Ex Parte Brandl

Patent Trial and Appeal BoardOct 13, 2016

13360866 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/360,866 01/30/2012 65913 7590 10/17/2016 Intellectual Property and Licensing NXPB.V. 411 East Plumeria Drive, MS41 SAN JOSE, CA 95134 FIRST NAMED INVENTOR Roland Brandl 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 81422946US01 1015 EXAMINER PHAM, QUANG ART UNIT PAPER NUMBER 2684 NOTIFICATION DATE DELIVERY MODE 10/17/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ip.department.us@nxp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROLAND BRANDL Appeal2015-005388 Application 13/360,8661 Technology Center 2600 Before KRISTEN L. DROESCH, LARRY J. HUME, and JOHN D. HAMANN, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1-20.2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM the rejection of claims 1-3, 5-8, 10-13, 15-17, 19, and 20, and enter new grounds of rejection of claims 4, 7, and 20 under 35 U.S.C. Â§ 112, second paragraph, pursuant to our authority under 37 C.F.R. Â§ 41.50(b). 1 According to Appellant, the real party in interest is NXP B.V. App. Br. 1. 2 The Examiner withdrew all rejections of claims 4, 9, 14, and 18. Ans. 27. Appeal2015-005388 Application 13/360,866 STATEMENT OF THE CASE3 The Invention Appellant's disclosed and claimed inventions "relate to systems and methods for managing RFID tags. At least one RFID tag may receive a select command from an interrogator. The at least one RFID tag may perform at least one action based on information included in the select command." Spec. i-f 2 ("Summary"). Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphases and formatting added to contested limitations): 1. A system for managing a population of RFID tags, compnsmg: an interrogator configured to transmit a select command to the population of RFID tags, wherein the select command includes information specifying a special memory location; and at least one modified tag in the population of RFID tags, wherein the at least one modified tag comprises a memory configured with a memory address corresponding to the special memory location, and a controller configured to pe1jorm at least one action upon the at least one modified tag receiving the select command, with the information specifYing the special memory location. 3 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed Jan. 5, 2015); Reply Brief("Reply Br.," filed Apr. 24, 2015); Examiner's Answer ("Ans.," mailed Mar. 25, 2015); Final Office Action ("Final Act.," mailed Sept. 3, 2014); Advisory Action ("Adv. Act.," mailed Dec. 19, 2014); and the original Specification ("Spec.," filed Jan. 30, 2012). 2 Appeal2015-005388 Application 13/360,866 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Stewart van Niekerk et al. ("van Niekerk") Yeo et al. ("Yeo") US 2006/0255131 Al US 2010/0060432 Al US 2010/0090809 Al Nov. 16, 2006 Mar. 11, 2010 Apr. 15, 2010 Huang US 8,400,275 B2 Mar. 19, 2013 EPCglobal, Inc., EPUM Radio-Frequency Identity Protocols, Class-I Generation-2 UHF RFID Protocol for Communications at 860 MHz- 960 MHz, Ver. 1.2.0, 1-108 (Oct. 23, 2008) (hereinafter "EPCglobal"). Rejections on Appeal RI. Claims 1-3 and 5 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite by reciting "at least one modified tag .... " Ans. 3. R2. Claims 1-3, 5-8, 10-13, 15-17, 19, and 20 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite by reciting "a special memory location." Id. R3. Claims 1, 2, 6, 7, 11, 12, 16, 17, and 19 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination ofEPCglobal and van Niekerk. Ans. 4. R4. Claims 3, 8, and 13 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of EPCglobal, van Niekerk, and Yeo. Ans. 18. 3 Appeal2015-005388 Application 13/360,866 R5. Claims 5, 10, and 15 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of EPCglobal, van Niekerk, and Huang. Ans. 22. R6. Claim 20 stands rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of EPCglobal, van Niekerk, and Stewart. Ans. 26. CLAIM GROUPING Based on Appellant's arguments (App. Br. 4--12), we decide the appeal of obviousness Rejection R3 of claims 1, 2, 6, 7, 11, 12, 16, 17, and 19 on the basis of representative claim 1. We decide indefiniteness Rejections RI and R2 of claims 1-3, 5-8, 10-13, 15-17, 19, and 20, infra. Remaining claims 3, 5, 8, 10, 13, 15, and 20 in obviousness rejections R4 through R6; not argued separately; stand or fall with the respective independent claim from which they depend. 4 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. We do not consider arguments that Appellant could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). 4 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. Â§ 41.37(c)(l)(iv). 4 Appeal2015-005388 Application I3/360,866 We agree with particular arguments advanced by Appellant with respect to indefiniteness Rejection R2 of claims I-3, 5-8, IO-I3, I5-I 7, I9, and 20 for the specific reasons discussed below. We disagree with Appellant's arguments with respect to Rejections RI and R3 through R6 of claims I-3, 5-8, IO-I3, I5-I 7, I9, and 20, and we incorporate herein and adopt as our own for these rejections: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellant's arguments. In conjunction with our affirmance of indefiniteness Rejection RI of claim I, we enter a new ground of rejection for claims 4, 7, and 20. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim I for emphasis as follows. 1. Â§ I I2, ,-r 2, Rejection RI: Claims I-3 and 5 Issue 1 Appellant argues (App. Br. 4--5; Reply Br. I-2) the Examiner's Rejection RI of claim I under 35 U.S.C. Â§ I I2, second paragraph, as being indefinite is in error. These contentions present us with the following issue: Did the Examiner err in finding the recitation in claim I of "at least one modified tag in the population of RFID tags" is indefinite underÂ§ I I2? (Emphasis added). 5 Appeal2015-005388 Application 13/360,866 Analysis Appellant contends the "[b ]readth of a claim is not to be equated with indefiniteness." App. Br. 4. Appellant further argues, "[t]he plain meaning of 'modified tag' would involve at least one tag out of the population of RFID tags. Particular modifications appear, for example, in dependent claims 2 and 3. Thus, the Examiner's rejections are directed to the breadth of independent claim 1 rather than indefiniteness." Id. In response to the Examiner's findings (Adv. Act. 2) that the entire population of RFID tags can be modified tags, Appellant alleges the Examiner has unreasonably broadened the claim language. App. Br. 4. The Examiner finds, and we agree: [T]here is a possibility that the system comprises the entire population of the RFID tags being "modified" tags. In this case, there is none of the at least one tag out of the population of RFID tags. Thus, it is not clear whether the "modified" tags(s) in the entire population of "modified" tags are the same or different from each other and in what way. Ans. 27. We agree with the Examiner's interpretation that there is nothing in claim 1 that would preclude all of the tags in the population of RFID tags being the same, i.e., a case in which all tags are "modified" in the same manner, and thus are not distinguished from each other. Moreover, with respect to Appellant's attempted reliance upon different recitations defining the "modified tag" in dependent claims 2 and 3, the doctrine of claim differentiation informs us "the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). "When different words or 6 Appeal2015-005388 Application 13/360,866 phrases are used in separate claims, a difference in meaning is presumed." Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143 (Fed. Cir. 2005). Under the doctrine of claim differentiation, "the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Phillips v. A WH Corp, 415 F.3d 1303, 1315 (Fed. Cir. 2005). This presumption is "especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003). Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's conclusion of indefiniteness such that we sustain the Examiner's Rejection RI of independent claims 1-3 and 5. 2. Â§ 112, jT 2, Rejection R2: Claims 1-3, 5-8, 10-13, 15-17, 19, and 20 Issue 1 Appellant argues (App. Br. 4--5; Reply Br. 2) the Examiner's Rejection R2 of claim 1under35 U.S.C. Â§ 112, second paragraph, as being indefinite is in error. These contentions present us with the following issues: Did the Examiner err in finding the recitation in independent claims 1, 6, 11, and 17 of "a special memory location" is indefinite under Â§ 112? 7 Appeal2015-005388 Application 13/360,866 Analysis The Examiner concludes claim 1 is indefinite by reciting "a special memory location" (Final Act. 5---6), because it "is unclear what is meant by the limitations to make a memory location become[] 'a special memory location.' For purpose of examination, Examiner assumes that the special memory location is a memory location indicated in a Select command sent by an interrogator." We disagree with the Examiner's conclusion. " [A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Insts., Inc., 134 S. Ct. 2120, 2124 (2014). Further, we give pending claims "their broadest reasonable interpretation consistent with the specification" and "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We note Appellant's Specification discusses the recited "special memory location," as follows: The modified SELECT operation may use the Select command 300 as illustrated in Fig. 3. In the modified SELECT operation, the MemBank field 308, Pointer field 310, and Length field 312 may specify a special memory location in the tag's memory 112 that is not typically used by conventional tags, or that does not correspond to an existing memory address. Spec. ,-r 20. We conclude the plain language of claim 1 ("a special memory location"), in light of the Specification, would have informed those skilled in the art at the time of the invention about the scope of the invention with 8 Appeal2015-005388 Application 13/360,866 reasonable certainty. See Nautilus, 134 S. Ct. at 2124. Nor has the Examiner shown that independent claim 1 (and associated dependent claims) are indefinite under the lower threshold of ambiguity set forth in the holding of Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential) ( 11 [I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim ... indefinite 11). Therefore, we reverse the Examiner's Rejection RI underÂ§ 112, second paragraph, of independent claim 1 and associated dependent claims 2, 3, 5-8, 10-13, 15-17, 19, and 20. 3. Â§ 103(a)RejectionR3ofClaims1, 2, 6, 7, 11, 12, 16, 17, and 19 Issue 3 Appellant argues (App. Br. 7-8; Reply Br. 3-5) the Examiner's rejection of claim 1under35 U.S.C. Â§ 103(a) as being obvious over the combination of EPCglobal and van Niekerk is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a 11 system for managing a population of RFID tags 11 that includes, inter alia, 11 a controller configured to perform at least one action upon the at least one modified tag receiving the select command, with the information specifying the special memory location, 11 as recited in claim 1, and as similarly recited in independent claims 6, 11, and 17? (Emphasis added). 9 Appeal2015-005388 Application 13/360,866 Analysis Appellant contends, "the final Office Action alleged that Van Niekerk's tag 110 corresponds to the claimed 'at least one modified tag.' However, tag 110 is disclosed to be a 'battery supported RFID tag.' ... It is not modified as claimed to perform special actions based upon a select command." App. Br. 7. Appellant additionally contends, "the final Office Action relied upon Van Niekerk's disclosure of an activation command to activate RFID tag 110 from a hibernation mode. However, Van Niekerk is silent regarding performance of a particular action based upon the value of the special memory location specified by the select command." Id. In response, the Examiner disagrees with Appellant, because as indicated by Appellant on pages 4-5 [of the Appeal Brief], the "modified tag" and "special memory location" are the [breadth] of the claims rather than indefiniteness. The limitations of "modified tag" and "special memory location" as recited in claims 1, 6, 11, and l 7 can be inte1 vreted in many different ways, e.g. one of the many different interpretations for the modified tag as the special memory location is a memory location indicated in a Activation/Select command sent by an interrogator wherein the one or more tags in the RFID tag population is selected by the Activation/Select command to become the one or more modified tag(s) to provide its response to the interrogator, and the selected tag(s) modifies its response by adjusting its power level in response to the Select command sent by the interrogator. Thus, the meaning functions of the "modified tag" and "special memory location" are not limited to the narrow interpretation as disclosed in the specification of this instant application. Ans. 30 (emphasis omitted). Although Appellant's description in the Specification (paragraph 21) of a "special memory location" and exemplary special actions performed as 10 Appeal2015-005388 Application 13/360,866 a result of the data stored in the "special memory location" inform our understanding of this term in the context of the invention, it does not define these terms to narrowly limit their scope, as Appellant urges. (App. Br. 7-8). 5 Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 2, 6, 7, 11, 12, 16, 17, and 19 which fall therewith. See Claim Grouping, supra. 4. Rejections R4-R6 of Claims 3, 5, 8, 10, 13, 15, and 20 In view of the lack of any substantive or separate arguments directed to obviousness Rejection R3 through R5 of claims 3, 5, 8, 10, 13, 15, and 20 underÂ§ 103(a) (see App. Br. 10-12), we sustain the Examiner's rejection of these claims. Arguments not made are waived. 5 Regarding descriptions in the Specification that are not definitions, or clear and unambiguous disclaimers, our reviewing "court has repeatedly 'cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification,'" (even under the more narrow "Phillips" claim construction standard applied by the federal courts). Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)). Even in cases where the specification describes only a single embodiment, the claims are not necessarily limited to that embodiment. Thorner v. Sony Computer Entm 't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or all of the embodiments, contain a particular limitation to limit a claim to that particular limitation). 11 Appeal2015-005388 Application I3/360,866 NEW GROUNDS OF REJECTION We enter the following new grounds of rejection for claims 4, 7, and 20 under the provisions of 3 7 C.F .R. Â§ 4 I. 50(b ). Claim 4 Claim 4 is rejected under 35 U.S.C. Â§ I I2, second paragraph. Claim 4 recites: 4. The system of claim I, wherein the special memory location does not correspond to an existing memory address. App. Br. I4. While we reversed theÂ§ I I2, second paragraph, Rejection RI of claim I for its recitation of "a special memory location," we note claim 4 also recites "at least one modified tag" by its dependence on claim I, a phrase we find to be indefinite for the reasons discussed with respect to Rejection RI of claim I, supra. Claim 7 Claim 7 is rejected under 35 U.S.C. Â§ I I2, second paragraph. Claim 7 recites: 7. The RFID tag of claim 6, wherein the at least one action performed by the controller is configuring the at least one modified tag to modify its backscatter strength. App. Br. I5 (emphasis added). While we reversed theÂ§ I I2, second paragraph, Rejection RI of claim 6, from which claim 7 depends, for its recitation of "a special memory location," we note claim 7, different from claim 6, also recites "the at least one modified tag," a phrase we find to be indefinite for the reasons discussed with respect to Rejection RI of claim I, supra, and which also lacks antecedent basis here in both claims 6 and 7. I2 Appeal2015-005388 Application I3/360,866 Claim 20 Claim 20 is rejected under 35 U.S.C. Â§ I I2, second paragraph. Claim 20 recites: 20. The system of claim I, wherein specific bit addresses of the special memory location are assigned specific actions. App. Br. I 7 (emphasis added). While we reversed theÂ§ I I2, second paragraph, Rejection RI of claim I, from which claim 20 depends, for its recitation of "a special memory location," we note claim 20 also recites "the at least one modified tag" by its dependence on claim I, a phrase we find to be indefinite for the reasons discussed with respect to Rejection RI of claim I, supra. REPLY BRIEF To the extent Appellant may advance new arguments in the Reply Brief (Reply Br. 1-5) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause (see 37 C.F.R. Â§ 41.4I(b)(2)), which Appellant has not shown. CONCLUSIONS (I) The Examiner did not err with respect to indefiniteness Rejection RI of claims I-3 and 5 under 35 U.S.C. Â§ I I2, second paragraph, and we sustain the rejection. I3 Appeal2015-005388 Application 13/360,866 (2) The Examiner erred with respect to indefiniteness Rejection R2 of claims 6 and 8-19 under 35 U.S.C. Â§ 112, second paragraph, and we do not sustain the rejection. (3) The Examiner did not err with respect to obviousness Rejections R3 through R6 of claims 1-3, 5-8, 10-13, 15-17, 19, and 20 under 35 U.S.C. Â§ 103(a) over the cited prior art combinations of record, and we sustain the rejections. (4) Claims 4, 7, and 20 stand newly rejected under 35 U.S.C. Â§ 112, second paragraph. (5) Claims 9, 14, and 18 have not been identified as having any outstanding rejections, and thus are not before us on Appeal and form no part of our Decision. DECISION We affirm the Examiner's decision rejecting claims 1-3; 5-8; 10-13; 15-17, 19, and 20. We enter new grounds of rejection for claims 4, 7, and 20 under 35 U.S.C. Â§ 112, second paragraph. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). This decision contains new grounds of rejection of claims 4, 7, and 20 pursuant to 37 C.F.R. Â§ 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 [A ]ppellant, within two months from the date of the decision, must exercise one of the following two options with respect to 14 Appeal2015-005388 Application 13/360,866 the new ground[ s] of rejection to avoid termination of the [A ]ppeal 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 Â§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 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 ProcedureÂ§ 1214.01 (9th ed. Rev. 07.2015, Nov. 2015). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 37 C.F.R. Â§ 41.50(b) 15