Ex Parte Davenport

Patent Trial and Appeal BoardSep 13, 2018

13269603 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/269,603 10/09/2011 25223 7590 09/17/2018 WHITEFORD, TAYLOR & PRESTON, LLP ATTN: GREGORY M STONE SEVEN SAINT PAUL STREET BALTIMORE, MD 21202-1626 FIRST NAMED INVENTOR Roger Davenport 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. 094008.20501 1035 EXAMINER WEATHERFORD, SYVILA ART UNIT PAPER NUMBER 3717 NOTIFICATION DATE DELIVERY MODE 09/17/2018 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): patents@wtplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROGER DAVENPORT Appeal 2017-011380 Application 13/269,603 Technology Center 3700 Before DANIEL S. SONG, STEFAN STAICOVICI, and BRANDON J. WARNER, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE- Roger Davenport ("Appellant") 1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision in the Final Office Action (dated June 2, 2016, hereinafter "Final Act.") rejecting claims 5, 7, and 8. 2, 3 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). 1 Golf Impact, LLC is identified as the real party in interest in Appellant's Appeal Brief (filed Feb. 2, 2017, hereinafter "Br."). Br. 1. 2 Claims 1--4 and 9-12 are canceled. See Br., Claims App. Al, A4. 3 The Examiner indicates claim 6 as allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claim. Examiner's Answer 12 (dated June 21, 2017, hereinafter "Ans."). Claim 6 is not part of the instant appeal. Appeal2017---011380 Application 13/269,603 SUMMARY OF DECISION We AFFIRM. INVENTION Appellant's invention is "a measurement and analysis system for determining the effectiveness of a golfer's swing based on all measurements made at the golf club head." Spec. para. 2. Claims 5 and 7 are independent. Claim 5 is illustrative of the claimed invention and reads as follows: 5. A golf club head comprising at least: a) an outer surface structure including electrically conducting material; b) a radio wave antenna system comprising at least first and second electrically conducting elements, wherein the first electrically conducting element is said outer surface structure of the golf club head, the outer surface structure having a first specified shape, and wherein the second electrically conducting element has a specified size and a second shape; c) at least one electrically non-conducting object that is attached to said first electrically conducting element at a specified location on said outer surface structure and said second electrically conducting element, wherein the at least one electrically non-conducting object has material properties that include at least a specified dielectric constant, and wherein the at least one electrically non-conducting object holds said first electrically conducting element and said second electrically conducting element in a specified fixed spatial relationship to each other; and d) an electrical port comprising first and second electrical contact points, wherein the first electrical contact point is electrically connected with said first electrically conducting element, and wherein the second electrical contact 2 Appeal2017---011380 Application 13/269,603 point is electrically connected to said second electrical conducting element; wherein the specified size, first and second shapes, spatial relationship, and material properties of said antenna system define an optimized electrical impedance characteristic of said electrical port for a specified frequency band such that a return loss is minimized within the specified frequency band and define a radiation pattern of said antenna system. REJECTI0NS 4 I. The Examiner rejects claims 5 and 7 under 35 U.S.C. Â§ I03(a) as being unpatentable over Carrender (US 2005/0093700 Al, published May 5, 2005), Aisenbrey (US 2006/0287126 Al, published Dec. 21, 2006), and Gaucher et al. (US 2005/0122265 Al, published June 9, 2005, hereinafter "Gaucher"). II. The Examiner rejects claim 8 under 35 U.S.C. Â§ I03(a) as being unpatentable over Carrender, Aisenbrey, Gaucher, and Mckinnon et al. (US 6,002,370, issued Dec. 14, 1999, hereinafter "Mckinnon"). ANALYSIS Rejection I Appellant does not present arguments for the patentability of claim 7 apart from claim 5. See Br. 17-31. Therefore, in accordance with 37 C.F.R. Â§ 4I.37(c)(l)(iv), we select claim 5 as the representative claim to decide the 4 The Examiner withdraws the rejections of claims 5-8 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description and the enablement requirements. Ans. 3--4; see also Final Act. 3-7. 3 Appeal2017---011380 Application 13/269,603 appeal of the rejection of these claims, with claim 7 standing or falling with claim 5. The Examiner finds that Carrender discloses most of the limitations of independent claim 5 including, inter alia, an object having an electrically conductive outer surface 24, an antenna system 20 having electrically conductive outer surface 24 of the object as a first electrically conducting element, a second electrically conductive element 26, and a dielectric (non- electric conductive) element 30 positioned between electrically conductive outer surface 24 and electrically conductive element 26, and an electrical port having first and second electrical contact points 34, 36. Final Act. 8-9 (citing Carrender, Abstract, paras. 13, 14, 32, and 33, Figs. 3, 4). The Examiner further finds that the size, shape, spatial relationship, and material properties of Carrender' s antenna system "define an optimized electrical impedance characteristic" so as to "accommodate the operating frequency of the circuit to which the ... antenna is coupled, and it is typically designed to provide a suitable radiation resistance." Id. at 9 (citing Carrender, paras. 11, 13, 38). According to the Examiner, the "antenna circuit may be formed to a different configuration to adjust the impedance and resonant frequency of the antenna circuit" so as to optimize efficiency. Id. at 9-10. However, the Examiner finds that Carrender does not explicitly disclose a golf club head, wherein the at least one electrically non-conducting object has material properties that include at least a specified dielectric constant, and design optimization such that a return loss is minimized within the specified frequency band and define a radiation pattern of said antenna system. 4 Appeal2017---011380 Application 13/269,603 Id. at 10. Thus, the Examiner turns to Aisenbrey to disclose an "entire golf club head ... formed of ... [electrically] conductive[] doped resin-based material." Id. ( citing Aisenbrey, para. 59). The Examiner further finds that Gaucher discloses various methods for optimizing the impedance of an antenna system for an intended application. Id. According to the Examiner, the impedance of an antenna system is optimizable based on the thickness of the antenna substrate, the length of the radiating element, or the material properties of the dielectric element. Id. at 10-11 (citing Gaucher, paras. 22, 40, and 47, Figs. 2, 4). As such, the Examiner concludes that It would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Carrender with the teachings of Aisenbrey to have the object be a golf club head since Carrender discloses the object can be a can, luggage tag, or other object that is conductive or has a conductive media thereon. Id. at 11 (citing Carrender, para 34). The Examiner further determines that It would further be obvious to a person of ordinary skill in the art at the time of the invention to modify Carrender in view of Aisenbrey with the teachings of Gaucher to have a golf club head, wherein the at least one electrically non-conducting object has material properties that include at least a specified dielectric constant and be insulative or non-conducting, and uses a method of design optimization such that a return loss is minimized within the specified frequency band and define a radiation pattern of said antenna system since Carrender discloses a patch antenna system with a dielectric base positioned between the conductive patch antenna element and the conductive surface of the object being tracked, and the dielectric base is material inherently possessing a specified dielectric constant. 5 Appeal2017---011380 Application 13/269,603 Id. at 11-12. The Examiner notes that Carrender discloses optimizing the efficiency of an antenna system by impedance matching of antenna circuit components designed to have a size and shape to accommodate the operating frequency of the coupling, providing a suitable radiation resistance at a desired frequency, and considering transmission limitations due to the existence of objects surrounding the antenna system. Id. at 12 (citing Carrender, paras. 11, 13, and 15). Appellant first argues that Carrender fails to disclose attaching its antenna patch 26 to a golf club head and "minimizing return loss." Br. 22, 2 7. Appellant further argues that Aisenbrey fails to disclose "minimizing return loss." Id. at 24. Furthermore, Appellant argues that Gaucher does not disclose "a surface of a golf club being an antenna element," such that a radiation pattern is defined by the outer surface of the golf club head and another electrically conducting element. Id. at 26, 30. We are not persuaded by Appellant's arguments because "[ n ]onobviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [Each reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck& Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this case, we agree with the Examiner that "Aisenbrey teaches a golf club manufactured with a conductive surface, Carrender discloses designing a patch antenna for an object with a conductive surface and Gaucher teaches the standard, routine practices one considers when designing any antenna - optimizing impedance and minimizing return loss." Ans. 24. 6 Appeal2017---011380 Application 13/269,603 Appellant further argues that Carrender' s antenna teaches away from "the optimized antenna of claim[] 5" because "the antenna of Carrender is intended for attachment to any surface structure" and is "designed to have a reactive (capacitive) impedance, "rather than "a specific, fixed, optimized electrical impedance for a particular frequency band." Br. 22, 23-24 ( citing Br., Evidence Appendix, App'x. B, pages 2-3). Appellant explains that Carrender fails to disclose "optimizing patch antenna 26 for achieving optimal antenna performance for the specific object that the antenna is attached to" because doing so "would involve a different design for every object to be tracked[,]" which is "an infeasible proposition for tag tracking ... [as] RFID tags are generated in mass quantities and need to be inexpensive." Id. at 21. Appellant further notes that the limitation of "'an optimized electrical impedance characteristic of said electrical port for a specified frequency band' requires an optimized fixed impedance value for a given frequency band, which is simply not possible in a dynamic impedance RFID antenna," which has a reactive impedance that dynamically adjusts. Id. at 24. We are not persuaded by Appellant's arguments because we do not agree with Appellant that Carrender teaches away from Appellant's invention. It is well established that teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this case, Carrender does not in any way criticize, discredit, or otherwise discourage changing aspects of its antenna based on the object to which it is attached. Rather, in contrast, as the Examiner correctly finds, Carrender specifically 7 Appeal2017---011380 Application 13/269,603 discloses that its antenna (1) has a "size and shape . . . designed to accommodate the ... frequency of the circuit to which the antenna is coupled," (2) is "designed to provide a suitable radiation resistance," and (3) "may be formed to a different configuration to adjust the impedance and resonant frequency." Carrender, paras. 13, 38 (emphasis added); see also Ans. 13. Furthermore, Carrender discloses that "[i]mpedance matching of antenna circuit components at the desired frequency ... optimize[ s] efficiency" and that radio frequency interference is "produced from ... the object on which the ... [antenna] is attached." Carrender, paras. 11, 15. Hence, we agree with the Examiner that the "Carrender citation[ s] speak[] to designing each patch antenna for each object it attaches to as well as designing to the function and purpose of the antenna." Ans. 16. Stated differently, the skilled artisan would readily appreciate that when designing Carrender' s antenna, its configuration ( size, shape) and characteristics (impedance, resonant frequency, radiation resistance, electromagnetic interference) are determined based on the object to which the antenna is attached. We, thus, agree with the Examiner that Carrender' s antenna "is not a one-size-fits-all antenna design," as Appellant asserts. Id. With respect to Appellant's position that Carrender's disclosure is limited to a passive RFID tag having a reactive impedance that dynamically adjusts (see Br. 22-24), we are not persuaded because it is not commensurate in scope with the Examiner's rejection. The Examiner correctly finds that the architecture of Carrender's antenna "can be [also] applied to semi-passive and active [RFID] tags as desired." Id. at 19 (citing Carrender, para. 37) (emphasis added). We agree with the Examiner that in 8 Appeal2017---011380 Application 13/269,603 contrast to a passive RFID tag, an active RFID tag relies on an internal voltage supplied by a battery to transmit data, and, thus, does not require backscattering to function. See Ans. 20-21. Appellant does not persuasively show error in the Examiner's findings. Moreover, Appellant does not persuasively explain why Carrender's disclosure of an RFID tag, which can be an active tag and in which the impedance and resonant frequency of the antenna circuit are adjusted to the function of the antenna, does not result in an antenna having a "specific, fixed, optimized electrical impedance for a particular frequency band." See Br. 23-24. Appellant further argues that although Aisenbrey discloses "a golf club driver head that is formed of a conductively doped resin-based material," nothing in Aisenbrey "suggests that a radio wave antenna system comprises an electrically conducting element corresponding to an outer surface structure of the golf club head." Br. 27-28. According to Appellant, [W]ithout further detail of why the golf club head surface of Aisenbrey is particularly suited to be an electrical conductive element of an antenna system, and description of how Aisenbrey's golf club head surface is integrated into an antenna system, the Examiner has failed to describe how this combination of Aisenbrey with Carrender would succeed in making the claimed invention. Id. at 28. As such, Appellant asserts that [D]ue to the lack of any suggestion in any of the cited references that a conductive golf club head can be used as a component of an antenna and the fact that such a notion is only present on the record in Appellant's [S]pecification, it logically follows that the Examiner's conclusion has been improperly gleaned from Appellant's own [S]pecification and ... is an exercise of impermissible hindsight. 9 Appeal2017---011380 Application 13/269,603 Id. at 30. Appellant's arguments appear to be holding the Examiner to the old Teaching-Suggestion-Motivation standard; such a standard is not required. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,415 (2007). Here, the Examiner finds that Carrender discloses an antenna system attached to an "object [that] can be a can, [a] luggage tag, or other object that is [electrically] conductive or has a conductive media thereon."' Ans. 15 (citing Carrender, para. 34); Final Act. 8. The Examiner further finds that Aisenbrey discloses a golf club head that has an electrically conductive surface. Ans. 21; Final Act. 10. The Examiner then reasons that It would be obvious to [ a person of ordinary skill in the art to] modify Carrender with the teachings of Aisenbrey to build a patch antenna on [ Aisenbrey' s] golf club head because Carrender discloses that a "patch antenna can be constructed to have a relatively thin makeup at a low cost and overall lower weight wherein the traditional conductive back is eliminated." Ans. 15. Hence, in light of Carrender's disclosure of using any electrically conductive object with its antenna system, the Examiner's modification to use Aisenbrey's electrically conductive golf club head is nothing more than the substitution of one electrically conductive object for another known in the field to yield a predictable result. KSR, 550 U.S. at 416 (citing to Adams, 383 U.S. 38, 50-51 (1966)) ("[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."). In addition, we note that, as Aisenbrey specifically discloses that 10 Appeal2017---011380 Application 13/269,603 "antenna devices ... may be integrated into the [ sporting] device" or that its sporting device may "include[] an antenna 156" (see Aisenbrey, paras. 33, 85; Br. 24 ( citing paragraph 85 of Aisenbrey)), it seems highly logical to select Aisenbrey's electrically conductive golf club head as the electrically conductive object to place Carrender's antenna thereon. See, e.g., KSR, 550 U.S. at 421 ("a person of ordinary skill has good reason to pursue the known options within his or her technical grasp"). Appellant does not persuasively show error in the Examiner's findings or identify any flaw in the Examiner's reasomng. Accordingly, given that Carrender's antenna is attached to an electrically conductive object and Aisenbrey's golf club head is electrically conductive and can integrate an antenna device, we see no merit to Appellant's contention that the rejection of claim 5 is improper due to a lack of a reasonable expectation of success. See In re O 'Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988) (Absolute predictability that the substitution will be successful is not required, all that is required is a reasonable expectation of success.). Furthermore, because Appellant has not persuasively shown error in the Examiner's findings or reasoning or shown that the modification of Carrender's antenna system with Aisenbrey's electrically conductive golf club would have been beyond the level of ordinary skill in the art, we are not persuaded that the Examiner relied on impermissible hindsight. Appellant further argues that, although Gaucher discloses a "monopole antenna ... hav[ing] an impedance optimized for an intended application" and "a return loss that is better than 1 OdB," Gaucher fails to disclose "that the return loss is minimized within a specified frequency 11 Appeal2017---011380 Application 13/269,603 band," as recited by claim 5. Br. 24--25 (citing Gaucher, paras. 40, 47) ( emphasis added). We are not persuaded by Appellant's arguments because an artisan must be presumed to know something about the art apart from what the references expressly disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Here, when discussing the return loss of an antenna, we agree with the Examiner that "the goal of an antenna designer is to minimize the return loss." Ans. 23. Accordingly, a person of ordinary skill in the art of antennas would have understood that a return loss of "better than 10 dB when operating from 55 GHz to 65 GHz," in the context of Gaucher, means that the antenna impedance is optimized such that less than 1/10 (10%) of the incident power is reflected (lost) in the frequency range of 55---65 GHz. See Gaucher, para. 47. Hence, as Gaucher discloses that the incident power reflected (lost) is less than 10% in frequency range of 5 5---65 GHz, Gaucher discloses "that [the] return loss is minimized within the specified frequency band," as called for by claim 5. We are also not persuaded by Appellant's position that the modification of Carrrender's antenna system, according to Gaucher, "would require that Carrender employ a fixed impedance for a given construction, which is directly at odds with the intended purpose of Carrender of using dynamic impedance RFID antennas," and, thus, "would modify Carrender's principle of operation." Br. 26. As discussed supra, Carrender is not limited to passive RFID antennas that have a dynamic impedance, but rather also discloses the use of active RFID antennas. See Carrender, para. 37. Appellant also does not persuasively explain why Gaucher' s method of 12 Appeal2017---011380 Application 13/269,603 impedance optimization based on size and shape of an antenna's radiating element and dielectric material properties cannot be employed with the active RFID antenna system of Carrender, as modified by Aisenbrey, to "define an optimized electrical impedance characteristic ... for a specified frequency band," as called for by claim 5. Finally, we are not persuaded by Appellant's arguments regarding the particularities of how the swing of the conductive golf club may have an impact on antenna operation. See Br. 20. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, we agree with the Examiner that independent claim 5 "do[es] not refer to the swing or any parameters associated with the swing." Ans. 14; see id. at 15. In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. Â§ 103(a) of claim 5 as unpatentable over Carrender, Aisenbrey, and Gaucher. Claim 7 falls with claim 5. Rejection II Appellant relies on the arguments discussed supra. See Br. 31. Therefore, for the same reasons discussed above, we likewise sustain the rejection of claim 8 over the combined teachings of Carrender, Aisenbrey, Gaucher, and Mckinnon. 13 Appeal2017---011380 Application 13/269,603 SUMMARY The Examiner's decision to reject claims 5, 7, and 8 under 35 U.S.C. Â§ 103(a) is affirmed. 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 14