To Chin

Patent Trials and Appeals Board

Jul 24, 2020

14373279 - (D) (P.T.A.B. Jul. 24, 2020)

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.
14/373,279 07/18/2014 To Chin 3319/0514PUS1 5395
60601 7590 07/24/2020
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
JIANG, YONG HANG
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
07/24/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TO CHIN
Appeal 2019-000679
Application 14/373,279
Technology Center 2600
Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
MICHAEL M. BARRY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 17–29.2 See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We refer to the Specification, filed July 18, 2014 (“Spec.”); the Final
Office Action, mailed October 10, 2017 (“Final Act.”); the Appeal Brief,
filed May 10, 2018 (“Appeal Br.”); the Examiner’s Answer, mailed
September 5, 2018 (“Ans.”); and the Reply Brief, filed October 26, 2018
(“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Chin To, the inventor, as the real party in
interest. Appeal Br. 1.
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Application 14/373,279

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CLAIMED SUBJECT MATTER
The claims are directed to an object identification. Spec., Title.
Claims 17 and 27, reproduced below, illustrate the claimed subject matter:
17. A tag for identifying an object in image, comprising:
a feature changing module, comprising one or more light
sources, and changing the light source according to a feature
signal;
a location module, used for acquiring location
information of the tag, transmitting the location information to
a communication module, and sending through the
communication module the location information to a pairing
side; and
the communication module, receiving or sending the
feature signal, receiving or sending a radio signal related to the
feature signal, and sending location information of the location
module, wherein the pairing side allocates different feature
signals to tags that are possibly located within a range of a
sensor.
27. A device for identifying an object in image, comprising:
a communication module, wherein the communication
module receives or sends a feature signal, wherein the feature
signal comprises a command for controlling a light source;
a processing unit, wherein the processing unit receives,
from a paring side through the communication module,
information of tags that are possibly located within a range of
an image sensor, feature signals that are allocated to the tags,
and an image signal of the image sensor, generates an image
identification result, and stores the image identification result in
a storage module;
the storage module, used for storing the image
identification result; and
a location module, used for acquiring sensing range
information of the image sensor, transmitting the sensing range
information to the communication module, and sending through
the communication module the sensing range information to the
pairing side.
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Application 14/373,279

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REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Stevens US 6,031,585 Feb. 29, 2000
An US 2001/0050731 A1 Dec. 13, 2001
Janning US 6,715,676 B1 Apr. 6, 2004
Ehrman US 2006/0208892 A1 Sept. 21, 2006
Stephenson US 7,131,584 B2 Nov. 7, 2006
Shefter US 2007/0279368 A1 Dec. 6, 2007
Chaves US 2009/0231135 A1 Sept. 17, 2009

REJECTIONS
Claims 17–19 and 25–26 stand rejected under pre–AIA 35 U.S.C.
§ 103(a) as being unpatentable over Janning and Richardson. Final Act. 5–
7.
Claim 20 stands rejected under pre–AIA 35 U.S.C. § 103(a) as being
unpatentable over Janning in view of Richardson and An. Final Act. 7–8.
Claim 21 stands rejected under pre–AIA 35 U.S.C. § 103(a) as being
unpatentable over Janning, Richardson, and Stevens. Final Act. 8.
Claims 22–24 stand rejected under pre–AIA 35 U.S.C. § 103(a) as
being unpatentable over Janning, Richardson, and Shefter. Final Act. 8–10.
Claims 27 and 29 stand rejected under pre–AIA 35 U.S.C. § 103(a) as
being unpatentable over Janning, Stephenson, and Ehrman. Final Act. 10–
12.
Claim 28 stands rejected under pre–AIA 35 U.S.C. § 103(a) as being
unpatentable over Janning, Stephenson, Ehrman, and Chaves. Final Act.
12–13.
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Application 14/373,279

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STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).

OPINION
Claim 17
The Examiner finds Janning’s electronic price label (EPL)
corresponds to a tag for identifying an object, as recited in the preamble of
claim 17. Final Act. 5. According to the Examiner, Janning’s EPL circuitry
and display combine to teach the claimed feature-changing module of
claim 17. Id. (citing Janning col. 3, ll. 40–57; Fig 5). The Examiner further
finds that Janning’s infrared receiver, RF transmitter, and mobile
programming unit correspond to the claimed communication module. Id.at
6 (citing Janning col. 5, ll. 11–23, 31–65; Fig. 5).
The Examiner finds that Janning does not disclose a location module.
Final Act. 6. The Examiner relies on Richardson for teaching this claim
element: “Richardson teaches a tag can be integrated with a location
module, used for acquiring location information of the tag, and transmitting
the location information to a communication module, and sending through
the communication module the location information to a pairing side.” Id.
(citing Richardson, Abstract).
Appellant contends as follows:
Adding transmission circuitry to [a] tag is against the purpose
of Janning (section 4 line 6): “In a preferred embodiment,
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EPLs 122 do not contain any transmission circuitry, and thus,
do not respond to any message transmitted by the IR array units
120. This lack of transmission circuitry advantageously
reduces both the cost and power consumption of the EPL
122.”
To reduce cost and power consumption of EPL, Janning
actually discourage[s] and teach[es] away from using
transmission circuitry in tag side.
Appeal Br. 2.3
The Examiner responds, “[a]lthough Janning discloses that in one
preferred embodiment, the EPLs 122 do not contain any transmission
circuitry, Janning does not state that in other embodiments, including a
transmission circuitry would render EPLs 122 inoperable.” Ans. 2.
Appellant’s contention is unpersuasive of reversible Examiner error.
Although Janning discloses an embodiment that does not include
transmission circuitry, the embodiment applied by the Examiner, as depicted
in Figure 5, includes transmission circuitry. See Final Act. 6. Thus, rather
than discouraging use of transmission circuitry, Janning teaches its use.
Furthermore, even if Janning had only disclosed a tag that omitted
transmission circuitry to reduce cost and power consumption, merely
“express[ing] a preference” falls short of discouraging one of ordinary skill
in the art from following a particular path. In re Geisler, 116 F.3d 1465,
1471 (Fed. Cir. 1997). To teach away, the prior art must “criticize, discredit,
or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Teaching an alternative method does not teach away

3 The Appeal Brief fails to include page numbers. We treat the first page as
constituting page 1.
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from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438
(CCPA 1965); see also Ex parte Shuping, No. 2008-0394, 2008 WL 336222,
at *2 (BPAI 2008) (unpublished) (“[T]eaching a way is not teaching away.”)
(citation omitted).
For these reasons, we sustain the rejection of independent claim 17
together with the rejections of dependent claims 18–26, which are not
argued separately with particularity.
Claim 27
The Examiner finds Janning’s mobile programming unit corresponds
to a device, as recited by the preamble of claim 27. Final Act. 10 (citing
Janning col. 5, ll. 31–50; Fig. 7). According to the Examiner, Janning’s IR
array, which transmits a message to change a price displayed an EPL,
corresponds to the communication module of claim 27. Id. (citing Janning
col. 3, ll. 40–57). The Examiner finds Janning’s mobile programming unit,
which communicates with a host system to receive price updates transmitted
to the EPLs, corresponds to the claimed processing unit that receives
information of tags located within a range and feature signals allocated to
the tags. Id. (citing Janning col. 5, ll. 31–50).
The Examiner finds that Janning fails to disclose the processing unit is
further configured to (1) receive an image signal of an image sensor, (2)
generate an image identification result, or (3) store the image identification
result in a storage module,” and that Janning fails to disclose a storage
module. Id. at 10–11. The Examiner finds that Stephenson’s label
scanner/writer “store[s] data generated from scanned object identity codes”
and includes the remaining functionality of the recited processing unit
including receiving an image signal of an image sensor, generating an image
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identification result, and storing the image identification result in a storage
module. Id. at 11 (citing Stephenson col. 2, ll. 62–66, col. 6, ll. 42–47;
Fig. 1). The Examiner finds Ehrman’s vehicle asset communicator, which
communicates vehicle location to a central data processing system over a
data communications link, teaches the recited location module of claim 27.
Id. at 11–12 (citing Ehrman ¶ 35).
Appellant argues the processing unit of claim 27 receives tag content
(i.e., features) before identification of a tag and that this protocol
distinguishes Stephenson, which generates new content only after
identification of an old tag. Appeal Br. 3. The Examiner responds, directing
attention to Janning for teaching “that content of tags can be received before
identification of the tags.” Ans. 3. The Examiner explains Stephens’s
reader is applied for “teaching a processing unit configured to receive an
image signal of an image sensor, and generates an image identification result
via the reader device including a scanner.” Id.
Appellant’s argument is unpersuasive because it does not address the
Examiner’s findings on which the rejection is based. As explained by the
Examiner, Janning is cited for teaching the disputed sequence of receiving
tag content prior to tag identification—not the argued Stephens reference.
Ans. 3. Therefore, does not identify error in the Examiner’s findings. See In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
[E]xaminer’s rejections.”).
Furthermore, Appellants’ argument is not commensurate with the
scope of claim 27. In particular, the argued requirement of receiving tag
content prior to tag identification is not recited by claim 27. For that reason,
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the argument does not demonstrate error in the Examiner’s rejection. See In
re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the
claims cannot be relied upon for patentability).
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s [S]pecification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). Additionally, it is improper to read a specific order
of steps into method claims unless “as a matter of logic or grammar, they
must be performed in the order written” or if the Specification “directly or
implicitly requires such a narrow construction.” Altiris Inc. v. Symantec
Corp., 318 F.3d 1363, 1369, 1371 (Fed. Cir. 2003) (citation and quotations
omitted). Although claim 27 is a claim for a device rather than a method, we
nonetheless find it fails to recite the argued temporal relationship between
tag content receipt and tag identification. Accordingly, once again,
Appellant’s argument is not commensurate in scope with claim 27.
Appellant further argues Stephenson is deficient because it is a
scanner, not an image sensor. Appeal Br. 3. Appellant further argues that
Stephenson’s scanner “does not provide image data, all the identification is
already done by scanner, and the scanner does not have ability to receive
feature signal of tags to improve the identification.” Id. The Examiner
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responds, finding the identification codes are in the form of a barcode that is
an image. Ans. 3.
Appellant’s contention is unpersuasive of reversible Examiner error.
Stephenson’s “Scanner 84 can be a conventional bar code reader that can
read a bar code from an object to determine the object identification code.”
Stephenson col. 6, ll. 45–48. Because a bar code is understood to be a
printed image or otherwise displayed image, Stephenson’s bar code reader
reasonably corresponds to an image sensor that reads an image signal.
Appellant’s argument that Stephenson does not receive a feature
signal is unpersuasive because the Examiner relies on Janning, not
Stephenson, for the argued receipt of feature signals. Final Act. 10. Thus,
Appellant’s argument is not commensurate in scope with claim 27.
Finally, Appellant contends Ehrman is deficient because
[T]he sensing range in Ehrman can only be obtained after
identification of tags, because location of tag is based on RFID
identification result, there is no way in Ehrman to know which
tags are near the reader until RFID found them, contrary to
Ehrman, [c]laim 27 receive which tags are possibly in sensing
range before identification.
Appeal Br. 3.
The Examiner responds
No limitations in claim 27 states that the device claimed is
capable of “receive which tags are possibly in sensing range
before identification[.]” Claim 27 only states that the location
module is used for acquiring sensing range information of the
image sensor; therefore, it is unclear how the device can
determine which tags are possibly in sensing range before the
tags are identified.
Ans. 4.
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Appellant’s contention is unpersuasive because, as explained by the
Examiner, claim 27 does not require the argued temporal relationship. Id.
Therefore, Appellant’s argument is not commensurate in scope with the
argued claim. Accordingly, for the reasons discussed above, we sustain the
rejection of claim 27 together with the rejections of dependent claims 28 and
29 that are not argued separately with particularity.
DECISION
The Examiner’s rejections of claims 17–29 under AIA 35 U.S.C.
§ 103(a) are affirmed.
CONCLUSION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–19,
25, 26
103(a) Janning,
Richardson
17–19, 25,
26

20 103(a) Janning,
Richardson, An
20
21 103(a) Janning,
Richardson,
Stevens
21
22–24 103(a) Janning,
Richardson,
Shefter
22–24
27, 29 103(a) Janning,
Stephenson,
Ehrman
27, 29
28 103(a) Janning,
Stephenson,
Ehrman, Chaves
28
Overall
Outcome
17–29
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Application 14/373,279

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED