN or personal
identification number. Accordingly, we agree with Appellants that a person
of ordinary skill in the art would understand that the claim requires a specific
movement not just random motion. See App. Br. 14.
Applying the claim constructions above, we are not persuaded by
Appellants' arguments that the Examiner erred. First, because Appellants'
argument regarding whether prompting occurs before or after pairing is not
commensurate with the scope of the claims, it is unpersuasive. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
Second, we are not persuaded that the Examiner erred based on the
timing of the various actions, such as a bump. Appellants' argument is
premised on only considering the bumps. See Reply Br. 6-7. Sinclair,
however, teaches a variety of different actions including bumping,
movement, and a combination of both. See Sinclair ,r,r 58---60. As an
example, Sinclair teaches that the devices can be "bumped, shaken like a
martini, and bumped again." Id. ,r 60. Although the first bump occurs prior
to contact being determined, the "shaken like a martini and bumped again"
occur after the contact has been made and, therefore, can be in response to a
prompt after contact has been determined. See id.
14
Appeal2018-000637
Application 12/953,368
Third, we are not persuaded by Appellants' argument that Sinclair
does not teach "a motion-based PIN." Although Sinclair teaches using
random bumps-which are not a motion-based PIN-Sinclair also teaches
specific, predetermined motions, such as "side-to-side motions and mixtures
of up and down and side-to-side motions." Id. ,r 58. The broadest
reasonable interpretation of "a motion-based PIN" is broad enough to
encompass such a requirement of specific motions. 3
Accordingly, we sustain the Examiner's rejection of claim 32, along
with the rejection of claim 41, for which Appellants rely on the same
arguments as discussed above for claim 32. See App. Br. 15.
Claim 36
Claim 3 6 recites that "the movement of the contact surface of the
interaction terminal includes a recoil movement." App. Br. 17 (Claims
App'x).
The Examiner finds Lin teaches "an electronics stand with a range of
motion that includes a recoil movement." Final Act. 14 ( citing Lin ,r,r 6, 24,
46). More specifically, the Examiner finds Lin teaches "a device for
mounting a screen (Lin Abstract ,r,r 2, 24), such as the fixed display device
of Sinclair, that includes a range of movement that includes a recoil
movement (Lin ,r,r 6, 24, 46)." Ans. 21. The Examiner further finds a
person of ordinary skill in the art would have modified the device of Sinclair
in view of Zettner, Fry, and Galvin in order "to include a range of motion
3 Because we find that Sinclair teaches "a motion-based PIN," Appellants'
argument that the Examiner erred in concluding that "a motion based PIN"
is non-functional descriptive material is moot.
15
Appeal2018-000637
Application 12/953,368
that includes a recoil movement, as doing so involves applying a known
technique of a recoil movement disclosed in Lin to the known movable
attachment member of Galvin to yield a predictable result." Final Act. 15
(citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007)); see also Ans. 21
( citing same).
The Examiner further concludes that claim 36 "does not require that
the measurement and comparison of the interaction data or pairing of the
devices depend[ s] on the interaction terminal recognizing that the movement
is a recoil movement." Ans. 20. Instead, the Examiner concludes that "the
claim only requires that the contact surface of the interaction terminal be
capable of being moved in a recoil motion caused by physical contact of the
contact surface of the interaction terminal." Id. The Examiner also
concludes that "the description of the movement does not require any steps
to be performed as part of the method or any functions to be performed as
part of the interaction terminal." Id.
Appellants argue that "Lin is directed to an adjustable mount for a
liquid crystal display." App. Br. 14. Therefore, according to Appellants,
"Lin has nothing to do with measuring interaction data resulting from the
recoil movement, and makes no mention of comparing that interaction data
to pair devices" and the Examiner relies on "impermissible hindsight" to
select the "isolated teachings of Lin." Id.
In the Reply Brief, Appellants argue that the reason given by the
Examiner for combing Lin with the other references is "a conclusory
assertion [and] without further explanation is inadequate to support a finding
that there would have been a motivation to combine." Reply 8.
16
Appeal2018-000637
Application 12/953,368
We are not persuaded by Appellants' arguments that the Examiner
erred. As a preliminary matter, we do not consider Appellants' argument
raised for the first time in the Reply Brief challenging the Examiner's
finding regarding the reason to combine the references. See Reply Br. 8.
Although Appellants base their argument on a finding recited in the Answer,
the Examiner made substantially the same finding in the Final Action.
Compare Final Act. 15 (relying on KSR for reason to combine), with Ans. 21
(same). Because Appellants did not raise that argument in the opening brief
and good cause has not been shown why it should be considered, we will not
consider this argument. 37 C.F.R. §4I.41(b)(2); Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (Informative) ("[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.").
Nor are we persuaded by Appellants' arguments in the Appeal Brief
that the Examiner erred. Although Appellants' argued the Examiner erred in
using impermissible hindsight, Appellants did not address the Examiner's
finding regarding why a person of ordinary skill would have modified
Sinclair in view of the teachings of Lin. Compare Final Act. 15 (providing
reason to combine), with App. Br. 14 (not addressing Examiner's finding).
However, the Examiner's finding provides a "rational underpinning to
support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Because the
Examiner made a sufficient finding regarding why a person of ordinary skill
in the art would have combined the references, the Examiner did not engage
in impermissible hindsight. See Plantronics, 724 F.3d at 1354 (holding that
17
Appeal2018-000637
Application 12/953,368
an articulated reasoning "is especially important to guard against the dangers
of hindsight bias").
Accordingly, we sustain the Examiner's rejection of claim 36.
Claim 48
The Examiner's findings and conclusions and the Appellants'
arguments regarding claim 48 are substantially the same as those discussed
above for claim 36. See Final Act. 14--15 Uoint findings for claims 36 and
48); App. Br. 15 (arguing the Examiner erred in rejecting claim 48 for the
same reasons discussed for claim 36). Accordingly, for the reasons
discussed above, we are not persuaded by Appellants' arguments that the
Examiner erred.
In addition to relying on the same findings and conclusions regarding
claim 36, the Examiner also concludes that claim 48 recites an intended use
but does not require the functions to be performed. Ans. 22. The Examiner
further determines that "[t]he recitation of the intended use of the claimed
invention does not serve to differentiate the claim from the prior art." Id. at
21.
Appellants argue the Examiner erred in finding claim 48 merely
recites an intended use and that it should be given patentable weight. Reply
Br. 9. Instead, Appellants argue "[b]ecause the recoil movement limits how
the interaction terminal is coupled to the fixed location, the recoil movement
imparts a structural feature of the interaction terminal and cannot be simply
ignored." Id.
The dispute on whether claim 48 's recoil movement is a structural
limitation or merely an intended use is moot. Because Appellants agree that
18
Appeal2018-000637
Application 12/953,368
claim 48 is commensurate in scope with claim 36 (Reply Br. 9) and we
previously sustained the Examiner's rejection of claim 36, even if claim 48
provides a structural limitation, Appellants have not persuaded us that the
Examiner erred. That is, even assuming that claim 48 is a structural
limitation, we sustain the Examiner's rejection of claim 48 for the reasons
discussed above for claim 36.
DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 31, 32, 36-41, and 45--48.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
19