Ex Parte 8665073 et al

Patent Trial and Appeal Board

Feb 8, 2019

90013908 (P.T.A.B. Feb. 8, 2019)

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.
90/013,908 02/23/2017 8665073 1128-10001 6198
126568 7590 02/11/2019
Zebra Technologies Corporation
3 Overlook Point
Lincolnshire, IL 60069
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/11/2019 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 SYMBOL TECHNOLOGIES, LLC
Patent Owner and Appellant
____________

Appeal 2019-001596
Reexamination Control 90/013,908
United States Patent 8,665,073 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s
decision to reject claims 1–32. We have jurisdiction under 35 U.S.C. §§ 134
and 306. We affirm-in-part and enter a new ground of rejection.

1 Appellant identifies the real party in interest as Symbol Technologies,
LLC. App. Br. 2.
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STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on February 17, 2017 of United States Patent 8,665,073 (“the ’073 patent”),
issued to Schuessler et al. on March 4, 2014.
The ’073 patent describes a radio frequency identification (RFID) tag
than can (1) store data, (2) receive a signal from a reader, (3) determine a
response accounting for the tag mode and data, and (4) transmit a response
to the reader. Depending on the tag mode, the response may be complete or
may truncate, compress, or encrypt certain data bits. See generally Abstract.
Claim 1 is illustrative of the invention and reproduced below:
1. A radio frequency identification (RFID) tag system,
comprising:
a storage module storing information comprising data;
wherein the stored data comprises a full serialized
identifier;
wherein the full serialized identifier comprises:
a first plurality of bits comprising a non-serialized portion
of the identifier containing a product Stock Keeping Unit (SKU);
a second plurality of bits comprising a trailing serialized
portion of the identifier that provides a unique item-level ID;
a logic module executing instructions to:
receive a first signal from an RFID reader
comprising a command to enter one of a plurality of modes
of tag operation;
wherein the modes comprise a first mode wherein
the tag transmits the second plurality of bits in a response
to a reader signal, and a second mode wherein the tag
omits some or all of the trailing serialization portion of a
transmission in said response to said reader signal, and
wherein the transmission does not include the second
plurality of bits, wherein the command to enter the second
mode specifies the number of bits in at least one of the first
plurality of bits and the second plurality of bits; and said
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response comprises a calculated CRC that does not include
the second plurality of bits.

THE REJECTIONS2
The Examiner rejected claims 7–9, 12,3 and 17–32 under 35 U.S.C.
§ 112, second paragraph as indefinite. Ans. 4–6.4
The Examiner rejected claims 17–32 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Ans. 7.
The Examiner rejected claims 1–16 under 35 U.S.C. § 103 as
unpatentable over EPCglobal, EPCTM Radio-Frequency Identity Protocols,
Class-1 Generation-2 UHF RFID Protocol for Communications at 860 MHz
– 960 MHz, Ver. 1.0.9 (2004) (“EPC RFID Protocol”) and EPCglobal,
EPCTM Tag Data Standards Version 1.1 Rev.1.24 (2004) (“EPC Tag Data
Standard”). Ans. 8–15.

2 Although the Examiner also objects to various claims (Ans. 3), such
matters are petitionable—not appealable—and are therefore not before us.
See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 706.01 (9th ed.
Rev. 08.2017, Jan. 2018) (“[T]he Board will not hear or decide issues
pertaining to objections and formal matters which are not properly before the
Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a
question that should be decided by the Director on petition . . . .”).
3 Although the Examiner omits these claims in the statement of the rejection,
the Examiner nonetheless includes them in the corresponding discussion.
See Ans. 4–6. Accordingly, we present the correct claim listing here for
clarity, and treat the Examiner’s error as harmless.
4 Throughout this opinion, we refer to (1) the Appeal Brief filed June 26,
2018 (“App. Br.”); (2) the Examiner’s Answer mailed September 20, 2018
(“Ans.”); and (3) the Reply Brief filed November 15, 2018 (“Reply Br.”).
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The Examiner rejected claims 1–12 and 14–16 under 35 U.S.C. § 103
as unpatentable over Wertsebrger (US 2005/0116826 A1; June 2, 2005),
David L. Brock, The Electronic Product Code (EPC): A Naming Scheme for
Physical Objects, Mass. Inst. of Tech. Auto-ID Center (2001) (“EPC White
Paper”), and Turner (WO 2005/069525 A1; published July 28, 2005). Ans.
15–23.
The Examiner rejected claim 13 under 35 U.S.C. § 103 as
unpatentable over Wertsebrger, EPC White Paper, Turner, and EPC RFID
Protocol. Ans. 24.

THE INDEFINITENESS REJECTION
The Examiner finds that claim 17 is indefinite because the recitation
of the tag transmitting an alternate version of the second plurality of bits in a
second mode contradicts the antecedent requirements of parent claim 1
reciting that the transmission does not include the second plurality of bits in
that mode—a contradiction that is said to render claim 17 unclear and
ambiguous. See Ans. 4–5. The Examiner adds that claim 17’s second mode
transmission also contradicts the requirements of that mode in parent claim 1
where the tag omits some or all of a trailing serialization portion,5 and the
second plurality of bits comprises that portion. Ans. 4–5, 27–30. The

5 Although claim 1 refers to the second plurality of bits as comprising a
“trailing serialized portion,” but later refers to the “trailing serialization
portion,” we nonetheless presume that these are the same portions despite
this inconsistency and the lack of antecedent basis for the “trailing
serialization portion” in claim 1. Accordingly, we refer to the “trailing
serialization portion” for clarity and consistency.
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Examiner makes similar findings regarding claim 19. Ans. 5–6, 27–30. The
Examiner adds that the claims are also indefinite due to the lack of
antecedent basis for various recited terms. Ans. 6, 32.
Appellant argues that claims 17, 19, and 20 are consistent with
claim 1 when interpreted in light of the Specification and, therefore, are
definite. App. Br. 10–12, 16–18. According to Appellant, the Specification
is clear that the second mode includes, for example, a “trailing truncate
mode” where a truncated, alternate version of the second plurality of bits is
transmitted—a mode that truncates the trailing serialization portion of the
transmission. App. Br. 11, 16. In this mode, Appellant maintains that the
tag (1) omits some of the serial number’s bits, and (2) replaces the remaining
serial number bits with all-zero bits for transmission. App. Br. 11. Given
this functionality, Appellant emphasizes that ordinarily skilled artisans
would realize that (1) some of the trailing serialization portion bits are
omitted, and (2) another version (i.e., the remaining all-zero replacement bits
after truncation) of the second plurality of bits is transmitted instead of the
second plurality of bits. Id. Appellant makes similar arguments with respect
to claims 19 and 20, noting that the other disclosed modes alter the second
plurality of bits for transmission via encryption or compression, effectively
enabling the tag to transmit alternate versions of those bits in the second
mode as claimed. See App. Br. 16–18.

ISSUE
Has the Examiner erred by finding that claims 7–9, 12, and 17–32 are
indefinite under § 112, second paragraph?
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ANALYSIS
Claim 17 depends from independent claim 1 that recites, in pertinent
part, an RFID tag system that stores data comprising a full serialized
identifier, where the identifier comprises (1) a first plurality of bits
comprising a non-serialized portion, and (2) a second plurality of bits
comprising a trailing serialization portion of the identifier. The claim also
recites two modes, where the first mode transmits the second plurality of bits
responsive to a reader signal, and in the second mode, the tag omits some or
all of the trailing serialization portion of a transmission responsive to the
reader signal. Notably, the second mode’s transmission does not include the
second plurality of bits. Claim 17 adds that, in the second mode, the tag
transmits an alternate version of the second plurality of bits responsive to the
reader signal.
As paragraph 50 of Appellant’s original Specification6 explains, tag
202 may be in one of several modes including (1) “normal”; (2) “trailing
compress”; (3) “trailing truncate”; and (4) “trailing encrypt.” In the normal
mode, the response includes both the first and second plurality of bits. Spec.
¶ 50. In the trailing compress and trailing encrypt modes, however, the
response includes not only the first plurality of bits, but also an altered (e.g.,
compressed or encrypted) second plurality of bits. Id. In the trailing
truncate mode, the response includes the first plurality of bits and none of
the second plurality of bits. Id.

6 Unless otherwise indicated, we refer to Appellant’s original Specification
filed in U.S. Patent Application No. 13/481,141 on May 25, 2012 that issued
as the ’073 patent.
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In one embodiment, however, a specified number of trailing bits can
be truncated by, for example, truncating the serialized data from six to four
words. Spec. ¶ 94; Fig. 7A. Notably, the last word may include a few of the
initial bits of the serial number that is truncated, where these leftover bits are
replaced with all-zero bits. Spec. ¶ 95.
Given this functionality, we agree with Appellant that ordinarily
skilled artisans would understand that, in this embodiment, (1) some of the
trailing serialization portion bits are omitted, and (2) another version (i.e.,
the remaining all-zero replacement bits after truncation) of the second
plurality of bits is transmitted instead of the second plurality of bits. App.
Br. 11, 16. Therefore, despite the Examiner’s findings to the contrary
(Ans. 4–5, 27–30), this implementation not only reasonably comports with
the second mode recited in claim 1, but also with that mode’s transmission
of an alternate version of the second plurality of bits in claim 17, namely the
remaining all-zero replacement bits after truncation. We reach a similar
conclusion regarding the other modes that alter the second plurality of bits
for transmission via encryption or compression in claims 19 and 20,
effectively enabling the tag to transmit alternate versions of those bits in the
second mode as claimed. Accord App. Br. 16–17 (noting this point).
Nor do we find availing the Examiner’s finding that the claims are
indefinite due to an apparent lack of antecedent basis for the term “tag” in
claims 1, 7–9, and 17–32. Ans. 6, 32. Not only does the preamble of
claim 1 recite an RFID tag system, but ordinarily skilled artisans would
understand that “the tag” refers to the RFID tag in this system, namely the
tag that operates consistent with the plural recited modes, particularly when
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the claim is interpreted in light of the Specification. We reach a similar
conclusion regarding the recitation of “the tag” in independent claim 15, for
the claim recites explicitly that a transmitter transmits a first signal to a tag
comprising a command to the tag—a clear and unambiguous antecedent
basis for “the tag.”
Therefore, we are persuaded that the Examiner erred in rejecting
claims 7–9, 12, and 17–32 as indefinite.

THE WRITTEN DESCRIPTION REJECTION
Because the Examiner rejects claims 17–32 as lacking adequate
written description on a basis similar to that articulated with respect to the
indefiniteness rejection (see Ans. 7, 31–32), we are likewise persuaded of
error in the Examiner’s written description rejection for the reasons noted
previously as well as those indicated by Appellant. See App. Br. 20–21.

THE OBVIOUSNESS REJECTION OVER EPC RFID PROTOCOL AND
EPC TAG DATA STANDARD

Regarding claim 1, the Examiner finds that EPC RFID Protocol
discloses, among other things, an RFID tag system with a storage module
storing data. Ans. 9. The Examiner also finds that EPC Tag Data Standard
teaches storing data comprising a full serialized identifier comprising (1) a
“first plurality of bits” (i.e., the Global Trade Identification Number (GTIN)
portion of a Serialized GTIN (SGTIN)) comprising a non-serialized portion
of the identifier containing a product SKU, and (2) a “second plurality of
bits” (i.e., the serialized portion of the SGTIN) comprising a trailing
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serialization portion of the identifier that provides a unique item-level ID.
Ans. 9–10.
The Examiner also finds that EPC RFID Protocol discloses a logic
module that can receive a first signal from an RFID reader comprising a
command to enter one of plural modes of tag operation, including the recited
first and second modes, in connection with the “Read” command. Ans. 10–
11. According to the Examiner, EPC RFID Protocol teaches (1) the recited
“first mode” when the tag backscatters all of a tag’s electronic product code
(EPC), and (2) the recited “second mode” when part of the tag’s EPC is
backscattered. Ans. 10, 34.
Regarding the second mode, the Examiner finds that EPC RFID
Protocol’s ability to read part of the EPC code is via functionality associated
with the “Read” command’s fields, including (1) “WordPtr” that specifies
the particular starting point of an EPC’s sub-portion of the EPC to be read,
and (2) “WordCount” that specifies the number of 16-bit words to be read.
Ans. 10. This functionality is said to teach a fully-configurable omission of
bits between one and 32 words. Ans. 11.
Although the Examiner acknowledges that EPC RFID Protocol does
not disclose specifically omitting the recited second plurality of bits, namely
the trailing serialization portion, the Examiner nonetheless reasons that
ordinarily skilled artisans would have predictably configured the EPC sub-
portion between one and 32 words, thus omitting some or all of the trailing
serialization portion as claimed. Ans. 11, 34. According to the Examiner,
this configuration would involve merely selecting a particular value within a
limited disclosed range according to design intentions. Id.
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Appellant argues that the cited prior art does not teach or suggest a
mode of tag operation in which a trailing serialization portion is omitted
from a tag response based on a command specifying a number of omitted
and/or non-omitted bits. App. Br. 27–30. According to Appellant, EPC
RFID Protocol’s “Read” command merely commands an RFID tag to
transmit a particular portion of stored data, where the “Read” command
expressly identifies by its location within EPC memory. App. Br. 29.
Appellant, however, emphasizes that there is no discussion or suggestion in
connection with this command to cause the tag to enter one of plural modes
of tag operation, let alone a mode where a trailing serialization portion is
omitted from a tag response based on a command specifying a number of
omitted and/or non-omitted bits. Id. Appellant adds that EPC Tag Data
Standard is likewise deficient in this regard. Id. Appellant argues other
recited limitations summarized below.

ISSUES
Under § 103, has the Examiner erred by finding that EPC RFID
Protocol and EPC Tag Data Standard collectively would have taught or
suggested:
(1) a logic module that can receive a first signal from an RFID reader
comprising a command to enter one of plural modes of operation, where the
modes comprise the first and second modes recited in claim 1?
(2) the logic module is configured to determine one of an altered and
an unaltered versions of the second plurality of bits based on the mode of tag
operation as recited in claim 4?
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(3) the storage module comprises a plurality of versions of the second
plurality of bits stored therein as recited in claim 6?
(4) the storage module stores unaltered and altered versions of the
data based on the mode of tag operation as recited in claim 8?
(5) the tag’s response includes a header to indicate whether the
response is compressed, truncated, or otherwise altered as recited in claim 9?
(6) the first signal utilizes an Optional command in a Gen 2 protocol
for communicating the mode of operation as recited in claim 10?

ANALYSIS
Claims 1–3, 7, 11, 13, 15, and 16
On this record, we see no error in the Examiner’s reliance on the
functionality associated with EPC RFID Protocol’s “Read” command for at
least suggesting claim 1’s command to enter one of plural modes of
operation, where the modes comprise the recited first and second modes.
Notably, Appellant’s original Specification does not define the term
“mode,” unlike other terms whose concrete definitions leave no doubt as to
their meaning. See, e.g., Spec. ¶¶ 33, 47 (defining various terms).
Therefore, we construe the term “mode” with its plain meaning, namely “[a]
manner, way, or method of doing or acting.” THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE 1129 (4th ed. 2006).
Given this interpretation, we see no error in the Examiner’s finding
that EPC RFID Protocol at least suggests (1) the recited “first mode” when
the tag backscatters all of a tag’s EPC, and (2) the recited “second mode”
when part of the tag’s EPC is backscattered. Ans. 10, 34. Although EPC
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RFID Protocol does not articulate these modes explicitly, the reference
nonetheless at least suggests as much, particularly given the “Read”
command’s enabling an interrogator to read part or all of a tag’s EPC
memory. EPC RFID Protocol § 6.3.2.10.3.2. Notably, both of these
functions are manners, ways, or methods of doing something, namely
reading tag data, consistent with the definition of “mode” noted above.
As the Examiner explains, an interrogator’s ability to read part of the
EPC code in EPC RFID Protocol is via functionality associated with the
“Read” command’s fields, including (1) “WordPtr” that specifies the
particular starting point of an EPC’s sub-portion of the EPC to be read, and
(2) “WordCount” that specifies the number of 16-bit words to be read. Ans.
10 (citing EPC RFID Protocol § 6.3.2.10.3.2). Given this functionality,
particular values of a received “Read” command’s “WordPtr” and
“WordCount” fields would effectively provide a command to read either
part or all of a tag’s EPC memory and, therefore, enter the mode associated
with that particular command. See EPC RFID Protocol § 6.3.2.10.3.2.
Notably, by specifying the values of the “WordPtr” and “WordCount” fields,
bits can be omitted consistent with these values to effectively configure the
EPC sub-portion to be read to be between one and 32 words as the Examiner
indicates. See Ans. 11, 34.
Although EPC RFID Protocol does not state explicitly that some or all
of an identifier’s trailing serialization portion is omitted, we nonetheless see
no error in the Examiner’s findings and conclusions in this regard, at least to
the extent that such an omission would have been at least an obvious
variation given the cited references’ collective teachings. That is, we see no
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error in the Examiner’s reliance on EPC Tag Data Standard for teaching that
a trailing serialization portion, namely the unique serial number that
augments a GTIN in a SGTIN, is known in the art, and that providing these
bits in connection with the EPC data in connection with the “Read”
command in EPC RFID Protocol would have been obvious. See Ans. 9–10.
Such an enhancement uses prior art elements predictably according to their
established functions—an obvious improvement. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
That the values of the “WordPtr” and “WordCount” fields can be
specified to configure the EPC sub-portion to be read to be between one and
32 words as the Examiner indicates (Ans. 11, 34) at least suggests that such
a selection would selectively omit certain bits—including some or all bits in
a trailing serialization portion of a SGTIN under the Examiner’s proposed
combination. Given the limited number of selectable values for the starting
word address in “WordPtr” and the number of words to be read in
“WordCount,” respectively, the particular selection of these fields’ values
that results in omitting some or all of the trailing serialization portion of a
SGTIN under the Examiner’s proposed combination would have been at
least an obvious variation. See Ans. 11 (concluding that omitting some or all
of the trailing serialization portion would have been merely selecting a
particular value within a limited disclosed range according to design
intentions). It is well settled that where, as here, (1) there is a design need to
solve a problem (i.e., omit certain bits from a tag transmission), and (2) there
are a finite number of identified, predictable solutions to achieve this end,
namely those within the range of values in the “WordPtr” and “WordCount”
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fields of the “Read” command in EPC RFID Protocol, a person of ordinary
skill has good reason to pursue the known options within his or her technical
grasp. See KSR, 550 U.S. at 421.
Appellant’s arguments regarding the individual shortcomings of EPC
RFID Protocol and EPC Tag Data Standard (App. Br. 28–29) are not only
not commensurate with the scope of the claim, but they also do not show
nonobviousness where, as here, the rejection is based on the cited
references’ collective teachings. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Nor do we find Appellant’s reliance on the O’Hagan
declaration persuasive. See App. Br. 28–29 (citing Declaration of James
O’Hagan, dated Sept. 18, 2017 (“O’Hagan Decl.”) ¶¶ 18–19, 22). Notably,
Mr. O’Hagan is Director of Patents and Technology of Zebra Technologies
Corporation, of which the Patent Owner—Symbol Technologies, LLC—is a
subsidiary. O’Hagan Decl. ¶¶ 2–4. But leaving aside the fact that Mr.
O’Hagan is an interested party—a fact that diminishes the declaration’s
probative value7—we fail to see how Mr. O’Hagan’s averments persuasively
rebut the Examiner’s findings and conclusions based on the functionality
associated with EPC RFID Protocol’s “Read” command, particularly when
considered in light of EPC Tag Data Standard as noted above. Although we
appreciate Mr. O’Hagan’s insights in this regard, the weight of the evidence
on this record nevertheless favors the Examiner.

7 See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776, F.2d 281
(Fed. Cir. 1985) (noting that an expert’s interest in the outcome of the case is
a factor in assessing the probative value of an expert opinion).
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2, 3, 7, 11, 13, 15, and 16 not argued separately with
particularity.

Claims 4, 5, 12, and 14
We also sustain the Examiner’s rejection of claim 4 reciting that the
logic module is configured to determine one of an altered and an unaltered
version of the second plurality of bits based on the mode of tag operation.
Despite Appellant’s arguments to the contrary (App. Br. 32–33), we see no
error in the Examiner’s reliance on the functionality of the EPC RFID
Protocol/EPC Tag Data Standard combination noted above, where the
“Read” command effectively determines either (1) an unaltered version of
the recited bits in a first mode, or (2) an altered version that omits some or
all of the trailing serialization portion in a second mode as the Examiner
indicates. Ans. 12, 35–36.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 4, and claims 5, 12, and 14 not argued separately with particularity.

Claim 6
We also sustain the Examiner’s rejection of claim 6 reciting that the
storage module comprises a plurality of versions of the second plurality of
bits stored therein. Despite Appellant’s arguments to the contrary (App.
Br. 36–39; Reply Br. 3–5), we see no error in the Examiner’s finding that
backscattering a serial number with omitted bits in the EPC RFID
Protocol/EPC Tag Data Standard combination such that the EPC sub-portion
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to be read is between one and 32 words, effectively stores the unaltered and
altered trailing serial numbers as the Examiner indicates. Ans. 12.
Notably, to backscatter a truncated version of the trailing serialization
portion via the “Read” command under the Examiner’s proposed
combination, the entire, unaltered trailing serialization portion would need to
be stored, which would necessarily include truncated versions of that
unaltered version, namely subsets of the entire trailing serialization portion.
That is, the entire stored trailing serialization portion would necessarily
include any of its subsets that are to be read consistent with the values of the
“WordPtr” and “WordCount” fields. See EPC RFID Protocol
§ 6.3.2.10.3.2.
So even if only one EPC can be stored in a tag’s EPC memory at any
point in time in EPC RFID Protocol as Mr. O’Hagan avers in paragraph 19
of his declaration, there would still be plural versions of the second plurality
of bits stored therein, namely (1) the entire version of the trailing
serialization portion, and (2) subsets of that entire version. To the extent that
Appellant contends that the plural versions of the second plurality of bits in
claim 6 must be independent and distinct data structures that are stored
separately from the second plurality of bits, such as compressed bits 316 and
altered bits 318 in Appellant’s Figures 3B and 3C (see App. Br. 37), such
arguments are not commensurate with the scope of the claim. Although
these embodiments inform our understanding of the recited stored versions,
we decline to import those particular embodiments into the claim. See
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)
(citations omitted) (“[A]lthough the specification often describes very
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specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments. . . . [C]laims may embrace
different subject matter than is illustrated in the specific embodiments in the
specification.”) (citations and internal quotation marks omitted). That
Appellant’s Specification is replete with open-ended language emphasizing
that the disclosed embodiments do not limit the invention is telling in this
regard. See, e.g., Spec. ¶¶ 33–34, 130. As such, Appellant’s arguments are
not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 6.

Claim 8
We also sustain the Examiner’s rejection of claim 8 reciting that the
storage module stores unaltered and altered versions of the data based on the
mode of tag operation for the reasons noted previously. Despite Appellant’s
arguments to the contrary (App. Br. 40–43; Reply Br. 3–5), nothing in the
claim precludes storing (1) an entire, unaltered trailing serialization portion,
and (2) subsets of that entire version that correspond to altered or truncated
versions of the entire version under the Examiner’s proposed combination.
To the extent that Appellant contends that the plural versions of the second
plurality of bits in claim 8 must be independent and distinct data structures
that are stored separately from the second plurality of bits, such as
compressed bits 316 and altered bits 318 in Appellant’s Figures 3B and 3C
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(see App. Br. 41–42), such arguments are not commensurate with the scope
of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 8.

Claim 9
We also sustain the Examiner’s rejection of claim 9 reciting, in
pertinent part, that the tag’s response includes a header to indicate whether
the response is compressed, truncated, or otherwise altered. See Ans. 14,
38–40. Appellant acknowledges that tags in EPC RFID Protocol store and
transmit headers that identify the length and encoding schemes of tag data.
App. Br. 46 (citing EPC RFID Protocol § 6.3.2.1.4). Appellant also
acknowledges that the EPC Tag Data Standard describes tag headers that
define the overall length, identity type, and structure of EPC Tag Encoding.
App. Br. 46 (citing EPC Tag Data Standard § 3.1).
Our emphasis on the term “length” in connection with these header
indications underscores that by indicating a tag data’s length in the header,
that length may be easily discerned by merely examining data in the header.
Accord EPC Tag Data Standard § 3.1 (noting this point).
In short, this length indication in the header effectively indicates
whether a response in connection with a “Read” command in the EPC RFID
Protocol/EPC Tag Data Standard system is truncated or at least otherwise
altered in that regard, particularly given the “Read” command’s enabling an
interrogator to read part or all of a tag’s EPC memory as noted previously.
See EPC RFID Protocol § 6.3.2.10.3.2. Appellant’s arguments to the
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contrary (App. Br. 45–46) are unavailing and not commensurate with the
scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 9.

Claim 10
We do not sustain the Examiner’s rejection of claim 10 reciting that
the first signal utilizes an Optional command in a Gen 2 protocol for
communicating the mode of operation. According to paragraph 74 of
Appellant’s original Specification, reader 204 may command tag 202 to
enter various modes through either an explicit command extension or an
implicit command. In the Gen 2 specification, newly-defined explicit
commands may be from one of four categories: (1) Mandatory, (2) Optional,
(3) Proprietary, or (4) Custom. Spec. ¶ 74. To overcome certain drawbacks
associated with the Mandatory, Proprietary, and Custom commands,
Appellant’s invention extends the Gen 2 Specification with explicit Optional
commands. See Spec. ¶¶ 74–79.
The EPC RFID Protocol reference—a reference describing the Gen 2
protocol8—is consistent with this nomenclature by distinguishing mandatory
commands—including the “Read” command—from optional commands.
Compare EPC RFID Protocol §§ 6.3.2.10.1.1 – 6.3.2.10.3.5 (mandatory
commands) with §§ 6.3.2.10.3.6 – 6.3.2.10.3.8 (optional commands).

8 See O’Hagan Decl. ¶ 19. Accord App. Br. 49 (noting that the EPC RFID
Protocol describes the EPC Gen 2 protocol for Gen 2 tags); Ans. 14 (finding
that the EPC RFID Protocol is Gen 2).
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Notably, the EPC RFID Protocol lists only three commands, namely
“Access,” “BlockWrite,” and “BlockErase” as optional. See EPC RFID
Protocol §§ 6.3.2.10.3.6–6.3.2.10.3.8.
Based on this understanding, we find the Examiner’s rejection
problematic on this record. According to the Examiner, because the recited
command is optional—not optional to the protocol—the command need not
be used during a tag query, but could be used optionally to implement
additional features. See Ans. 14, 41. That is, the Examiner reasons that
because the user is not required to enter a “Read” command that causes a tag
to respond with an omitted portion of a trailing serial number, such a
command is optional. See Ans. 41.
Claim 10, however, does not merely recite an optional command
generally, but rather an optional command in a Gen 2 protocol—a protocol
reflected in the EPC RFID Protocol document. Notably, this document
specifies three particular commands as optional, and distinguishes these
commands from others that are mandatory—including the relied-upon
“Read” command. Accord App. Br. 49 (noting that the “Read” command is
a mandatory—not optional—command in the Gen 2 protocol). Accordingly,
we fail to see how the EPC RFID Protocol teaches or suggests using an
optional command in a Gen 2 protocol for communicating the mode of
operation as claimed. Nor does EPC Tag Data Standard cure this deficiency.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 10.

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THE OBVIOUSNESS REJECTION OVER WERTSEBRGER, EPC
WHITE PAPER, AND TURNER

Regarding claim 1, the Examiner finds that Wertsebrger discloses,
among other things, a logic module that can receive a first signal from an
RFID reader comprising a command to enter one of plural modes of tag
operation, including the recited first and second modes, in connection with
either blocking or unblocking access to certain data segments in the tag. See
Ans. 15–17. According to the Examiner, Wertsebrger teaches (1) the recited
“first mode” via various unblocking techniques, and (2) the recited “second
mode” when the tag omits certain data segments by blocking access to those
segments. See Ans. 16.
Although the Examiner acknowledges that Wertsebrger does not
disclose specifically omitting the recited second plurality of bits, namely the
trailing serialization portion, the Examiner nonetheless cites EPC White
Paper for teaching such bits are known in EPC encoding schemes, namely
the last 36 bits that designate an item serial number as shown in Figure 9 of
the EPC White Paper. See Ans. 17–18, 35.9 Given this teaching, along with
Turner’s teaching of calculating a CRC for a response that excludes certain
bits, the Examiner concludes that the claim would have been obvious over
the cited references’ collective teachings.

9 Although the Examiner cites Wertsebrger in connection with the reliance
on Figure 9 on page 35 of the Answer, Wertsebrger lacks such a figure.
Nevertheless, we presume that this citation is intended to be Figure 9 of the
EPC White Paper consistent with the Examiner’s finding in the rejection.
See Ans. 18.
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Appellant argues that the cited prior art does not teach or suggest a
mode of tag operation in which a trailing serialization portion is omitted
from a tag response based on a command specifying a number of omitted
and/or non-omitted bits. App. Br. 30–32. According to Appellant,
Wertsebrger sets a flag to deactivate a pre-segmented range of memory
addresses corresponding to particular data segments predefined in the tag,
but does not specify a number of bits to omit and/or transmit. App. Br. 30–
31. The other cited references are likewise said to be deficient in this regard.
App. Br. 31. Appellant argues other recited limitations summarized below.

ISSUES
Under § 103, has the Examiner erred by finding that Wertsebrger,
EPC White Paper, and Turner collectively would have taught or suggested:
(1) a logic module that can receive a first signal from an RFID reader
comprising a command to enter one of plural modes of operation, where the
modes comprise the first and second modes recited in claim 1?
(2) the logic module is configured to determine one of an altered and
an unaltered versions of the second plurality of bits based on the mode of tag
operation as recited in claim 4?
(3) the storage module comprises a plurality of versions of the second
plurality of bits stored therein as recited in claim 6?
(4) the storage module stores unaltered and altered versions of the
data based on the mode of tag operation as recited in claim 8?
(5) the tag’s response includes a header to indicate whether the
response is compressed, truncated, or otherwise altered as recited in claim 9?
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(6) the first signal utilizes an Optional command in a Gen 2 protocol
for communicating the mode of operation as recited in claim 10?

ANALYSIS
Claims 1–3, 7, 11, 15, and 16
On this record, we see no error in the Examiner’s reliance on the
functionality associated with Wertsebrger for at least suggesting claim 1’s
command to enter one of plural modes of operation, where the command
specifies the number in the first or second plurality of bits as claimed,
particularly in light of the EPC White Paper.
First, as noted previously, Appellant’s original Specification does not
define the term “mode,” unlike other terms whose concrete definitions leave
no doubt as to their meaning. See, e.g., Spec. ¶¶ 33, 47 (defining various
terms). Therefore, we construe the term “mode” with its plain meaning,
namely “[a] manner, way, or method of doing or acting.” THE AMERICAN
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1129 (4th ed. 2006).
Second, a key aspect of Wertsebrger is that access to certain data
segments (e.g., D1–D5) in an RFID tag’s memory can be blocked responsive
to receiving a deactivation signal by, among other things, (1) setting a
software flag preventing transmission of data from the blocked segments, or
(2) altering the data by removing certain information in the tag. See
Wertsebrger ¶¶ 31–32, 45–46; Figs. 1, 3. This blocking, however, can be
overridden to reactivate access to specific data segments. See Wertsebrger
¶¶ 34, 50.
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Given this functionality, we see no error in the Examiner’s finding
that Wertsebrger’s blocking and unblocking access to certain data segments
at least suggests a command to enter one of plural modes of operation,
namely either (1) a first mode where the tag transmits data from all segments
when a flag is not set or access to those segments is reactivated, and (2) a
second mode where data from certain segments is not transmitted. See Ans.
16. Notably, both of these functions are manners, ways, or methods of doing
something, namely transmitting tag data, consistent with the definition of
“mode” noted above.
To be sure, Wertsebrger does not state explicitly that the command
specifies the number of bits to omit or transmit as Appellant indicates. App.
Br. 30–31. But the fact that Wertsebrger teaches blocking access to certain
segments of the data in a tag at least suggests specifying the number of bits
associated with those data segments. See Wertsebrger Abstract; ¶¶ 31–32
(noting that data in the tag is segmented into plural segments). We reach
this conclusion even assuming, without deciding, that these segments are
also associated with particular segments of memory that each include a
range of addresses as Appellant and Mr. O’Hagan indicate. See O’Hagan
Decl. ¶ 28; App. Br. 31. The fact remains that Wertsebrger is replete with
references to segmenting tag data for selective transmission of those data
segments and, therefore, the data bits associated with those segments.
A “bit” (binary digit) is the smallest unit of information handled by a
computer. See MICROSOFT COMPUTER DICTIONARY 61 (5th ed. 2002). This
dictionary adds that bits can be grouped together to form an 8-bit byte that
can be used to represent many types of information, such as a letter of the
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alphabet, a decimal digit, or other character. Id.; see also id. at 79 (defining
“byte”). And bytes can be grouped together to form blocks. See id. at 64
(defining “block,” in pertinent part, as “[a] collection of consecutive bytes of
data that are read from or written to a device (such as a disk) as a group”).
Given these conventional bit groupings, Wertsebrger at least suggests
that by segmenting the data, the number of bits in those segments can be
specified given a particular data segment size which, for byte-based
segments, is eight bits per byte. See id. And even assuming, without
deciding, that these segments are also associated with particular segments of
memory as Appellant and Mr. O’Hagan indicate (see O’Hagan Decl. ¶ 28;
App. Br. 31), the number of bits associated with those memory segments is
also effectively specified given each segment’s storage capacity. Although
Wertsebrger does not specify the number of bits explicitly in the respective
data segments, that number is nevertheless specified at least implicitly.
Moreover, because EPC encoding schemes use the last 36 bits to
designate an item serial number as shown in Figure 9 of the EPC White
Paper as the Examiner indicates (see Ans. 17–18, 35), Wertsebrger and EPC
White Paper collectively at least suggest specifying the number of bits in at
least a second plurality of bits comprising this trailing serialization portion.
Appellant’s arguments are not only not commensurate with the scope of the
claim, but they also do not show nonobviousness where, as here, the
rejection is based on the cited references’ collective teachings. See In re
Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2, 3, 7, 11, 15, and 16 not argued separately with
particularity.

Claims 4, 5, 12, and 14
We also sustain the Examiner’s rejection of claim 4 reciting that the
logic module is configured to determine one of an altered and an unaltered
version of the second plurality of bits based on the mode of tag operation.
Despite Appellant’s arguments to the contrary (App. Br. 34–36), we see no
error in the Examiner’s reliance on the functionality of the Wertsebrger/EPC
White Paper combination noted above that effectively determines either (1)
an unaltered version of the recited bits in a first mode, or (2) an altered
version that omits some or all of the trailing serialization portion in a second
mode as the Examiner indicates. Ans. 12, 35–36. That Wertsebrger’s
paragraph 46 states explicitly that deactivation can alter the data is telling in
this regard.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 4, and claims 5, 12, and 14 not argued separately with particularity.

Claim 6
We also sustain the Examiner’s rejection of claim 6 reciting that the
storage module comprises a plurality of versions of the second plurality of
bits stored therein. See Ans. 22, 36–38. Despite Appellant’s arguments to
the contrary (App. Br. 36–37, 39–40; Reply Br. 3–5), we see no error in the
Examiner’s rejection at least to the extent that Wertsebrger at least suggests
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storing plural versions of the second plurality of bits, namely the bits
associated with the respective data segments D1–D5 in Figure 1. See
Wertsebrger ¶ 31.
Notably, to transmit a truncated version of the trailing serialization
portion via Wertsebrger’s deactivation functionality under the Examiner’s
proposed combination, the entire, unaltered trailing serialization portion
would need to be stored, which would necessarily include truncated versions
of that unaltered version, namely subsets of the entire trailing serialization
portion.
So even if Wertsebrger segments only one set of data in memory as
Mr. O’Hagan avers in paragraph 29 of his declaration, there would still be
plural versions of the second plurality of bits stored therein under the
Examiner’s proposed combination, namely (1) the entire version of the
second plurality of bits that include the trailing serialization portion, and (2)
subsets of that entire version. To the extent that Appellant contends that the
plural versions of the second plurality of bits in claim 6 must be independent
and distinct data structures that are stored separately from the second
plurality of bits, such as compressed bits 316 and altered bits 318 in
Appellant’s Figures 3B and 3C (see App. Br. 37), such arguments are not
commensurate with the scope of the claim. Although these embodiments
inform our understanding of the recited stored versions, we decline to import
those particular embodiments into the claim. See Phillips, 415 F.3d at 1323
(“[A]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to
those embodiments. . . . [C]laims may embrace different subject matter than
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is illustrated in the specific embodiments in the specification.”) (citations
and internal quotation marks omitted). That Appellant’s Specification is
replete with open-ended language emphasizing that the disclosed
embodiments do not limit the invention is telling in this regard. See, e.g.,
Spec. ¶¶ 33–34, 130. As such, Appellant’s arguments are not commensurate
with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 6.

Claim 8
We also sustain the Examiner’s rejection of claim 8 reciting that the
storage module stores unaltered and altered versions of the data based on the
mode of tag operation for the reasons noted previously. Despite Appellant’s
arguments to the contrary (App. Br. 40–41, 43–44; Reply Br. 3–5), nothing
in the claim precludes storing (1) an entire, unaltered trailing serialization
portion, and (2) subsets of that entire version that correspond to altered or
truncated versions of the entire version. To the extent that Appellant
contends that the plural versions of the second plurality of bits in claim 8
must be independent and distinct data structures that are stored separately
from the second plurality of bits, such as compressed bits 316 and altered
bits 318 in Appellant’s Figures 3B and 3C (see App. Br. 41), such arguments
are not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 8.

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Claim 9
We also sustain the Examiner’s rejection of claim 9 reciting that the
tag comprises a Gen 2 RFID tag, and the tag’s response includes a header to
indicate whether the response is compressed, truncated, or otherwise altered,
but for reasons different than those articulated by the Examiner. See Ans.
23, 38–40. Although the Examiner’s taking of Official Notice in connection
with the recited limitations is problematic on this record for the reasons
indicated by Appellant (App. Br. 47–48; Reply Br. 5), we nonetheless find
that the cited prior art at least suggests the disputed limitation, namely the
recited header.
As shown in Figure 9 of the EPC White Paper, an EPC comprises an
8-bit header that defines the number, type, and length of all subsequent data
partitions, including the partition containing the serial number. See EPC
White Paper § 5.4. Notably, the header can define (1) the overall size of the
code, (2) the number, size, and meaning of the partitions, and (3) any other
structural information of the schema. Id. § 5.1.
Our emphasis on the term “length” and “size” in connection with
these header indications underscores that by indicating a tag data’s length
and size in the header, that length and size may be discerned by merely
examining data in the header in a manner similar to that we described
previously in connection with the rejection of claim 7 based on EPC RFID
Protocol.
In short, this length and size indication in the header effectively
indicates whether a response in connection with the Wertsebrger/EPC White
Paper/Turner system under the Examiner’s proposed combination is
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truncated or at least otherwise altered in that regard, particularly given
Wertsebrger’s ability to transmit some or all of the segmented data as noted
previously. See Wertsebrger ¶¶ 32, 45–46. To the extent Appellant
contends otherwise (see App. Br. 46–48), such arguments are unavailing and
not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 9. But because our analysis changes the thrust of the Examiner’s
rejection, we designate our affirmance as a new ground of rejection.

Claim 10
We do not sustain the Examiner’s rejection of claim 10 reciting that
the first signal utilizes an Optional command in a Gen 2 protocol for
communicating the mode of operation. See Ans. 23, 40–41. According to
paragraph 74 of Appellant’s original Specification, reader 204 may
command tag 202 to enter various modes through either an explicit
command extension or an implicit command. In the Gen 2 specification,
newly-defined explicit commands may be from one of four categories: (1)
Mandatory, (2) Optional, (3) Proprietary, or (4) Custom. Spec. ¶ 74. To
overcome certain drawbacks associated with the Mandatory, Proprietary,
and Custom commands, Appellant’s invention extends the Gen 2
Specification with explicit Optional commands. See Spec. ¶¶ 74–79.
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Although not cited in this particular rejection of claim 10, the EPC
RFID Protocol reference—a reference describing the Gen 2 protocol10—is
nonetheless consistent with this nomenclature by distinguishing mandatory
commands from optional commands. Compare EPC RFID Protocol
§§ 6.3.2.10.1.1 – 6.3.2.10.3.5 (mandatory commands) with §§ 6.3.2.10.3.6 –
6.3.2.10.3.8 (optional commands). Notably, the EPC RFID Protocol lists
only three commands, namely “Access,” “BlockWrite,” and “BlockErase” as
optional. See EPC RFID Protocol §§ 6.3.2.10.3.6–6.3.2.10.3.8.
Based on this understanding, we find the Examiner’s rejection
problematic on this record. As indicated above in connection with the
rejection of claim 9, the Examiner’s taking of Official Notice in connection
with the recited limitations of claim 10 is problematic on this record for the
reasons indicated by Appellant. See App. Br. 50–51; Reply Br. 5.
And to the extent that the Examiner takes a position similar to that
articulated in connection with the rejection of claim 10 based on EPC RFID
Protocol, we find such a position problematic for the reasons noted
previously. Under this position, the Examiner reasons that because the
recited command is optional—not optional to the protocol—the command
need not be used during a tag query, but could be used optionally to
implement additional features. See Ans. 14, 41. We find such reasoning
problematic for the reasons noted previously.

10 See O’Hagan Decl. ¶ 19. Accord App. Br. 49 (noting that the EPC RFID
Protocol describes the EPC Gen 2 protocol for Gen 2 tags); Ans. 14 (finding
that the EPC RFID Protocol is Gen 2).
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As we indicated previously, claim 10 does not merely recite an
optional command generally, but rather an optional command in a Gen 2
protocol—a protocol reflected in the EPC RFID Protocol document.
Notably, this document specifies three particular commands as optional, and
distinguishes these commands from others that are mandatory—including,
notably, the “Read” command that is analogous to the relied-upon command
that transmits tag data in Wertsebrger. Accordingly, we fail to see how
Wertsebrger or the EPC White Paper teaches or suggests using an optional
command in a Gen 2 protocol for communicating the mode of operation as
claimed. Nor does Turner cure this deficiency.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 10.

THE OTHER OBVIOUSNESS REJECTION
We sustain the Examiner’s obviousness rejection of claim 13 over
Wertsebrger, EPC White Paper, Turner, and EPC RFID Protocol. Ans. 24.
Because this rejection is not argued separately with particularity, we are not
persuaded of error in this rejection for the reasons previously discussed.

CONCLUSION
The Examiner erred in rejecting claims 7–9, 12, and 17–32 under the
first and second paragraphs of § 112.
Under § 103, the Examiner did not err in rejecting claims 1–9 and 11–
16, but erred in rejecting claim 10.
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We designate our affirmance of the Examiner’s rejection of claim 9
over Wertsebrger, EPC White Paper, and Turner as a new ground of
rejection.

DECISION
The Examiner’s decision to reject claims 1–32 is affirmed-in-part.
Requests for extensions 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).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
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misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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