May Patents Ltd.

Patent Trials and Appeals BoardDec 3, 2021

2020005676 (P.T.A.B. Dec. 3, 2021)

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. 16/038,706 07/18/2018 Yehuda BINDER BINDER-013-US16 6443 131926 7590 12/03/2021 May Patents Ltd. c/o Dorit Shem-Tov P.O.B 7230 Ramat-Gan, 5217102 ISRAEL EXAMINER ALAM, MIRZA F ART UNIT PAPER NUMBER 2689 MAIL DATE DELIVERY MODE 12/03/2021 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 ____________________ Ex parte YEHUDA BINDER ____________________ Appeal 2020-005676 Application 16/038,7061 Technology Center 2600 ____________________ Before HUNG H. BUI, MINN CHUNG, and JON M. JURGOVAN, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 19–25, 32, 34, 37, 40, 42, 43, and 54–59, constituting the only claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.2 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies May Patents Ltd., as the real party in interest. Appeal Br. 2. 2 Our Decision refers to the Specification (“Spec.”) filed July 18, 2018, the Final Office Action (“Final Act.”) mailed March 23, 2020, the Appeal Brief (“Appeal Br.”) filed May 21, 2020, the Examiner’s Answer (“Ans.”) mailed July 10, 2020, and the Reply Brief (“Reply Br.”) filed July 30, 2020. Appeal 2020-005676 Application 16/038,706 2 CLAIMED INVENTION The claims are directed to a device, such as a ball used for sporting activities, with a signaling means, motion sensor, electric motor, embedded logic, and a rechargeable battery housed in an enclosure. Spec. Abstract, 5:13–17, 34:1–5. The embedded logic controls the signaling means to generate a visual display in response to acceleration, detected by the motion sensor, crossing a preset threshold or sensing a peak value. Spec. Abstract. The battery may be recharged by induction. Id. at 3:3–16. Claims 1 and 34 are independent, and the remaining claims depend from one of these claims. Claim 1, reproduced below, is representative of the claimed invention: 1. A device comprising: an accelerometer for producing an output signal responsive to the device acceleration; a visible light emitter for emitting a visible light signaling a first status to a person; an electric motor for affecting a physical movement; a software and a processor for executing the software, the processor coupled to receive the output signal from the accelerometer and to control the visible light emitter; a rechargeable battery connected to power the device; a battery charger connected for induction-based contactless charging of the rechargeable battery; and an single handheld enclosure for housing the accelerometer, the electric motor, the processor, the rechargeable battery, and the battery charger. Appeal Br. 7 (Claims Appendix). Claim 34 is similar to claim 1 but recites a sensor instead of an accelerometer. Appeal 2020-005676 Application 16/038,706 3 REJECTIONS Claims 1, 19, 20, 22–25, 32, 34, 37, 40, 42, 43, and 54, 56–59 stand rejected under 35 U.S.C. § 103(a) based on Rudell (US 2005/0288133 A1, published Dec. 29, 2005), Willner (US 5,810,685, issued Sept. 22, 1998) and Kuesters (US 6,113,504, issued Sept. 5, 2000). Final Act. 3–11. Claims 21 and 55 stand rejected under 35 U.S.C. § 103(a) based on Rudell, Willner, Kuesters and Vock (US 2002/0116147 A1, published Aug. 22, 2002). Final Act. 11–13. ANALYSIS Legal Principles Title 35, section 103(a), provides: A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 . . ., if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) where present, objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Appeal 2020-005676 Application 16/038,706 4 Examiner’s Findings and Appellant’s Arguments Claim 1 recites “an electric motor for affecting a physical movement” in combination with other elements. Appeal Br. 7 (Claims Appendix). Independent claim 34 recites the same limitation. The Examiner finds that Rudell teaches an electric motor for affecting a physical movement. Final Act. 3. The Examiner notes that Rudell’s impact detector is coupled to a circuit, and includes an electrically conductive spring. Id. (citing Rudell ¶¶ 18, 24, Figs. 3, 5). Appellant states that a “motor” is “a rotating machine that transforms electrical energy into mechanical energy.” Appeal Br. 5 (citing Merriam- Webster Dictionary (https://ww.merriam-webster.com/dictionary/motor)) (emphasis omitted); Reply Br. 2. Appellant argues that Rudell’s “impact detector 18 is a sensor that detects an impact, and at best transforms a mechanical energy (impact) to an electric signal, but in no way may be equated to the recited electrical motor.” Appeal Br. 5, Reply Br. 2. We agree with Appellant’s argument. A motor converts electrical energy into mechanical motion. Rudell’s impact detector performs the opposite function of transforming mechanical motion (impact) into electrical energy that is sensed by a controller. Rudell ¶¶ 18, 20, 24. Thus, the claimed electric motor is not equivalent to Rudell’s impact detector. The Examiner cites to paragraph 111 of Appellant’s Specification as teaching a payload adapted to perform physical movement or motive functions (e.g., a pop-up figures), which may include motors, winches, fans, or reciprocating elements. Final Act. 3. There is, however, no paragraph 111 in the Specification. In the Answer, the Examiner explains that page 34, lines 1–5 of Appellant’s Specification contains this teaching. We find no Appeal 2020-005676 Application 16/038,706 5 indication there, however, that Applicant admits that this teaching is prior art in combination with the other claimed elements. The Examiner further cites to page 3, lines 11–13 of the Specification as teaching that the payload includes a motor. This teaching, however, is from Appellant’s Summary of the Invention and we find no indication that Appellant admits that this teaching is prior art in combination with the other claimed elements. Thus, we do not sustain the rejection of independent claims 1 and 34. For similar reasons, we do not sustain the rejections of dependent claims 19–25, 32, 37, 40, 42, 43, and 54–59, which include all of the limitations of their respective independent claims. DECISION We reverse the Examiner’s rejections of claims 1, 19–25, 32, 34, 37, 40, 42, 43, and 54–59 under 35 U.S.C. § 103(a). In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 19, 20, 22–25, 32, 34, 37, 40, 42, 43, 54, 56–59 103(a) Rudell, Willner, Kuesters 1, 19, 20, 22–25, 32, 34, 37, 40, 42, 43, 54, 56–59 21, 55 103(a) Rudell, Willner, Kuesters, Vock 21, 55 Overall Outcome 1, 19–25, 32, 34, 37, 40, 42, 43, 54–59 Appeal 2020-005676 Application 16/038,706 6 REVERSED