Ex Parte Driscoll et alDownload PDFPatent Trial and Appeal BoardSep 19, 201813950719 (P.T.A.B. Sep. 19, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/950,719 07/25/2013 44765 7590 09/21/2018 INTELLECTUAL VENTURES - ISF ATTN: DOCKETING, ISF 3150 - 139th Ave SE Bldg.4 Bellevue, WA 98005 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Tom Driscoll 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. 0513-035-001-000000 6423 EXAMINER SERAYDARYAN, HELENA H ART UNIT PAPER NUMBER 3648 NOTIFICATION DATE DELIVERY MODE 09/21/2018 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): ISFDocketlnbox@intven.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOM DRISCOLL, RODERICK A. HYDE, JORDIN T. KARE, DAVID R. SMITH, and CLARENCE T. TEGREENE Appeal2018-000355 Application 13/950, 719 Technology Center 3600 Before JAMES P. CAL VE, JEREMY M. PLENZLER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's rejection2 of claims 1-29, 32-34, 36-39, 43, 44, and 57. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART, and designate our affirmance of claims 12-14, 18, 19, 21-23, and 39 as NEW GROUNDS OF REJECTION pursuant to our authority under 3 7 C.F .R. § 41. 50(b ). We also enter NEW GROUNDS OF REJECTION, under 35 U.S.C. § 103, of (i) independent 1 Appellants identify the real party of interest as Elwha LLC, an affiliate of The Invention Science Fund II, LLC. Appeal Br. 4. 2 Appeal is taken from the Final Office Action dated October 3, 2016, as supplemented by the Advisory Action dated March 8, 2017. Appeal2018-000355 Application 13/950,719 claims 1, 2, 4---6, 8, 10, 11, 20, 24--26, 28, 29, 32, 34, 38, and 43 under 35 U.S.C. § 103 as unpatentable over Auer and any one of Bas, Larsen, and Scott; (ii) claims 7 and 33 as unpatentable over Auer and any one of Bas, Larsen, and Scott, and in further view of Frysz; (iii) claim 9 as unpatentable over Auer and any one of Bas, Larsen, and Scott, and in further view of Wootton; (iv) claims 15-17, 36, and 37 as unpatentable over Auer and any one of Bas, Larsen, and Scott, and further in view of Grimm; and ( v) claims 44 and 57 as unpatentable over Auer and any one of Bas, Larsen, and Scott, and in further view of Kikuchi; all pursuant to our authority under 37 C.F.R. § 4I.50(b). STATEMENT OF THE CASE Claims 1, 25, and 44 are the independent claims on appeal. Claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. A wearable radar reflector, comprising: a retroreflector configured to reflect radiation having a frequency of 1 to 300 GHz; and a garment configured to be worn by a pedestrian, wherein the retroreflector is attached to the garment and configured to retroreflect an information signal from a vehicle. 2 Appeal2018-000355 Application 13/950,719 THE REJECTI0NS 3 I. Claims 1, 2, 4---6, 8, 10, 11, 24--26, 28, 29, 32, 34, 38, and 43 stand rejected under 35 U.S.C. § I02(a)(l) as anticipated by Auer (DE 10 2009 021 851 Al; published Dec. 24, 2009). 4,5 II. Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over Auer and Moore, JR. (US 2012/0256727 Al; published Oct. 11, 2012). III. Claims 7 and 33 stand rejected under 35 U.S.C. § 103 as unpatentable over Auer and Frysz (US 2010/0328049 Al; published Dec. 30, 2010). IV. Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over Auer and Wootton (US 5,434,668; issued July 18, 1995). V. Claims 18 and 39 stand rejected under 35 U.S.C. § 103 as unpatentable over Auer and Bas (US 2004/0080447 Al; published Apr. 29, 2004). VI. Claims 3, 12, 19, and 27 stand rejected under 35 U.S.C. § 103 as unpatentable over Auer and Larsen (US 2011/0128625 Al; published June 2, 2011). 3 The Claims Appendix included in the Appeal Brief contains typographical errors indicating that claims 2--4, 12, 15, and 18-24 depend from "claim O." See Appeal Br. 39--43. We rely on the Claims Appendix included in the Reply Brief, which indicates claims 2--4, 12, 15, and 18-24 depend from independent claim 1. See Reply Br. 7-10. 4 We refer to the English translation provided in the record. 5 The inclusion of claims 13-17 and 20 in the statement of rejection is a typographical error in view of the lack of findings regarding claims 13-17 and 20 in the body of the rejection, and Rejections II, VII, and VIII. See Final Act. 6-10. 3 Appeal2018-000355 Application 13/950,719 VII. Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as unpatentable over Auer, Larsen, and Grimm (US 2011/0090093 Al; published Apr. 21, 2011 ). VIII. Claims 15-17, 36, and 37 stand rejected under 35 U.S.C. § 103 as unpatentable over Auer and Grimm. IX. Claims 21-23 stand rejected under 35 U.S.C. § 103 as unpatentable over Auer and Scott (US 2013/0015977 Al; published Jan. 17, 2013). X. Claims 44 and 57 stand rejected under 35 U.S.C. § 103 as unpatentable over Auer and Kikuchi (US 2008/0042894 Al; published Feb. 21, 2008). ANALYSIS Rejection I Regarding independent claim 1, the Examiner finds that Auer teaches a wearable radar reflector as claimed, including "a retroreflector." Final Act. 6-7 (citing, inter alia, Auer ,r 7). The Examiner also finds that Auer teaches the claimed 1 to 300 GHz range by disclosing that "the ... frequency range can be adjusted by the design of the reflective elements." Id. at 6 ( citing Auer ,r 26 ( disclosing that the dimensions of the strip-shaped elements is "determined by the search frequency of a radar locating device 4 adapted to the wavelength of the reflecting radar beams")). Appellants argue that "[t]he reflective object in Auer is described as a 'radar-reflecting reflector,' not a retroreflector." Appeal Br. 14; see also Reply Br. 3. Appellants submit that "a retroreflector is a term of art in physics that suggests specific geometries (such as a comer cube, a cat's-eye 4 Appeal2018-000355 Application 13/950,719 reflector, or a Van Atta array) which reflect an incoming beam in only one direction, back towards its source." Id. (citing THE IEEE STANDARD DICTIONARY OF ELECTRICAL AND ELECTRONICS TERMS, 925 ( 6th ed., IEEE Std. 100-1996) ("retro-reflector (illuminating engineering): A device designed to reflect light in a direction close to that at which it is incident, whatever the angle of incidence")). Id. Appellants argue that "Auer describes a geometry of thin parallel fibers with a spacing selected to increase their reflective properties for a specific frequency, but with no effect on the direction of the reflected beam." Id. The Specification discloses that "[ r ]etroreflector," as that term is used herein, includes "passive" retroreflectors that reflect a signal back in the direction from which it came (e.g., a comer cube or a Van Atta array), and also "active'" retroreflectors which boost or filter a received signal or send a modulated response signal back in the direction from which a signal was received (e.g., a Van Atta array including switches for modulation of the retroreflection, as described in Thornton, et al., "Modulating retro-reflector as a passive radar transponder," Elect. Lett. (Sept. 1998) 34(19): 1880-1881, which is incorporated by reference herein). Spec. 4: 19--26 ( emphasis added). This passage from the Specification discloses that the claim term "retroreflector" is meant to include both passive and active retroreflectors, while also distinguishing between them; however, this passage does not expressly provide a definition of the claim term "retroreflector." We agree with Appellants that the claim term "retroreflector" is a term of art, with a particular meaning that is distinct from the term "reflector," or the term "radar reflector," as used in Auer (which only reflects electromagnetic radiation back along the incident path when the reflector's surface is perpendicular to the incident path). We also 5 Appeal2018-000355 Application 13/950,719 accept Appellants' definition as set forth in the IEEE Standard Dictionary of Electrical and Electronics Terms, as set forth supra. Cf ENGLISH OXFORD LIVING DICTIONARIES (https:// en.oxforddictionaries.com/ definition/us/retroreflector) (last visited Sept. 6, 2018) ( defining "retroreflector" to mean "[a] device which reflects light back along the incident path, irrespective of the angle of incidence") ( emphasis added); https:// en.oxforddictionaries.com/ definition/us/reflector (last visited Sept. 6, 2018) ( defining "reflector" to mean-more broadly than a retroreflector, "[a] piece of glass, metal, or other material for reflecting light in a required direction"). Notably, Appellants' definition is consistent with the use of the claim term "retroreflector" in the prior art. 6 Auer discloses a "radar reflective reflector," but does not disclose a retroreflector, as claimed. See, e.g., Auer ,r 7. In particular, Auer is concerned with an "effective reflecti[ on] surface" as "an object-specific parameter" (wherein the object may be a pedestrian or cyclist). Id. ,r,r 7, 8. Auer discloses that the construction of reflector 1 (which is formed of individually spaced, strip-shaped, conductive elements 7 arranged in a pattern) results in a significant increase in the effective reflecting surface of the object, "as long as the individual element lengths the wavelengths of roughly correspond to reflecting radar beams [sic]." Id. ,r,r 24--27, Fig. 2. Auer also discloses that "[ t ]he spacing of the individual elements ... is 6 See Bas ,r 3 ("[ c ]omer reflector structures are known in the art as means for reflecting electromagnetic radiation ... including radar, ... back towards the source of the energy"); Larsen ,r 2 ("comer cube retro-reflectors ... redirect an incoming beam of incident light from a wide range of viewable angles back towards the source of the incident light without the need for moving optics or other assemblies"). 6 Appeal2018-000355 Application 13/950,719 essential, as the progressively increased with increasing number of individual elements 7 per surface of the reflector 1 [sic]." J d. Thus, although Auer's reflector 1 reflects radar from an improved effective reflection surface, Auer does not disclose that the reflected radiation is reflected back along the incident path, irrespective of the angle of incidence, as required by the claim term "retroreflector." Accordingly, we do not sustain the Examiner's rejection of independent claim 1, and claims 2, 4--6, 8, 10, 11, and 24, which depend from claim 1. The Examiner relies on the same finding with respect to Auer as relied on in the rejection of claim 1, as set forth supra, for disclosing the step of "retroreflecting the radar signal" as recited in independent claim 25, and, therefore, for essentially the same reasons as set forth supra, we do not sustain the Examiner's rejection of independent claim 25 and claims 26, 28, 29, 32, 34, 38, and 43, which depend from claim 25. Final Act. 8-9. Re} ection II Regarding claim 20, which depends from independent claim 1, the Examiner's reliance on Moore, JR. for teaching "a second retroreflector attached to ... [a] garment," in view of Moore, JR.'s disclosure of the use of two antennas for communicating signals within an RFID technology application, does not cure the deficiencies in the Examiner's reliance on Auer for teaching a (first) retroreflector, for the reasons set forth supra with respect to claim 1. Final Act. 11 (citing Moore, JR. ,r 15). Notably, the claim term "retroreflector" does not appear in Moore, JR. Accordingly, we do not sustain the Examiner's rejection of claim 20. 7 Appeal2018-000355 Application 13/950,719 Re} ection III Regarding claims 7 and 33, which depend from independent claims 1 and 25, respectively, the Examiner's reliance on Frysz for teaching that "the retroreflected radar signal includes the demographics of the pedestrian" does not cure the deficiencies in the Examiner's reliance on Auer for teaching a retroreflector, for the reasons set forth supra with respect to claim 1. Final Act. 11-12 (citing Frysz ,r 15). Notably, the claim term "retroreflector" does not appear in Frysz. Accordingly, we do not sustain the Examiner's rejection of claims 7 and 33. Re} ection IV Regarding claim 9, which depends from independent claim 1, the Examiner's reliance on Wootton for teaching that "the response signal is frequency encoded by vibration of the retroreflector" does not cure the deficiencies in the Examiner's reliance on Auer for teaching a retroreflector, for the reasons set forth supra with respect to claim 1. Final Act. 12 ( citing Wootton 2:36-37 ("information obtained is a vibration signature of the target"). Notably, the claim term "retroreflector" does not appear in Wootton. Moreover, we are persuaded by Appellants' argument that Wootton fails to disclose frequency encoding the response signal from a reflector by vibrating the reflector, as required in claim 9. Appeal Br. 22. Rather, as argued by Appellants, Wootton discloses interrogating a target using a laser vibrometer to identify a target by measuring the vibration of the target. Id.; see, e.g., Wootton, Abstract. Accordingly, we do not sustain the Examiner's rejection of claim 9. 8 Appeal2018-000355 Application 13/950,719 Rejection V Regarding claims 18 and 39, the Examiner relies on Bas for teaching "an omnidirectional comer reflector ... configured to control the angular divergence of the retroreflected signal," and reasons that it would have been obvious "to have modified the retroreflector of Auer with the properties of [the] Bas retroreflector so that at least a portion of the reflected electromagnetic radiation can be optimally returned regardless of the position of the illumination source with respect to the object." Final Act. 13-14 (citing Bas ,r,r 2, 7, 16). Appellants argue that "the Examiner failed to show that claim 1 is primafacie anticipated by Auer, because ... [Auer] does not teach or suggest a retroreflector, as recited ... [in] claim 1," and that"[ w ]hile Bas does teach comer reflectors, they are tiny enough to be embedded in a coating, and thus are not suitable for reflecting the frequencies recited in claims 1 and 25." Appeal Br. 24. Appellants submit that [ w ]hile it is true that changing the size of an element is normally routine in the art, this is not true when the change in size scale is large enough to defeat the purpose of the original invention. The omni-directional comer reflectors of Bas must be small enough to be embedded in a coating with a variety of random orientations in order to maintain their omnidirectional function. This is not possible for reflectors that function in the recited frequency ranges, which have a size scale on the order of centimeters or larger. Id. at 24--25. The Examiner responds that Appellants' arguments "amount to a general allegation that ... it would not be possible to maintain the omnidirectional function of the smaller size comer reflectors of Bas for recited frequency ranges," and the Examiner determines that "[t]he 9 Appeal2018-000355 Application 13/950,719 omnidirectional reflection function of the reflector depends on the geometry and should not change depending on the size change of the comer reflector." Ans. 7-8. Appellants reply that [ t ]he comer reflectors of Bas must be embedded with a variety of random orientations in order to maintain their omnidirectional function. This is clear and obvious physics, and is also fully described in Bas. . . . It is not so much that the larger comer reflectors do not function in the same way as smaller ones, as that it is not practical to embed centimeter-plus size comer cubes into a paint that is meant to be applied to an object. Thus, it would defeat a primary purpose of Bas (a reflective paint) to use comer cubes large enough to reflect vehicle radar. Reply Br. 5 ( citing Bas ,r,r 16, 17, 20). We determine that the Examiner's reliance on Bas cures the deficiencies in the Examiner's reliance on Auer for disclosing a retroreflector ( or for retroreflecting a radar signal), as discussed with respect to independent claims 1 and 25 supra. Bas discloses that "[ c ]omer reflector structures are known in the art as means for reflecting electromagnetic radiation (energy or field strength), including radar ... back towards the source of the energy." Bas ,r 3. Bas also discloses that a known application for "comer reflectors" is on "signs," and that "[g]enerally, comer reflectors ... [ on sign applications] are static structures on the order of tens of centimeters in size." Id. With respect to Bas' improvement (i.e., a miniature omni-directional comer reflector (MOCR) disposed in a coating (see, e.g., Bas ,r,r 13, 16), Bas discloses that the MOCR coating "may be utilized to specifically mark objects in the non-visible electromagnetic spectrum, as for example in the budding technologies of road recognition systems and automobile autopilots," which suggests the use of retroreflectors-in general 10 Appeal2018-000355 Application 13/950,719 and not the improved MOCR coatings, in Appellants' field of object identification by vehicles (id. ,r 20). Thus, we determine that it would have been obvious to one skilled in the art to have substituted Auer's radar reflective reflector with a known comer reflector 7 ( which is one type of retroreflector), which may be worn by Auer's pedestrian or cyclist, to reflect radar back towards Auer's radar locating device or vehicle, as taught in Bas, to increase the safety of the pedestrian or cyclist moving in traffic. See, e.g., Auer ,r 8 ( disclosing that a vehicle is equipped with a radar detection device); ,r 9 ( disclosing that the radar-reflecting reflector and radar detection device is intended to increase the safety of the pedestrian or cyclist moving in traffic). Alternatively, we determine that Bas is evidence that a radar- reflecting reflector and a retroreflector for reflecting electromagnetic radiation are known substitutes in the field of radar detection devices, notwithstanding that the focus of Bas is an improvement over known comer reflectors, namely, to use miniature omni-directional comer reflectors in a reflective coating. See Bas, Abstract; KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398,416 ("[Where] 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 re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR, 550 U.S. at 418-21 ("A reference may be read for all that it teaches, including uses beyond its primary purpose"); In re Gurley, 27 F.3d 551, 553 7 To clarify, our modification involves the known comer reflector, as disclosed in Bas, and not the MOCR improvement, which is the subject matter of Bas' invention. 11 Appeal2018-000355 Application 13/950,719 (Fed. Cir. 1994) ("[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use"). Because our proposed modification of Auer involves comer reflectors (i.e., retroreflectors) that are not miniature, but rather, on the order of tens of centimeters in size, as taught by Bas supra, Appellants' argument is moot. Appellants do not dispute the Examiner's finding, as set forth supra, that Auer teaches a reflector configured to reflect radiation having a frequency of 1 to 300 GHz, as claimed, by disclosing that the structure of Auer' s reflector is adjustable based on the search frequency of a radar locating device. See, e.g., Auer ,r 26. We interpret the Examiner's determination as relying on design choice, and we agree with the Examiner that it would have been an obvious design choice to configure a retroreflector to reflect radiation having a frequency of 1 to 300 GHz. Scott is evidence that radio transceivers are well-known as operating in a millimeter band, and Scott specifically teaches that operating a transceiver in the 60 GHz band, which is within the claimed range, is preferable for a retroreflective target. See Scott ,r 115. Notably, "a millimeter band" generally refers to "the wavelength of radio signals on frequencies between 30 GHz and 300GHz," which significantly overlaps the claimed range. https://fcc.gov/wireless /bureau-divisions/broadband-division/millimeter- wave (last visited Sept. 18, 2018). This overlap of the claimed range creates a prima facie case of obviousness. See In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) ("Such overlap itself provides sufficient motivation to optimize the ranges."). 12 Appeal2018-000355 Application 13/950,719 Accordingly, we sustain the Examiner's rejection of claims 18 and 39. Because we rely on Bas for disclosing a retroreflector as recited in independent claims 1 and 25, however, we designate our affirmance as a new ground of rejection, pursuant to our authority under 37 C.F.R. § 41.50(b ), to provide Appellants a fair opportunity to respond. Re} ection VI Dependent claims 3 and 2 7 Regarding claims 3 and 27, the Examiner relies on Larsen for teaching "[a] retroreflector ... configured to boost the power of the retroreflected information signal." Final Act. 14, 16 ( citing Larsen ,r 31 ( disclosing that "the reflectance of the photonic crystal layer is changed by varying the voltage across the conductive layers by the modulation source")). Appellants argue, inter alia, that "while Larsen teaches a variable reflectance provided by the photonic crystal layer, it does not teach or suggest reflecting more light than impinges on the surface of the reflector ('boosting' the power of the signal) as recited in these claims." Appeal Br. 28. We are persuaded by Appellants' argument. Paragraph 31 of Larsen discloses "a variably reflective surface 202," wherein "[t]he reflectance of the photonic crystal layer 210 is changed by varying the voltage across the conductive layers 208, 212 by the modulation source 216," however, a preponderance of the evidence does not support the Examiner's finding that this passage discloses that the retroreflector is configured to boost the power of the retroreflected information signal, which implies increasing the power to a level greater than the power of the signal received by the retroreflector, as claimed. 13 Appeal2018-000355 Application 13/950,719 Accordingly, we do not sustain the Examiner's rejection of dependent claims 3 and 27. Dependent claims 12 and 19 Regarding claims 12 and 19, the Examiner relies on Larsen for teaching "a low-power retro-reflective communication device" that "only requires power for the modulator circuit," and reasons that it would have been obvious "to have modified the retroreflector of Auer with the retroreflector property of Larsen in order to communicate telemetry information to the remote system." Final Act. 15 (citing Larsen ,r 36). The Examiner also relies on Larsen for teaching "[a] retroreflector ... [having] a frequency dependent response," and reasons that it would have been obvious "to have modified the retroreflector of Auer with the retroreflector property of Larsen to increase the effective amount of information per transition." Final Act. 15-16 (citing Larsen ,r,r 31, 32). Appellants do not dispute the Examiner's findings or reasoning with respect to Larsen. See Appeal Br. 25-28; Reply Br. 3-5. Appellants argue that "the Examiner failed to show that claim 1 is prima facie anticipated by Auer, because ... [Auer] does not teach or suggest a retroreflector, as recited ... [in] claim 1," and that "[t ]his deficiency is not repaired by the addition of Larsen." Appeal Br. 29-30. We determine that the Examiner's reliance on Larsen cures the deficiencies in the Examiner's reliance on Auer for disclosing a retroreflector ( or for retroreflecting a radar signal), as discussed with respect to independent claims 1 and 25 supra. Larsen discloses "a low-power retro- reflective communication system that reflects modulated light back in substantially the same direction as the light source using a retro-reflector," 14 Appeal2018-000355 Application 13/950,719 for example, "a comer-cube retro-reflector." Larsen, Abstract. Larsen also discloses that "[ t ]he term light is used throughout this disclosure for convenience only and is intended to include any frequency of electromagnetic radiation," and "[a]s one of ordinary skill in the art would appreciate, the aspects of the present disclosure could be applied to ... radar applications." Id. ,r 30 (emphasis added). Larsen further discloses that an advantage of a comer-cube retroreflector is that they are "self- aiming, thereby reducing the need for power or time to correctly aim the communications device." Id. ,r 35. Larsen also discloses that the comer- cube retroreflectors may be applied to "objects of interest." Id. ,r 49. Thus, we determine that it would have been obvious to one skilled in the art to have substituted Auer's radar reflective reflector with a comer-cube reflector (which is one type of retroreflector), which may be worn by Auer's pedestrian or cyclist, to reflect radar back towards Auer's radar locating device or vehicle to provide self-aiming, as taught by Larsen, and to increase the safety of the pedestrian or cyclist moving in traffic. See, e.g., Auer ,r,r 8, 9; KSR, 550 U.S. at 416. As set forth supra, we are not apprised of error in the Examiner's determination that it would have been an obvious design choice to configure a retroreflector to reflect radiation having a frequency of 1 to 300 GHz. Accordingly, we sustain the Examiner's rejection of claims 12 and 19; however, because we rely on Larsen for disclosing a retroreflector as recited in independent claims 1 and 25, we designate our affirmance as a new ground of rejection, pursuant to our authority under 37 C.F.R. § 41.50(b ), to provide Appellants a fair opportunity to respond. 15 Appeal2018-000355 Application 13/950,719 Re} ection VII Regarding claims 13 and 14, the Examiner relies on Grimm for teaching that "the retroreflector is configured to use power only under a predetermined condition," such as the time of day (i.e., "at all times during darkness [or] low lighting"), and reasons that it would have been obvious "to have modified the wearable radar reflector of Auer with the powering property of Grimm's communication system to maintain longevity of the power source." Final Act. 16-17 (citing Grimm ,r 29). Appellants do not dispute the Examiner's findings or reasoning with respect to Grimm. See Appeal Br. 25-28; Reply Br. 3-5. Appellants argue that "the Examiner failed to show that claim 1 is prima facie anticipated by Auer, because ... [Auer] does not teach or suggest a retroreflector, as recited ... [in] claim 1," and that "[t ]his deficiency is not repaired by the addition of Larsen." Appeal Br. 29-30. However, for the reasons stated supra, we determine that with respect to claim 1, Larsen cures the deficiencies in the Examiner's reliance on Auer for disclosing a retroreflector ( or for retroreflecting a radar signal). Appellants also argue that "Larsen does not actually teach power boosting" and that Grimm fails to remedy the deficiency in the Examiner's reliance on Larsen for power boosting. Appeal Br. 29-30. However, "power boosting" is not a requirement of the retroreflector as recited in claims 1, 12, 13, and 14; rather, claims 3 and 27 recite limitations regarding boosting the power of the reflected radar signal, which are subject to Rejection VI supra. As set forth supra, we are not apprised of error in the Examiner's determination that it would have been an obvious design choice to configure 16 Appeal2018-000355 Application 13/950,719 a retroreflector to reflect radiation having a frequency of 1 to 300 GHz.Accordingly, we sustain the Examiner's rejection of claims 13 and 14. Because we rely on Larsen for disclosing a retroreflector as recited in by independent claim 1 and 25, however, we designate our affirmance as a new ground of rejection, pursuant to our authority under 37 C.F .R. § 41.50(b ), to provide Appellants a fair opportunity to respond. Re} ection VIII Regarding claims 15-17, 36, and 37, which depend from independent claims 1 and 25, respectively, the Examiner's reliance on Grimm for teaching that the reflector may further comprise "an accelerometer" and for teaching "storing movement data for the pedestrian," does not cure the deficiencies in the Examiner's reliance on Auer for teaching a retroreflector, as recited in claims 1 and 25, for the reasons set forth supra. Final Act. 18-20 ( citing Grimm ,r 23). Notably, the claim term "retroreflector" does not appear in Grimm. Accordingly, we do not sustain the Examiner's rejection of claims 15-17, 36, and 37. Rejection IX Claims 21, 22, and 23, each of which depends from independent claim 1, recite, in relevant part, different types of retroreflectors: a comer cube, a composite comer cube, and a Van Atta array. Appeal Br. 41 (Claims App.); see Spec. 4: 19-23 (listing a comer cube and a Van Atta array as examples of retroreflectors ). The Examiner relies on Scott for disclosing "a metallic comer-cube retro reflector" and also "a passive Van-Atta type retro reflector." Final Act. 21-22 ( citing Scott ,r 26). The Examiner reasons that 17 Appeal2018-000355 Application 13/950,719 it would have been obvious "to have modified the wearable radar reflector of Auer with the retro-reflector of Scott to enable detection of the target." Id. Appellants argue that "the Examiner failed to show that claim 1 is prima facie anticipated by Auer, because ... [Auer] does not teach or suggest a retroreflector, as recited in claim 1." Appeal Br. 34. Appellants also argue that "[ s ]ince Auer [does] not teach or suggest the use of a retroreflector, there would be no motivation to combine it with the comer cubes or Van Atta arrays disclosed in Scott." Id. We determine that the Examiner's reliance on Scott cures the deficiencies in the Examiner's reliance on Auer for disclosing a retroreflector, as discussed with respect to independent claim 1 supra. Scott discloses that retro-reflectors are a "simple" and "practical" substitute for "prior art ... powered transponders and transmitters," such as radio frequency systems. Scott ,r,r 6, 8. Scott's invention "relates to a hand-held electromagnetic transceiver acting as a pulsed RADAR ... device that can detect the presence of one or many objects via passive retro-reflectors that are close or distant in a preferred angle of detection and to ignore any retro- reflector not within that preferred angle of detection." Id. ,r 21. Scott further discloses that an advantage of its invention is "that it can detect the presence of several passive retro-reflectors located at any range within the predetermined direction." Id. ,r 11. Scott specifically discloses [a] system comprising RADAR and retro-reflector operating as separate devices. The radar is configured to transmit a beam of radio frequency in the direction of interest and to detect the reflected signal from a compatible retro-reflector. . . . In a preferred embodiment the retro-reflector would be a passive Van-Atta ... retro-reflector .... A metallic comer cube retro- 18 Appeal2018-000355 Application 13/950,719 reflector could be used in situations where physical size is less important. Scott ,r 90. As set forth supra, we are not apprised of error in the Examiner's determination that it would have been an obvious design choice to configure a retroreflector to reflect radiation having a frequency of 1 to 300 GHz. Thus, we determine that it would have been obvious to one skilled in the art to have substituted Auer's radar reflective reflector with a retroreflector, including a comer cube, composite comer cube, and/or Van Atta array, as disclosed by Scott, which may be worn by Auer' s pedestrian or cyclist, to enable detection of the target (as determined by the Examiner supra), and also to detect the presence of several passive retro-reflectors at any range within the predetermined direction, as taught in Scott, to increase the safety of the pedestrian or cyclist moving in traffic. See, e.g., Auer ,r,r 8, 9. Alternatively, we determine that Scott is evidence that a radar- reflecting reflector and a retroreflector for reflecting electromagnetic radiation are known substitutes in the field of radar detection devices. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 ("[Where] 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"); Mouttet, 686 F.3d at 1331, citing KSR, 550 U.S. at 418-21 ("A reference may be read for all that it teaches, including uses beyond its primary purpose"). We are also not persuaded by Appellants' argument, as set forth supra, that because Auer discloses a radar reflector instead of a retroreflector, there would be no motivation to substitute Auer's radar 19 Appeal2018-000355 Application 13/950,719 reflector with Scott's retroreflectors (i.e., comer cubes or Van Atta arrays). To the contrary, as set forth supra, Scott suggests that such retroreflectors are a simple and practical substitute for paired radar detection systems. Accordingly, we sustain the Examiner's rejection of claims 21, 22, and 23. Because we rely on Scott for disclosing a retroreflector as recited in independent claim 1, however, we designate our affirmance as a new ground of rejection, pursuant to our authority under 37 C.F.R. § 4I.50(b), to provide Appellants a fair opportunity to respond. RejectionX Regarding independent claim 44, the Examiner finds that Auer teaches a method for preventing collisions, comprising sending a radar signal having a frequency of 1 to 300 GHz from an operating vehicle, and receiving a retroreflected response radar signal from a pedestrian in response to the sent signal, as claimed. Final Act. 22 (Auer ,r,r 1, 2, 26). The Examiner determines that Auer fails to disclose taking action to prevent the vehicle from striking the pedestrian, or to mitigate the effect of striking the pedestrian, as claimed, and relies on Kikuchi for teaching a vehicle control system with a controller that "'performs a deceleration control of the vehicle with respect to an object existing in a traveling direction of the vehicle."' Id. at 22-23 (citing Kikuchi ,r,r 11-12). The Examiner reasons that it would have been obvious "to have modified the method of Auer with the action step of Kikuchi to provide a vehicle control system which prevents the vehicle control from being activated with respect to a stationary object which is not an obstacle to a subject vehicle." Id. at 23 (citing Kikuchi ,r 7). 20 Appeal2018-000355 Application 13/950,719 Claim 57, which depends from claim 44, recites, in relevant part, "wherein the radar signal has a frequency of 70 to 85 GHz." Appeal Br. 43 (Claims App.). The Examiner's reliance on Kikuchi for teaching the preventive action step does not cure the deficiencies in the Examiner's reliance on Auer for teaching a retroreflector, for the reasons set forth supra with respect to claim 1. Notably, the claim term "retroreflector" does not appear in Kikuchi. Accordingly, we do not sustain the Examiner's rejection of independent claim 44, and claim 57 depending therefrom. NEW GROUND OF REJECTION We enter a new ground of rejection for independent claims 1 and 25, and dependent claims 2, 4---6, 8, 10, 11, 20, 24, and 26, under 35 U.S.C. § 103, as unpatentable over Auer and any one of Bas, Larsen, and Scott, based on the findings and reasoning, as set forth supra with respect to Rejections V, VI, and IX, as applied to independent claims 1 and 25, and the additional findings presented infra, pursuant to our authority under 3 7 C.F.R. § 41.50(b). Independent claims 1 and 25 We rely on Scott in each case as evidence that it would have been an obvious design choice to configure a retroreflector to reflect radiation having a frequency of 1 to 300 GHz, as set forth supra. Further, with respect to claim 1, we understand the claim term "information signal"-as in "the retroreflector is ... configured to retroreflect an information signal from a vehicle" ( emphasis added), to be the signal transmitted from the vehicle to the reflector, i.e., incoming into the reflector. The Specification discloses that a characteristics of the incoming 21 Appeal2018-000355 Application 13/950,719 signal includes, for example, its frequency (which "may indicate that it is used for parking purposes rather than for collision avoidance purposes") (Spec. 7:4--5), and we determine that frequency is inherent "information" for signals sent from the radar devices of each of Bas, Larsen, and Scott. Claim 25 requires "the retroreflection [to] indicate[] information to the radar source about a position of ... [the object]." Appeal Br. 41 (Claims App.). We also determine that inherent in the signal that is reflected back to the reflector is information about the position of an object, namely, that an object with a reflector is, in fact, positioned within the range of the radar source. Dependent claims 2 and 26 The Specification defines "passive" reflection as "retroreflectors that reflect a signal back in the direction from which it came (e.g., a comer cube or a Van Atta array)," as compared to "active" reflection, wherein reflectors "boost or filter a received signal or send a modulated response signal back in the direction from which a signal was received (e.g., a Van Atta array including switches for modulation of the retroreflection ... ). " Spec. 4: 19-- 24. Bas generically discloses that "[ c ]omer reflector structures are known in the art as means for reflecting electromagnetic radiation," and thus, discloses that the retroreflector is configured to passively reflect the information signal, as claimed. Bas ,r 3. Similarly, Larsen discloses comer-cube reflectors as generally designed to "redirect an incoming beam of incident light from a wide range of viewable angles back towards the source of the incident light without the need for moving optics or other assembles"-i.e., passive retroreflectors. Larsen ,r 2. Likewise, Scott discloses using "passive retro-reflectors attached to or worn by people or objects." Scott, Abstract. 22 Appeal2018-000355 Application 13/950,719 Thus, Bas, Larsen, and Scott disclose known "passive" retroreflectors, and we determine that it would have been obvious to one of skill in the art to substitute Auer's radar-reflective reflector with known passive retro- reflectors, such as comer cube or Van Atta array reflectors, as taught in Bas, Larsen, and Scott, to reflect radar back towards Auer' s radar locating device or vehicle, as taught in Bas, Larsen, and Scott, to increase the safety of the pedestrian or cyclist moving in traffic, as taught in Auer. Dependent claims 4-6, 28, and 32 Appellants do not present arguments regarding the Examiner's rejection of claims 4---6, 28, and 32, apart from the arguments presented for independent claims 1 and 25. Appeal Br. 8-37; Reply Br. 3-5. Except for the disclosure of a retroreflector, we are not apprised of error in the Examiner's findings that Auer discloses "a radar-reflective reflector" that is configured to receive the information signal (i.e., radar beams emitted from a radar tracking device) and to emit (or transmit) a response signal (i.e., a reflector having a reflection surface for reflecting back radar beams to the radar device), as required by claims 4 and 28, and adopt them as our own. Final Act. 7, 9; see Auer ,r,r 7, 8. Regarding claims 5, 6, and 32, the Specification defines "identifying information" as "position or demographics." Spec. 2:13-15 ("[t]he retroreflector may ... emit a response signal, which may include identifying information for the pedestrian (e.g., position or demographics)." As discussed supra, we determine that inherent in the signal that is reflected back to the reflector is information about the position of an object, namely, that an object with a reflector (i.e., a pedestrian as disclosed by Auer) is, in fact, positioned within the range of the radar source. 23 Appeal2018-000355 Application 13/950,719 Dependent claims 8 and 29 Appellants do not present arguments regarding the Examiner's rejection of claims 8 and 29, apart from the arguments presented for independent claims 1 and 25. Appeal Br. 8-37; Reply Br. 3-5. The Specification discloses that "[ t ]he response signal may be encoded, for example, by a spatial dependence of the retroreflection" (Spec. 2: 15-18), and that "[ t ]he placement of [the] retroreflectors within the array may create a characteristic spatial pattern at the radar receiver" (id. at 7:22-23). Except for the Examiner's reliance on Auer for disclosing a retroreflector, we are not apprised of error in the Examiner's finding that Auer's radar-reflective reflector encodes the response signal by a spatial dependence of the reflection, due to the "spacing of the individual elements to one another" within the reflective surface, and adopt the Examiner's finding as our own. Final Act. 7 (citing Auer ,r,r 3, 26, 27). Dependent claims 10, 11, and 34 As discussed supra, "signal frequency" is an inherent characteristic of the information signal sent by Auer's radar source to Auer's reflector. Further, Auer's response signal is emitted in response to a characteristic of the information signal (i.e., signal frequency), as Auer discloses that the dimensions of individual elements 7 of Auer' s reflector are "determined by the search frequency of ... [the] radar locating device 4," as required by claims 10 and 11. Auer ,r 26. Dependent claim 20 Appellants do not present arguments regarding the Examiner's rejection of claim 20, apart from the arguments presented for independent claim 1. Appeal Br. 8-37; Reply Br. 3-5. Except for the Examiner's 24 Appeal2018-000355 Application 13/950,719 reliance on Auer for disclosing a retroreflector, we find that Auer discloses that "parts of clothing and/ or protective clothing of the object 2 [(i.e., a pedestrian)] are covered with the radar reflective fabric 9, for example, a motorcycle or bicycle helmet, or the radar reflective fabric 9 is sewn onto the clothing itself." Auer ,r 30. We determine that, in view of Auer's teaching that the radar fabric 9 may be discretely applied to helmets and fabrics that it would be obvious to one of ordinary skill in the art that a pedestrian may have a more than one radar fabric 9 attached to their garment, as required by claim 20. See also Scott ,r 106 (disclosing with reference to Figures 3A, 3B, that "light emitted by the transceiver must be incident on at least some retro-reflective material 12," wherein Figures 3A, 3B depict several retroreflectors attached to the garment of a person). Dependent claims 24 and 43 As set forth supra with respect to the frequency range recited in claim 1, we are not apprised of error in the Examiner's determination that it would have been an obvious design choice to configure a retroreflector to reflect radiation having a frequency of 1 to 300 GHz. Similarly, we are not apprised of error in the Examiner's determination that it would have been an obvious design choice to configure a retroreflector to reflect radiation having a frequency of 70 to 85 GHz, as recited in claims 24 and 43. Dependent claim 3 8 Appellants do not present arguments regarding the Examiner's rejection of claim 38, apart from the arguments presented for independent claim 25. Appeal Br. 8-37; Reply Br. 3-5. The Examiner finds that "Auer teaches the method of preventing collision ... comprising reporting movement data for the pedestrian." Final Act. 9 ( citing Auer ,r,r 7, 20, 22). 25 Appeal2018-000355 Application 13/950,719 Except for the Examiner's reliance on Auer for disclosing a retroreflector, we agree with the Examiner's finding that Auer's radar tracking device reports movement data for the pedestrian, as required by claim 38, by detecting and signaling (i.e., reporting) the position of pedestrians. NEW GROUND OF REJECTION Dependent claims 7 and 33 We enter a new ground of rejection for claims 7 and 33, under 35 U.S.C. § 103, as unpatentable over Auer and any one of Bas, Larsen, and Scott, and further in view of Frysz, based on the findings and reasoning, as set forth supra with respect to Rejections V, VI, and IX, as applied to independent claims 1 and 25, and the additional findings presented infra, pursuant to our authority under 3 7 C.F .R. § 41. 50(b ). Appellants do not present arguments regarding the Examiner's rejection of claims 7 and 33, apart from the arguments presented for independent claims 1 and 25. Appeal Br. 20-22; Reply Br. 3-5. Except for the Examiner's reliance on Auer for disclosing a retroreflector, we adopt the Examiner's findings and reasoning with respect to claims 7 and 33 as our own. Final Act. 11-12 (citing Frysz ,r 15). In other words, the Specification discloses that "'[d]emographics' of a pedestrian may include species, age, sex, physical capabilities, or other relevant information about the pedestrian" (Spec. 5:5---6 (emphasis added)), and we agree with the Examiner that Frysz' s disclosure of information such as a "treating physician's name and contact information, and ... patient's name, contact information, medical condition and treatment" (Frysz ,r 15) is a disclosure of "demographics," as claimed, and as applied to the pedestrian of Auer. 26 Appeal2018-000355 Application 13/950,719 NEW GROUND OF REJECTION Dependent claims 15-17, 36, and 37 We enter a new ground of rejection for claims 15-17, 36, and 37, under 35 U.S.C. § 103, as unpatentable over Auer and any one of Bas, Larsen, and Scott, and further in view of Grimm, based on the findings and reasoning, as set forth supra with respect to Rejections V, VI, and IX, as applied to independent claims 1 and 25, and the additional findings presented infra, pursuant to our authority under 37 C.F.R. § 4I.50(b). Appellants do not present arguments regarding the Examiner's rejection of claims 15-17, 36, and 37, apart from the arguments presented for independent claims 1 and 25. Appeal Br. 30-32; Reply Br. 3-5. Except for the Examiner's reliance on Auer for disclosing a retroreflector, we adopt the Examiner's findings and reasoning with respect to claims 15-17, 36, and 3 7 as our own. Final Act. 18-20 ( citing Grimm ,r 23); see, e.g., Grimm, Abstract (disclosing that "[a] transmitter broadcasts a global position of the vehicle as part of a vehicle periodic beacon message" and "[a] pedestrian- based device ... carried by the pedestrian ... has a transmitter and receiver for communicating a global position of the pedestrian as part of a pedestrian periodic beacon message"); id. ,r 23 ("[i]n the pedestrian standalone architecture, the pedestrian-based device ... may include GPS or other position-aiding sensors such as accelerometers or gyroscopes 64 for determining heading information," wherein "the information is collected and processed by a controller 66 ... [ and] broadcast and received using a transmitter and receiver"). 27 Appeal2018-000355 Application 13/950,719 NEW GROUND OF REJECTION Independent claim 44 and dependent claim 57 We enter a new ground of rejection for independent claim 44 and dependent claim 57, under 35 U.S.C. § 103, as unpatentable over Auer and any one of Bas, Larsen, and Scott, and further in view of Kikuchi, based on the findings and reasoning, as set forth supra with respect to Rejections V, VI, and IX, as applied to independent claims 1 and 25, and the additional findings presented infra, pursuant to our authority under 37 C.F.R. § 41.50(b). Appellants do not present arguments regarding the Examiner's rejection of independent claim 44 and dependent claim 57, apart from the arguments presented for independent claims 1 and 25. Appeal Br. 35-37; Reply Br. 3-5. Except for the Examiner's reliance on Auer for disclosing a retroreflector, we adopt the Examiner's findings and reasoning with respect to independent claim 44 as our own. Final Act. 22-23 ( citing Kikuchi ,r,r 7, 10-12). Regarding claim 57, as set forth supra with respect to the frequency range recited in claim 1, it would have been an obvious design choice to configure a retroreflector to reflect radiation having a frequency range of 70 to 85 GHz. DECISION The Examiner's rejection of claims 1, 2, 4---6, 8, 10, 11, 24--26, 28, 29, 32, 34, 38, and 43 under 35 U.S.C. § 102(a)(l) as anticipated by Auer is REVERSED, and we enter a NEW GROUND OF REJECTION of claims 1, 2, 4---6, 8, 10, 11, 20, 24--26, 28, 29, 32, 34, 38, and 43 under 35 U.S.C. 28 Appeal2018-000355 Application 13/950,719 § 103 as unpatentable over Auer and any one of Bas, Larsen, and Scott. The Examiner's rejection of claim 20 under 35 U.S.C. § 103 as unpatentable over Auer and Moore, JR. is REVERSED. The Examiner's rejection of claims 7 and 33 under 35 U.S.C. § 103 as unpatentable over Auer and Frysz is REVERSED, and we enter a NEW GROUND OF REJECTION of claims 7 and 33 under 35 U.S.C. § 103 as unpatentable over Auer and any one of Bas, Larsen, and Scott, and in further view of Frysz. The Examiner's rejection of claim 9 under 35 U.S.C. § 103 as unpatentable over Auer and Wootton is REVERSED. The Examiner's rejection of claims 18 and 39 under 35 U.S.C. § 103 as unpatentable over Auer and Bas is AFFIRMED, and we designate our affirmance as a NEW GROUND OF REJECTION. The Examiner's rejection of claims 3 and 27 under 35 U.S.C. § 103 as unpatentable over Auer and Larsen is REVERSED. The Examiner's rejection of claims 12 and 19 under 35 U.S.C. § 103 as unpatentable over Auer and Larsen is AFFIRMED, and we designate our affirmance as a NEW GROUND OF REJECTION. The Examiner's rejection of claims 13 and 14 under 35 U.S.C. § 103 as unpatentable over Auer, Larsen, and Grimm is AFFIRMED, and we designate our affirmance as a NEW GROUND OF REJECTION. The Examiner's rejection of claims 15-17, 36, and 37 under 35 U.S.C. § 103 as unpatentable over Auer and Grimm is REVERSED, and we enter a NEW GROUND OF REJECTION of claims 15-17, 36, and 37, under 35 U.S.C. § 103, as unpatentable over Auer and any one of Bas, Larsen, and Scott, and further in view of Grimm. 29 Appeal2018-000355 Application 13/950,719 The Examiner's rejection of claims 21-23 under 35 U.S.C. § 103 as unpatentable over Auer and Scott is AFFIRMED, and we designate our affirmance as a NEW GROUND OF REJECTION. The Examiner's rejection of claims 44 and 57 under 35 U.S.C. § 103 as unpatentable over Auer and Kikuchi are REVERSED, and we enter a NEW GROUND OF REJECTION of claims 44 and 57 under 35 U.S.C. § 103, as unpatentable over Auer and any one of Bas, Larsen, and Scott, and further in view of Kikuchi. FINALITY OF DECISION This decision contains new grounds of rejection as permitted under 37 C.F.R. § 4I.50(b). Section 4I.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. 30 Appeal2018-000355 Application 13/950,719 (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 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 (9th Ed., Rev. 08.2017, Jan. 2018). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b) 31 Copy with citationCopy as parenthetical citation