Ex Parte 7518495 et al

Patent Trial and Appeal Board

Sep 25, 2015

95002268 (P.T.A.B. Sep. 25, 2015)

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.
95/002,268 09/14/2012 7518495 8747-100355 4038
909 7590 09/28/2015
Pillsbury Winthrop Shaw Pittman, LLP (NV)
PO Box 10500
McLean, VA 22102
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/28/2015 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
________________

CONTINENTAL AUTOMOTIVE SYSTEMS US, Inc.
Third Party Requester,

v.

SCHRADER ELECTRONICS, INC.
Patent Owner.
____________

Appeal 2014-007436
Reexamination Control 95/002,268
Patent US 7,518,495 B2
Technology Center 3900
________________

Before JAMES T. MOORE, STEVEN D.A. McCARTHY, and
DANIEL S. SONG, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

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I. SUMMARY
A. The Invention
This proceeding arose from a request by Continental Automotive
Systems US, Inc. (“Requester”) for an inter partes reexamination of US
Patent 7,518,495 B2, entitled “UNIVERSAL TIRE PRESSURE
MONITOR” (issued to Tom Tang et al. on Apr. 14, 2009 from Application
10/716,121, filed Nov. 18, 2003) (“the ’495 Patent” or “the ’121
Application”). We have jurisdiction under 35 U.S.C. §§ 134 and 315
(2002).
The ’495 Patent describes the invention as follows:
A universal monitor to be mounted in a tire of a vehicle, the
monitor for use in a remote tire pressure monitoring system
for the vehicle. The monitor includes a sensor for sensing tire
pressure, and a storage device for storing a plurality of codes,
each code comprising at least a data format. The monitor also
includes a transmitter in communication with the sensor and
the storage device, the transmitter for transmitting a wireless
signal including data representing the sensed tire pressure.
The wireless signal is transmitted by the transmitter according
to at least one of the stored plurality of codes.

Abstract.
Independent claim 27 is illustrative of the claimed subject matter on
appeal. This claim is reproduced below:
27. A monitor to be mounted in a tire of a vehicle, the monitor
for use in a remote tire pressure monitoring system for the
vehicle, the monitor comprising:
a sensor for sensing tire pressure;
a storage device for storing a plurality of codes, each
code indicating at least a data format; and
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a transmitter in communication with the sensor and the
storage device, the transmitter for transmitting a wireless signal
including data representing the sensed tire pressure, wherein the
wireless signal transmitted by the transmitter has the data
format indicated by one of the stored plurality of codes.

B. Statement of Rejections
Claims 1, 8, 9, 19, 20, and 27–52 were subject to reexamination in this
proceeding. Claims 1, 8, 9, 19, and 20 have been confirmed as patentable by
the Examiner. Claims 2–7, 10–18, and 21–26 were not subject to this
reexamination. The Examiner adopted the following grounds of rejection of
claims 27–52 (RAN 28–53
1
):
3C. Claims 27, 34, 35, 45 and 46 stand rejected under §103(a) as being
unpatentable over Tsui (US 5,841,390; issued Nov. 24, 1998) in view
of the Applicant’s Admitted Prior Art (“AAPA
2
”) RAN 9, adopting
the proposed rejections from Request, 17–19 and 31 (Ex. P);

1
Throughout this opinion, we refer to (1) the Inter Partes Reexamination
Request for U.S. Patent No. 7,518,495 filed September 14, 2012
(“Request”); (2) the Right of Appeal Notice mailed July 17, 2013 (“RAN”);
(3) Patent Owner’s Appeal Brief filed October 15, 2013 (“PO App. Br.”);
(4) Requester’s Appeal Brief filed October 15, 2013 (“3PR App. Br.”);
(5) Patent Owner’s Respondent Brief filed December 6, 2013 (“PO Resp.
Br.”); (6) Requester’s Respondent Brief filed November 14, 2013 (“3PR
Resp. Br.”); (7) the Examiner’s Answer mailed March 12, 2014
(incorporating the RAN by reference) (“Ans.”); (8) Patent Owner’s Rebuttal
Brief filed April 14, 2014 (“PO Reb. Br.”); and (9) Requester’s Rebuttal
Brief filed April 14, 2014 (“3PR Reb. Br.”).
2
AAPA is said to be the ‘495 Patent, 1:10–12. “It is well known in the
automotive industry to provide vehicles with remote tire pressure monitoring
(TPM) systems for monitoring tire pressure and other tire parameters. . . .
Each tire monitor transmits wireless signals that includes data representing
the tire pressure.” Request, Ex. M, pages 1 and 2.
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4C. Claims 27, 34, 35, 45, and 46 stand rejected under §103(a) as being
unpatentable over Tsui in view of the AAPA. RAN 10, adopting the
proposed rejections from Request, 17–19 and 32 (Ex. S);
5D. Claims 27, 34, 35, 45, and 46 stand rejected under §103(a) as being
unpatentable over Tsui in view of Vredevoogd (US 6,469,621 B1,
issued Oct. 22, 2002) and the AAPA. RAN 11, adopting the proposed
rejections from Request, 17–19 and 34 (Ex. W); and
7C. Claims 27–52 stand rejected under §103(a) as being unpatentable over
Kulka (US 6,087,930, issued July 11, 2000) in view of Vredevoogd.
RAN 12, adopting the proposed rejections from Request, 20–21 (Ex.
BB).
C. Status of the Proceedings
Patent Owner, Schrader Electronics, Inc. (“Owner”), appeals under
35 U.S.C. §§ 134(b) and 315(a) from the rejection of claims 27–52. PO
App. Br. 1.
Third Party Requester, Continental Automotive Systems US, Inc.
(“Requester”) appealed the Examiner’s determination not to adopt
additionally proposed rejections. 3PR App. Br. 5–6 (setting forth its appeal
issues A–R). Requester has now withdrawn its appeal due to a settlement.
3PR Notice of Withdrawal of Appeal, January 14, 2015. We therefore elect
not to consider the rejections which were not adopted.
Oral argument was conducted on November 19, 2014, and the
transcript of that argument is of record.

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D. Related Litigation and Proceedings
According to Patent Owner:
The '495 patent is the subject of infringement litigation
between the Patent Owner and its affiliate and the Requester.
Schrader-Bridgeport International Inc. v. Continental
Automotive Systems (USA), Inc. (2:12-cv-10715-SJM-
MJH)(E.D. Michigan)
PO App. Br. 1.
We observe that the Patent Owner has filed a Notice of
Concurrent Proceedings on June 3, 2015. That Notice states a Notice
of Intent to Issue a Reexamination Certificate is to be issued in
copending reexamination proceeding 90/013,222, which reexamined
the instant patent on different, but related grounds. We further
observe that the Office confirmed patentability of claims 1–52 over
the art raised in that related proceeding.

E. Standard of Review and Decision
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).

We AFFIRM-IN-PART.
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II. ANALYSIS
The Appellant argues the rejections in an order different from their
appearance in either the RAN or the Request. Accordingly, we will follow
the Patent Owner’s approach.

A. The Rejection of Claims 27–52 under 35 U.S.C. § 103(a) as being
unpatentable over Kulka and Vredevoogd

Claims 27–52 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kulka in view of Vredevoogd. RAN 12.
These proposed rejections were adopted by the Examiner from those set
forth in the September 14, 2012 request for reexamination on pages 20–21,
35, and Exhibit BB thereto. Id.
The Examiner adopted the finding that Kulka describes an
embodiment including a tire pressure monitoring system that stores a code in
a memory. Request 21; Kulka 6:18–27. The stored code is found to be
compared to a received code and if a match is made, a transmission is made
according to a data format. The stored code was also found to be associated
with the data transmission format of Kulka. Request 21, citing Table I of
Kulka. Vredevoogd was found to describe a plurality of codes each being
associated with a data format. Id.
According to the findings adopted by the Examiner, one of ordinary
skill in the art, modifying Kulka according to the teachings of Vredevoogd,
produces a tire pressure monitoring system having a plurality of stored codes
with transmissions made according to the stored codes. Request at 21.
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The Patent Owner first asserts that there is no reason to combine
Kulka and Vredevoogd. PO App. Br. 7. According to the Patent Owner,
that combination would result in nothing more than Vredevoogd Figure 2.
PO App. Br. 8–9. The reason behind that logic is that neither Kulka nor
Vredevoogd describe multiple codes in the transmitter.
According to Patent Owner, Vredevoogd does not teach a tire pressure
monitor that can sense pressure or other tire data and transmit that data using
different codes. Instead, Patent Owner asserts that Vredevoogd teaches a
receiver adapted to receive and interpret transmissions from TPMS monitors
each using a different code. That is, in Vredevoogd, each TPMS monitor is
of the prior art type having a single code for formatting the signal, and those
codes differ between TPM monitors from different manufacturers. PO App.
Br. 7.
We observe that instead of being capable of transmitting multiple
codes from a sensor, the Vredevoogd system is capable of receiving multiple
codes from different sensors. As noted in the Vredevoogd Abstract:
A tire monitor for monitoring a characteristic of tires on a vehicle
includes a circuit configured to receive a first wireless signal having
tire characteristic data and a first wireless protocol [i.e., a tire pressure
sensor with one format]. The circuit is further configured to receive a
second wireless signal having tire characteristic data and a second
wireless protocol [i.e., a tire pressure sensor with a second format].
The second wireless protocol is different than the first wireless
protocol.

Vredevoogd, Abstract.
Patent Owner then asserts that Vredevoogd teaches away from doing
what is claimed because it is the opposite of the claimed invention in
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thatVredevoogd modifies the receiver in the vehicle. PO App. Br. 10.
Patent Owner also asserts that other art, including JP2003-25817 states that a
universal tire pressure monitor is “not possible.” PO App. Br. 11.
We find the first portion of this argument persuasive. Kulka describes
an active integrated circuit transponder with on-board power supply to be
mounted in a vehicle tire. Kulka, Abstract. Upon receiving an interrogation
signal, the transponder activates sensors to sense tire pressure and
temperature and transmits an encoded radio frequency signal containing
serial, encoded, tire identification, position, pressure, temperature, and
revolutions, inter alia. Id.
As we understand Kulka, and as described by Requester, Kulka
describes an RFID 18 that transmits the tire data. Request, Ex. BB, p. 1.
Kulka describes that an interrogator 80 sends a signal to the RFID 18 and
this signal includes a tire identification code:
Also input to the receiver 34 is a portion of the signal from the remote
interrogation unit detected by the antenna 36 which contains a specific
tire identification code. The central processing unit 20 compares this
code with the corresponding tire identification code stored in the
memory 22 to determine a match therebetween and proper
identification of the tire on which the RFID 18 is mounted. This
unique code identification enables a single remote interrogation unit
to communicate with a selected one of a large number of tires, on one
or multiple vehicles. (Kulka,6:18–27).

A match causes a transmission to occur from the RFID 18 to the interrogator
80:

In response to the received interrogation signal, the central processing
unit 20 transmits an encoded, serial radio frequency signal containing
tire parameter data, as described hereafter, via either or both of the
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high power or low power transmitter circuits 30 and 32, respectively,
to the remote interrogation source. (Kulka. 6:27–32).

Id. at 2.

While we understand each RFID could be programmed with a unique
identifier, we do not agree with the Requester and the Examiner that this
evidence is sufficient to meet the claim limitations of a sensor with a stored
plurality of codes which are then used to format and transmit data.
Apparently sensing this possibility, the Requester also urges that
Vredevoogd meets this limitation.
Vredevoogd teaches that "the protocol of [a] wireless signal is
identified by reading a bit pattern (e.g., the start/sync bit pattern) that
uniquely identifies [a] protocol.” Furthermore, "[t]he bit pattern is then
compared to one or more prestored or predetermined protocols to identify
the protocol of the wireless signal," the identification and comparison steps
being performed by tire monitor 16, and not tire sensor 18. (Vredevoogd,
5:45-52). Vredevoogd teaches that a protocol is "different encoding patterns,
modulation schemes, bit timing, etc." (Vredevoogd, 1:22–23) as well as
”definition of bits in a word (e.g., which bits are an identifier, which bits are
the tire characteristic data, etc.).” (Vredevoogd, 3:44–46).
Thus, Vredevoogd teaches a stored code (the “bit pattern”) that
identifies a data format (“protocol”) within the context of a tire pressure
monitoring system, and not in a tire pressure sensor. Req., Ex. BB, p. 3.
The difference between Vredevoogd and Kulka’s systems is minimal.
As argued by the Patent Owner, and so far as we can tell, neither stores a
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plurality of codes onboard the tire pressure sensor for individual selection
for formatting and transmitting data, as required by claim 27.
Accordingly, we cannot sustain this rejection.
B. The Rejection of Claims 27, 34, 35, 45, and 46 under §103(a) as
being unpatentable over Tsui and AAPA

Claims 27, 34, 35, 45, and 46 stand rejected under §103(a) as being
unpatentable over Tsui and AAPA. Request, 17–19 and 31 (Ex. P), adopted
by the Examiner, RAN at 9. Claims 27, 34, 35, 45, and 46 also stand
rejected under §103(a) as being unpatentable over Tsui in view of the
AAPA. RAN 10, adopting the proposed rejections from Request, 17–19 and
32 (Ex. S).
In sum, the Examiner adopted the finding that Tsui describes
mechanical codes and a mechanical memory for storing these codes. Tsui
therefore was found to teach all the limitations of the claimed device except
that the claimed device is used in the context of tire pressure monitoring.
Request 18
The Examiner adopted the finding that AAPA describes that tire
pressure monitoring is well known and provides a motivation for using the
device in a tire pressure monitoring context. E.g., Request, Ex. P at 1.
With more specificity, we observe that by adoption of the arguments
of the Requester, the Examiner found that Tsui describes a transmitter that
transmits signals to appliances (such as a garage door opener), and the
signals are in different formats. Request, Ex. P at 1, citing Tsui, Abstract.
Moreover, the Examiner found that Tsui describes that “[d]ifferent
manufacturers . . . utilize different code schemes for the coded signal . . .”
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and that the “code scheme" of one manufacturer is often incompatible with
that of another manufacturer. Request, Ex. P at 1, citing Tsui, 1:34–47. As
a result, the Examiner found that Tsui’s code scheme is a (1) device code
and (2) a transmission format; and that the formats of Tsui correspond to a
manufacturers’ data transmission format. Request, Ex. P at 2-3.
The Examiner found that Tsui does not describe a tire pressure
monitor, but AAPA describes that tire pressure monitors having wireless
transmitters are extremely well known. Request, Ex. P at 1, citing the ’495
patent, Background (See, e.g., Tsui 1:10–22).
The Examiner then adopted the conclusion that a person ordinarily
skilled in the art would have taken the transmitter of Tsui and applied it in
the known tire pressure monitoring context described in AAPA to achieve
the known result of a tire pressure monitor. Request, Ex. P at 1. Among the
stated reasons:
(1) wireless tire pressure monitors were well known in the art; in fact,
so well-known that the market suffered from a corresponding plethora of
incompatible signaling techniques to convey tire pressure information by a
wireless connection. Request 10.
(2) techniques to permit a wireless appliance to compatibly transmit
its data using any of a variety of different signaling techniques were well
known in the art. Request 11.
(3) using a code to represent/designate a data/signal format was
notoriously well known in the art, including in the field of wireless tire
pressure monitors. Request at 11.
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In sum, the Requester urged, and the Examiner adopted as found, that
the claimed elements were all individually well known in the art at the time
of Tang's invention; the elements in combination do what one would
ordinarily expect; and there are significant known economic reasons to make
the combination (marketing and fielding a wireless device compatible with
multiple formats offers economies of scale). Request at 11. We observe that
Tsui sums its economic incentive up this way:
To provide greater flexibility and avoid the requirement for multiple
inventories, there is a need for a transmitter unit and a receiver unit
which can selectively emulate the transmitters and receivers of other
transmitter-receiver systems to enable the transmitter unit and/or
receiver unit to operate in such other systems.

Tsui 1:65–2:3.
Both rejections are very similar, and are argued together by the Patent
Owner. We now turn to the allegations of error.
The Combination of References
Appellant’s first argument of error relating to this rejection is that the
Examiner erred in designating the Tsui reference a “base reference.” PO
App. Br. 20. According to the Patent Owner, “Tsui cannot be the base
reference because it is not a TPMS monitor, and instead is just a garage door
remote control.” Id. at 21. This argument is unpersuasive of error.
The question before us is not determined by how the Examiner has
chosen to delineate the references in the exposition of the rejection, and to
take that position, as observed by the Requester, places form over substance.
3PR Reb. Br. 3. Rather, the question to be resolved under § 103 depends on
what the combination of the prior art teaches or suggests, and whether what
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the prior art teaches or suggests would have rendered what is claimed
unpatentable. In re Albrecht, 579 F.2d 92, 94 (CCPA 1978); In re Bush, 296
F.2d 491, 496 (CCPA 1961).
KSR Intl Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) instructs us
that when claims involve a combination of familiar elements combined
according to known methods that does no more than yield predictable
results, the combination is likely unpatentable. Choosing one reference as
opposed to another as the “base” reference ignores the instruction that we
are to consider the combination as a whole. We therefore reject the Patent
Owner’s invitation to reverse a rejection because it is phrased as “B” in view
of “A” as opposed to “A” in view of “B” when the requisite rationale is
present for making the overall combination. The Examiner by adoption has
made adequate findings of fact as to what each reference described, and
provided a statement of the motivation to combine.
Tsui and “Codes” and “Data Formats”
Appellant next urges that Tsui lacks the claimed “codes” with
differing “data formats.” PO App. Br. 26.
In support of that position, Appellant urges that code means “a set of
instructions or data that prescribes or determines characteristics of the
wireless signal to be transmitted for a particular tire pressure monitoring
system.” PO App. Br. 5. We are not provided with a specific citation to the
specification for this definitional language. We do note that Patent Owner’s
position is consistent with the litigation position taken by the Patent Owner
in the related litigation. Ex. GG, exhibit “A” thereto. Patent Owner urges
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that the term “code” should be restricted only to particular tire pressure
monitoring system codes. PO App. Br. 5.
The Specification gives certain components of a code in various
embodiments. For example, at 1:55–56; 2:1; and 2:12–13, it is stated that
“each code compris[es] at least a data format.” At column 4, the
Specification further observes that manufacturers’ “codes may be used to
identify a signal format including any number of characteristics, such as
carrier frequency, modulation scheme, data format and/or encryption
technique, for wireless signals (18).” Specification 4:28–32 (see also 3:47–
53; 4:56–59; and 5:54–58).
It does not appear to us that the Specification defines the term “code”
to the exclusion of all other types of codes which do not contain TPM
specific codes. In one commonly understood dictionary definition, the word
encompasses a “system of signals for communication.”
3
Requester is of the
position that it includes as little as a “portable, alphanumeric entity such as a
byte of information.” Req. at 5. It is also suggested by Requester that
Morse Code falls within the definition as hinted by the Patent Owner in the
Patent Owner’s claim construction brief. Req. at 6, fn. 5, citing Ex. HH.
We are of the view that a system of signals for communication gives a
good indicator of a reasonably broad definition of this term, and corresponds
well to the word’s plain meaning and use in the Specification without
importing limitations from the specific embodiments into the claim
language, or ignoring later claim limitations.

3
Webster’s New Collegiate Dictionary, ©1977, p. 216.
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Thus, we agree in part with Patent Owner, and conclude that code
means “a set of instructions or data that prescribes or determines
characteristics of the wireless signal to be transmitted.” We however
disagree with Patent Owner that “code” alone necessarily includes tire
pressure monitoring systems as part of its definition, as we have not been
persuasively directed to a specific indication in the specification that the
Patentee intended it to have only that definition.
We are aware of the other claim elements reciting a “signal including
data representing the sensed tire pressure, wherein the wireless signal
transmitted by the transmitter has the data format indicated by one of the
stored plurality of codes” as recited in claim 27.
Patent Owner’s argument is that “Tsui does not teach any ‘codes’ as
properly interpreted above to mean ‘codes’ for different TPM systems. Tsui
is a garage door remote control, not a TPM monitor, so it does not have
‘codes’ for TPM systems.” PO App. Br. 26.
The weaknesses of this argument are that it presupposes the correct
interpretation of the term ‘codes’ is restricted solely to tire pressure monitor
codes, and Tsui is the only reference applied. Both presuppositions are
incorrect.
Tsui describes “a transmitter-receiver system which may selectively
operate at one of a plurality of transmission frequencies and may selectively
encode/decode the transmitted data in one of a plurality of data transmission
formats.” Abstract, lines 1–5. As noted in the Request and found by the
Examiner, it is the combination of Tsui as modified by AAPA which allows
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for the wireless transmission of a signal representing the sensed tire
pressure.
As noted above, Claim 27 does require that the wireless signal include
pressure data, and the signal have a data format indicated by a stored code.
The Examiner found that AAPA describes that functionality. Request, Ex.
P. at 1. The Examiner further found that one of ordinary skill in the art
would have been motivated to use the plurality of manufacturer codes of
Tsui to enhance marketability. Id.
Consequently, this argument is unpersuasive.
Patent Owner next urges that Tsui fails to teach “data formats.” PO
App. Br. 26. According to the Patent Owner, at best, Tsui teaches different
signal formats such as frequency, modulation, and baud rate. Id. (emphasis
added). We are provided with counsel’s viewpoint that the Examiner’s
conclusion is “simply a mistake.” Id.
We find that this position is not consistent with the evidence of record
and the claim language. In the Request, Exhibit P, page 3, Figure 14C of
Tsui illustrates a mechanical switch for setting the transmission codes. The
Abstract expressly discusses different data transmission formats. Tsui
contains the following description:
Similarly, a mode select control 512 provides control signals to the
microcontroller 506 to control the program operation of the
microcontroller 506 to provide the selected data transmission format.
The output of the microcontroller is typically a serial pulse train
containing the data word and any required synchronization or timing
pulses.

Tsui 5:49–55.
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The above description is in contrast to the Patent Owner’s assertion
that “Tsui never discloses that the ‘data format,’ i.e., the arrangement of the
data being transmitted, changes.” PO App. Br. 26, fn 7.
Patent Owner has taken the position that the “data format” must
include data from tire pressure monitoring systems such as pressure,
temperature, tire identification number, and function codes. PO App. Br. 27.
We disagree that the term “data format” alone must include TPM data, as
noted above. The signal as claimed must include tire pressure data, and
must be encoded by one of the plurality of codes.
Tsui describes a multitude of different data transmission arrangements
are possible, separate from, for example, frequency.
Exemplary Figure 14A is reproduced below:

Figure 14 is a flow chart illustrating formats and frequencies
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In the discussion of data transmission formats of Figure 14A, Tsui
describes:
A format select switch A20 is used for selection of a plurality of data
transmission formats A18a, A18b, A18c or A18n, of data or any
combination of the data transmission formats A18a, A18b, A18c, ... ,
and A18n. Such transmission of the signal circumvents the need for
the user to determine and to manually set the code switch A16 to
switch setting that matches that of a particular transmission format. In
either case, a signal A22 is provided to an oscillator A24, which
transmits the signal using one of a plurality of transmission
frequencies A24a, A24b, A24c, ... , or A24n through antenna A28.
Selection of the transmission frequencies A24a, A24b, A24c, ... ,
A24n is made via frequency switch A26.

Tsui 10:28–41.

Patent Owner is of the position that the code in Tsui, once set, fixes
the data format, which is inconsistent with TPM systems. PO App. Br. 27.
According to Patent Owner, Tsui is really an identification code and nothing
more. Id.
Patent Owner’s argument is again directed principally against Tsui,
and fails to consider Tsui appropriately in combination with the AAPA when
compared with the claim language. Claim 27 requires a plurality of codes,
which is described by Tsui. AAPA describes wireless TPM systems using
codes to encode TPM data. We have not been persuaded that the Examiner
erred in concluding one of ordinary skill in the art would have made this
combination for the reasons found in the Request.
We therefore are unpersuaded by this assertion.

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C. The Rejection of Claims 27, 34, 35, 45, and 46 under §103(a) as
being unpatentable over Tsui, Vredevoogd, and the AAPA

The Examiner adopted the finding that Tsui describes a transmitter
that transmits signals to appliances (such as a garage door opener), and the
signals are in different formats. The Examiner further found that Tsui
observed that different manufacturers utilize different code schemes for the
coded signal and that the code scheme of one manufacturer is often
incompatible with that of another manufacturer. As Tsui provides a code
scheme with a device code and a transmission format, the Examiner found
that the formats of Tsui correspond to a manufacturers' data transmission
format. Request, Ex. W, at 1, citing Tsui 1:34–47.
The Examiner adopted the finding that Vredevoogd describes tire
pressure monitors having wireless transmitters. Request, Ex. W, at 1, citing
Vredevoogd 1:6–10.
The Examiner also adopted the finding that a person of ordinary skill
in the art would have taken the transmitter of Tsui and applied it in the
known tire pressure monitoring context described in Vredevoogd to achieve
the known result of a tire pressure monitor. Request, Ex. W, at 1.
The Patent Owner first urges error in the use of Tsui in the rejection,
as a base reference. PO App. Br. 30. That assertion is unpersuasive for the
reasons previously noted above.
The Patent Owner next urges that the rejection selectively isolates the
codes from Vredevoogd by the use of hindsight. PO App. Br. 30 and 7–9.
According to Patent Owner, Vredevoogd does not teach a tire pressure
monitor that can sense pressure or other tire data and transmit that data using
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different codes. Instead, Patent Owner asserts that Vredevoogd teaches a
receiver adapted to receive and interpret transmissions from TPMS monitors
each using a different code. That is, in Vredevoogd, each TPMS monitor is
of the prior art type having a single code for formatting the signal, and those
codes differ between TPM monitors from different manufacturers. PO App.
Br. 7.
The Patent Owner is correct that instead of being capable of
transmitting multiple codes, the Vredevoogd system is capable of receiving
multiple codes. As previously noted in the Vredevoogd Abstract:
A tire monitor for monitoring a characteristic of tires on a vehicle
includes a circuit configured to receive a first wireless signal having
tire characteristic data and a first wireless protocol [i.e., a tire pressure
sensor with one format]. The circuit is further configured to receive a
second wireless signal having tire characteristic data and a second
wireless protocol [i.e., a tire pressure sensor with a second format].
The second wireless protocol is different than the first wireless
protocol.

Vredevoogd, Abstract.
Patent Owner then asserts that Vredevoogd teaches away from doing
what is claimed because it is the opposite of the claimed invention in that
Vredevoogd modifies the receiver in the vehicle. PO App. Br. 10. Patent
Owner also asserts that other art, including JP2003-25817 states that a
universal tire pressure monitor is “not possible.” PO App. Br. 11.
There are two problems with this line of reasoning which make it
unpersuasive of error for this rejection. First, although Vredevoogd does
teach a universal receiver, it is Tsui which is relied upon for teaching a
universal transmitter. As discussed above, it is the combination of
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references, not a singularly considered reference, which is relied upon.
Patent Owner does not adequately address the impact of Tsui’s description
on this analysis. Second, the cited Japanese reference does not say that a
universal tire pressure sensor is “not possible.” The cited paragraph is
reproduced below:
[0006] In addition, in the tire monitoring systems communicating
with a non-versatile protocol, one kind of tire sensor device, which
can communicate with various reception devices, for example, several
kinds of reception devices that are supplied from several makers,
cannot be manufactured, so that production lots of the tire sensor
devices is reduced, thereby raising the cost. In case the reception
device is manufactured, similarly, the cost is also raised.

JP ‘817 at [0006] (emphasis added).
4

The paragraph discusses costs of manufacturing types of sensors and
does state that a universal tire sensor device “cannot be manufactured.” This
vague statement is the apparent basis for the argument that one of skill in the
art would think a universal monitor is impossible. But the text, translated
from Japanese, does not indicate why such sensors cannot be manufactured.
We are not informed by persuasive evidence that it is because the codes
constantly change, are proprietary, or perhaps frequency incompatible. No
persuasive technical reason is given which would overcome the weight of
the Tsui description of a universal code set. Accordingly, while we give this
evidence some weight, it is minimal.
We therefore are unpersuaded by this argument.

4
The translation is taken from 3PR App. Br., Ex. A.
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The Patent Owner next urges that the Examiner improperly relied
upon the AAPA, which it is said cannot provide a reason to combine. PO
App. Br. 31. We are not provided with a specific citation for this urged
reliance. Our review of this rejection indicates that AAPA is relied upon for
the monitor mounted in a tire for use in a remote tire pressure monitoring
system for a vehicle. See, e.g. Request, Ex. W, p. 1. It is not in dispute that
tire pressure sensors mounted in wheels and transmitting wirelessly were
known. Consequently, we are not adequately pointed to a persuasive
instance where the Examiner used the Patent Owner’s own teaching to
reconstruct the claimed invention. This argument of error therefore also is
not persuasive.
The Patent Owner next argues that Claims 34 and 35 are not obvious
over any of the Tsui based combinations. PO App. Br. 32.
Those claims are reproduced below.
34. The monitor of claim 27 wherein the wireless signal transmitted
by the transmitter comprises a series of wireless signals, each wireless
signal having the data format indicated by a different one of the stored
plurality of codes.

35. The monitor of claim 27 further comprising a receiver for
mounting on the vehicle, the receiver for receiving the wireless signal
transmitted by the transmitter, wherein the receiver is configured to
recognize a wireless signal having the data format indicated by one of
the plurality of codes.

According to the Patent Owner, claims 34 and 45 are directed to
a third embodiment of the ‘495 Patent, in which the tire pressure monitor
stores a plurality of codes and the transmitter transmits the wireless signals
based on those codes. PO App. Br. 32. Patent Owner urges that the
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Requester itself argued that energy conservation issues with TPM monitors
counsel against pursuit of the claims directed to the ‘495 Patent's third
embodiment. Patent Owner also points to JP ‘817 and Vredevoogd as
teaching towards power conservation and not multiple transmissions. PO
App. Br. 33.
While we agree it is somewhat incongruous for the Requester to
change its argument depending on circumstances, we also are cognizant of
the level of ordinary skill in the art, which is more persuasive evidence.
Kulka notes that a “power source provides sufficient power to receive and
transmit tire parameter data throughout the entire useful life of the tire,
including several recappings of a tire.” Kulka 4:2–5. Consequently, while
we agree it is certainly taught and generally advisable to conserve power to
extend sensor life, we are satisfied that selecting an appropriate power
source to handle expected life of the tire was more than adequate to address
this concern.
We therefore are not persuaded by this contention.
D. Secondary Considerations
In 1966, the Supreme Court in Graham v. John Deere Co., 383 U.S.1
(1966) interpreted and applied section 103, stating:
Under 103, the scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in the pertinent art
resolved. Against this background, the obviousness or
nonobviousness of the subject matter is determined. Such secondary
considerations as commercial success, long felt but unsolved needs,
failure of others, etc., might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to
be patented.
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383 U.S. 1, 17–18.

Patent Owner faults the Examiner’s consideration of the evidence of
secondary considerations. PO App. Br. 33.
Patent Owner asserts that there is evidence that a competitor had
ceased development of its universal sensor in view of the ‘495 Patent;
evidence of the Requester’s own patenting attempts, touting the benefits of a
universal sensor that transmits using a plurality of codes; and evidence of
awards received by both the Patentee and the Requester for such devices. Id.
i. Requester’s Attempts to Patent
a) U.S. Patent Publication No. 2009/0033478 (the ‘478
Publication) (filed as Ser. No. 12/166,626), (Ex. 2).
According to the Patent Owner, this application, entitled “Universal
Tire Pressure Monitoring Sensor” is an almost verbatim copy of the ‘495
Patent. Similarities are urged to include the Background describing the
same problem as the ‘495 Patent and a description and claims including
the same features claimed in the '495 Patent. PO App. Br. 34–35.
We focus on the claims of the ‘478 Publication. Patent Owner states
that they were directed to the invention of the ‘495 Patent. We are
specifically pointed to claims 1, 5–7, and 10–16. The Patent Owner asserts
that it is particularly informative that the Requester filed an IDS including
Tsui, Kulka, and Vredevoogd’s counterpart PCT application, and still
pursued similar claims. PO App. Br. 37.
The Examiner observes that the claims are not identical, including
differences such as “a plurality of selectable communication protocols” and
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a “plurality of separate programs that each transmit according to only one of
a plurality of communication protocols.” RAN 32 and 33. The Patent
Owner asserts that this is error as the protocols and codes are describing how
the wireless signal is formatted. PO App. Br. 37.
The Patent Owner and the Examiner both have a point, but the
specific motivations for filing and prosecuting a patent application are
unknown. Consequently, this line of reasoning is unpersuasive.
Patentability and obviousness are legal conclusions based on underlying
facts, and the most objective and persuasive facts are here residing in the
actual prior art of record. Prior opinions and actions of the Requester do not
materially impact the above analysis which is based on the prior art of
record. We therefore give this consideration no persuasive weight.
b) U.S. Patent Publication 2011/0140876 (the ‘876 Publication)
(filed as Ser. No. 12/635,351) (Ex. 7).
Patent Owner observes that Requester again attempted to obtain a
patent for “the same inventions” as the ‘495 Patent. PO App. Br. 38. The
Patent Owner notes that the ‘876 Publication application is more specifically
directed to the approach of the ‘495 Patent claims 34 and 45 where the TPM
monitor transmits using each of the codes stored in it, rather than just one
that is selected or programmed from a plurality. Id.
We find this argument unpersuasive, for the reason noted above.
ii. Acclaim
The Patent Owner directs us to Exhibits 11 through 15, which are
press articles said to be quoting Continental personnel touting the benefits of
its devices being programmed to work with different vehicle TPM systems,
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using the specific approach of claims 1, 8, 19, 27, 34, and 45. PO App. Br.
41–42. We are also directed to Requester's promotional brochure
"Introducing VDO Redi-Sensor™” which is said to tout the ability to “cover
over 80% of all vehicles in North America with only 3 SKUs and replaces
over 130 OE sensors ... and counting.” PO App. Br. 42, citing Ex. 10 at 4.
According to the Patent Owner, the claimed invention won the Tire
Pressure Monitoring Systems Product Leadership Award from Frost &
Sullivan in 2012 based on its innovative EZ Sensor® product. Ex. 16.
Moreover, we are told that Requester's product won the 2011 Automotive
International Industry award for “Best New Product for Import Cars or
Trucks.” Ex. 15.
On the evidentiary side, a nexus is lacking. We are not cited in the
brief to evidence which indicates how the VDO Redi-Sensor or the EZ
Sensor operate, or an analysis as to how they fall within the scope of the
instant claims. See In re Glatt Air Techniques, Inc., 630 F.3d 1026, 1030
(Fed. Cir. 2011) (Secondary considerations evidence such as commercial
success evidence "should be considered so long as what was sold was within
the scope of the claims"; see also In re Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011). Counsel asserts at PO App. Br. 42, lines 1–2 that these sensors use
the specific approach of certain claims, but this assertion is not evidence.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Accordingly, we can ascribe no meaningful weight to this secondary
consideration.

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iii. Acquiescence
As a final secondary consideration, we are told that a competitor has
conceded “to the merits of the ‘495 Patent.” PO App. Br. 43. Patent Owner
asserts that in response to a letter notifying a potential infringer of the ‘495
Patent, Orange Electronic Co., Ltd., that company responded by a letter of
May 29, 2012, confirming that it postponed its Simple Sensor in view of
respect for the ‘495 Patent. Id., citing Exs. 17 and 18.
We agree with the Patent Owner that this evidence has some
persuasive value.
However, Tsui teaches the desirability of universal codes for the very
reasons the products are touted for in the press releases. While there is
certainly a degree of acclaim, it appears more likely due to the desirable
feature as taught by Tsui.
On balance, we conclude that the evidence of secondary
considerations is insufficient to establish non-obviousness of the rejected
claims, to wit:
1) The rejection of Claims 27, 34, 35, 45, and 46 under §103(a) as
being unpatentable over Tsui and AAPA; and
2) The rejection of Claims 27, 34, 35, 45, and 46 under §103(a) as
being unpatentable over Tsui, Vredevoogd, and the AAPA
are AFFIRMED.

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CONCLUSIONS
Patent Owner has provided persuasive argument that the rejection of
Claims 27–52 under 35 U.S.C. § 103(a) as being unpatentable over Kulka
and Vredevoogd cannot be sustained.
The evidence of record supports the rejection of Claims 27, 34, 35,
45, and 46 under §103(a) as being unpatentable over Tsui and AAPA (both
rejections); and the rejection of Claims 27, 34, 35, 45, and 46 under §103(a)
as being unpatentable over Tsui, Vredevoogd, and the AAPA.
We have reconsidered the evidence of record in light of the secondary
considerations presented by the Patent Owner, but on balance, find that the
conclusion of obviousness is not in error.

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DECISION
The Examiner’s decision rejecting claims 27, 34, 35, 45, and 46 is
affirmed.
The Examiner’s decision rejecting claims 28–33, 36–44, and 47–52 is
reversed.
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).In the event neither party files a request for rehearing
within the time provided in 37 C.F.R. § 41.79, and this decision becomes
final and appealable under 37 C.F.R. § 41.81, a party seeking judicial
review must timely serve notice on the Director of the United States Patent
and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

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Patent Owner:
PILLSBURY WINTHROP SHAW PITTMAN, LLP (NV)
PO BOX 10500
MCLEAN, VA 22102

Third Party Requester:
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET, SUITE 1600
CHICAGO, IL 60603-3406

PL: tj