Ex Parte 6812841 et al

Patent Trial and Appeal Board

May 29, 2014

95001265 (P.T.A.B. May. 29, 2014)

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.
95/001,265 11/19/2009 6812841 ALIEG841REX 6917
35243 7590 05/30/2014
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/30/2014 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
____________________

ALIEN TECHNOLOGY CORPORATION
Third Party Requester and Appellant

v.

INTERMEC, INC., INTERMEC TECHNOLOGIES CORP., and
INTERMEC IP CORP.
Patent Owners and Respondents

____________________

Appeal 2014-003308
Reexamination Control 95/001,265
Patent No. US 6,812,841 B2
Technology Center 3900
____________________

Before MARC S. HOFF, STEPHEN C. SIU, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Patent Owner Intermec IP Corp. appeals under 35 U.S.C. §§ 134(b)
and 315(a) (2002) from the rejection of claims 1, 7-15, and 25-29
1
as set
forth in the Examiner’s Determination on Patent Owner Response and
Requester Comments after Board Decision, mailed July 17, 2013. In
response to this Board’s Decision
2
reversing the Examiner, mailed July 20,
2012, Patent Owner filed a response on August 20, 2012 (“PO Response”).
Requester Alien Technology Corp. filed comments on the Patent Owner’s
response on September 20, 2012 (“Req. Response”). The Examiner’s
Determination under 37 CFR § 41.77(d) (“Determination”) again rejected
each of the appealed claims. Patent Owner filed Comments in response to
the Determination on August 16, 2013 (“PO Comments”), and Requester
filed Comments on September 16, 2013 (“Req. Comments”).
We affirm.
The ‘841 Patent issued to Heinrich et al. on November 2, 2004 and is
assigned to Intermec IP Corp. The ‘841 Patent concerns an RFID
transponder that includes a state holding cell that maintains the present state
of the RFID transponder during temporary losses of power. After power is
restored to the RFID transponder, the state holding cell restores the present
state to the RFID transponder so that transactions with an RFID interrogator
can continue without having to re-transmit redundant commands (Abstract).

1
Claims 21-24 also stand rejected, but are explicitly not addressed in Patent
Owner’s Response (PO Response 6).
2
Appeal Number 2012-005401.
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Claim 1 is exemplary of the claims on appeal:
An RFID transponder, comprising:
an RF front end adapted to receive an interrogating RF signal;
an analog circuit coupled to said RF front end and adapted to recover
analog signals from said received interrogating RF signal, said analog circuit
providing state information defining a desired state of said RFID
transponder corresponding to said analog signals;
a digital state machine coupled to said analog circuit and adapted to
execute at least one command in accordance with said state information;
a memory coupled to said digital state machine and adapted to store
and retrieve digital data responsive to said at least one command executed
by said digital state machine a power capacitor coupled to said analog circuit
and deriving a voltage rectified from said interrogating RF signal to charge
said power capacitor, said power capacitor thereby providing electrical
power for said analog circuit, said digital state machine and said memory;
and
a state holding cell coupled to said digital state machine and being
adapted to maintain said state information during a loss in power provided
by said power capacitor due to lapse in receipt of said interrogating RF
signal by said RF front end.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Eglise US 4,674,618 June 23, 1987
Stewart US 6,942,155 B1 Sep. 13, 2005
Littlechild US 7,248,145 B2 July 24, 2007
Finkenzeller, RFID Handbook, Radio-Frequency Identification
Fundamentals and Applications, trans. Rachel Waddington (John Wiley &
Sons 1999).

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Claims 1 and 7-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Littlechild in view of Finkenzeller.
Claims 25, 26, 28, and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Littlechild in view of Stewart.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eglise in view of Finkenzeller.

ISSUES
With respect to claim 1, Patent Owner argues that the combination of
Littlechild and Finkenzeller does not disclose the use of a separate non-
volatile memory (PO Response 9-10) and that the person having ordinary
skill in the art would only have been motivated to use a ROM to store a
unique code or string (id.). Patent Owner contends that Littlechild is limited
to a HF RFID application for the closed environment of a high speed tunnel
reader, whereas the ‘841 Patent relates to a passive UHF RFID system in an
open free space environment (PO Response 11). As a result, Patent Owner
contends that Littlechild must address different problems than the ‘841
Patent (id.). Patent Owner further asserts that there would be no reason to
add an additional read-write memory to the tag of Littlechild (PO Response
12).
With respect to claim 25, Patent Owner contends that the “tenacious
latch” of Stewart is merely a timer set to enable the destruct sequence, and is
not a memory cell (PO Response 14). Thus, the combination of Littlechild
and Stewart would not result in all the elements recited in claim 25 (PO
Response 15).
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With respect to claim 27, Patent Owner contends that Eglise lacks a
read-write memory and state holding cell provided by separate circuit
elements, and that Finkenzeller fails to cure these deficiencies (PO Response
16).
Requester contends that Littlechild does not limit itself to application
only to high speed tunnel readers, nor to passive HF RFID systems (Req.
Comments 7). Requester further argues that the ‘841 Patent is directed to
RFID systems generally, not limited to any particular frequency (Req.
Response 1). As a result, Littlechild and the ‘841 Patent are directed to the
same problem of maintaining state information, in a passive RFID tag, that
would otherwise be lost during a temporary power outage (Req. Response
8).
Requester argues that Littlechild’s teaching of a state holding cell,
taken in combination with Finkenzeller’s disclosure that the use of
nonvolatile memory such as EEPROM in RFID transponders was known at
the time of invention, demonstrate that it would have been obvious to one
skilled in the art to modify Littlechild to include such a memory, as a routine
application of known techniques and a predictable variation (Req. Response
3-4; see Examiner’s Determination 3).
With respect to claim 25, Requester maintains that Stewart’s tenacious
latch can act as a state holding cell. Requester points out that both Stewart
and Figure 3 of the ‘841 patent depict a capacitor on the control node of a
transistor, both being used to store charge (Req. Response 10).
With respect to claim 27, Requester asserts that the combination of
Eglise and Finkenzeller is proper, in that Eglise teaches the persistent
storage of state information during power downturn, and Finkenzeller
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teaches the claimed memory and state holding cell being provided by
separate circuit elements (Req. Response 12).
Patent Owner’s and Requester’s contentions present us with the
following issues:
1. Does the combination of Littlechild and Finkenzeller teach or fairly
suggest a state holding cell adapted to maintain state information during a
loss in power?
2. Does the combination of Littlechild and Stewart teach or fairly
suggest maintaining state information in a state holding cell during a
temporary lapse in receipt of an interrogating RF signal, the memory and
state holding cell being provided by separate circuit elements?
3. Does the combination of Eglise and Finkenzeller teach or fairly
suggest maintaining state information in a state holding cell during a
temporary lapse in receipt of an interrogating RF signal, the memory and
state holding cell being provided by separate circuit elements?

PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
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the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR,
550 U.S. at 407, (“While the sequence of these questions might be reordered
in any particular case, the [Graham] factors continue to define the inquiry
that controls.”)

ANALYSIS
§ 103 REJECTIONS OF CLAIMS 1 AND 7-15
We are not persuaded by Patent Owner’s contention that the Examiner
has failed to identify a reason why the person having ordinary skill in the art
would have modified Littlechild to include an additional memory, as taught
by Finkenzeller (PO Comments 4). We agree with Requester that the
appropriate obviousness inquiry is not whether one skilled in the art would
have combined Littlechild and Finkenzeller in the manner of the ‘841 Patent
for the precise applications for which these references were developed (Req.
Response 3). Rather, the obviousness inquiry is whether the solution
provided by the claimed invention would have been obvious to one skilled in
the art (Req. Response 2).
We are not persuaded by Patent Owner’s proffered declaration that
Littlechild is directed solely to “baggage sorting using a high speed tunnel
reader” (PO Comments 4, Engels Decl. ¶ 34). Littlechild, by its own terms,
is not so limited, but rather is more generally directed to RFID transponders
that are used in orientation independent applications (col. 1, ll. 7-8), and to
solving the problem of power interruption to the dynamic memory array by
the power supply (col. 2, ll. 26-30). Because we disagree with Patent Owner
that Littlechild is limited to high speed tunnel readers, we also disagree with
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Patent Owner’s argument that Littlechild and the ‘841 Patent solve divergent
problems (PO Response 10-11). We agree with Requester that Littlechild
and the ‘841 Patent are both directed to maintaining state information in a
passive tag that would otherwise be lost during a temporary power outage
(Req. Response 8).
We further disagree with Patent Owner that Littlechild is directed
solely to “a very particular HF RFID application” (PO Response 11, Engels
Dec. ¶¶ 30, 34). The disclosure of Littlechild makes no such distinction
between HF and UHF RFID applications. Littlechild discloses that “the use
of RFID transponders on luggage is only one example of a wide range of
uses to which the technology can be applied” (col. 7, ll. 51-53). Littlechild
is more generally directed to maintaining data in dynamic memory for a
predetermined time period, even upon loss of power supply (col. 2, ll. 26-
30).
We agree with Requester that although Littlechild does not
necessarily disclose an additional, separate non-volatile memory,
Finkenzeller discloses that a separate, distinct non-volatile memory was a
standard feature of RFID tags as of its 1999 publication (Finkenzeller 172).
We agree with Requester that the use of such a separate nonvolatile memory
to store state information (such as that in Littlechild’s muting bit) would
have been a routine application of known techniques (Decision 8;
Examiner’s Determination 6). See KSR Int’l. Co. v. Teleflex, Inc., 550 U.S.
398, 416 (2007).
We are not persuaded that Littlechild teaches away from use of read-
write memory with slow write times such as EEPROM, as argued by Patent
Owner (PO Comments 7, Littlechild col. 10). Littlechild states only that
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EEPROM “has the disadvantage that writing data into memory takes several
milliseconds.” We do not find this teaching to be one that would lead the
skilled artisan in a direction divergent from the path taken by Appellant. See
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1090 (Fed. Cir. 1995).
Because we are not persuaded that the Examiner erred, we sustain the
rejection of claims 1 and 7-15 under § 103(a) as being unpatentable over
Littlechild in view of Finkenzeller.
CLAIMS 25, 26, 28, AND 29
We agree with the Examiner’s finding that while Littlechild does not
specifically disclose maintaining state information in a separate state holding
cell, wherein the memory and the state holding cell are provided by
separated circuit elements (Determination 11), Stewart makes up for this
deficiency, disclosing an RFID transponder including a memory element
(id.).
Stewart discloses a capacitor on the control node of a transistor. Extra
capacitance is used to store charge; the state represented by that charge
persists during brief power outages (Req. Comments 10; Stewart col. 5, ll.
43-51; col. 6, ll. 18-20). Stewart’s “tenacious latch” only changes its state
through leakage (col. 5, ll. 48-51). Stewart thus operates just as the ‘841
Patent operates: the ‘841 Patent includes capacitor 32 coupled to the input of
operational amplifier 36; the state represented by charge stored on capacitor
32 persists during brief power outages; and the duration of time that the state
holding cell will maintain previous state information will be determined by
the leakage characteristics of capacitor 32 and other parasitic elements of the
circuit (col. 5, ll. 38-42).
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We are not persuaded by Patent Owner’s argument that Stewart fails
to disclose that the tenacious latch stores state information (PO Comments
10). Stewart discloses that it is important that certain tag states like
“SLEEP/WAKE or other command states persist even through short
interruptions of the power supply” (col. 2, ll. 9-11) and discloses the latch’s
applicability to a “sleep/wake latch” and a “channel-code latch” (col. 5, ll.
10-11). Patent Owner’s further contention that Stewart’s tenacious latch is
merely used as a timer ‘to slow down destruct sequence attempts’ (PO
Comments 9, Engels Dec. ¶ 58) is similarly unpersuasive. Stewart’s
invention is explicitly directed to “applications such as enabling a circuit to
continue to function in the event of a brief loss of power” (col. 2, ll. 29-31).
We are not persuaded that the Examiner erred in rejecting claims 25,
26, 28, and 29. We sustain the § 103 rejection over Littlechild in view of
Stewart.
CLAIM 27
We agree with Patent Owner that Eglise does not disclose a memory
and a state holding cell provided by separate circuit elements, as parent
claim 25 recites (PO Response 15). However, the Examiner relies on
Finkenzeller, rather than Eglise, for this teaching (Determination 13).
We are also unpersuaded by Patent Owner’s argument that the person
skilled in the art would at most replace the EAROM of Eglise with the
EEPROM disclosed by Finkenzeller, which would not result in a separate
state-holding-cell structure (PO Comments 14). Rather, we agree with the
Examiner that it would have been obvious to modify Eglise to include a
separate non-volatile memory in addition to temporary memory, as disclosed
by Finkenzeller, to perform the function of maintaining state information
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during a loss in power. We agree with the Examiner that such a
modification constitutes the combination of familiar elements according to
known methods, yielding predictable results. See KSR, 550 U.S. at 416;
Determination 14. We sustain the 103 rejection of claim 27 over Eglise in
view of Finkenzeller.

CONCLUSIONS
1. The combination of Littlechild and Finkenzeller fairly suggests a
state holding cell adapted to maintain state information during a loss in
power.
2. The combination of Littlechild and Stewart fairly suggests
maintaining state information in a state holding cell during a temporary
lapse in receipt of an interrogating RF signal, the memory and state holding
cell being provided by separate circuit elements.
3. The combination of Eglise and Finkenzeller fairly suggests
maintaining state information in a state holding cell during a temporary
lapse in receipt of an interrogating RF signal, the memory and state holding
cell being provided by separate circuit elements.

ORDER
The Examiner’s rejection of claims 1, 7-15, and 25-29 is affirmed.

AFFIRMED

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Patent No. 6,812,841 B2

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ack

PATENT OWNER:

SEED INTELLECTUAL PROPERTY LAW GROUP
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092

THIRD-PARTY REQUESTER:

VAN PELT YI & JAMES LLP
10050 N. FOOTHILL BLVD, SUITE 200
CUPERTINO, CA 95014