Dominic Kotab

Patent Trials and Appeals Board

Dec 16, 2020

2020000228 (P.T.A.B. Dec. 16, 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.
15/687,180 08/25/2017 Naresh Batra DOM1P015C 7668
28875 7590 12/16/2020
Zilka-Kotab, PC
1155 N. 1st St.
Suite 105
SAN JOSE, CA 95112
EXAMINER
LY, TOAN C
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
12/16/2020 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):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NARESH BATRA
____________________

Appeal 2020-000228
Application 15/687,180
Technology Center 2800
____________________

Before ROMULO H. DELMENDO, CARL W. WHITEHEAD JR., and
ERIC S. FRAHM, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1–3, 5–7, and 10–19, which constitute all pending claims on appeal.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a).
Appellant, “Dominic Kotab” (Application Data Sheet filed August 25, 2017
at 5), identifies the real party in interest as “Dominic M. Kotab” (Appeal Br.
2).
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Claims 4, 8, 9, and 20 have been canceled (see Appeal Brief 16, 17, 19). We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention, entitled “RFID
Systems and Methods” (Title), “relates to Radio Frequency Identification
(RFID) systems and methods, and more particularly, this invention relates to
systems and methods for tracking and singulating tagged objects” (Spec.
1:11–13). Appellant recognizes that “Radio Frequency Identification
(RFID) allows the physical layer of actual goods to automatically be tied
into software applications, to provide accurate tracking” (Spec. 2:17–19),
there are limitations with active (i.e., powered) RFID tags (see generally
Spec. 3:3–4:3), and an RFID tag and system are needed for asset and
ownership transfer tracking and toll collection having “a greatly improved
life span and which overcome the deficiencies in heretofore known systems”
(Spec. 4:5–6). This is done by providing a passive RFID tag as set forth in
independent claims 1 and 15, which are illustrative of the claimed subject
matter:
1. A Radio Frequency Identification (RFID) tag, comprising:
a housing configured for coupling to an object, where the
RFID tag is a passive tag and is permanently coupled to the
object at a point of manufacture of the object;
control circuitry coupled to the housing; and
a memory for storing information, the information
including:
initial properties of the object at the point of
manufacture of the object, temperature information,
a service history of the object, including types of
service performed on the object, and
an ownership transfer of the object from a dealer to
a consumer;
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wherein the RFID tag is operatively coupled to an
electrical system of the object.

Appeal Br. 16 (formatting and emphases added).
15. A Radio Frequency Identification (RFID) tag, comprising:
a housing configured for coupling to an object;
a first power source including a battery for powering the
RFID tag;
control circuitry coupled to the housing; and
a memory for storing information, the information
including:
temperature information,
location information,
tracking information,
information associated with the battery, and
information associated with a tampering of the
RFID tag;
wherein the RFID tag is operatively coupled to an
electrical system of the object, wherein the RFID tag transmits
information about problems with the object.

Appeal Br. 18 (formatting and emphases added).

REJECTIONS
The Examiner made the following rejections:
(1) Claims 1–3, 7, and 11–19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rajan (US 2007/0096912 A1; published May 3,
2007), Lane et al. (US 2008/0183722 A1; published July 31, 2008)
(hereinafter, “Lane”), Arms et al. (US 2006/0103534 A1; published March
18, 2006) (hereinafter, “Arms”), and Claus et al. (5,310,999; issued May 10,
1994) (hereinafter, “Claus”). Final Act. 3–13; Ans. 3–4.
(2) Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rajan, Lane, Arms, Claus, Fleming (US 2006/0176158
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A1; published Aug. 10, 2006), and Bednyak (US 2004/0222638 A1;
published Nov. 11, 2004). Final Act. 13–15.
(3) Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rajan, Lane, Arms, Claus, and Schwarz, Jr. (US
2005/0040221 A1; published Feb. 24, 2005) (hereinafter, “Schwarz”). Final
Act. 15–16.
Appellant’s Contentions
(1) With regard to the obviousness rejections of claims 1–3, 5–7, and
10–14, Appellant primarily argues the merits of independent claim 1 (see
Appeal Br. 6–9; Reply Br. 2–5), and makes similar arguments as to the
patentability of independent claim 14 (which is a system claim having
similar scope) (see Appeal Br. 9), as well as dependent claims 2, 3, 5–7, and
10–13 (see Appeal Br. 14–15; Reply Br. 12–13). As to independent claim 1,
Appellant contends (Appeal Br. 7–9) that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a), because Claus, and thus the combination,
fails to teach or suggest that an RFID tag is permanently coupled to an
object at a point of manufacture, as recited in claim 1.
Based on Appellant’s obviousness arguments, and because claims 1–
3, 5–7, and 10–14 contain commensurate limitations, we select claim 1
as representative of claims 1–3, 7, and 11–14 rejected under 35 U.S.C.
§ 103(a) for obviousness over the base combination of Rajan, Lane, Arms,
and Claus. For similar reasons, we decide the outcome of claims 5, 6, and
10 (rejected over the same base combination taken with Fleming and
Bednyak), which ultimately depend from independent claim 1, on the same
basis as claim 1.
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(2) With regard to the obviousness rejection of claims 15–19,
Appellant primarily argues the merits of independent claim 15 (see Appeal
Br. 9–14; Reply Br. 5–11), and makes similar arguments as to the
patentability of claims 16–19, which each depend directly from claim 15
(see Appeal Br. 14–15; Reply Br. 12–13). As to independent claim 15,
Appellant contends (Appeal Br. 9–14; Reply Br. 5–11) that the Examiner
erred in rejecting claim 15 under 35 U.S.C. § 103(a), because (i) Lane fails
to disclose, teach, or suggest storing tracking and/or location information on
an RFID tag memory (see Appeal Br. 10–13; Reply Br. 7–10); and (ii) Claus
uses a cigarette lighter which is not operatively coupled to an electrical
system of an object (see Appeal Br. 14; Reply Br. 11), as recited in claim 15.
Based on Appellant’s arguments regarding claims 15–19, and because
claims 15–19 contain commensurate limitations, we select claim 15 as
representative of claims 15–19 rejected under 35 U.S.C. § 103(a) for
obviousness over the combination of Rajan, Lane, Arms, Claus, and
Schwarz.
Principal Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 6–
15) and the Reply Brief (Reply Br. 2–14), the following two principal issues
are presented on appeal:
(1) Did the Examiner err in rejecting claims 1–3, 5–7, and 10–14 as
being unpatentable over the base combination of Rajan, Lane, Arms, and
Claus because the base combination fails to teach or suggest an RFID tag
that (a) “is a passive tag and is permanently coupled to the object at a point
of manufacture of the object” and “is operatively coupled to an electrical
system of the object,” as recited in representative claim 1?
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(2) Did the Examiner err in rejecting claims 15–19 as being
unpatentable over the base combination of Rajan, Lane, Arms, and Claus
because the combination fails to teach or suggest (i) a memory for storing
location and tracking information; and (ii) “wherein the RFID tag is
operatively coupled to an electrical system of the object” (emphasis added),
as recited in representative claim 15?
ANALYSIS
We have reviewed the Examiner’s obviousness rejections of claims 1–
7 and 10–19 (Final Act. 3–16) and response to Appellant’s arguments in the
Appeal Brief (Ans. 4–7), in light of Appellant’s arguments in the Appeal
Brief (Appeal Br. 6–15) and the Reply Brief (Reply Br. 2–15) that the
Examiner has erred.
Issue (1): Representative Claim 1
With regard to representative independent claim 1, we adopt as our
own (1) the findings and reasons set forth by the Examiner in the Action
from which this appeal is taken (Final Act. 3–6; Ans. 3–4), as well as the
Advisory Action mailed March 4, 2019 (p. 2), and (2) the reasons set forth
by the Examiner in the Examiner’s Answer (Ans. 4–6) in response to
Appellant’s Appeal Brief. We disagree with Appellant’s arguments
(see Appeal Br. 6–9; Reply Br. 2–5). We concur with the findings and
conclusions reached by the Examiner, and conclude that it would also
have been obvious and predictable to one of ordinary skill in the art of
automobiles and vehicles to permanently couple an RFID tag identifying a
vehicle by vehicle identification (VIN) number and/or VIN plate at the time
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of manufacture to prevent theft.2 We provide the following for emphasis
only.
Appellant’s contention that “the Examiner fails to specifically reject
appellant’s claimed technique ‘where the RFID tag is a passive tag and is
permanently coupled to the object at a point of manufacture of the object’”
(Appeal Br. 7), is unpersuasive, as the Examiner cures this shortcoming in
the restatement of the rejection in the Examiner’s Answer (see Ans. 3–4),
relying on Arms (Arms ¶¶ 108, 109) and the knowledge of one of ordinary
skill in the art in concluding that it would have been obvious to permanently
couple the tag to automobiles, and particularly to subassemblies of
automobiles, to provide the ability to later trace parts for recall or repair.
The Examiner reasons (see Ans. 4), and we agree, that there could not
be a better or more obvious time and location for a manufacturer to couple a
tag to the manufactured object than at the time and point of manufacture.
This is especially true for theft prevention, and for later discovering replaced
parts (e.g., that may have been damaged in an accident), which are known
goals for automobile and vehicle manufacturers and insurance companies
(see e.g., Lane ¶¶ 446–448).3 It would have been obvious and predictable to

2 “‘[T]he question under 35 USC 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.’” Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545
F.2d 747, 750 (CCPA 1976)) (emphasis added); see also MPEP § 2123.
3 See Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“[T]he
[KSR] Court required an analysis that reads the prior art in context, taking
account of ‘demands known to the design community,’ ‘the background
knowledge possessed by a person having ordinary skill in the art,’ and ‘the
inferences and creative steps that a person of ordinary skill in the art would
employ.’” (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418
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one of ordinary skill in the art of automobiles and vehicles to permanently
couple an RFID tag identifying a vehicle by vehicle identification (VIN)
number and/or VIN plate at the time of manufacture to prevent theft, as is
known in the art (see Lane ¶¶ 447, 448). Additionally, Arms teaches storing
a vehicle identification number in the tag memory “to show that they were
parts on that vehicle at that time” (¶ 109), and Lane teaches storing vehicle
information on an RFID tag “to provide an audit trail” (Lane ¶ 446) and “to
identify the vehicle at any stage during the vehicle’s life” (Lane ¶ 447).
There are only two possible or predictable options for when to couple
a tag identifying a vehicle, at the time and point of manufacture, or later. It
would have been obvious to a person having ordinary skill in the vehicle
manufacturing art to couple the tag during manufacture, and even to hide the
tag out of sight or in a secret location, in order to prevent theft and provide
better traceability. The same is true of any object that requires traceability
as a theft deterrent. This is even suggested by Claus (see col. 2, ll. 23–26)
(discussing theft as an important factor, and the desirability of providing
deterrents to make “even scoundrels behave”).4
Appellant’s contention that Claus fails to teach that an RFID tag is
operatively coupled to an electrical system of an object (see Appeal Br. 8–
9), is unpersuasive. Although Claus’ cigarette lighter power connection is

(2007))); In re Taylor Made Golf Company, Inc., 589 F. App’x 967 (Fed.
Cir. 2014) (the Board erred in failing to consider the prior art in the context
of the background knowledge that a person of ordinary skill in the art would
have had); Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1336 (Fed.
Cir. 2008) (to determine the “meaning of a prior art reference,” the Board
must incorporate “the understanding of an artisan of ordinary skill.”).
4 See id. fn. 2.
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removably attached, it is nonetheless operatively coupled (see Claus Fig. 6,
plug 601; col. 5:66–6:1).
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art
as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(finding one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references).
In this light, Appellant’s arguments presented as to the shortcomings in the
teachings of Rajan, Lane, Arms, and Claus individually are not persuasive
inasmuch as the Examiner relies on a properly made combination of Rajan,
Lane, Arms, and Claus to support the conclusion of obviousness of the
subject matter of claim 1. Arms and the knowledge of the ordinarily skilled
artisan teach or suggest permanently coupling the tag at manufacture, and
Claus teaches that a tag be operatively coupled to an object’s electrical
system.
Appellant has not adequately shown that the combination of Rajan,
Lane, Arms, and Claus fails to teach or suggest the RFID tag set forth in
claim 1. In view of the foregoing, Appellant’s contentions (Appeal Br. 6–9;
Reply Br. 2–5) that the Examiner erred in rejecting claim 1 as being obvious
over the combination of Rajan, Lane, Arms, and Claus are unpersuasive.
Accordingly, we sustain the Examiner’s obviousness rejection of
representative claim 1, as well as claims 2, 3, 7, and 11–19 grouped
therewith, as being unpatentable over the combination of Rajan, Lane, Arms,
and Claus. For similar reasons, and because claims 5, 6, and 10 ultimately
depend from claim 1, we also sustain the Examiner’s obviousness rejections
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of (i) claims 5 and 6 over the base combination taken with Fleming and
Bednyak; and (ii) claim 10 over the base combination taken with Schwarz.

Issue (2): Representative Claim 15
With regard to representative claim 15, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 9–12; Ans. 3–4), as well as the Advisory Action
mailed March 4, 2019 (p. 2), and (2) the reasons set forth by the Examiner
in the Examiner’s Answer (Ans. 6) in response to Appellant’s Appeal Brief.
For similar reasons as already provided above with respect to claim 1 (i.e.,
the operatively coupled to the object’s electrical system issue), we also
concur with the findings and conclusions reached by the Examiner as to
claim 15 and the tracking and location information issues. We disagree with
Appellant’s arguments as to claim 15 (see Appeal Br. 9–14; Reply Br. 9–
11). We provide the following for emphasis only.
Appellant’s contentions (see Appeal Br. 11–13; Reply Br. 7–9)
that Lane fails to teach storing tracking and location information are
unpersuasive. The Examiner finds (see Final Act. 4; Ans.3, 5–6), and we
agree, that Lane teaches or suggests storing such information. Lane stores
information on a tag such as would normally expected to be included
concerning a vehicle (see Lane ¶ 188). Such information is taught by Lane
to include (i) manufacturer information (see Lane ¶ 189), which may include
the manufacturer’s identity (see Lane ¶ 193) and country (i.e., location) of
manufacture (see Lane ¶ 194), as well as “manufacture location” (see Lane
¶ 254); (ii) owner information (see Lane ¶ 202), which may include the
owner’s name, address, and license number (see Lane ¶¶ 203–204); and (iii)
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registration details (see Lane ¶ 206) including the VIN (see Lane ¶ 257).
The aforementioned information taught by Lane as being stored on an RFID
tag of a vehicle enable the vehicle to be tracked (i.e., tracking information),
and also provide location information as set forth in claim 15.
Appellant’s arguments that Claus uses a cigarette lighter which is not
permanently coupled to an electrical system of an object (see Appeal Br. 14;
Reply Br. 11), as recited in claim 15, are not persuasive inasmuch as these
arguments are not commensurate in scope with the language of claim 15.
Claim 15 only requires that the RFID tag be “operatively coupled to an
electrical system of the object” (claim 15), not that the RFID tag be
permanently coupled to the electrical system of the object, as argued by
Appellant (see Appeal Br. 14; Reply Br. 11).
As discussed above with regard to claim 1, Appellant’s arguments as
to claim 15 presented as to the shortcomings in the teachings of Rajan, Lane,
Arms, and Claus individually are not persuasive inasmuch as the Examiner
relies on a properly made combination of Rajan, Lane, Arms, and Claus to
support the conclusion of obviousness of the subject matter of claim 15.
Appellant has not adequately shown that the combination of Rajan,
Lane, Arms, and Claus fails to teach or suggest the RFID tag, including
storing tracking and location information on the tag, as set forth in claim 15.
Accordingly, we sustain the Examiner’s obviousness rejection of
representative claim 15 as well as claims 16–19 grouped therewith, as being
unpatentable over the base combination of Rajan, Lane, Arms, and Claus.
Summary
(1) Appellant has not shown the Examiner erred in rejecting claims 1–
3, 5–7, and 10–14 as being unpatentable under 35 U.S.C. § 103(a). In view
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of the foregoing, we sustain the obviousness rejection of representative
claim 1, as well as claims 2, 3, 7, and 11–14 grouped therewith, as being
obvious over the base combination of Rajan, Lane, Arms, and Claus. For
similar reasons, and because (i) Appellant relies on the arguments presented
as to claim 1 in arguing dependent claims 5, 6, and 10; and (ii) claims 5, 6,
and 10 ultimately depend from claim 1, we also sustain the remaining
obviousness rejection of claims 5, 6, and 10 over the base combination taken
with (i) Fleming and Bednyak and Fleming (as to claims 5 and 6); or (ii)
Schwarz (claim 10).
(2) Appellant has not shown the Examiner erred in rejecting claims
15–19 as being unpatentable under 35 U.S.C. § 103(a). In view of the
foregoing, we sustain the obviousness rejection of representative claim 15,
as well as claims 16–19 grouped therewith, as being obvious over the base
combination of Rajan, Lane, Arms, and Claus.

CONCLUSION
For all of the reasons above, we hold as follows:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–3, 7,
11–19
103(a) Rajan, Lane, Arms,
Claus
1–3, 7, 11–19
5, 6 103(a) Rajan, Lane, Arms,
Claus, Fleming,
Bednyak
5, 6
10 103(a) Rajan, Lane, Arms,
Claus, Schwarz
10
Overall
Outcome
1–3, 5–7, 10–
19

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TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2013).

AFFIRMED