Ex Parte Rodgers

Patent Trials and Appeals BoardNov 21, 2014

11624215 - (D) (P.T.A.B. Nov. 21, 2014)

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. 11/624,215 01/18/2007 James Neil Rodgers 6224 7590 11/21/2014 James Neil Rodgers 22915 Billy Brown Road Langley, BC V1M 4G3 CANADA EXAMINER TUN, NAY L ART UNIT PAPER NUMBER 2687 MAIL DATE DELIVERY MODE 11/21/2014 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 JAMES NEIL RODGERS _____________ Appeal 2012-009016 Application 11/624,215 Technology Center 2600 ______________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-009016 Application 11/624,215 2 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1, 3, 11, 13–17, and 24. Claims 2, 4–10, 12, and 18–23 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. We have reviewed Appellant’s arguments in the Appeal Brief filed October 20, 2011 (Br. 8–18) that the Examiner’s rejections of claims 1, 3, 11, 13–17, and 24 under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Taylor (US 6,967,577 B2; issued Nov. 22, 2005), Beigel (US 2007/0018832 A1; published Jan. 25, 2007), and Cole (US 2005/0228268 A1; published Oct. 13, 2005) (Ans. 5–9) are in error, and the Examiner’s response to Appellant’s arguments in the Appeal Brief (Ans. 9– 12). We agree with Appellant with regard to independent claims 1 and 24 that the Examiner did not properly articulate sufficient reasons to combine Taylor, Beigel, and Cole and that the collective teachings and suggestions of the applied references would not lead one of ordinary skill in the art at the time of Appellant’s invention to the subject matter of claims 1 and 24 on appeal (see Br. 8–17). Primarily, we agree with Appellant’s contentions set forth in the Appeal Brief (Br. 15–17) as follows: [P]roducing power through the use of wheel power is not new but has been known for many years. Similarly using RFID technology to track articles and or people has been known for many years. But no one prior to the Appellant conceived of using the wheels of a chattel to produce a power source for a transponder thereby making it active and using this power to transmit an identifying signal to a reader located in a cell tower. Appeal 2012-009016 Application 11/624,215 3 In summary, the problem solved by the Appellant was how to provide power from a source other than a cell tower during the transmit of transponder ID since using cell tower transmission to power a transponder would interfere with the proper transmission of cell phone calls. The Appellant solved this problem by reversing the power structure of the Taylor and Beigel cited references in that the power emanates from the stolen chattel. In the Taylor reference power emanates from the reader and in the case of Beigel from the reader and from a small battery housed in the in the transponder antenna. Again, to repeat, in stark contrast to Taylor and Beigel, who teach that the power to read comes from the reader the Appellant invention teaches that the power source on the chattel, when initiated, produces enough electromagnetic force to transform a passive transponder located on the missing chattel into an active transponder able to transmit an identifying signal to be picked up by a reader located at the cell tower. In other words the inventions are diametrically opposed. (Br. 15) (emphasis added). We also agree with Appellant’s following argument: Powering an active transponder from a charge generated by the rotation of the wheels of a missing chattel is not taught in any of the references or by a combination of the references cited by the Examiner when taking into account the Action Letter as a whole. The pith and substance of the Rodgers' application is a reversal of the normal procedure of a powered reader obtaining data from a passive transponder as taught in Taylor and also in view of Beigel. The essence of the Rodgers' Application is a power source applied to the transponder thereby making it active and using this power to transmit a powerful signal to a reader located upon a cell tower. This is not taught specifically or by implication in any of the cited prior art references, singularly or in combination. The combined prior art references, relied upon or not relied upon, as cited by the Examiner, do not support the obviousness [rejection] in that the combination of the entire prior art cannot provide the same advantage as the claimed invention. The Appeal 2012-009016 Application 11/624,215 4 inventive step of creating an active transponder from a passive transponder to shift signal power from the reader to the stolen chattel is not obvious to one of ordinary skill in the art at the time of the invention. (Br. 16). Therefore, we find that the base combination of Taylor, Beigel, and Cole does not activate an RFID transponder from a passive mode to an active mode using power generated from wheel rotation of a missing chattel, as recited in each of independent claims 1 and 24. Based on the foregoing determinations, we concur with Appellant’s main contention (see generally Br. 10–17) that the Examiner erred in finding that the combination of Taylor, Beigel, and Cole teaches or suggests a system of activating a passive RFID transponder “which is attached to the frame of a missing chattel by converting the passive RFID transponder into an active RFID transponder following an activation event upon which the active RFID transponder is powered by an electromagnetic charge generated by the rotation of the wheels of the missing chattel,” as recited in independent claim 1, and as similarly recited in remaining independent claim 24. Accordingly, we do not sustain the Examiner’s rejections of independent claims 1 and 24, as well as dependent claims 3, 11, and 13–17 depending respectively therefrom. CONCLUSION OF LAW The Examiner erred in rejecting claims 1, 3, 11, 13–17, and 24 under 35 U.S.C. § 103(a). Appeal 2012-009016 Application 11/624,215 5 DECISION 1 The Examiner’s rejections of claims 1, 3, 11, 13–17, and 24 are reversed. REVERSED dw 1 We make no determination of whether a corresponding rejection under 35 U.S.C. § 112, ¶ 1 is merited. See Advisory Action mailed April 20, 2010, p. 2 (“Examiner considered it as new matter because there is no [sic][sufficient] antecedent basis in the specification that the transponder can have two different power supplies that can be changed based on the condition of wheel motion.”).