Ex Parte 5,986,570 et alDownload PDFPatent Trial and Appeal BoardApr 9, 201490011898 (P.T.A.B. Apr. 9, 2014) Copy Citation 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. 90/011,898 09/14/2011 5,986,570 6287 27299 7590 04/09/2014 GAZDZINSKI & ASSOCIATES, PC 16644 WEST BERNARDO DRIVE SUITE 201 SAN DIEGO, CA 92127 EXAMINER GAGLIARDI, ALBERT J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/09/2014 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 ROUND ROCK RESEARCH, LLC1 Patent Owner, Appellants ____________ Appeal 2014-003535 Reexamination Control 90/011,898 Patent US 5,986,5702 Technology Center 3900 ____________ Before JEAN R. HOMERE, CARLA M. KRIVAK, and CAROLYN D. THOMAS, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 Round Rock Research, LLC is the real party in interest. App. Br. 1. 2 Issued Nov. 16, 1999, to Black et al. (hereinafter the “Black Patent”). Appeal 2014-003535 Reexamination Control 90/011,898 Patent US 5,986,570 2 STATEMENT OF THE CASE The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s Final Rejection of claims 13 and 18. App. Br. 1. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We affirm. Appellant’s Invention Appellant invented a method for avoiding signal collisions between RFID transponders in a field. In particular, upon receiving a response from each of the transponders detected in the field, an interrogator determines whether each of the responses is a valid transmission by performing thereon a proper word synchronization, a proper cyclic redundancy check (CRC) or a proper word length check. Upon determining a response is not a valid transmission, the interrogator modifies its carrier signal to include therein the invalid data, which it broadcasts to the RFID transponders to inform them of the incomplete read. The interrogator subsequently transmits a complete data for each transponder to a computer system for processing. See generally the ‘Black Patent’; Abstract. Claim 13 is representative of the claimed invention and reads as follows: 13. A method for an interrogator reading one or more RFID transponders in a field, the interrogator including a demodulator, the method comprising: providing a carrier signal; detecting the presence of at least one transponder, the detecting including receiving data from the demodulator and Appeal 2014-003535 Reexamination Control 90/011,898 Patent US 5,986,570 3 modifying the carrier signal by suppressing the carrier signal for a predetermined number of clock cycles; receiving data from all active transponders in the field, the receiving including receiving the data in groups of one or more bits and checking the validity of each group of data as the group is received; determining whether the interrogator has received a valid data transmission by detecting the interrogator’s inability to compute a proper synchronization word, a proper CRC, or a proper word length; upon determining an invalid data transmission, modifying the carrier signal to inform all active transponders in the field that there was an incomplete read; and transmitting the complete data for each transponder from the interrogator to a computer system for processing. Prior Art Relied Upon The Examiner’s Answer cites the following prior art references: Denne US 4,691,202 Sep. 1, 1987 Lowe US 5,742,618 Apr. 21, 1998 Turner US 6,549,119 B1 Apr. 15, 2003 Rejections The Examiner rejects the claims on appeal as follows: 1. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Denne and Turner. 2. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Denne, Turner, and Lowe. Appeal 2014-003535 Reexamination Control 90/011,898 Patent US 5,986,570 4 ANALYSIS We consider Appellant’s arguments seriatim as they are presented in the Appeal Brief, pages 3-6.3 Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in finding the combination of Denne and Turner teaches or suggests modifying the carrier signal to inform all active transponders in the field that there was an incomplete read, as recited in claim 13? Appellant argues the proffered combination of references does not teach or suggest the disputed limitations emphasized above. App. Br. 3-4. According to Appellant, while Denne discloses an interrogator transmitting a bit to a transponder, which previously transmitted a different bit to the interrogator, such bit transmission is only limited to a single transponder (not all active transponders). App. Br. 3. Further, Appellant argues Turner’s disclosure of providing an ACK signal only to acknowledge that a response from the transponder has been properly received would change the method of operation of Denne’s system, where the interrogator repeats the received bits irrespective of whether or not the transponder’s message was properly received. App. Br. 4. 3 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed Oct. 14, 2013) and the Answer (mailed Dec. 23, 2013) for their respective details. We have considered in this decision only those arguments Appellant actually raised in the Brief. Any other arguments which Appellant could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2014-003535 Reexamination Control 90/011,898 Patent US 5,986,570 5 In response, the Examiner finds Denne’s disclosure of an interrogator modulating a message received from a transponder along with a carrier signal to produce a modulated signal, which is delivered back to the transponder for subsequent comparison with the original message sent by the transponder, teaches notifying the transponder of whether the received message was complete or not. Ans. 10-12. Further, the Examiner finds Turner’s disclosure of modifying the carrier signal by suppressing it for a few clock cycles would complement Denne’s system by notifying the transponder that a received message was not complete. Ans. 12-14. Based upon our review of the record before us, we find no error in the Examiner’s obviousness rejection regarding claim 13. We note at the outset the claim recitation of “detecting the presence of at least one transponder” requires, upon detecting one active transponder (or more) in the field and informing the one (or more) active transponder that there was an incomplete read. Thus, while the scope of the claim also encompasses a plurality of active transponders detected in the field, such a construction is far too limiting. Instead, the broadest reasonable construction of this claim limitation merely requires, upon detecting the presence of a single active transponder in the field, informing the transponder of an incomplete read. Consequently, Appellant’s argument that Denne does not disclose informing a plurality of transponders is not commensurate with the scope of the claim. Further, we agree with the Examiner because Denne’s transponder compares a signal received from the interrogator with the original signal it sent to the interrogator (col. 8, ll. 25-41), the transponder will be apprised of any deficiencies therebetween. That is, the transponder will be informed as to Appeal 2014-003535 Reexamination Control 90/011,898 Patent US 5,986,570 6 whether the signal it received by the interrogator was complete or not. Additionally, we agree with the Examiner that modifying the modulated signal of Denne by suppressing the carrier signal therein for one or two cycles when an invalid response is detected as taught by Turner (col. 2, ll. 59-65, col. 3, ll. 5-8) would complement Denne’s system to allow the interrogator to inform the transponder when an incomplete signal was received. Consequently, because Denne and Turner disclose prior art elements that perform their ordinary functions to predictably result in a system where an interrogator can notify a transponder of its inability to assemble a message received from the transponder, the proffered combination is proper. Therefore, we find unavailing Appellant’s argument that Turner’s disclosure would render Denne’s solution unsuitable for its intended purpose or that it teaches away from the same.4 We are satisfied that because the proposed combination would predictably result in a system that can allow an interrogator to inform an active transponder detected in the field that the interrogator is unable to assemble a message received from the transponder, the proffered combination teaches or suggests the disputed 4 An argument that the system is rendered “unsuitable for its intended purpose” is a “teach away” argument. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in effect, “French teaches away from the board's proposed modification” because “if the French apparatus were turned upside down, it would be rendered inoperable for its intended purpose.”). The Federal Circuit has held “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)) (internal quotation marks omitted). Appeal 2014-003535 Reexamination Control 90/011,898 Patent US 5,986,570 7 claim limitations. Thus, Appellant has not shown error in the Examiner’s rejection of claim 13. Regarding the rejection of claim 18, because Appellant has reiterated substantially the same arguments as those previously discussed for patentability of claim 13 above, claim 18 falls therewith. See 37 C.F.R. § 41.37(c)(1)(vii). CONCLUSION OF LAW Based on the analysis above, we conclude the Examiner did not err in rejecting claims 13 and 18 as being unpatentable under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s decision rejecting claims 13 and 18 under 35 U.S.C. § 103(a). TIME PERIOD FOR RESPONSE Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED msc For Patent Owner: GAZDZINSKI & ASSOCIATES, PC 16644 WEST BERNARDO DRIVE SUITE 201 SAN DIEGO CA 92127 Appeal 2014-003535 Reexamination Control 90/011,898 Patent US 5,986,570 8 For Third Party Requester: BUCKINGHAM, DOOLITTLE & BURROUGHS, LLP 3800 EMBASSY PARKWAY SUITE 300 AKRON, OH 44333-8332 Copy with citationCopy as parenthetical citation