Ex Parte 6,294,953 B1 et al

Patent Trial and Appeal Board

Mar 19, 2015

90012363 (P.T.A.B. Mar. 19, 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.
90/012,363 06/18/2012 6,294,953 B1 40173/01102 2187
30636 7590 03/20/2015
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
HENEGHAN, MATTHEW E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/20/2015 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
________________

Ex parte AXCESS INTERNATIONAL, INC.
Patent Owner and Appellant
________________

Appeal 2014-007759
Reexamination Control No. 90/012,363
Patent No. 6,294,953 B1
Technology Center 3900
________________

Before ELENI MANTIS MERCADER, STANLEY M. WEINBERG, and
BETH Z. SHAW, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL
A. STATEMENT OF THE CASE
Introduction
This reexamination proceeding arose from a June 18, 2012 third-party
request for ex parte reexamination (“Request”) of U.S. Patent No. 6,294,953
B1. Axcess International, Inc. (“Appellant” or “Axcess”), the owner of the
patent under reexamination (App. Br. 2) appeals under 35 U.S.C. §§ 134(b)
and 306 from a July 26, 2013 Final Rejection of claims 1–27. An oral
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hearing was conducted on November 5, 2014. A transcript (“Tr.”) of the
hearing was made of record on February 5, 2015.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.
Related Proceedings
Appellant has informed us that this reexamination is related to the
following judicial proceeding: Axcess International, Inc. v. Savi Technology,
Inc., 3:10-cv-01033-F (ND Tex) (“the Texas litigation”). App. Br. 51.
The Invention
The invention relates generally to radio frequency identification
(RFID) systems and more particularly to a high sensitivity demodulator for a
radio tag and method. Spec. col. 1, ll. 6–8.
Claim 1 is illustrative of the subject matter of the invention and is
reproduced below, with disputed limitations emphasized:
1. A radio frequency tag, comprising:
a threshold voltage generator coupled to a local power
supply and operable to generate a threshold voltage signal of
less than 500 millivolts on a threshold voltage generator
output; and
a low propagation delay comparator having a first
comparator input coupled to an antenna to accept a received
signal and a second comparator input coupled to the threshold
voltage generator output to receive the threshold voltage signal,
the comparator powered by the local power supply and
operable to demodulate the received signal based on a
comparison of the received signal to the threshold voltage
signal.

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The Rejections
Claims 1–4, 12–20, and 22-27 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Maxim, Single/Dual, +3V/+5V Dual-Speed Comparators
with Auto-Standby, September 1996 (“Maxim”). Ans. 2–27.
Claims 3, 5, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as
obvious over Maxim. Ans. 27–35.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as obvious
over Maxim in view of Janning (US 6,446,049 B1, Sept. 3, 2002). Ans. 35–
40.
Claims 6 and 7 stands rejected under 35 U.S.C. § 103(a) as obvious
over Maxim in view of Hassett (US 5,406,275, April 11, 1995). Ans. 41–42.

Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as obvious
over Maxim in view of Lee (US 4,955,038, Sept. 4, 1990). Ans. 42.

B. ANALYSIS
1

CLAIM 1
a low propagation delay comparator
The Examiner finds that Maxim Figure 6 discloses a comparator in its
MAX975 embodiment. Ans. 4–5, 10 (“a MAX975 comparator”); 11 (“The
MAX975 comparator”).

1
Our analysis generally follows the order of arguments presented in the
Appeal Brief, rather than the order followed by the Answer. We
occasionally discuss the same claims in different sections of this Decision
(respective sections discuss common limitations and specific limitations of
some claims) because both the Examiner and Appellant have done so.
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The Examiner also finds that Maxim page 11 discloses a low
propagation delay comparator, quoting the following: “propagation delay is
typically 28ns in high-speed mode, while typically supply current is 300µA.
In lower power mode, propagation delay is typically 480ns and power
consumption is only 3µA.” Ans. 10 (emphases omitted). Based upon these
quoted sentences, the Examiner finds that “[b]oth the 28ns propagation delay
and 480ns propagation delay are low propagation delays.” Id.
For a number of reasons, Appellant contends that MAX975 does not
disclose a low propagation delay comparator. We disagree.
Appellant first contends that the Functional Diagram illustrated on
Maxim page 1 discloses two separate and distinct op-amps: a low-power op
amp and a high-speed op-amp. App. Br. 11. The Examiner disagrees and
finds the MAX975 embodiment discloses a single op-amp. The Examiner
specifically finds that
the purpose of a functional diagram is to indicate the functions
of the principal parts of a total system and also shows the
important relationships and interactions among these parts.
Functional diagrams are made for people skilled in an art to
understand the inputs and outputs of a system; they are not
considered to be actual schematics of the systems portrayed. It
is therefore not a disclosure that the MAX975 uses two op-
amps. When viewed in the context of the four corners of the
document, it is clear that there are not two comparators, but
rather two modes of the same comparator that behave very
differently. Descriptions suggesting two comparators are
merely made to enable a reader to understand it in terms of
functionality.

Ans. 43.
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Appellant does not persuasively counter the Examiner’s finding
regarding the purpose of a functional diagram. Although Appellant contends
that the Examiner’s interpretation of a functional diagram is “faulty” (Reply
Br. 4), Appellant does not provide an evidentiary basis for its “faulty”
contention. Instead, Appellant’s attorney argument asserts that
The Appellants [sic] are not aware of any commercial available
op-amps that can operate in the manner the Examiner has
ascribed to the MAX975 op-amps. . . [A]n op-amp cannot
simply change its mode to have an extremely different
propagation delay or power draw in the manner suggested by
the Examiner. It is entirely possible for there to be two
different discrete op-amps in the MAX975 reference that have
the characteristics of the high-speed and low-power op-amps,
but not for one op-amp to perform with the widely divergent
characteristics.

Id. (emphasis added). When asked at the oral hearing to explain the
difference between a functional diagram and a structural diagram,
Appellant’s representative repeated the unsupported assertion that Appellant
is:
not aware of any comparators on the market, or any that have
been patented that can operate, you know, drawing 3
microamps to do one functionality and drawing 300 microamps
to do the other functionality. I just don’t think it is possible to
have the same op amp do that.
Tr. 30:2–9.
Consistent with the Examiner’s explanation, a functional diagram is
defined as “[a] diagram that indicates the functions of the principal parts of a
total system and also shows the important relationships and interactions
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among these parts.” Dictionary of Electrical and Computer Engineering
(McGraw-Hill 2004) 244.
Appellant also contends that the Examiner makes a “damaging”
assertion that the high speed and low-power op-amps are enabled and
disabled separately; but “the Examiner never explains how the same device
can be enabled and disabled at the same time.” Reply Br. 4, citing Ans. 11–
12, 42. Appellant has not provided a specific quotation in the Answer
showing the Examiner made such an assertion and we have not found where
on the cited pages of the Answer the Examiner did so.
In the absence of evidence to the contrary, we agree with the
Examiner’s explanation of a functional diagram and agree with the
Examiner’s finding that Maxim’s functional diagram is “not a disclosure that
the MAX975 uses two op-amps. When viewed in the context of the four
corners of the document, it is clear that there are not two comparators, but
rather two modes of the same comparator that behave very differently.”
Ans. 43.
Appellant agrees the MAX975’s high-speed mode has a propagation
delay of 28 nanoseconds (ns) (App. Br. 11) and asserts that in its low power
mode or auto-standby mode, the propagation delay is 820 ns. App. Br. 11–
12, citing Maxim 2–3.
2
Appellant contends that Maxim’s disclosure of a
28ns delay does not satisfy the recited “low propagation delay.” App. Br.
16; Reply Br. 3, 7.

2
We have not found where Maxim pages 2–3 discloses an 820ns
propagation delay.
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To support its contention, Appellant’s Appeal Brief suggests the
Specification defines “propagation delay” in a general way and, therefore, in
a way that does not rely upon a specific numerical speed:
The propagation delay of comparator 52 is dependent on the
specific frequency which must be captured, demodulated, and
processed. Generally, a propagation delay of seven to ten times
less than the period of the carrier wave being processed is
sufficient to fully capture the communicated signal.

App. Br. 16, quoting Spec. col. 4, l. 66–col. 5, l. 5. Based on this
Specification discussion, Appellant contends that “[t]he 28 ns value
described in the operating specifications of the MAX75 is merely one
theoretical value under specific conditions.” App. Br. 16.
The Examiner finds, in contrast, that the Specification “state[s] that a
delay of 600 ns meets the definition.” Ans. 44, citing col. 5, ll. 55–57,
which states: “Operational amplifier 72 can then be applied to the present
invention as a comparator with a low propagation delay of 600 ns.” The
Examiner then finds that “[s]ince the MAX975 comparator has a lower
propagation delay than that (480 ns and 28 ns in the respective modes, as
noted by the Patent Owner), it clearly meets the limitation.” Ans. 44.
Despite the suggestion in its Appeal Brief, Appellant’s Reply Brief
admits that the Specification “does not define a low propagation delay.”
Reply Br. 7. Instead, Appellant reiterates that the Specification “provides
the properties of a low propagation delay comparator, e.g., seven to ten
times less than the period of the signal being processed.” Reply Br. 7. By
this argument, we conclude, Appellant is attempting to incorporate elements
of the Specification into claim 1. Although the claims are interpreted in
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light of the specification, limitations from the specification are not read into
the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We
also observe that claim 10 recites “wherein the comparator has a propagation
delay . . . such that at least seven digital outputs are generated for each
period” and that claim 11 recites “wherein the comparator has a propagation
delay . . . such that at least ten digital outputs are generated for the received
signal during each period.”
Because claims 10 and 11 specifically recite propagation delay in
terms of the period of the signal being processed, we are further convinced
that the low propagation delay recited in claim 1 does not include the
concept of seven to ten times less than the period of the signal being
processed and therefore we are not persuaded that the Examiner erred in
concluding that the MAX975 comparator is a low propagation delay
comparator.

For all of the above reasons, we are not persuaded that the Examiner
erred in concluding that the MAX975 embodiment described on pages 11,
14, and Figure 6 of Maxim discloses a single op-amp having two modes of
operation: a low power mode and a high-speed mode having a low
propagation delay.
a low propagation delay comparator . . . operable to demodulate the
received signal based on a comparison of the received signal to the
threshold voltage signal

The Examiner finds that “[i]n page 14, the Toll-Tag circuit has a
MAX975 comparator which produces digital output based on demodulating
the X-band Detector detected RF signal” and states ‘“in the awake state, it is
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capable of demodulating the typical 600kHZ AM carrier riding on the
2.4GHz RF signal.’” Ans. 10 (emphasis omitted.).
Appellant focuses on the following specific part of this limitation: “a
low propagation delay comparator . . . operable to demodulate.”
3

Appellant’s argument regarding the “operable to demodulate” part of the
limitation relies heavily upon the contention that the MAX975 embodiment
discloses two op-amps: “the low power op amp . . . never performs the
demodulation process (App. Br. 14); “the MAX975 reference teaches that
the low-power op amp plays no role in the demodulation process” (App. Br.
15); “the low power op amp is never ‘operable to demodulate’ as that term
should be correctly understood” (App. Br. 16); “the high-speed op amp of
the MAX975 reference is not a ‘low propagation delay comparator” (App.
Br. 17); “as the Examiner admitted, the high-speed op amp does not meet
the recitation of a ‘low propagation delay comparator;’” (App. Br. 17); “the
high-speed op amp is not a ‘low propagation delay comparator’ when
demodulating in the Toll-Tag Reader implementation.” (App. Br. 17).
For the reasons we explained above, however, we have concluded that
Maxim’s Figure 6 MAX975 embodiment discloses a single comparator, not
two comparators and that it has a low propagation delay mode. Appellant’s
reliance upon the two-comparator argument therefore is not persuasive.
The Examiner further finds that

3
Even though Appellant acknowledges that the Board is not bound by a
court’s claim construction, it asks us to accept the definition of “operable to
demodulate” that was adopted by the District Court in the Texas litigation.
App. Br. 13. We decline to adopt the District Court’s claim construction
because, as Appellant acknowledges, we apply the broadest reasonable
interpretation. Id.
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MAX975 clearly states that the comparator has a high
propagation delay (low speed), low power mode and a low
propagation delay (high speed), high power mode, governed by
the ENABLE input (see functional diagram, p.1) and that the
comparator enters the low propagation delay mode when
awakened, during which the signal is demodulated. Since the
single comparator of the MAX975 is always active in one state
or the other, it is irrelevant that the high speed mode is inactive
before the comparator enters that setting. . . . After it is
triggered, the comparator performs ongoing demodulation in its
high-speed mode.

Ans. 42–43.
Appellant states “[t]he low propagation delay comparator is the
structure that demodulates the received signal.” App. Br. 13. Similarly,
Appellant states MAX975 can be considered to teach demodulation is its
high-speed state: “Thus, the MAX975 reference only teaches, at best,
demodulation in the awake, high-speed state (i.e., using the high-speed
comparator).” App. Br. 15. Accordingly, Appellant agrees that MAX975
demodulates a received signal when it operates in its high speed mode
having a low propagation delay.
Appellant contends that “operable to demodulate should [not] be read
as just the mere capability of doing it” (Tr. 24:22–25) and that “Federal
Circuit precedent . . . says ‘operable to’ is not the same as ‘capable of’
because ‘capable of’ is, in fact, not . . . in the claim language.” Tr. 25:6–9.
We have not found, and Appellant has not cited, Federal Circuit
precedent holding that a claim reciting “operable to” cannot be read as
“capable of.” To the contrary, the Federal Circuit has agreed with the
Board’s equating the two phrases. See, In re Imes, 2015 WL 374880 (Fed.
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Cir. Jan. 29,2015). In Imes, the Board construed “‘operable to wire-lessly
communicate streaming video to a destination” as “capable of wirelessly
communicating continuous video transmission’” and the Court saw no error
in that construction. Id. at *2.
4

When the MAX975 comparator is in the low power mode, it is
concurrently “operable to demodulate” in the high-speed, low propagation
delay, mode.
Based upon Appellant’s contentions that we have addressed above, we
are therefore not persuaded that the Examiner erred in concluding that
MAX975 discloses a low propagation delay comparator operable to
demodulate. We address below Appellant’s additional contentions regarding
claim 1, and other claims, in our discussion of the Examiner’s Genus I
grouping.
CLAIMS 3 AND 23
Claim 3 recites “the comparator and the threshold voltage generator
are powered by less than four microamps of current from the local power
supply.” Claim 23 recites “generating the threshold voltage signal and
comparing it to the received signal using less than four microamps of current
from a local power supply.”
The Examiner concludes that both claims can be interpreted two
different ways. In the first interpretation of claim 3, the Examiner rejects it
as anticipated by MAX975 because “the claimed comparator and the voltage

4
In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014) is not to the contrary.
There, the Court reversed the Board based upon the Board’s interpretation of
a reference as being capable of performing a function and where the claim
did not recite an “operable to” limitation.
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divider are each powered with less than 4µA from the local power supply.”
Ans. 13, quoting Maxim page 14 and providing a calculation based on page
14.
Similarly, in the first interpretation of claim 23, the Examiner rejects
it as anticipated by MAX975 because “[e]ach of the ‘generating the
threshold voltage signal’ and ‘comparing the threshold voltage signal’ steps
consume less than 4µA.” Ans. 23, quoting Maxim page 14 and providing
calculations based on page 14.
In the second interpretation, the Examiner rejects claim 3 as obvious
over MAX975 and finds that “[t]he combination of claimed comparator and
the voltage divider are powered together with less than 4µA from the local
power supply” (Ans. 28) because the resistance of various elements could be
modified and it would have been obvious to make a “design choice based on
Ohm’s law, so as to be able to reduce power consumption of the chip.” Ans.
29 (emphasis omitted).
Similarly, in the second interpretation of claim 23, the Examiner
rejects it as obvious over MAX975 and finds “[t]he combination of the
‘generating the threshold voltage signal’ and ‘comparing the threshold
voltage signal’ steps consume less than 4µA” (Ans. 33) again because the
resistance of various elements could be modified and it would have been
obvious to make a “design choice based on Ohm’s law, so as to be able to
reduce power consumption of the chip.” Ans. 33, 34 (emphasis omitted).
Again referring to the rejections of claim 3, the Examiner reiterates
that “the limitations are met by the comparator of MAX975 in its low-power
mode, since less than 4 microamps are drawn by the comparator and
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Threshold Voltage Generator in that mode.” Ans. 44. During oral
argument, Appellant agreed that “[t]he Examiner is correct” regarding the
Examiner’s conclusion that the comparator and threshold generator draws
less than four microamps. See Tr. 20:16-21:2; 21:16–21; 22:10–12.
Nevertheless, Appellant contends that “under either interpretation, the
Examiner’s analysis is incorrect because the high speed op amp of the
MAX975 reference that performs the demodulation function draws
substantially more than the recited four microamps.” App.Br. 19; 33
(incorporating by reference the arguments at App. Br. 19). More
specifically, Appellant contends that MAX975’s “low power op amp” draws
3µA and the “high speed op amp” draws 300µA when in operation. Id.
Appellant’s distinction between the low power op amp current draw
and the high speed op amp current draw is important to Appellant because
claim 1, from which claim 3 depends, requires a comparator
that is “operable to demodulate” a received signal. The low
power op amp of the MAX975 reference . . . never demodulates
a signal. Thus, the fact that the low power op amp draws 3µA
of power . . . has nothing whatsoever to do with claim 3. The
high-speed op amp of the MAX975 reference that is described
as performing the demodulation draws 300µA when in
operation. [citation omitted] Thus, the current draw of the
comparator of the MAX975 reference is much greater than the
recited “four microamps” when the comparator is performing a
demodulation.

App. Br. 19. “That is, it is not relevant that in some situations the low power
op amp draws 3µA current because those situations do not encompass the
recited ‘operable to demodulate.’” App. Br. 20.

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The Examiner and Appellant dispute whether MAX975’s low power
mode ever demodulates a signal. Compare App. Br. 19 (“[t]he low power
op amp . . . never demodulates a signal”) with Ans. 44 (“the comparator of
MAX975 in its low-power mode . . . is demodulating signals at that power
level.”). On the other hand, Appellant agrees that MAX975’s high-speed
mode does perform demodulation. See App. Br. 19 (“The high-speed op
amp . . . that is described as performing the demodulation draws 300µA
when in operation.”).
The Examiner therefore finds that claim 3 is met by Maxim’s low-
power mode
since less than 4 microamps are drawn by the comparator and
Threshold Voltage Generator in that mode. As stated above,
the comparator can be used to detect a RF transmission when it
is in its low power mode (see p. 14). It therefore is
demodulating signals at that power level and this mode can be
applied to show the unpatentability of claim 3. The power
requirements of the high-speed mode are not being relied upon
in this rejection.

Ans. 44.
We need not resolve the dispute whether MAX975’s low power mode
demodulates signals because, as we have concluded above, MAX975
discloses a single comparator that is operable to demodulate. We therefore
agree with the Examiner that “the comparator in the low-power mode must
necessarily be ‘operable to demodulate’ at least to the extent that it can
perform that task. After it is triggered, the comparator performs ongoing
demodulation in its high-speed mode.” Ans. 43.
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Accordingly, when the MAX975 comparator is in the low power
mode, it is concurrently “operable to demodulate” and powered by less than
4µA. We are therefore not persuaded that the Examiner erred in rejecting
claim 3 as either anticipated by, or as obvious over,
5
Maxim.
For the obviousness rejection of claim 23, Appellant states “for at
least the same reasons as described above with reference to claim 3, the
U.S.C. § 103(a) rejection of claim 23 should be withdrawn.” App. Br. 37.
Even though Appellant’s discussion of claim 23 incorporates by reference
Section I.C of its Appeal Brief (Id.), which discusses the anticipation
rejection of claim 3 as well as the obviousness rejection of claim 3,
Appellant’s discussion of claim 23 does not expressly refer to the
anticipation rejection of claim 23.
THE GENUS LIMITATIONS
The Examiner separated the claims into two genera, Genus I apparatus
claims and Genus II method claims. The Genus I rejection addresses claim
terms that are common to apparatus claims 1–9, 12–19, and 24 and the
Genus II rejection addresses claim terms that are common to method claims
20–23 and 25–27. Ans. 2.
The Genus I Apparatus Claims
a first comparator input coupled to an antenna to accept a received signal
The Examiner finds “[t]he X-band Detector is corresponding to the
claimed ‘an antenna to accept a received signal’” and “Figure 6 shows a toll-

5
For the obviousness rejection, Appellant relies upon its arguments in
opposition to the anticipation rejection. See App. Br. 33 (“The patent owner
has described in detail in Section I.C. of this Argument that the MAX975
reference does not teach or suggest the recitations of claim 3.”)
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tag circuit receives X-band radio frequency signal. Radio frequency signals
are received via antenna.” Ans. 5. Appellant “does not dispute that the X-
band detector includes an antenna.” App. Br. 22. See also Tr. 13:13–16 (“I
am not saying it doesn’t have an antenna.”).
Appellant relies upon the District Court’s construction of “received
signal,” which the Court construed as a “radio frequency signal originally
received by the antenna that may contain the communicated signal for
extraction from the carrier wave during the process of demodulation and
may contain noise and/or other signals.” App. Br. 20–21. Appellant
contends specifically cited parts of the Specification support the Court’s
interpretation and, based on attorney argument without supporting evidence,
contends it would be so understood by those skilled in the art. App. Br. 21–
22.
Appellant also contends, without evidentiary support, that “one skilled
in the art will understand that an X-band detector is not solely an antenna,
but includes various components.” App. Br. 22. As a result, Appellant
contends, “the signal that is received by the X-band detector antenna, is not
the signal that is output by the X-band detector. Rather, the received signal
is modified and is no longer the ‘radio frequency signal originally received
by the antenna.’” App. Br. 22.
We are not persuaded that the broadest reasonable interpretation of
this limitation is a “signal originally received by the antenna.” First,
Appellant has not cited, and we have not found, any occurrence of the word
“original” in the Specification. Second, even if the cited portions of the
Specification can be interpreted to mean a “signal originally received by the
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antenna,” although the claims are interpreted in light of the specification,
limitations from the specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We disagree with Appellant’s
contention that it is not seeking to import limitations from the Specification
(Reply Br. 10) and therefore decline to read the word “original” into the
claims.
In addition, we agree with the Examiner that
during reexamination, claims are given the broadest reasonable
interpretation consistent with the specification and limitations
in the specification are not read into the claims (In re
Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984)).
In the present instance, as noted in the grounds of rejection, X-
Band circuitry, having an antenna, is coupled to a comparator
input.

Ans. 44.
Appellant further seeks to refute the Examiner’s correlation of the X-
band detector to the claimed “antenna to accept a received signal” by
asserting a number of reasons purportedly supporting its contention that the
reference does not teach it “receives a signal originally received by an
antenna.” App. Br. 22–24. Specifically, Appellant contends the “reference
is disjointed, does not make any technical sense and is inoperable.” App. Br.
22–23; Reply Br. 10–11. Instead, Appellant provides its own view, without
evidentiary support, of how the MAX975 device must be operating. App.
Br. 23–24. We need not determine the correctness of Appellant’s assertions
regarding how MAX975 operates because the purpose of these assertions is
to persuade us that “the MAX975 reference is [not] teaching that the
MAX975 device receives the signal that is originally received by the
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antenna.” App. Br. 23. See also App. Br. 24, contending that “the signal
that is received by the MAX975 device cannot be the original signal that is
received by the antenna, but rather a processed signal that strips out the
carrier wave” and is, instead, “a modified signal.”
Accordingly, even if Appellant’s contentions regarding the operation
of the MAX975 device are correct, we are not persuaded by the contentions
because we decline to read the word “original” into the claims.
For these reasons, and for the reasons discussed above regarding
claims 1 and 3, we therefore are not persuaded that the Examiner erred in
rejecting the Genus I apparatus claims 1–9, 12–19, and 24.
The Genus II Method Claims
Relying upon its contention that the Genus II method claims “require
the comparing of the threshold voltage signal with a radio frequency signal
originally received by the antenna,” Appellant contends that MAX975 does
not disclose the “accepting” and “comparing” limitations in these claims.
App. Br. 24–25; Reply Br. 11. We are not persuaded the Examiner erred in
rejecting the Genus II method claims 20–23 and 25–27 regarding these
limitations for the reasons we have discussed above regarding the Genus I
Apparatus Claims and for the reasons we have discussed above regarding
claim 23.

The Limitation Recited In Both the Genus I and Genus II Claims
Both the Genus I and the Genus II claims recite “a radio frequency
tag” in the preamble of each of the independent claims, which Appellant
contends should be considered as limiting the independent claims (App. Br.
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25; Reply Br. 11) for a number of reasons (App. Br. 25–33; Reply Br. 11–
12). More specifically, Appellant refers to “the preamble recitation of ‘a
radio frequency tag’ that appears in the apparatus claims” (App. Br. 25) and
“the method claims preamble recit[ing] ‘a method for modulating a signal at
a radio frequency tag.’” App. Br. 27.
“[A] claim preamble has the import that the claim as a whole suggests
for it.” Bell Communications Research, Inc. v. Vitalink Communications
Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). “If the claim preamble, when read
in the context of the entire claim, recites limitations of the claim, or, if the
claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim,
then the claim preamble should be construed as if in the balance of the
claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999) (citations omitted).
If, however, the body of the claim fully and intrinsically sets
forth the complete invention, including all of its limitations, and
the preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example,
the purpose or intended use of the invention, then the preamble
is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.

Id. See also Pacing Tech., LLC v. Garmin Int’l, Inc., 2015 WL 668828 at *2
(Fed. Cir. Feb. 18, 2015).
Based upon Pitney Bowes, the Examiner concludes
[t]he limitations that are generic to Genus 1 and Genus 2
entirely teach to an apparatus and method for receiving and
demodulating signals. The preambles merely state that these
are to be used in radio frequency tags, without further reciting
any other structure or steps that would require or suggest either
radio frequency or that the invention be contained within a tag.
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Ans. 45. The Examiner also concludes that
[i]f the body of a claim fully and intrinsically sets forth all of
the limitations of the claimed invention, and the preamble
merely states, for example, the purpose or intended use of the
invention, rather than any distinct definition of any of the
claimed invention’s limitations, then the preamble is not
considered a limitation and is of no significance to claim
construction.

Id., citing Pitney Bowes.
Appellant does not identify, and we have not found, any limitation in
the body of any of the independent claims that derive antecedent basis from
the recitation of “a radio frequency tag” in the preambles of the independent
apparatus claims or the independent method claims. Instead, for a number
of reasons, Appellant contends that “a radio frequency tag” in the respective
preambles, standing alone, does not state only an intended use and must be
given patentable weight.
Citing to a prior art patent (US 5,550,547) and to parts of Appellant’s
Specification, Appellant contends “there are structural connotations to the
recitation of a radio frequency tag,” “the purpose of the ‘953 patent is to
provide a demodulator for a radio frequency tag,” and “the inventor intended
the demodulator to be specific to radio frequency tags.” App. Br. 26. See
also App. Br. 27 (the method claims “express[] this intent in the claim.”).
Based upon Pitney Bowes and Pacing Technologies, Appellant’s arguments
do not persuade us that the preamble recites more than an intended use.
The Examiner finds that MAX975 Figure 6 discloses a Toll-Tag
Circuit (Ans. 3, 7). Specifically, the Examiner finds “MAX975 explicitly
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teaches RFID tags as an application in page 1. MAX975 further shows radio
frequency toll-tag circuit in page 14.” Ans. 46. Appellant counters that
MAX975 is internally inconsistent in that Figure 6 is labeled as a Toll-Tag
Reader (App. Br. 29), which is different than a toll-tag. App. Br. 28. The
Examiner further finds that
[t]he meanings of “Figure 6 Toll-Tag Reader” should be read in
association with the passage under “Toll-Tag Circuit” in page
14. In fact, the figure 6 of MAX975 appears to show the
[interrogator signal] reader portion of a toll-tag circuit. It is
therefore reasonably interpreted to be a toll-tag reader and
would therefore still anticipate the claims.

Ans. 46.
In response, Appellant agrees that “[t]he Examiner is correct to point
out that the text uses the term toll-tag circuit and the description of the
operation of the circuit could lead someone to believe that the text may be
generally referring to an RFID tag.” App. Br. 29. Despite this admission,
Appellant seeks to persuade us that the text does not support the Examiner’s
interpretation.
First, Appellant points out that the MAX975 reference “has been
around for close to twenty years and through at least two revisions and the
figure label has not changed. This is the best evidence that MAXIM
intended this figure to show a Toll-Tag Reader and not a radio frequency
tag.” App. Br. 30. To the contrary, the described document history is not
evidence of anything supporting Appellant’s interpretation of the reference.
Second, Appellant contends “there are additional reasons why one of
ordinary skill in the art would understand” Figure 6 is a Toll-Tag Reader.
App. Br. 30. For example, Appellant contends “the propagation delay of the
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MAX975 device cannot handle a signal in the X-band frequency” (Id.); “an
X-band detector draws approximately 1000 times more power than an RFID
tag” (App. Br. 31); “[a]n RFID tag that includes an X-band detector is
impractical” (Id.); the life of an RFID tag using an X-band detector would be
too short because of power consumption problems. Id. For these reasons,
Appellant contends, “a radio frequency tag is not a reader” and “the Toll-
Tag Reader circuit of the MAX975 reference is wholly inappropriate to be
applied to a radio frequency tag.” Id.
In response, the Examiner refutes Appellant’s power consumption
assertions by finding that
upon completion of a transmission, [the MAX975] returns to a
state in which it only draws 3 microamps, and further describes
the transmissions that trigger the 300 microamp high-speed
state as “brief and infrequent.” It therefore shows that the
MAX975 circuit, as disclosed, spends most of its time in the
low-power state, which would not be nearly so demanding on
the batter of such a circuit.

Ans. 46. Appellant does not refute these findings. Reply Br. 11. We agree
with the Examiner because his findings are reasonable with rational
underpinnings.
Third, Appellant contends MAX975 does not teach an operable toll
tag. App. Br. 32. But, Appellant’s explanations do not support the
contention. Instead, Appellant asserts reasons, without evidentiary support,
only why someone would not use Figure 6 as a toll tag: (1) operation of the
Figure 6 device would lead to a short battery life; (2) the high speed op-amp
could not adequately compare a 2.4 GHz signal and provide a reasonable
output; (3) propagation delay would result in a distorted signal; (4) it is not
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designed to process high frequency signals without the signal conditioning
provided by the X-band detector. App. Br. 32–33. We are not persuaded by
Appellant’s analyses because they are not supported by evidence and
because the analyses assert only poor operability rather than no operability.
Accordingly, based upon Appellant’s contentions we have addressed
above, we are not persuaded that the Examiner erred in rejecting the Genus I
and Genus II claims.
CLAIMS 5 AND 21
Claim 5 recites, in part, “a power consumption of the threshold
voltage regulator is less than 1 microamp of current from the local power
supply.” Claim 21 recites, in part, “generating a threshold voltage signal
less than 10 millivolts.”
The Examiner makes a number of findings in support of the
obviousness rejection of claims 5 and 21. The first set of findings are on
pages 30 to 34 of the Answer, which Appellant contends not only are based
improperly on a different Maxim embodiment (Maxim’s Figure 5), but also
are based on hindsight. App. Br. 34–37. Appellant further contends that
Maxim “provides no reason or guidance as to why one would want to alter
the resistors that are shown in the Toll-Tag Reader implementation.” App.
Br. 36.
In response, the Examiner made a second set of findings on page 47 of
the Answer. There, based upon text regarding Figure 6, the Examiner finds
MAX975 “states that the comparator can be used to detect a RF transmission
when it is in its low power mode (see p. 14), where the example given uses
only 3 microamps.” We agree with the Examiner’s findings in that
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MAX975’s discussion of Figure 6 states: “After communications have
ceased, or when instructed by the microcontroller, the comparator returns to
its low-power state. The comparator draws only 3µA in this state, while
monitoring for RF activity.” Maxim p. 14. The Examiner concludes
[i]t would be choosing from a finite number of identified,
predictable solutions, with a reasonable expectation of success
to attempt to modify the power consumption around that level,
according to the needs of the application. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398,426 [82 USPQ 1485]. The power
parameters recited in the claims are therefore obvious.

Ans. 47.
Instead of responding to the Examiner’s findings regarding Figure 6,
Appellant contends “the Examiner has not addressed the detailed arguments
presented by Appellants in the Appeal Brief and has added nothing that was
not previously addressed by the Appellants in the Appeal Brief.” Reply Br.
13.
We disagree. The Appeal Brief’s discussion of claims 5 and 21
opposed the Examiner’s reliance of Maxim Figure 5, not Figure 6. We
conclude the Examiner’s findings and reliance on Figure 6 are reasonable
with a rational underpinning and we therefore are not persuaded of Examiner
error in the rejection of claims 5 and 21.

CLAIMS 10 AND 11
Claim 10 recites, in part: “the comparator has a propagation delay of
less than fifteen percent of a period of a carrier signal on which
communicated signals are received such that at least seven digital outputs
are generated for each period.” Appellant agrees that claims 10 and 11 are
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identical except that claim 11 recites a propagation delay of approximately
ten percent (instead of claim 10’s fifteen percent) and at least ten digital
outputs (instead of claim 10’s seven digital outputs). App. Br. 37.
Regarding claim 10, based upon a calculation the Examiner performs,
the Examiner finds that MAX975 does not teach the toll-tag receives a
carrier wave frequency such that the propagation delay is less than 1/7 of the
carrier wave period. Ans. 36. Regarding claim 11, based upon a calculation
the Examiner performs, the Examiner finds that MAX975 does not teach the
toll-tag receives a carrier wave frequency such that the propagation delay is
less than 1/10 of the carrier wave period. Ans. 39.
However, the Examiner finds that Janning discloses a very low
frequency (VLF) carrier frequency of 8.192kHz. Performing another
calculation, the Examiner finds that the VLF carrier wave propagation delay
satisfies the limitations of each claim. Ans. 36, 39, citing Janning col. 24, l.
66–col. 25, l. 9. The Examiner further finds that MAX975 and Janning are
analogous art because they are from the same field of endeavor in RFID.
Ans. 36, 39.
The Examiner concludes it would have been obvious to modify the
MAX975 toll-tag to receive a 8.192kHz carrier wave such that the
propagation delay of MAX975 is less than 1/7 (1/10 for claim 11) of the
carrier wave period. Ans. 37, 39–40. The Examiner further concludes
“[t]he suggestion and/or motivation for doing so would be obtaining the
advantage of constant transmission range regardless of whether the
transmitting device is transmitting from a shielded enclosure or not (25:9–
33) as suggested by Janning.” Ans. 37, 40.
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Appellant first contends the teaching of Janning is directed to a
specific embodiment where there is a shielded enclosure. App. Br. 38. We
find, instead, the Examiner’s citation to Janning column 9, lines 9 to 33
teaches otherwise. Specifically, Janning teaches the transmission range of
its transmitting device “remains nearly constant regardless of whether the
transmitting device is transmitting from a shielded enclosure or not.” Col.
25, ll. 9–12. See also col. 25, ll. 23–25, teaching the transmitter can be
employed when “the shielded enclosure is temporarily removed.”
Appellant also contends, without evidentiary support, “there are no
embodiments in the Janning disclosure that would operate on a toll system.”
App. Br. 39. The Examiner finds that “Janning explicitly states that this
frequency is usable with a toll tag system and is presumed to be enabling in
the absence of evidence to the contrary.” Ans. 48. Our reviewing court has
held that
both claimed and unclaimed materials disclosed in a patent are
presumptively enabling:
In patent prosecution the examiner is entitled to reject
application claims as anticipated by a prior art patent
without conducting an inquiry into whether or not that
patent is enabled or whether or not it is the claimed
material (as opposed to the unclaimed disclosures) in that
patent that are at issue. . . . The applicant, however, can
then overcome that rejection by proving that the relevant
disclosures of the prior art patent are not enabled.

In re Antor Media Corp., 689 F.3d 1282, 1287–88 (Fed. Cir. 2012), quoting
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir.
2003) and citing In re Sasse, 629 F.2d 675, 681 (CCPA 1980). As Appellant
concedes, the Abstract refers to a highway toll system: “A cashless business
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transaction system (e.g., a vending system, a material tracking system, or a
highway toll system).” Janning, Abstract. Janning’s detailed description
also refers to “a highway toll system.” Col. 5, ll. 60–61.
Our reviewing court has also held that
[t]he presumption in Antor is a procedural one – designed to put
the burden on the applicant in the first instance to challenge
cited prior art; the PTO need not come forward with evidence
of enablement before it may rely on a prior art reference as
grounds for a rejection. Once an applicant makes a non-
frivolous argument that cited prior art is not enabling, however,
the examiner must address that challenge. While an applicant
must generally do more than state an unsupported belief that a
reference is not enabling, and may proffer affidavits or
declarations in support of his position, we see no reason to
require such submissions in all cases. When a reference
appears to not be enabling on its face, a challenge may be
lodged without resort to expert assistance. Here, Morsa
identified specific, concrete reasons why he believed the short
press release at issue was not enabling, and the Board and the
examiner failed to address these arguments.

In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013) (citation omitted).
Appellant contends that Janning’s use of a very low frequency
“implies” a very close proximity between transmitter and receiver and using
such a low frequency signal requiring such close proximity in the MAX975
device would be “inappropriate” and “virtually impossible” because of the
distances and speeds required by toll tag readers. App. Br. 38–39.
According to Appellant, “very few” if any tolls would be paid because of the
distances and lack of magnetic coupling. App. Br. 39.
We conclude that Appellant has not made a non-frivolous argument
that a MAX975/Janning combination is inoperable and has not carried its
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burden to challenge the operability of the combination. Appellant does no
more than assert the combination would be “inappropriate” and “virtually”
impossible. In addition, Appellant concedes that at least “very few” tolls
would be paid. We are therefore not persuaded that the MAX975/Janning
combination would be inoperable.
Appellant also contends that Janning requires an antenna having
dimensions that are much too large for a standard radio frequency tag and
which would be “inappropriate” for a radio frequency tag that is
implemented as a toll-tag. App. Br. 40. The Examiner finds that Appellant
has not submitted any evidence suggesting “that a tag containing a 3.1" long
antenna, disclosed by Janning, would be excessively large for such
applications.” Ans. 47–48. Appellant responds, without evidentiary
support, that the antenna problem is just one reason why one skilled in the
art would not look to Janning to cure the purported deficiencies of MAX975.
Reply Br. 15. Absent evidentiary support, we are not persuaded of
Examiner error in rejecting claims 10 and 11 over MAX975 in view of
Janning.
CLAIMS 6–9
Appellant contends that the rejections of these claims should be
reversed for the reasons Appellant discusses regarding the rejection of claim
1. App. Br. 41; Reply Br. 17–18. We are not persuaded of error regarding
the rejection of these claims for the same reasons we are not persuaded of
error regarding the rejection of claim 1.

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CONCLUSION
Under § 102, the Examiner did not err in rejecting claims 1–4, 12–20,
and 22–27. Under § 103, the Examiner did not err in rejecting claims 3, 5–
11, 21, and 23.
DECISION
The Examiner’s decision rejecting claims 1–27 is affirmed.
Requests for extension of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

ELD