Ex Parte Opgenoorth et al

Patent Trial and Appeal Board

Jan 15, 2013

11516908 (P.T.A.B. Jan. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/516,908 09/07/2006 Bernd Opgenoorth 2005P09291US 9593
22116 7590 01/15/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
OBAID, FATEH M
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
01/15/2013 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 1
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3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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6
Ex parte BERND OPGENOORTH and JOACHIM SCHAMAGL 7
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9
Appeal 2011-003432 10
Application 11/516,908 11
Technology Center 3600 12
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Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and 16
MICHAEL W. KIM, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
Appeal 2011-003432
Application 11/516,908

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 22, 2010) and Reply Brief (“Reply Br.,” filed October 14,
2010), and the Examiner’s Answer (“Ans.,” mailed August 17, 2010).
Bernd Opgenoorth and Joachim Schamagl (Appellants) seek review 2
under 35 U.S.C. § 134 of a final rejection of claims 26-47 and 49, which 3
along with claims 1-25 and 48 withdrawn from consideration, are the only 4
claims pending in the application on appeal. We have jurisdiction over the 5
appeal pursuant to 35 U.S.C. § 6(b). 6
The Appellants invented a way of detecting a local utilization state of a 7
technical system for transporting and/or packaging objects, with the objects 8
having a device for identification, especially an RFID tag, the device for 9
identification having a data memory, the system having at least one read-10
write unit for the contactless reading of at least one data memory of an 11
object. (Specification ¶ 0002). 12
An understanding of the invention can be derived from a reading of 13
exemplary claim 26, which is reproduced below [bracketed matter and some 14
paragraphing added]. 15
26. A system 16
for detecting 17
a local utilization state 18
along a transport path 19
in a technical system 20
for the transporting of a plurality of objects, 21
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with the objects each having a device 1
for identification 2
having a data memory, 3
the system comprising: 4
a read-write unit comprising, 5
[1] means for contactless repeated reading of the data 6
memory of an object, 7
and 8
[2] means for analyzing local utilization states of the 9
technical system based on the reading of the data 10
memory of the object, 11
[3] the local utilization states including 12
a local congestion among the objects, 13
or 14
a shortage of the objects, 15
at a position along the transport path. 16
The Examiner relies upon the following prior art: 17
Bledsoe US 5,742,237 Apr. 21, 1998
Chung US 6,883,710 B2 Apr. 26, 2005
Claims 26-47 and 49 stand rejected under 35 U.S.C. § 103(a) as 18
unpatentable over Chung and Bledsoe. 19
ISSUES 20
The issues of obviousness turn primarily on whether Bledsoe describes 21
the function recited in limitation [2] of “analyzing local utilization states of 22
the technical system based on the reading of the data memory of the object.” 23
Appeal 2011-003432
Application 11/516,908

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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Chung 5
01. Chung is directed to an article tracking system. Chung 1:34-36. 6
Bledsoe 7
02. Bledsoe is directed to a tag location system for tracking the 8
location of items marked with a tag without the requirement that 9
the tags be polled by an interrogator, and to a dynamic and 10
adaptive monitor for a communication network which receives 11
and forwards tag information to a central station. Bledsoe 1:6-11. 12
03. Bledsoe monitors a communication network for a tag location 13
system which employs tags that transmit data without being polled 14
by an interrogator. Bledsoe also monitors an adaptive and 15
intelligent network of monitors, which forwards tag information 16
from one monitor to the next until the information is received by a 17
central station to determine the location of the tag based on the 18
information received. Bledsoe 2:18-27. 19
04. Bledsoe handles over 10,000 tags within range of the same 20
monitor at substantially the same time, in contrast to most 21
systems, which can handle only one. The large number of tags is 22
made possible by the fact that each tag transmits its ID at random 23
time relative to other tags, transmits only a few milliseconds, and 24
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in a typical application transmits only once per 5 minutes, so that 1
the likelihood of two tag transmissions overlapping is very low 2
unless the number of tags is huge. Bledsoe 2:28-50. 3
05. Each monitor has a section of memory elements for storing 4
such fixed things as: the controlling software, and a unique 5
identity of the monitor. The memory elements also store such 6
dynamically varying quantities as the identity of neighboring 7
monitors with which the monitor can communicate directly; the 8
neighboring monitor selected to provide a two-way 9
communication link to the central computer via a central monitor 10
(such neighboring monitor being called the output partner); the 11
neighboring monitors that depend on this monitor to provide them 12
a communication link to the central computer (input partners); and 13
a list of tags in the vicinity of the monitor, including the 14
identification and signal strength of each. Each monitor also has a 15
computer, which, by executing software programs and interfacing 16
with other monitor circuitry such as the transceiver, is able to 17
achieve all functions of the monitor. The software includes the 18
means for generating and interpreting communication messages 19
that allow each monitor to: 1) participate as one member of a 20
network or grid of monitors that can convey, in bucket brigade 21
fashion, messages between each monitor and a central monitor; 2) 22
gather the identity and signal strength of tags in its vicinity; send 23
changes in tag status to the central monitor; and 3) reestablish a 24
new communication link to the central computer if the previous 25
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link was lost or if a better link becomes available. Bledsoe 2:58 – 1
3:16. 2
06. The #handled for a given monitor is defined as the number of 3
descendants of that monitor. The load level for a given monitor is 4
defined as the sum of the #handled for that monitor plus the 5
#handled by its output partner. It is a measure of expected traffic 6
congestion/delays, and the smaller its value, the more attractive 7
this monitor becomes as a potential output partner for its 8
neighbors. Bledsoe 17:50-61. 9
ANALYSIS 10
We are not persuaded by the Appellants’ argument that Bledsoe fails to 11
describe a local utilization state. Appellants contend that the 12
rejection must consistently map the claimed elements on to the 13
prior art. In this instance the Examiner reads the recited 14
“objects” on the monitors of Bledsoe. In doing so, the rejection 15
would have to read the “local congestion” or “shortage of 16
objects” on a variable number of monitors, which is not 17
analogous to appellants' claims wherein congestion corresponds 18
to a variable number of objects passing through a position in a 19
technical system for the transporting of a plurality of objects a 20
period of time. Instead, the Bledsoe reference refers to a 21
different kind of congestion, i.e., the load level of individual 22
monitors as discussed at the citation provided with the 23
rejection: col. 17, lines 50-61. 24
Appeal Br. 6 (emphasis omitted). 25
Initially, we find Appellants have not relied on a construction under 35 26
U.S.C. § 112, sixth paragraph for the recited means, relying only on the 27
recited functions. Thus, we take such potential construction arguments to be 28
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waived. The function recited in limitation [2] is “analyzing local utilization 1
states of the technical system based on the reading of the data memory of the 2
object.” The claim does not further specify or narrow what is meant by local 3
and utilization. The claim also does not narrow the manner in which 4
analysis is based on the reading. As Bledsoe explicitly reads the load level 5
of a given monitor to analyze expected congestion (FF 06), Bledsoe clearly 6
analyzes some form of utilization states of the technical system based on the 7
reading of the data memory of the object. As the analysis is the same 8
irrespective of how local the data is, the structure is the same irrespective of 9
the degree of locality. 10
“[E]xpressions relating the apparatus to contents thereof during an 11
intended operation are of no significance in determining patentability of the 12
apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). 13
Furthermore, “inclusion of the material or article worked upon by a structure 14
being claimed does not impart patentability to the claims.” In re Otto, 312 15
F.2d 937, 940 (CCPA 1963). 16
As to the argument that there is no reason to combine the references, 17
Bledsoe provides an implementation for communication among Chung’s 18
article tracking RFID’s that allows far more volume than otherwise. FF 04. 19
The arguments for the remaining independent claims are similar. 20
Although claim 45 is a method claim, it is still the case that the analysis is 21
similar irrespective of degree of locality. 22
As to the dependent claims, the arguments for them simply recite the 23
added limitations and allege they are not found in the cited references. This 24
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is insufficient to act as a separate argument under 37 C.F.R. § 41.37. As our 1
reviewing court held, 2
we hold that the Board reasonably interpreted Rule 41.37 to 3
require more substantive arguments in an appeal brief than a 4
mere recitation of the claim elements and a naked assertion that 5
the corresponding elements were not found in the prior art. 6
In re Lovin, 652 F.3d 1349, 1357 (Fed Cir 2011). 7
The Examiner made findings of fact for each such claim and we adopt 8
them as our own. 9
CONCLUSIONS OF LAW 10
The rejection of claims 26-47 and 49 under 35 U.S.C. § 103(a) as 11
unpatentable over Chung and Bledsoe is proper. 12
DECISION 13
The rejection of claims 26-47 and 49 is affirmed. 14
No time period for taking any subsequent action in connection with this 15
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 16
§ 1.136(a)(1)(iv) (2011). 17
18
AFFIRMED 19
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msc 23