Ex Parte LU et al

Patent Trial and Appeal Board

Apr 16, 2015

12367999 (P.T.A.B. Apr. 16, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/367,999 02/09/2009 GUI-YANG LU P606 1050
23586 7590 04/17/2015
ROBERT E MALM
16624 PEQUENO PLACE
PACIFIC PALISADES, CA 90272
EXAMINER
BEE, ANDREW W.
ART UNIT PAPER NUMBER
2689
MAIL DATE DELIVERY MODE
04/17/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GUI-YANG LU, MICHAEL F. CRUZ, and PETER TROESCH
____________

Appeal 2012-009487
Application 12/367,999
Technology Center 2600
____________

Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Appellants request rehearing under 37 C.F.R. § 41.52 of a portion of
our Decision (“Dec.”) of December 31, 2014, in which we affirmed the
Examiner’s rejections of claims 1 and 3–5. Appellants timely filed the
Request for Rehearing (“Reh’g Req.”) on February 13, 2015.
As provided in 37 C.F.R. § 41.52(a)(1),
[t]he request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by
the Board. Arguments not raised, and Evidence not previously
relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section. . . .

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After consideration of Appellants’ Request for Rehearing and for the reasons
set forth below, we are not persuaded that the Decision is in error and do not
modify the Decision.
ANALYSIS
A. Anticipation Rejection of Claim 1
Appellants argue that we overlooked two principles in affirming that
Arai anticipates claim 1. Reh’g Req. 3. First, Appellants argue that we
overlooked the principle that “[o]ne cannot prove the absence of something
(e.g.[,] a power source) from an invention by its absence from a patent
drawing.” Id. Second, Appellants argue that we overlooked that “[t]here
must be a power source associated with an invention component if the
invention component requires power to operate.” Id.
1. First Principle
Claim 1 recites that “none of the current flowing within the resonant
circuit embedded in the resonant circuit structure being diverted to power
other devices, there being no other built-in power sources” (emphases
added). As we noted in our Decision, the Examiner determined that “Arai’s
Figure 2 does not show (1) the diversion of current from resonance circuit
portion 4 or (2) that resonance circuit portion 4 contains other components,
devices or power sources.” Dec. 7 (citing Final Act. 4).
Although the Examiner discussed only resonance circuit portion 4,
Appellants argue that “the Examiner’s conclusion . . . could be broadened
. . . to include [Reader/Writer] R/W 5 and ID tag 2” of Arai’s Figure 2.
Reh’g Req. 4 (emphasis added). Based on this broadening of the
Examiner’s conclusion, Appellants argue that Arai teaches the circuit
configuration of its product management system “has no power sources
whatsoever—an obvious impossibility.” Id.
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Nevertheless, claim 1 recites that power is not “diverted” and that no
“built-in” power sources are included, “within the resonant circuit.” Arai’s
Figure 2 depicts resonance circuit portion 4, R/W 5, and ID tag 2, as separate
elements. The Examiner’s conclusion was directed to Arai’s resonance
circuit portion 4; not the structure combining R/W 5, ID tag 2, and
resonance circuit portion 4. Final Act. 4. Appellants fail to provide any
evidence why the Examiner’s conclusion should be broadened in the manner
they propose, or why such broadening would be consistent with Arai’s
disclosure. Moreover, Appellants do not indicate where this broadening of
the Examiner’s conclusion was argued in their Appeal or Reply Briefs.
Reh’g Req. 3–5. We could not have overlooked an argument that was not
previously raised, and new arguments are not permitted in a Request for
Rehearing.
2. Second Principle
Appellants further argue Arai states that “information stored in the
ID tag 2 can be securely read and erased and information can be securely
written, overwritten and so on in the ID tag by conducting
reception/transmission of a signal between the R/W 5 and the ID tag 2
through the resonant circuit portion 4.” Reh’g Req. 6 (quoting Arai ¶ 38).
From this disclosure, Appellants conclude that resonance circuit portion 4
includes power-utilizing circuitry and power sources that provide power to
such circuitry. Id. at 6–7 (quoting App. Br. 6). Appellants argue that the
presence of such circuitry and sources is counter to the recitation of claim 1.
As we noted in our Decision, Appellants rely on a single embodiment,
Embodiment 5, in support of this argument. Dec. 9. Nevertheless, Arai’s
Figure 2 depicts neither power-utilizing circuitry nor power sources that
provide power to such circuitry. Id. (citing Ans. 3). Further, Arai discloses
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that such circuitry and sources may be present in the ID tag, not the
resonance circuit portion. Id.; see Ans. 3 (citing Arai ¶ 63).
Appellants further question whether it is possible for resonant circuit
portion 4 to perform communications with R/W 5 and ID tag 2 without a
source of power. Reh’g Req. 7. As we noted in our Decision, however,
Arai’s Figure 2 depicts electromagnetic waves 17 passing between R/W 5
and resonance circuit portion 4 and between resonance circuit portion 4 and
ID tag 2. Dec. 10. Communication between these elements of the circuit
configuration of a product management system, as depicted in Arai’s Figure
2, may be by an electromagnetic induction method. Id. (citing App. Br. 10–
11 (citing Arai ¶ 38)); see also id. (quoting Spec. 2:17–20 (“One approach to
powering a tag that has been successfully practiced for many years is to
supply the tag with power from the reader by means of an alternating
magnetic field generated by the reader”; emphases added).
Thus, we did not overlook that Arai’s resonance circuit portion 4 is
powered, as recited in claim 1. Instead, we were persuaded that Arai’s
Figure 2 depicts that none of the current flowing within resonance circuit
portion 4 is diverted to power other devices, and that Arai’s Figure 2 depicts
no other built-in power source, as recited in claim 1.
For the foregoing reasons, we are not persuaded that we overlooked
either principle identified by Appellants.
B. Obviousness Rejections of Claims 3–5
With respect to claims 3–5, Appellants argue that we overlooked the
three requirements for obviousness stated in “In re Vaeck, 947 F.2d 488 . . .
(Fed. Cir. 1991) and [Manual of Patent Examining Procedure (MPEP)]
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§ 2142 (2005).”1 Reh’g Req. 8. In particular, Appellants argue the
Examiner failed to establish that Arai teaches or suggests all of the
limitations recited in those claims. Id.
Applicants argue that we mistakenly construed the language of claims
3–5 to “merely recite a statement of intended use without supporting
structure.” Reh’g Req. 9; Dec. 11–12. Instead, Appellants argue that
“[t]here are no statements of use in the claims [and that] [t]he [recited]
limitations are purely structural.” Reh’g Req. 9 (emphases added).
Consequently, Appellants argue that we erred in concluding that all of the
limitations of claims 3–5 are taught or suggested by Arai.
Claim 3 recites the function of “the structure in which the coil
assembly and the capacitor are embedded (emphasis added).” Appellants
argue that we have ignored these structural elements of claim 3. Reh’g Req.
11. As noted in our Decision, the Examiner found, and we agree, that each
of these elements is recited in claim 1 and is disclosed by Arai. Dec. 7
(citing Final Act. 3–4). The remaining recitations of claim 3 only describe
that these disclosed elements “function[] as a means by which a user can

1To the extent that Vaeck requires that “there must be some suggestion or
motivation, either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art, to modify the
reference or to combine reference teachings” (Reh’g Req. 8; see 947 F.2d
at 493–95), this is no longer an entirely accurate statement of requirements
for showing obviousness. As the U.S. Supreme Court explained, “[t]he
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of issued patents.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Further, we note
that the MPEP version, upon which Appellants rely, is not the current
version, and the current version no longer cites Vaeck, but instead cites KSR.
See MPEP § 2142 (9th ed. Mar. 2014); cf. MPEP § 2142 (8th ed. Rev. 4 Oct.
2005).
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hold and position the resonant circuit with one hand near the object to be
interrogated” (emphases added). Appellants failed to identify any particular
structure recited in claim 3 that permits this function to be performed.
In addition, Appellants contend that “[t]here is no way by which a
user can hold and position resonant circuit portion 4 with one hand as
specified by claim 3. And Arai et al. has nothing to say about holding and
positioning anything with one hand.” Reh’g Req. 12. Nevertheless, with
respect to Figure 3, Arai discloses that “a suitcase 35 of a tourist or the like
serves as a package body” (emphasis added), and suitcase 35 is depicted in
Figure 3 as having a handle. Arai ¶ 67; Dec. 7 (citing Final Act. 4); Reply
Br. 6 (discussing Arai’s Fig. 3). We are not persuaded that the recitation in
claim 3 of a possible function is anything but a statement of intended use or
that the “package body” does not teach that a person of ordinary skill in the
relevant art would understand that a user may manipulate Arai’s package
body to perform this function. See Dec. 12; see also KSR, 550 U.S. at 421
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”).
Claim 4 and claim 5, which depends from claim 4, describe the
structure of claim 1 “functioning as a security device.” As with claim 3,
Appellants failed to identify any structural element of the resonant-circuit
structure of claim 4 or 5, which is not already recited in claim 1. Reh’g Req.
9–10. To the extent that Appellants now assert that the recited structures’
goal of reacting to “tampering” somehow imparts additional structure to
claims 4 and 5, we are not persuaded by this assertion. Id.; see Dec. 13.
In construing “tampering,” we apply the broadest reasonable meaning
of the words in their ordinary usage, as those words would be understood by
one of ordinary skill in the art, taking into account any definitions supplied
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by Appellants’ Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). As we noted in our Decision, we are persuaded that the term
“tampering” is broad enough to encompass cutting or tearing a package.
Spec. 6:21–23 (“If the addressee is unsuccessful in reading the tag, the
resonant circuit has presumably been disabled by someone tampering with
the package en route by cutting the tape along junction 29 and unknowingly
cutting through the wire constituting loop 59”; emphases added); Dec. 13
(citing Final Act. 6).
Appellants provide no evidence to support their suggestion that
“tampering” does not include “violent” acts such as “cutting” or “tearing.”
See Reh’g Req. 13–15. Further, the dictionary definition for “tampering”
proffered by Appellants includes “damaging” as an example of “tampering”
Reh’g Req. 14 (quoting App. Br. 15). We did not overlook or misapprehend
this dictionary definition; instead, it simply is not inconsistent with our
construction of the claim term “tampering.” See Dec. 13.
Finally, Appellants disagree with the Examiner’s conclusion that
“[a]ny tampering that leads to extensive damage or destruction of the vehicle
door portion or frame, or to the package bodies can reasonably damage the
resonant circuits that are within the door portion or frame, or to the package
bodies, thus disabling the resonant circuits.” Ans. 6; see Reh’g Req. 18.
Appellants contend that, in the Reply Brief, they argued that “[t]here is no
disclosure of Appellant[s’] claim-5 invention in Arai et al. and
Appellant[s’] claim-5 invention is not obvious in view of Arai et al.” Id. at
20 (quoting Reply Br. 10).
As the Examiner noted, Arai teaches that “[a] resonant circuit portion
4 is formed in the package body 3.” Arai ¶ 30; see Ans. 5–6. Moreover, in
the Final Office Action, the Examiner notes Arai teaches that the resonant
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circuit portion 4 may comprise a first resonant circuit portion and a second
resonant circuit portion formed inside or on an inner portion of a cover of
package body 3, “for preventing separation due to external force, theft and
the like.” Arai ¶ 75; see Final Act. 5–7; Dec. 12–13.
Appellants also contend that claims 4 and 5 require that, in the event
of tampering with the object subject to interrogation, the resonant-circuit
structure disables the resonant circuit. Reh’g Req. 16. Appellants further
state that we should not mistake this argument as an attempt by Appellants
to rewrite the claims. Id. Nevertheless, Appellants fail to identify where
this argument was raised in their Appeal or Reply Brief. See id. at 16–18;
App. Br. 14–17; Reply Br. 9–10. We could not have misapprehended or
overlooked an argument that was not previously raised, and new arguments
are not permitted in a Request for Rehearing.
Therefore, we are not persuaded that we misapprehended or
overlooked Appellants’ arguments with respect to the recitations of claim 3–
5.
CONCLUSION
For the foregoing reasons, we grant Appellants’ request to the extent
that we have reconsidered the portion of our Decision of December 31,
2014, affirming the Examiner’s rejections of claims 1 and 3–5.
Nevertheless, our Decision affirming the Examiner’s rejections of claims 1
and 3–5 is maintained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED