Ex Parte Wang et al

Patent Trials and Appeals Board

Sep 19, 2013

12582428 - (D) (P.T.A.B. Sep. 19, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/582,428 10/20/2009 Pei-Chung Wang P004196-RD-MJL 4566
65798 7590 09/19/2013
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
09/19/2013 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 PEI-CHUNG WANG, NINGJIAN HUANG,
and GULCIN H. SENGIR
____________

Appeal 2012-009056
Application 12/582,428
Technology Center 1700
____________

Before EDWARD C. KIMLIN, KAREN M. HASTINS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-4, 7-11, 13, and
16-20. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A work piece comprising:
a base portion;
a coating formed on the base portion; and
a plurality of RFID devices interspersed in the coating that are a
permanent part of the work piece, wherein the coating forms a protective
material that is a ball or similar shape that has a diameter in the range of 0.1-
1mm.

Appeal 2012-009056
Application 12/582,428

2
The Examiner relies upon the following references as evidence of
obviousness:
Sackleh US 3,439,885 Apr. 22, 1969
Green US 7,068,170 B2 Jun. 27, 2006
Hodges US 2008/0252483 A1 Oct. 16, 2008

Appellants' claimed invention is directed to a work piece comprising a
plurality of radio frequency identification devices (RFID) interspersed in a
coating on a base portion of the work piece. The coating serves as a
protective material for the RFID devices and is in the shape of a ball such
that it encapsulates the devices.
Appealed claims 1-4, 7, 13, and 16-20 stand rejected under 35 U.S.C.
§ 112, first paragraph, written description requirement. Claims 1-4, 7, 13,
and 16-20 stand rejected under 35 U.S.C. § 112, second paragraph. Claims
1, 4, 8, 11, 13, 16, and 18-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Green in view of Hodges. Also, claims 2, 3, 9, 10,
and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Green in view of Hodges and Sackleh.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we will sustain the Examiner's rejections for
essentially those reasons expressed in the Answer, and we add the following
primarily for emphasis.
We consider first the Examiner's rejection of claims 1-4, 7, 13, and
16-20 under 35 U.S.C. § 112, first and second paragraphs. It is the
Examiner's position that the claim language "a ball or similar shape" does
not find descriptive support in the original Specification within the meaning
Appeal 2012-009056
Application 12/582,428

3
of § 112, first paragraph, and is indefinite under § 112, second paragraph.
We note that Appellants have offered to file an amendment after disposition
of the present appeal to change the claim language that has been suggested
by the Examiner (Prin. Br. 8, second paragraph and Prin. Br. 9, first
paragraph). Since the original Specification fails to define what shapes are
embraced by the claim language defining shapes that are similar to that of a
ball, we find no error in the Examiner's conclusion that the claim language
does not have original descriptive support under § 112, first paragraph, and
does not define the metes and bounds of the claimed subject matter within
the meaning of § 112, second paragraph. We agree with the Examiner that
one of ordinary skill in the art would not be reasonably apprised of what
shapes of protective material fall within and lie outside the scope of the
appealed claims.
We now turn to the § 103 rejection over Green in view of Hodges.
There is no dispute that Green, like Appellants, discloses a work piece
comprising a base portion that is coated with a coating comprising a
plurality of RFID devices that are interspersed in the coating and form a
permanent part of the work piece. As recognized by the Examiner, Green
does not teach that the RFID devices are encapsulated with a protective
coating. However, as set forth by the Examiner, Hodges discloses a plurality
of RFID circuits encapsulated with a protective material that is in the shape
of a ball which provides protection and heat resistance to the RFID devices.
Accordingly, we find no error in the Examiner's legal conclusion that it
would have been obvious for one of ordinary skill in the art to encapsulate
the RFID devices of Green with a material of the type disclosed by Hodges
Appeal 2012-009056
Application 12/582,428

4
for the purpose of achieving the benefits articulated by Hodges, namely,
protection and heat resistance.
We find no merit is Appellants' argument that, since the encapsulated
RFID devices of Hodges are embedded in an asphalt road, and considering
the significant difference between an asphalt road and a work piece claimed
by Appellant, “the disclosure of Hodges in combination with routine
experimentation would not have led a person of ordinary skill to Appellant's
claimed invention, particularly since Green discloses simply mixing RFID
tags into a liquid such as a paint that is applied to articles such as
components of an aircraft" (Prin. Br. 11, second para.). Green's disclosure is
pertinent to applying RFID devices to surfaces, in general, and is not limited
to aircraft, and likewise, Hodges is directed to embedding RFID devices in
various types of surfaces, such as buildings, furniture, etc. ([0005]).
Consequently, we are confident that one of ordinary skill in the art would
have found it obvious, based on the collective teachings and broad
applications of Green and Hodges, to encapsulate the RFID devices of Green
in accordance with the teachings of Hodges when the environment of use
mandates protection from abrasion and resistance to heat. As for the
claimed size of the encapsulating ball of protective material, we fully concur
with the Examiner that it would have been a matter of obviousness for one
of ordinary skill in the art to resort to routine experimentation to determine
the optimum size of the protective ball that is commensurate with the size of
the RFID device and its use.
Appellants do not present a separate, substantive argument against the
§ 103 rejection over Green in view of Hodges and Sackleh.
Appeal 2012-009056
Application 12/582,428

5
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner 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

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