Ex Parte August et al

Patent Trial and Appeal Board

Jun 11, 2014

11633751 (P.T.A.B. Jun. 11, 2014)

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.
11/633,751 12/04/2006 Jason August VAI.P-076 2711
73549 7590 06/12/2014
Larson & Anderson, LLC
re:VAI
P.O. Box 4928
Dillon, CO 80435-4928
EXAMINER
MEHRAVARI, PETER CYRUS
ART UNIT PAPER NUMBER
2685
MAIL DATE DELIVERY MODE
06/12/2014 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 JASON AUGUST, JOHN K. STEVENS,
CHRISTOPHER W. VERGE, PAUL WATERHOUSE,
KENNETH TRUONG, and MICHAEL J. VANDERBERG
____________________

Appeal 2011-013507
Application 11/633,751
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG,
and LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention is directed to a networked RF tag for operating
at a low frequency that includes a display; a wireless communication part
operable to receive data queries and transmit data wirelessly; an antenna
operable at a low radio frequency not exceeding 1 megahertz; a transceiver;
a data storage device; and an energy source (Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. An identification device for identifying an entity, said
identification device comprising:
A) a visual display portion operable to display
identification data relating to the entity; and
B) a full-duplex wireless communication part operable to
receive data queries and transmit data wirelessly in response to
the data queries, said wireless communication part comprising:
1) an antenna operable at a low radio frequency
not exceeding 1 megahertz;
2) a transceiver operatively connected to said
antenna, said transceiver being operable to
simultaneously transmit and receive data at said low
radio frequency;
3) a data storage device operable to store data
comprising identification data for identifying the entity;
4) a data processor operable to process data
received from said transceiver and said data storage
device and to send data for causing said transceiver to
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emit an identification signal based upon said
identification data stored in said data storage device; and
5) an energy source operable for activating said
transceiver and said data processor.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gray US 4,782,341 Nov. 1, 1988
Reymond US 5,898,370 Apr. 27, 1999
Gersheneld US 5,914,701 Jun. 22, 1999
Brady US 6,320,509 B1 Nov. 20, 2001
Durst US 2002/0003493 A1 Jan. 10, 2002
De La Huerga US 2002/0084904 A1 Jul. 4, 2002
Tutt US 6,785,739 B1 Aug. 31, 2004
Copeland US 2004/0217866 A1 Nov. 4, 2004
Hum US 2005/0099309 A1 May 12, 2005
Foth US 7,023,338 B1 Apr. 4, 2006
Waterhouse US 7,049,963 B2 May 23, 2006
August US 7,489,244 B2 Feb. 10, 2009

Claims 1, 3, 5, 10, 11, 15, 16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over De La Huerga in view of Hum.
Claims 6 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over De La Huerga in view of Hum and Gray.
Claims 2 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over De La Huerga in view of Hum and Durst.
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Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over De La Huerga in view of Hum and Tutt.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over De La Huerga in view of Hum and Reymond.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over De La Huerga in view of Hum and Brady.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over De La Huerga in view of Hum, Brady, and Froth.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over De La Huerga in view of Hum, Brady, and Copeland.
Claims 1, 11, and 12 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-5, 7, 11-14, 16, and 17 of U.S. Patent No. 7,049,963 and separately
over claims 1-5, 7, 8, 11-14, 16, and 17 of U.S. Patent No. 7,489,244.

II. ISSUE
The dispositive issue before us is whether the Examiner erred in
finding that the combination of De La Huerga and Hum teaches or would
have suggested a wireless communication part comprising “an antenna
operable at a low radio frequency not exceeding 1 megahertz” (claim 1,
emphasis added).

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence:
De La Huerga
1. De La Huerga discloses a Personal Area Network (PAN) that
uses a local near-field electrostatic coupling for communication, where
information is transferred by modulating an electrostatic coupling of current
into the body having a sufficiently low carrier frequency (e.g. 300 kHz) to
minimize the propagation of the communications signal energy beyond the
body (¶ [0209]).
2. RF transponders may be included within the system (¶ [0211]).
Gersheneld
3. Gersheneld discloses a transmitter having a signal generator and
a pair of electrodes substituting the use of an antenna to efficiently transmit
and receive radiated energy (Abstract; col. 2, ll. 49-54).
Hum
4. Hum discloses a communication system having a coupling port
266a and coupling repeaters 260c, 262a, which permit semi-duplex or full
duplex communications between a transponder and an interrogator (¶
[0052]).
Reymond
5. Reymond discloses the memory in the radio tag is updated, so
that the time of the last query may be stored in the memory (col. 5, ll. 24-
29).
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IV. ANALYSIS
Claims 1, 3, 5, 10, 11, 15, 16, and 18
Appellants contend “De La Huerga fails to disclose or suggest an
antenna operable at a low radio frequency not exceeding 1 megahertz” (App.
Br. 6). Appellants assert “De La Huerga discusses Personal Area Networks
(PANs), which is a type of communication that allows for local near-field
electrostatic coupling” and “a brief review of [Gersheneld], which De La
Huerga references to disclose PANs indicates that the disclosed PANs use
electrodes instead of antennas” (App. Br. 7, emphasis added). Appellants
argue that “[t]here is no motivation to combine Hum with De La Huerga”
because “[t]he alleged motivation to combine[:] . . . ‘to achieve a higher
throughput with limited bandwidth’” “is factually inaccurate” since
“bandwidth is the limiting factor in determining throughput, regardless of
whether communications are in a half-duplex mode or a full-duplex mode”
(App. Br. 7). Appellants contend further “[i]f the teachings of De La Huerga
were modified to use full-duplex communications, the infrared transponders
of De La Huerga would be rendered inoperable because they would be
blinded by their own transmitters” (App. Br. 8).
However, the Examiner finds De La Huerga teaches a “form of
electrostatic coupling or radio frequency (RF) coupling, whereby illustration
of how to achieve such objective [of communications between devices
transmitted at a low carrier frequency] is exemplified by the use of near-field
electrostatic coupling” (Ans. 23). The Examiner notes De La Huerga’s
disclosure to “localized communication is not limited to just the electrostatic
communication embodiment, but instead as a[] universal system goal
encompassing the all applicable embodiments, including the explicitly cited
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example of RF communication” (Ans. 25). The Examiner notes further that
“since De La Huerga specifically teaches a problem generally known to be
solved by the full duplex communication system taught by Hum,” “it would
be obvious for one having ordinary skill in the art at the time of the
invention to combine De La Huerga with Hum” (Ans. 26), and “there is
clear knowledge that [full-duplex communication] the RF embodiment, also
explicitly taught by De La Huerga, would be operable” (Ans. 27).
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). As an initial matter, we note that claim 1 merely recites an antenna
“operable at” a low radio frequency not exceeding 1 megahertz (claim 1).
We find such “operable at a low frequency” language merely represents a
statement of intended use of the antenna comprised in the full-duplex
wireless communication part at low frequency, which does not limit the
claim. Particularly, an intended use will not limit the scope of the claim
because it merely defines a context in which the invention operates.
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003).
In fact, claim 1 does not define “antenna.” Although the Specification
is silent as to a definition for antenna; it does disclose that prior art
embodiments of RFID tags and RF tags include antennas where the energy
from the antenna of the reader generates an electro-magnetic field which
includes a voltage in the coil of the tag, supplying energy to the tag and
having a frequency range of 100KHz to 3GHz (Spec. ¶¶ [0005] and [0007]).
We give “antenna” its broadest reasonable interpretation as any device that
propagates and receives radio waves. Thus, we give “an antenna operable at
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a low radio frequency not exceeding 1 megahertz” its broadest reasonable
interpretation as a device for sending and receiving radio waves capable of
operating at a low radio frequency less than 1 megahertz.
De La Huerga discloses a system having a Personal Area Network
(PAN) that uses a local near-field electrostatic coupling for communication
having a sufficiently low carrier frequency (e.g. 300 kHz) (FF 1). De La
Huerga incorporates by reference the PAN of Gersheneld having a
transmitter, which uses a pair of electrodes instead of an antenna (FF 3).
The system further includes a RF transponder (FF 2). We agree with the
Examiner’s finding De La Huerga’s “[RF] transponders . . . need to use
antennas [in order] to work” (Ans. 4). That is, we find that De La Huerga’s
system comprises a device for propagating and receiving radio waves
capable of operating at a low radio frequency less than 1 megahertz (claim
1).
Though Appellants also contend that “[i]f the teachings of De La
Huerga were modified to use full-duplex communications, the infrared
transponders of De La Huerga would be rendered inoperable because they
would be blinded by their own transmitters” (App. Br. 8), we agree with the
Examiner’s finding that “there is clear knowledge that [full-duplex
communication] the RF embodiment, also explicitly taught by De La
Huerga, would be operable” (Ans. 27, FF 4). As the Examiner finds:
[t]he combination would have increased throughput with
limited bandwidth as indicated in the rejection, by reducing the
amount of time required for communication through
simultaneous transmission and reception rather than having to
take turns transmitting and then receiving, which in turn would
have reduced communication collisions due to the shortened
time required for the transmission/reception communications.
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(Ans. 26).
Since Hum discloses full-duplex communication, we conclude that the
combination of one known element (Hum’s full-duplex communication)
with another (De La Huerga’s wireless communication system) would have
yielded predictable results to one of ordinary skill in the art at the time of the
invention. That is, we find that the full-duplex communication as taught by
Hum in addition to De La Huerga’s communication system is no more than a
simple arrangement of old elements, with each performing the same function
it had been known to perform, yielding no more than one would expect from
such an arrangement. See KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398,
417.
The skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” since the skilled artisan is “a person
of ordinary creativity, not an automaton.” Id. at 420-21. Appellants have
presented no evidence that combining Hum’s teaching of full-duplex
communication capability with the wireless communication system of De La
Huerga was “uniquely challenging or difficult for one of ordinary skill in the
art” or “represented an unobvious step over the prior art.” See Leapfrog
Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (citing KSR, 550
U.S. at 418-19).
We also agree with the Examiner’s explicit motivation that combining
the references would be obvious since “to reduce/eliminate collisions” (Ans.
26). The Supreme Court has stated that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR 550 U.S. at 416.
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Thus, we find no error in the Examiner’s finding that the combination
of De La Huerga’s wireless communication system with the full-duplex
communication capability, as disclosed in Hum, produces a full-duplex
wireless communication part which would be obvious (Ans. 26; FF 1, 2,
and 4).
Accordingly, we find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) over De La Huerga in view of Hum. Further,
independent claims 16 and 18 having similar claim language and claims 3, 5,
10, 11, and 15 (depending from claim 1) which have not been argued
separately, fall with claim 1.
Claims 8 and 9
Appellants contend “Reymond does not disclose or suggest storing a
temporal history of data queries (plural);” “[r]ather, Reymond merely
discloses that the time of the LAST query may be stored in the tag (App. Br.
9). Appellants argue “[t]he Reymond reference also fails to cure the
deficiencies of the references set forth above” (id.).
However, the Examiner finds Reymond discloses “the time the last
query is stored” (Ans. 17).
Reymond discloses a memory that stores a query (FF 5). We agree
with the Examiner’s finding “Reymond discloses wherein said data storage
device is operable to store a temporal history of data queries that have been
received by said identification device” (Ans. 17). That is, we find that
Reymond’s step of storing a query at least suggests a “data storage device
[which] is operable to store a temporal history of data queries that have been
received by said identification device” (claim 8).
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Accordingly, we find no error in the Examiner’s rejection of claim 8
under 35 U.S.C. § 103(a) over De La Huerga in view of Hum and Reymond.
Further, claim 9 (depending from claim 1) which have not been argued
separately, fall with claim 8.
Claims 2, 4, 6, 7, 12-14, 17, 19, and 20
Appellants argue that claims 2, 4, 6, 7, 12-14, 17, 19, and 20 are
patentable over the cited prior art for the same reasons asserted with respect
to claim 1 and the additional references (Gray, Tutt, Brady, Foth, and
Copeland) do “not cure the deficiencies of the references set forth above”
(App. Br. 8-10).
As noted supra, however, we find that the combination of De La
Huerga and Hum at least suggests all the features of claim 1. We therefore
affirm the Examiner’s rejection of claims 6 and 20 under 35 U.S.C. § 103
over De La Huerga in view of Hum and Gray; of claims 2 and 4 under 35
U.S.C. § 103 over De La Huerga in view of Hum and Durst; of claims 7 and
17 under 35 U.S.C. § 103 over De La Huerga in view of Hum and Tutt; of
claim 12 under 35 U.S.C. § 103 over De La Huerga in view of Hum and
Brady; of claims 13 and 14 under 35 U.S.C. § 103 over De La Huerga in
view of Hum, Brady, and Froth; and of claim 19 under 35 U.S.C. § 103 over
De La Huerga in view of Hum, Brady, and Copeland.
Nonstatutory Obviousness-Type Double Patenting Rejections
As for the obviousness-type double patenting rejections, Appellants
present no separate argument for the patentability of claims 1, 11, and 12.
Accordingly, Appellants have shown no error with the Examiner’s rejection
of claims 1, 11, and 12 over claims 1-5, 7, 11-14, 16, and 17 of U.S. Patent
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No. 7,049,963 and separately over claims 1-5, 7-8, 11-14, 16, and 17 of U.S.
Patent No. 7,489,244.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 103(a) and
of claims 1, 11, and 12 on the ground of nonstatutory obviousness-type
double patenting is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD