Ex Parte Kurs et al

Patent Trial and Appeal Board

Oct 20, 2017

13544688 (P.T.A.B. Oct. 20, 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.
13/544,688 07/09/2012 Andre B. Kurs 25236-0132001 1085
26161 7590 10/24/2017
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
GRACZ, KATHARINE
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
10/24/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE B. KURS, MORRIS P. KESLER,
KATHERINE L. HALL, and SIMON VERGHESE
Appeal 2016-006185
Application 13/544,688
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the non-final
rejection of claims 1—13 and 18—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our discretionary authority under 37 C.F.R.
§ 41.50(b).
Appeal 2016-006185
Application 13/544,688
THE INVENTION
Appellants’ invention relates to wireless energy transfer. Spec. 12.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A system for wireless energy transfer for peripherals
comprising:
an energy source that is designed to attach to, or is
integrated with, clothing of a person; and
at least one source resonator that is designed to attach to, or
is integrated with, clothing of the person and is coupled with
the energy source to receive electrical energy from the energy
source;
wherein the at least one source resonator is designed to
generate from the received electrical energy an oscillating
magnetic field to transfer energy wirelessly to at least one
electronic device through at least one device resonator in
proximity the person; and
wherein the at least one device resonator is positioned at a
distance from the at least one source resonator and is designed
to interact with the oscillating magnetic field of the at least one
source resonator to generate electrical energy that provides
power to operate the at least one electronic device.
THE REJECTIONS1
The Examiner relies upon the following as evidence in support of the
rejections:
Gertsch US 2006/0277666 A1 Dec. 14, 2006
Karalis US 2008/0278264 A1 Nov. 13, 2008
Cook US 2009/0102292 A1 Apr. 23, 2009
Soar US 2009/0218884 A1 Sept. 3, 2009
1 A ground of rejection of claims 8—10, and 20 as unpatentable under 35
U.S.C. § 103(a) over Soar and Hall has been withdrawn. Non-Final
Action 7; Ans. 3.
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Application 13/544,688
The following rejections are before us for review:
1. Claims 1—3, 5, 6, 11—13, and 18 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Soar.2
2. Claims 4 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Soar.
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Soar and Gertsch.
4. Claims 8—10 and 20 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Soar, Cook, and Karalis.3
OPINION
Anticipation by Soar
Claims 1—3, 5, 6, and 11
The Examiner finds that Soar discloses all of the limitations of
claim 1. Non-Final Action 3—A. In particular, the Examiner finds that Soar
discloses a device resonator positioned at a distance from a source resonator
as claimed. Id.
Appellants traverse the Examiner’s rejection by arguing that Soar
merely discloses a device induction coil and a source induction coil in
“coupled proximity” to each other. Appeal Br. 3. According to Appellants,
being in “coupled proximity” is inconsistent with and essentially mutually
2 The Examiner’s anticipation rejection bears the sub-heading “Claim 1—13
and 18—20,” however, the Examiner does not actually make any findings of
fact with respect to claims 4, 7—10, 19, or 20. Non-Final Action 3—5. We
will treat the anticipation rejection as limited to only the claims for which
the Examiner provides findings of fact.
3 This ground of rejection was added as a New Ground of Rejection,
denominated as such, in the Examiner’s Answer. Ans. 3.
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exclusive with being “positioned at a distance.” Id. Furthermore,
Appellants argue that the term “distance” in claim 1 should be construed as
“more than seven centimeters” based on statements in the Specification and
Abstract. Id.
In response, the Examiner directs our attention to an annotated version
of Soar Figure 3 as purportedly showing a device that is positioned at a
distance from a source. Ans. 4—5. The Examiner refers to Soar
paragraph 53 as disclosing a “contactless charging system” which the
Examiner interprets as being spaced apart from one another. Id. at 4. The
Examiner takes the position that “positioned at a distance,” when broadly
but reasonably construed, is not limited to distances greater than seven
centimeters as argued by Appellants. Id.
Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims of the patent at issue. Id. The
second step of an anticipation analysis involves comparing the claims to
prior art. Id. A prior art reference anticipates a patent claim under 35
U.S.C. § 102(b) if it discloses every claim limitation. Id. Prior art cannot be
distinguished on the ground that it lacks features that are not claim
limitations. See DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d 1245,
1252—54 (Fed. Cir. 2014) (“Anticipation challenges under § 102 must focus
only on the limitations actually recited in the claims.”).
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Under the broadest reasonable interpretation standard, claim terms are given
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their ordinary and customary meaning as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Construing
claims broadly during prosecution is not unfair to the applicant, because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage. Am. Acad. ofSci. Tech. Ctr., 367 F.3d at 1364.
We agree with the Examiner that the meaning of “positioned at a
distance” should not be limited to distances greater than seven centimeters.
A claim construction analysis begins with, and is centered on, the claim
language itself. See Interactive Gift Express, Inc. v. CompuServe, Inc., 256
F.3d 1323, 1331 (Fed. Cir. 2001). The plain language of claim 1 does not
specify any minimum distance. Essentially, Appellants want us to import a
limitation from the Specification into the claim, something that we are not
inclined to do. See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345
F.3d 1318, 1327 (Fed. Cir. 2003) (it is improper to read a limitation from the
specification into the claims). Construing “positioned at a distance” in view
of the plain claim language and Appellants’ Specification, we construe
“positioned at a distance” as essentially synonymous with “spaced apart,” or,
in other words, “not touching.”
Applying our construction of “positioned at a distance,” to the prior
art, we agree with the Examiner that Soar discloses a device that is
positioned at a distance from a source. Soar discloses power transmission
between a user-carried battery and independent accessories. Soar, Abstract.
Soar’s system powers the use of and charging of batteries in the independent
accessories. Id. Soar’s system is a “contactless” charging system that
eliminates mechanical charging contacts. Id. 53—54. Thus, the
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Examiner’s finding that Soar’s device induction coil is positioned at a
distance from its source induction coil is supported by a preponderance of
the evidence.
Appellants next argue that Soar merely discloses induction charging
coils, but not resonators, as claimed. Appeal Br. 4 (“Soar is silent regarding
resonators or resonant circuits and the Office has failed to establish how
these coils can be considered resonators”). In the Answer, the Examiner
fails to address or otherwise respond to this argument. See generally Ans.
We have no evidence before us that Soar’s induction coils are, in fact,
resonators. Moreover, in the absence of persuasive evidence to the contrary,
we are not prepared to find that all wireless inductive coils are resonators.
See Karalis 13 (induction transfer schemes restricted to very close range
energy transfers).
Consequently, we do not sustain the Examiner’s anticipation rejection
of claim 1, neither do we sustain the rejection of claims 2, 3, 5, 6, and 11
that depend therefrom.
Claims 12, 13, and 18.
Claim 12 is an independent claim and claims 13 and 18 depend
therefrom. Claims App. As with claim 1, claim 12 contains limitations
directed to a source “resonator” and a device “resonator.” Id. As such, the
Examiner’s rejection of these claims suffers from the same infirmity that
was identified above with respect to claim 1. Thus, for essentially the same
reason expressed above in connection with claim 1, we do not sustain the
rejection of independent claim 12 or claims 13 and 18 that depend
therefrom.
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Unpatentability of Claims 4 and 19
over Soar
Claim 4 depends from claim 1 and claim 19 depends from claim 12.
Claims App. Claim 4 adds the limitation: “wherein the at least one source
resonator and the at least one device resonator are tuned for the distance
being 12 centimeters and provide an efficiency of energy transfer above 50%
for a variation of separation distance of 7.5 centimeters to 15 centimeters.”
Claims App. In this ground of rejection, the Examiner, once again, finds
that Soar has “resonators.” Non-Final Action 6. The Examiner relies on the
principles espoused in the case of In re Aller, 220 F.2d 454 (CCPA 1955), to
find that it would have been obvious to develop a system with the claimed
range as a matter of routine optimization that is within the realm of ordinary
skill. Non-Final Action 6. However, the Examiner makes no additional
findings that it would have been obvious to modify Soar’s inductive coils so
as to become resonators. Thus, this rejection suffers from the same infirmity
that was identified above with respect to claims 1 and 12. See Karalis 13
(induction transfer schemes are restricted to very close-range energy
transfers). Accordingly, we do not sustain the unpatentability rejection of
claims 4 and 19 over Soar.
Unpatentability of Claim 7
over Soar and Gertsch
Claim 7 depends directly from claim 6 and indirectly from claim 1
and adds the limitation: “comprising a shield comprising an electrical
conductor that is positioned to reduce interactions of the oscillating magnetic
field with the person’s body.” Claims App. The Examiner relies on Gertsch
as disclosing such a shield and concludes that it would have obvious to
modify Soar. Non-Final Action 7. The Examiner makes no additional
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findings that Gertsch cures the “resonator” deficiency discussed above. Id.
Thus, this rejection suffers from the same infirmity that was identified above
with respect to claim 1 and accordingly, we do not sustain the
unpatentability rejection of claim 7 over Soar and Gertsch.
Unpatentability of Claims 8—10 and 20
over Soar, Cook, and Karalis
In response to the new ground of rejection entered by the Examiner in
the Answer, Appellants elect to argue claims 8—10 and 20 as a group. Reply
Br. 1—2. We select claim 8 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 8 depends from claim 6 and adds the limitation: “wherein a
power output of the at least one source resonator is controlled to limit a
magnitude of the oscillating magnetic field that interacts with the person's
body.” Claims App. The Examiner relies on Cook as teaching different
ranges of frequencies relative to an impact on body tissue. Ans. 3. The
Examiner relies on Karalis as minimizing frequencies based on tissue
surrounding the device. Id. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to modify Soar with the teachings of Cook and Karalis to protect
against harm to the body. Id.
At this juncture, we interject that Cook expressly discloses the use of
magnetically resonant elements. Cook, claim 1. We also interject that
Karalis expressly discloses that wireless transfer schemes that rely on
induction are limited to very close range or low power energy transfers.
Karalis 13. Karalis teaches that resonant objects with coupled resonant
modes may be used for wireless energy transfer, resulting in more efficient
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wireless energy exchange. Id. 1 5. Thus, we find that Cook and/or Karalis
cure the deficiency we have noted in Soar regarding the use of only
inductive coil energy transfer technology.
In traversing the Examiner’s new ground of rejection set forth in the
Answer, Appellants first argue that Cook fails to cure the deficiencies of
Soar. Reply Br. 1. We find this argument unpersuasive in view of our
findings in the preceding paragraph.
Appellants next argue that the portion of Karalis relied on by the
Examiner is limited to medical implantable devices. Id. We find this
argument unpersuasive. A person of ordinary skill in the art reading Karalis,
as a whole, would understand that it is not limited to medical implants. See,
e.g., Karalis, claim 13 (“the device comprises at least one of a robot, a
mobile electronic device, a computer, a sensor, a vehicle, a medical device
configured to be implanted in a patient, a television screen, a wireless
keyboard, and a wireless mouse”).
Appellants next argue against the Examiner’s reasons for combining
Cook and Karalis with Soar. Reply Br. 2. Appellants argue that, since Soar
does not explicitly recognize a problem with heating, a person of ordinary
skill in the art would not seek to modify Soar for the reasons given by the
Examiner. Id.
Appellants’ arguments are not persuasive. A reason to modify a prior
art reference may be found explicitly or implicitly in market forces; design
incentives; the “interrelated teachings of multiple patents”; “any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent”; and the background knowledge, creativity, and
common sense of the person of ordinary skill. Perfect Web Techs., Inc. v.
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InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009) (quoting KSR Inti
Co. v. Teleflex Inc., 550 U.S. 398, 418—21 (2007)). An implicit motivation
to combine exists when the improvement is technology-independent and the
combination of references results in a product or process that is more
desirable, for example, because it is stronger, cheaper, cleaner, faster,
lighter, smaller, more durable, or more efficient. Dystar Textilfarben GmBH
& Co. v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Because the desire to enhance commercial opportunities by
improving a product or process is universal—and even
common-sensical—we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves.
Id.
In the instant case, Cook expressly recognizes that adverse health
effects may result from wireless energy transmission. Cook 118. This
adequately supports the Examiner’s rationale for combining the references
as proposed. We also find that a person of ordinary skill in the art would
have made the proposed combination as it would make the wireless energy
transfer more efficient and/or increase the effective range between the
source and device.
We sustain the Examiner’s rejection of claims 8—10 and 20.
However, as our discussion hereinabove arguably changes the thrust of the
Examiner’s original rejection, we hereby designate the affirmance as a NEW
GROUND OF REJECTION.
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NEW GROUND OF REJECTION
CLAIMS 1, 3, 5, 6, and 12 UNPATENTABLE UNDER 35 U.S.C. § 103(a)
OVER SOAR, COOK, and KARALIS
Inasmuch as we have previously determined that dependent claims 8—
10 and 20 are unpatentable as obvious over Soar, Cook, and Karalis, we
hereby enter a NEW GROUND OF REJECTION that the claims from which
claims 8—10 and 20 depend are also unpatentable as obvious. See Soverain
Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311,
1315 (Fed. Cir. 2015) (a broader claim cannot be nonobvious where a
dependent claim stemming from that claim is invalid for obviousness). This
new ground of rejection extends to claims 1, 3, 5, 6, and 12 from which
claims 8 and 20 depend and, except for the Examiner’s erroneous finding
that Soar’s induction coils are resonators, we hereby adopt, as our own, the
Examiner’s findings of fact with respect to the rejections of claims 1, 3, 5, 6
and 12.
DECISION
The decision of the Examiner to reject claims 1—3, 5, 6, 11—13, and 18
as anticipated by Soar is REVERSED.
The decision of the Examiner to reject claims 4 and 19 as
unpatentable over Soar is REVERSED.
The decision of the Examiner to reject claim 7 as unpatentable over
Soar and Gertsch is REVERSED.
The decision of the Examiner to reject claims 8—10 and 20 as
unpatentable over Soar, Cook, and Karalis is AFFIRMED and such
affirmance is hereby designated as a NEW GROUND OF REJECTION.
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We hereby enter a NEW GROUND OF REJECTION as to claims 1,
3, 5, 6, and 12 as unpatentable over Soar, Cook, and Gertsch.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF. THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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).4
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
4 No inference should be drawn from the Board's failure to make a new
ground of rejection as to any other or additional claims. See Manual of
Patent Examining Procedure (8th ed., Rev. 9, Aug 2012, § 1213.02)
(“Since the exercise of authority under 37 CFR 41.50(b) is discretionary, no
inference should be drawn from a failure to exercise that discretion.”). As a
Board of appeal, we are primarily a tribunal of review, and, as such, we
leave it to the Examiner to further consider the patentability of the remaining
claims in light of the prior art and this new ground of rejection.
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