Ex Parte Stevens et al

Patent Trial and Appeal BoardMay 30, 2013

11462981 (P.T.A.B. May. 30, 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. 11/462,981 08/07/2006 John K. Stevens VAI.P-064-2 6213 73549 7590 05/31/2013 Larson & Anderson, LLC re:VAI P.O. Box 4928 Dillon, CO 80435-4928 EXAMINER HOLLOWAY III, EDWIN C ART UNIT PAPER NUMBER 2683 MAIL DATE DELIVERY MODE 05/31/2013 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 _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte JOHN K. STEVENS, PAUL WATERHOUSE, and FLORIN TARCOCI ____________________ Appeal 2010-009488 Application 11/462,981 Technology Center 2600 ____________________ Before: JEAN R. HOMERE, ST. JOHN COURTENAY III, and TREVOR M. JEFFERSON, Administrative Patent Judges. JEFFERSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009488 Application 11/462,981 2 STATEMENT OF CASE1 Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 16.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Introduction The claims are directed to method and apparatus for an area-reading antenna that is dynamically-tuned to allow communication with one among myriad tags (Spec., 2:32-3:3 Summary of Invetnion). Claims 1 and 9, reproduced below, are illustrative of the claimed subject matter: 1. A method for use with a base station comprising a tunable area-reading antenna and myriad RF tags nearby, the method comprising the steps of: transmitting a power/clock field from the antenna at a first frequency below 1 MHz, thereby providing power and clock to a plurality of the RF tags; while the power/clock field is being transmitted, first transmitting a data signal from the antenna at a second frequency, the second frequency higher than the first frequency and below 1 MHz, and receiving a response from at least a first one of the RF tags at the antenna while not receiving a response from at least a second one of the RF tags; impedance tuning the antenna differently than during the first transmitting; while the power/clock field is being transmitted, for a second time transmitting a data signal from the antenna at the second frequency, and receiving a response from the at least a second one of the RF tags at the antenna. 1 Throughout the decision, we refer to the Appellants’ Appeal Brief (“App. Br.,” filed Feb. 24, 2010), and Reply Brief (“Reply Br.,” filed May 25, 2010), and the Examiner’s Answer (“Ans.,” mailed Mar. 26, 2010). 2 The real party in interest is Visible Assets, Inc. App. Br. 1. Appeal 2010-009488 Application 11/462,981 3 9. A method for use with a base station comprising a tunable area-reading antenna and myriad independently powered RF tags nearby, the method comprising the steps of: first transmitting a data signal from the antenna at a first frequency, the first frequency below 1 MHz, and receiving a response from at least a first one of the independently powered RF tags at the antenna while not receiving a response from at least a second one of the independently powered RF tags; impedance tuning the antenna differently than during the first transmitting; for a second time transmitting a data signal from the antenna at the first frequency, and receiving a response from the at least a second one of the independently powered RF tags at the antenna. References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Stevens Tuttle Urbas Watkins Ueda US 4,821,291 US 5,300,875 US 5,532,686 US 6,317,027 US 6,525,649 Apr. 11, 1989 Apr. 5, 1994 Jul. 2, 1996 Nov. 13, 2001 Feb. 25, 2003 Rejections The Examiner made the following rejections: Claims 9-12 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Stevens and Watkins. Ans. 3-5. Claims 1-8 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Stevens, Watkins and Urbas. Ans. 6-7. Claims 1-8 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Ueda, Watkins and Urbas. Ans. 7-9. Appeal 2010-009488 Application 11/462,981 4 Claims 9-12 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Ueda, Watkins and Tuttle. Ans. 9-10. Claims 13-16 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Stevens, Watkins and Urbas. Ans. 10-11. Claims 13-16 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Ueda, Watkins and Urbas. Ans. 11-12. OPINION Appellants contend that the Examiner erred because Watkins fails to teach or suggest a tunable area-read antenna for the reading of a myriad of tags. App. Br. 6. Appellants assert that Watkins teaches proximity RF tag reading which is different and inapplicable to reading a myriad of tags because of collision in response signals from multiple tags. App. Br. 6; Reply 2-3. Moreover, Appellants contend that Watkins fails to teach or suggest the limitation of a tunable antenna that “receiv[es] a response from at least a first one of the independently powered RF tags at the antenna while not receiving a response from at least a second one of the independently powered RF tags” and then after tuning the antenna “receiving a response from the at least a second one of the independently powered RF tags at the antenna” as recited in claim 9. App. Br. 9-11; Reply 3-4. The Examiner answers that Appellants’ claims are not limited to area- read antennas, because neither the specification nor the claims exclude any particular distance. Ans. 14. Moreover, the Examiner concluded that “area- reading” in the preamble is not a limitation of the claim given patentable weight. Ans. 4. Instead, the Examiner found that Watkins teaches or suggests in Figure 2 that an antenna can be used to read a RF tag at one Appeal 2010-009488 Application 11/462,981 5 frequency, retune the antenna if sufficient time has passed, and read a “different tag” if a tag may have moved into the scan area. Ans. 12. The Examiner found that Watkins teaches generally that multiple tags may be scanned and that Figure 2 teaches that Watkins has “the capability of detecting different tags of the plurality of tags with each interrogation” or scan. Ans. 12. The Examiner also argues that Watkins teaches a reader with an antenna that covers a wider area than prior art readers and therefore, Watkins teaches an area-reading antenna as claimed. Ans. 14. Having reviewed Appellants’ arguments, we are not persuaded that Watkins teaches or suggests the reading and detection of multiple tags in an area such that it “receiv[es] a response from at least a first one of the independently powered RF tags at the antenna while not receiving a response from at least a second one of the independently powered RF tags” and then after tuning the antenna “receiv[es] a response from the at least a second one of the independently powered RF tags at the antenna,” as recited in claim 9 (emphasis added). Indeed, while Figure 2 of Watkins teaches serially changing frequencies and detecting tags, it does not support that at least two tags are scanned with only one tag responding. We are not persuaded by the Examiner’s reliance on the general background of proximity readers and the range of proximity RF tag readers described in Watkins, col. 1, ll. 11-24, and the citations to hunting for tags, Watkins, col. 5, ll. 21-22, to indicate that Watkins is not limited to reading one tag at a time. Ans. 16. Although Watkins does not expressly exclude multiple RF tags, the general references to hunting for tags or increasing the range to read tags found in Figure 2 of Watkins does not teach or suggest receiving a response from at least a first one of the independently powered Appeal 2010-009488 Application 11/462,981 6 RF tags at the area-reading antenna while not receiving a response from at least a second one of the independently powered RF tags. We are not persuaded by the Examiner’s assertion that a “different tag” may have moved into the scan area to support that the flow chart of Figure 2 could apply to reading at least two tags. See Ans. 12. Further, while we agree with the Examiner that Watkins is properly analogous art from the same field of endeavor, Ans. 14-15, we are not persuaded that “area-reading” found in the preamble of claim 9 is not to be given patentable weight. Ans. 3. A preamble is construed as a limitation “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Here the body of the claim refers to the antenna and incorporates features of the area-reading limitation in reference to the at least two RF tags. Based on the foregoing, we do not agree with the Examiner’s finding that Watkins teaches or suggests an area-read antenna that “receiv[es] a response from at least a first one of the independently powered RF tags at the antenna while not receiving a response from at least a second one of the independently powered RF tags” and then after tuning the antenna “receiving a response from the at least a second one of the independently powered RF tags at the antenna” as recited in claim 9. Accordingly, we cannot sustain the Examiner’s rejection of independent claim 9 or its dependent claims 10-12. With respect to claim 1-8, Appellants’ arguments rely on the same arguments presented for claim 9. App. Br. 12. Because the claim 9 Appeal 2010-009488 Application 11/462,981 7 limitation for “receiving a response from at least a first one of the independently powered RF tags at the antenna while not receiving a response from at least a second one of the independently powered RF tags” appears in independent claims 1 and 5 and their respective dependent claims 2-4 and 6-8, we do not sustain the Examiner’s rejection of 1-8. With respect to independent claims 13 and 15 and dependent claims 14 and 16, Appellants contend that the Examiner failed to indicate that the antenna transmits a power signal to the RF tag in Stevens as recited in claims 13-16. App. Br. 13. We agree with the Examiner’s findings, however, that Stevens teaches providing a power/clock signal to RF tags. Ans. 17 (citing Stevens, col. 18, l. 57 – col. 19, l. 9). With respect to the remaining arguments, Appellants rely on the same limitation arguments that were made for Watkins with respect to claim 9. App. Br. 13. Claims 13-16, however, do not recite “receiving a response from at least a first one of the independently powered RF tags at the antenna while not receiving a response from at least a second one of the independently powered RF tags.” Appellants also have not identified which limitations found in claims 13-16 are missing from the cited reference, Watkins, and have failed to substantively argue the missing claim limitations. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Based on the record before us, Appellants have not provided sufficient evidence to persuade us that the Examiner erred in the identified teachings and suggestions in Watkins with respect to claims 13-16. See Ans. 10-12. Based on the foregoing, we sustain the Examiner’s rejection of claims 13-16 under 35 U.S.C. §103(a). Appeal 2010-009488 Application 11/462,981 8 DECISION For the above reasons, the Examiner’s rejection of claims 1-12 is REVERSED and the rejection of claims 13-16 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART msc