Thomas Tessier

Patent Trials and Appeals Board

Mar 17, 2022

2021001213 (P.T.A.B. Mar. 17, 2022)

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. 16/008,557 06/14/2018 Thomas Ronald Tessier 86023-8US / ADB 2083 23529 7590 03/17/2022 ADE & COMPANY INC. 2157 Henderson Highway WINNIPEG, MANITOBA R2G1P9 CANADA EXAMINER FLEMING-HALL, ERICA L ART UNIT PAPER NUMBER 2649 NOTIFICATION DATE DELIVERY MODE 03/17/2022 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): djones@adeco.com uspto@adeco.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte THOMAS RONALD TESSIER ____________________ Appeal 2021-001213 Application 16/008,557 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, JEAN R. HOMERE and AMBER L. HAGY, Administrative Patent Judges. MacDONALD, 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 1-10. Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the real party in interest is the inventor Thomas Ronald Tessier. Appeal Br. 1. Appeal 2021-001213 Application 16/008,557 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter (emphasis, formatting, and bracketed material added): 1. A portable telephone apparatus comprising: [A.] a cellular telephone component comprising a processor providing processing capabilities and geographic positioning capabilities, a camera, a keypad, wireless accessory connections, a speaker, a microphone and a cellular telephone system for communication with a cellular telephone network; [B.] the cellular telephone component including an operating system capable of running a cellular telephone app; [C.] and an external assembly separate from the cellular telephone component comprising: [i.] a power storage device with charger circuit, to provide a function of a backup battery to the cellular telephone component through a connecting cable that can charge the cellular telephone component and power internal circuits of the cellular telephone component; [ii.] a satellite transmitter/receiver unit with an antenna for communication with a satellite communication network using Low Earth Orbit (LEO) satellites; and [iii.] [a] wired and/or wireless link to the cellular telephone component; [D.] where the app uses the processing capabilities of the cellular telephone component to create communication data and/or audio signals for transmission and presenting of received data to a cellular telephone user as audio streams or data messages; [E.] where many functions of the satellite transmitter/receiver of the external assembly are controlled by the cellular telephone app, so that only a minimum number of functions are embodied in the external assembly including receiving capability, transmitting capability, and a controller to queue data and control transmission and reception[;] Appeal 2021-001213 Application 16/008,557 3 [F.] where the app automatically chooses whether to use either the cellular telephone system of the cellular telephone component or the external satellite communication network; and [G.] where the external assembly conducts, using power from the power storage device, both the function of the satellite transmitter/receiver unit and the function of the backup battery to the cellular telephone component both simultaneously and independently of one another. Appeal Br. 11-13 (Claims App.). REFERENCES2 The Examiner relies on the following references: Name Reference Date Ushida US 5,805,989 Sept. 8, 1998 Marshack US 2008/0170536 A1 July 17, 2008 Plamondon US 2011/0092158 A1 Apr. 21, 2011 Owens US 2013/0078942 A1 Mar. 28, 2013 Mukae US 2015/0133189 A1 May 14, 2015 Scanzano US 2016/0065615 A1 Mar. 3, 2016 Steed US 2016/0302045 A1 Oct. 13, 2016 Thiel US 2018/0168065 A1 June 14, 2018 REJECTIONS A. The Examiner rejects claim 1 under 35 U.S.C. § 112(b) as failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Final Act. 2 (Final Office Action, mailed July 11, 2019, “Final Act.”). 2 All citations herein are by reference to the first named inventor only. Appeal 2021-001213 Application 16/008,557 4 B. The Examiner rejects claims 1 and 6-8 under 35 U.S.C. § 103 as being unpatentable over the combination of Mukae, Thiel, and Plamondon. Final Act. 3-8. As to the § 103 rejection, we select claim 1 as representative. Appellant does not separately argue claims 6-8. Except for our ultimate decision, we do not discuss the merits of the § 103 rejection of claims 6-8 further herein. C. The Examiner rejects claims 2 and 4 under 35 U.S.C. § 103 as being unpatentable over the combination of Mukae, Thiel, Plamondon, and Steed. Final Act. 8-9. The Examiner rejects claim 3 under 35 U.S.C. § 103 as being unpatentable over the combination of Mukae, Thiel, Plamondon, and Scanzano. Final Act. 9-10. The Examiner rejects claim 5 under 35 U.S.C. § 103 as being unpatentable over the combination of Mukae, Thiel, Plamondon, and Marshack. Final Act. 10-11. The Examiner rejects claim 9 under 35 U.S.C. § 103 as being unpatentable over the combination of Mukae, Thiel, Plamondon, and Ushida. Final Act. 11-12. The Examiner rejects claim 10 under 35 U.S.C. § 103 as being unpatentable over the combination of Mukae, Thiel, Plamondon, and Owens. Final Act. 12-13. As to these rejections of claims 2-5, 9, and 10, Appellant does not present arguments. Thus, the rejections of these dependent claims turn on Appeal 2021-001213 Application 16/008,557 5 our decision as to claim 1. Except for our ultimate decision, we do not discuss the merits of the § 103 rejections of claims 2-5, 9, and 10, further herein. OPINION We have reviewed the Examiner’s rejections in light of Appellant’s Appeal Brief arguments. A. § 112(a) As originally filed on September 7, 2018, claim 1 recited (a) “running a customized software program (“app”),” (b) “where the app uses the processing capabilities of the cellular telephone component to create,” (c) “many functions of the satellite transmitter/receiver of the external assembly are controlled by the cellular telephone app,” and (d) “where the app automatically chooses.” Emphasis added. The Examiner did not raise any objection to the portions of claim 1 as filed. In the amendment filed on April 4, 2019, Appellant amended (a) to read “running a cellular telephone app.” However, the language of (b), (c), and (d) was not amended. Although Appellant’s claim appendix shows (d) as now reading (emphasis added) “where the cellular telephone app uses the processing capabilities of the cellular telephone component to create,” we find no such amendment in the record. The claim 1 now on appeal, is the amended claim 1 of April 4, 2019, not the claim 1 of the Claim Appendix of Appellant’s Appeal Brief. In the July 11, 2019 Final Office Action, the Examiner determines that claim 1 is indefinite because “[c]laim 1 recites the limitation ‘the app’ in line 17[, and t]here is insufficient antecedent basis for this limitation in the claim.” Final Act. 2 (emphasis added). Appeal 2021-001213 Application 16/008,557 6 Appellant argues: The term “the app” is repeated throughout the claims and clearly refers back to “a cellular telephone app” referenced earlier in the claim. The word “app” is used in claim 1 only in regard to this “app” so that there is no confusion as to which “app” is being referenced. Appeal Br. 5. In parts D and F of claim 1, the phrase “the app” is used, and in part E the different phrase “the cellular telephone app” is used. Essentially, Appellant contends a reader would understand that each of these different phrases is required to be construed as referencing the same “a cellular telephone app” in part B. of claim 1. We disagree. We conclude that in claim 1, the use of different phrases to reference the same earlier “a cellular telephone app” in part B. of claim 1 creates a lacks clarity. We note that this lack of clarity is compounded in Appellant’s Appeal Brief Claim Appendix where the phrase “the cellular telephone app” is mistakenly substituted for the phrase “the app” in part D. Therefore, based on our review, we agree with the Examiner that claim 1 is indefinite. Although not rejected by the Examiner, dependent claim 2-10 share this indefiniteness by virtue of their dependency from claim 1, and claims 2, 4, 5, and 7-9 also share the indefiniteness due to their use of the phrase “the app.” As we affirm the Examiner’s rejection of claims 1-10 on other grounds, we do not enter a new ground of rejection on this basis. Appeal 2021-001213 Application 16/008,557 7 B. § 103 B. 1.a. Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. [C]laim 1 provides the novel feature that the power storage device can handle BOTH satellite transmissions AND battery charging at the same time using the same power supply from the external power storage device. Appeal Br. 5. The basic concept therefore of Mukae is that it is not possible to operate the two functions simultaneously from the power source on the external unit so that a selection must be made. Appeal Br. 8 (Appellant’s emphasis omitted, Panel’s emphasis added). Mukae provides an arrangement to meet this requirement which is contrary to that claimed in the present invention. The Examiner points in Mukae to an alternative embodiment disclosed specifically in paragraph 0056. This states as follows: Further, in the above explanation, either of the charge mode and the communication mode is selected. However, the charge mode and the communication mode can be selected at the same time. In this case, the satellite communication can be performed by the mobile phone 10. While the electricity storage unit 11 is being charged. Therefore, the satellite communication can be performed by the mobile phone 10 even if the electricity storage unit 11 stores less amount of electric power. That is, as emphasized above, during charging Mukae uses an arrangement in which the mobile phone and NOT the separate charger provide[s] the power to carry out the satellite communication function. Appeal 2021-001213 Application 16/008,557 8 Appeal Br. 9. In support of this argument Appellant points out The issue that causes Mukae to make this selection is the high-current instant need of the satellite transmitter when it transmits. This causes a momentary voltage drop (less than even 1 millisecond is critical) that interrupts the satellite transmission IF the circuit cannot handle this sudden change. That is, for example, in the embodiment of the present invention, compliance with high capacity requirements of over 2 amps is necessary while instantaneously supplying sufficient current to a satellite transceiver (in the present embodiment, of over 2 amps) on demand: This means the present arrangement provides an arrangement which goes from 2 to 4 amp draw fast enough to not allow the voltage to drop on the satellite transceiver. The present application provides an arrangement that can now do that. The present design allows both high- current (2 amp) charging of an external battery, while conducting high current (2 amp) satellite transmissions internally, all from a small, 5 amp capacity battery in external power supply. Appeal Br. 8-9. We are unpersuaded by Appellant’s arguments. First, Appellant’s argument regarding the language from the power source on the external unit is not commensurate with the scope of claim 1. Appellant’s argument hinges on the claim precluding “the mobile phone . . . provide[s] the power to carry out the satellite communication function.” Stated differently, essentially, Appellant is arguing that the phrase “using power from the power storage device” (claim 1, part G) requires the power be accessed directly from the power storage device. We disagree. Claim 1 does not preclude the power from being accessed indirectly from the power storage device via the mobile phone. This indirect access from the power storage device is the process taught by Mukae: Appeal 2021-001213 Application 16/008,557 9 The charging unit 23 is a function to supply the electric power stored in the electricity storage unit 21 to the mobile phone 10 and to charge the electricity storage unit 11 of the mobile phone 10. The satellite communication unit 24 is a function to cause the mobile phone 10 to perform the satellite communication via the satellite antenna 22. The selection unit 25 is a function to make a selection of at least either of a charge mode for causing the charging unit 23 to charge and a communication mode for causing the satellite communication unit 24 to perform the satellite communication according to inputs from the input unit 15 and the like. Mukae ¶ 32. Further, in the above explanation, either of the charge mode and the communication mode is selected. However, the charge mode and the communication mode can be selected at the same time. In this case, the satellite communication can be performed by the mobile phone 10, while the electricity storage unit 11 is being charged. Mukae ¶ 56. Second, as to Appellant’s high-current 2 amps capacity argument, it is also not commensurate with the scope of claim 1 as we find no mention of this limitation in claim 1 (or in Appellant’s Specification). B. 2. Also, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. Mukae therefore teaches away from the present invention where an arrangement is provided which allows both functions to be provided simultaneously using power from the external power unit. Appeal Br. 9 (emphasis added). This deficiency of Mukae is not merely a failure to disclose but instead it teaches an entirely different solution so that Mukae teaches away from the present invention. Appeal 2021-001213 Application 16/008,557 10 It is hard to see therefore how any other prior art, unless directly on point, could overcome this fact that the whole disclosure of Mukae teaches away from the present invention. Appeal Br. 10. We are unpersuaded by Appellant’s argument. For the reasons discussed in section B.1. supra, we find nothing in Mukae that discourages an artisan from using (i.e., teaches away from) the invention of claim 1. As the United States Court of Appeals for the Federal Circuit has counseled: A reference may be said to teach 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. . . . [I]n general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation omitted). B. 3. Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. The Examiner cites, in order to try to overcome [Mukae’s deficiencies], the prior art of Plamondon and Thiel neither of which is on point. That is neither is in any way concerned with the issue of providing for the phone a portable component having: Appeal 2021-001213 Application 16/008,557 11 a power storage device with charger circuit, to provide a function of a backup battery to the cellular telephone component through a connecting cable that can charge the cellular telephone component and power internal circuits of the cellular telephone component; and a satellite transmitter/receiver unit with an antenna for communication with a satellite communication network using Low Earth Orbit (LEO) satellites; Neither reference is in any way concerned with a solution to this problem. Plamondon does not address this issue and hence does not in any way overcome the deficiencies of Mukae and particularly overcome the contrary teaching set forth Mukae. Plamondon provides a control arrangement for a mobile phone but has no disclosure concerning an external power source or charging therefrom. Thiel is merely a portable battery and says nothing about supplying current for satellite transmissions. These references therefore are not on point and cannot overcome the clear disclosure in Mukae of an alternative solution. Appeal Br. 10-11. We are unpersuaded by Appellant’s argument. Appellant argues neither Plamondon or Thiel are on point to the problem addressed by Appellant, i.e., Appellant argues these references are not analogous art. However, prior art is analogous if either (1) “the art is from the same field of endeavor, regardless of the problem addressed” or (2) regardless of field of endeavor, the reference is “reasonably pertinent to the particular problem with which the inventor is involved.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (citation omitted). “A Appeal 2021-001213 Application 16/008,557 12 reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. (citation omitted). “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id. (citation omitted). However, “[t]he pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.” Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014). In Innovention, the patentee argued the references “describ[ed] computer-based, chess-like strategy games” and were “non-analogous art because the [asserted] patent’s inventors were concerned with making a non-virtual, three-dimensional, laser-based board game, a project that involves mechanical engineering and optics, not computer programming.” Innovention, 637 F.3d at 1316, 1321. The Federal Circuit found “an electronic, laser-based strategy game, even if not in the same field of endeavor, would nonetheless have been reasonably pertinent to the problem facing an inventor of a new, physical, laser-based strategy game” because both “relate to the same goal: designing a winnable yet entertaining strategy game.” Id. at 1322. We determine that the particular problem with which Appellant is involved includes the problem Appellant states in the argument. However, Appellant omits that the problem also includes creating communication data, queueing the data, and controlling transmission and reception of the data via Appeal 2021-001213 Application 16/008,557 13 a cellular phone (see claim 1, parts D and E). Further, our interpretation of the problem is supported by Appellant’s statement that: The invention described herein provides extra battery power to cellular telephone users to maintain additional cellular telephone user time and a backup satellite link to allow continuation of communication services in a very simple, automated fashion when cellular communication services are not available. Spec. 1:14-17 (emphasis added). We agree with Appellant that “Plamondon provides a control arrangement for a mobile phone.” Appeal Br. 11. We also agree with Appellant that “Thiel is [] a portable battery.” Id. We find that both Plamondon and Thiel are reasonably pertinent to Appellant’s particular problem, which includes providing a control arrangement for a cellular/satellite telephone and extra battery power for the telephone. We conclude that each of Plamondon and Thiel would logically have commended itself to an inventor’s attention in considering the inventor’s cellular/satellite telephone control arrangement and extra battery power problem. We conclude that these two references are analogous art. CONCLUSION The Examiner does not err in rejecting claim 1 under 35 U.S.C. § 112(b) as failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The Examiner does not err in rejecting claims 1-10 as being unpatentable under 35 U.S.C. § 103. Appeal 2021-001213 Application 16/008,557 14 The Examiner’s rejection of claim 1 under 35 U.S.C. § 112(b) is affirmed. The Examiner’s rejections of claims 1-10 as being unpatentable under 35 U.S.C. § 103 are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 112 Indefiniteness 1 1, 6-8 103 Mukae, Thiel, Plamondon 1, 6-8 2, 4 103 Mukae, Thiel, Plamondon, Steed 2, 4 3 103 Mukae, Thiel, Plamondon, Scanzano 3 5 103 Mukae, Thiel, Plamondon, Marshack 5 9 103 Mukae, Thiel, Plamondon, Ushida 9 10 103 Mukae, Thiel, Plamondon, Owens 10 Overall Outcome 1-10 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). Appeal 2021-001213 Application 16/008,557 15 AFFIRMED