Ex Parte 7518495 et al

Patent Trials and Appeals Board

May 20, 2019

95002268 - (D) (P.T.A.B. May. 20, 2019)

UNITED STATES PATENT AND TRADEMARKOFFICE
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 05/21/2019
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/21/2019 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 2018-003242
Reexamination Control 95/002,268
Patent US 7,518,495 B2
Technology Center 3900
________________

Before JAMES T. MOORE, DANIEL S. SONG, and
RAE LYNN P. GUEST, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

NEW DECISION ON APPEAL
37 C.F.R. § 41.77(f)

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I. SUMMARY
A. Introduction
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 (pre-AIA) 35 U.S.C. §§ 134 and 315
(2002).
B. The Invention
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;
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a storage device for storing a plurality of codes, each code
indicating at least a data format; and
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.

US Patent 7,518,495 B2, 8:28–39.

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 therefore not subject to
this reexamination. The Examiner adopted the following grounds of
rejection of claims 27–52, numbered in accordance with the Examiner’s
numbering scheme (RAN 28–531):

1 Throughout this opinion, we refer to inter alia (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.”); (9) Requester’s Rebuttal Brief
filed April 14, 2014 (“3PR Reb. Br.”); (10) Decision on Appeal mailed
September 28, 2015 (“Decision”); (11) Decision on Rehearing mailed
October 12, 2016 (“Reh’g Decision”); (12) Patent Owner’s Request to
Reopen filed November 11, 2016 (“Request to Reopen”); (13) Remand
Order mailed May 2, 2017 (“Remand Order”); (14) Examiner’s
Determination mailed August 7, 2017 (“Determination”); and (15) Patent
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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 (“AAPA2”) (RAN 9, adopting
the proposed rejections from Request, 17–19 and 31 (Ex. P));
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”), appealed under
35 U.S.C. §§ 134(b) and 315(a) from the rejection of claims 27–52. PO
App. Br. 1.

Owner’s Comments on Examiner’s Determination filed September 7, 2017
(“Comments”).
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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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 withdrew its appeal due to a settlement. 3PR Notice
of Withdrawal of Appeal, January 14, 2015. We therefore elected not to
consider the rejections which were not adopted. Decision, 4.
Oral argument was conducted on November 19, 2014, and the
transcript of that argument is of record.
We issued a Decision in this proceeding on September 28, 2015,
affirming in part the decision of the Examiner to reject claims 27, 34, 35, 45,
and 46 under 35 U.S.C. § 103(a) as being unpatentable over Tsui and
AAPA, as well as over Tsui, Vredevoogd, and the AAPA. Decision, 28.
Patent Owner timely requested reconsideration of the Decision, and
the request was granted in a decision on rehearing (“Reh’g Decision”) dated
October 12, 2016, which designated the inclusion of Kulka as a new ground
of rejection. Reh’g Decision, 7.
Patent Owner filed a Request to Reopen prosecution November 11,
2016, and added claims 53 and 54 expressly reciting a battery. Request to
Reopen, 11–12. In a Remand Order dated May 2, 2017, the amendment was
not entered by the Board as not amending a rejected claim. Remand Order,
2. Patent Owner also argued in the Request to Reopen that the evidence of
record, including new evidence, overcame the rejections. Request to
Reopen, 13–20. New testimonial evidence in the form of Exhibits 26 and 27
was entered by the Board for the Examiner’s consideration. Remand Order,
3.
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The Examiner subsequently determined that the evidence and
arguments submitted with the Request to Reopen did not overcome the
rejections of record. Determination, August 7, 2017. The Patent Owner has
provided additional comments. September 7, 2017. This Appeal is now
ready for issuance of a new and final decision. 37 C.F.R. § 41.77(f).
This decision replaces the prior decision.
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 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 argued 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 in conducting our analysis.
A. The Rejection of Claims 27–52 under 35 U.S.C. § 103(a) as being
unpatentable over Kulka and Vredevoogd
Claim 27 recites:
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
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.
US Patent 7,518,495 B2, 8:28–39.
Existing tire pressure monitoring (“TPM”) systems are different from
one manufacturer to the next, and may be different even within one
manufacturer’s products. ‘495 Patent, 1:23–25. Different manufacturers use
different codes in their systems to represent carrier frequency, modulation
scheme, data format and/or encryption technique used for the wireless
signals of the TPM system. Id., 1:28–34. Claim 27 requires a plurality of
codes, each indicating such a data format, stored in a storage device of in the
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monitor mounted in the tire, such that a wireless signal transmitted by a
transmitter has a data format indicated by one of the stored codes.
Claims 27–52 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kulka in view of Vredevoogd. RAN 12. This proposed
rejection was 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 was 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 data format 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.
These codes are said by Requester to (and the Examiner found by adoption)
comprise data format codes. Request at 14–15.3
The Patent Owner first asserts that there is no reason to combine
Kulka and Vredevoogd. PO App. Br. 7. According to the Patent Owner,

33 We note, for clarity sake that we draw a distinction between “data format
codes” which set such things as frequency, modulation, and encryption (see
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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 data format 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 data format codes. Instead, Patent Owner asserts that Vredevoogd
teaches a receiver adapted to receive and interpret transmissions from TPMS
monitors, each monitor, mounted in a different tire, using a single data
format code for that given tire. That is, in Vredevoogd, each TPMS monitor
is of the prior art type having a single data format code for formatting the
signal. PO App. Br. 7.
We observe that instead of being capable of transmitting multiple data
format codes from a sensor, the Vredevoogd system is capable of receiving
multiple codes from different sensors, each of which transmits its data using
a single unique code. 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, mounted in one tire, with one data 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, mounted in a second tire, with a second data format]. The
second wireless protocol is different than the first wireless protocol.
Vredevoogd, Abstract.

infra.) and generic encoded data such as the various tire data found in Kulka
Table 1, which are not related to the “format” of the data. Kulka, 9:29–
10:25, Abstract.
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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 RF 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 pressure 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, mounted in a tire along with a pressure sensor 50 and
antenna 36, that transmits the tire data. Request, Ex. BB, p. 1. Kulka
describes that a remote interrogator 80, which is not mounted in the tire,
sends a signal to the RFID 18 and this signal includes a tire identification
code:
Also input to the receiver 34 [of RFID 18] 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).
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A match causes a transmission to occur from the RFID 18 to the remote
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
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 the memory 22 of each of Kulka’s RFID 18
stores a unique tire identification code, we do not agree with the Requester
and the Examiner that this evidence is sufficient to meet the claim
limitations of a tire monitor having storage with a stored plurality of data
format 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 a remote tire monitor 16, and not tire sensor 18, which is
mounted in the tire. (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).
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Thus, Vredevoogd teaches a stored data format code (the “bit
pattern”) in the tire sensor that identifies a data format (“protocol”) within
the context of a tire pressure monitoring system, and not storing a multitude
of codes in storage as part of a tire monitor mounted in a tire. 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
plurality of data format codes onboard the monitor mounted in the tire for
individual selection for formatting and transmitting data, as required by
claim 27.
Accordingly, we do not 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 by the Examiner under
§103(a) as being unpatentable over Tsui and AAPA. RAN 9, issue 3C
(adopting the proposed rejections from Request, 17–19 and 31 (Ex. P)).
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)). Both of these
rejections are very similar, and are as modified by the Board in the Decision
to include a discussion of Kulka pertaining to claims 34, 35, 45, and 46. See
Decision, 23.
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
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that the claimed device is used in the context of tire pressure monitoring.
Request 18.
As noted by the Board in the Decision concerning claims 34, 35, 45,
and 46, Kulka describes 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.” Decision, 23, citing Kulka
4:2–5.
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. See 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 . . .”
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).
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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.
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.
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Tsui 1:65–2:3.
Being that both rejections are similar, they were 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
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 Int’l 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
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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. See Ex. GG, exhibit “A” thereto. Patent Owner
urges 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 data format codes that do not contain
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TPM specific codes. In one commonly understood dictionary definition, the
word code encompasses a “system of signals for communication.”4
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.
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 further 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 (emphasis added).

4 Webster’s New Collegiate Dictionary, ©1977, p. 216.
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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 that 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
for the wireless transmission of a signal representing the sensed tire
pressure.
As noted above, Claim 27 requires that the wireless signal include tire
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 data format
codes of Tsui to enhance marketability. Id.
Consequently, this argument of Patent Owner is unpersuasive.
Patent Owner next urges that Tsui fails to teach “data formats.” PO
App. Br. 26. According to Patent Owner, at best, Tsui teaches different
signal formats such as frequency, modulation, and baud rate. Id. (emphasis
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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 (emphasis added).
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. Rather, 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:
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Figure 14 is a flow chart illustrating formats and frequencies
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.
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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.
The Patent Owner next argues that Claims 34 and 45 are not obvious
over any of the Tsui based combinations. PO App. Br. 32; Request to
Reopen 13–20.
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.
45. 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
a transmitter in communication with the sensor and the storage
device, the transmitter for transmitting a series of wireless signals
including data representing the sensed tire pressure, wherein each of
the series of wireless signals transmitted has the data format indicated
by a different one of the stored plurality of codes.
PO App. Br. 48.
These claims require that a series of transmissions occur.
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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 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.
Patent Owner also urges that the “conventional wisdom at the time of
the invention would lead a person of ordinary skill in the art away from this
approach since transmitting multiple signals would result in greater battery
usage by the sensor and also data clashing, both important considerations for
a TPM system.” Request to Reopen, 14.
Patent Owner submits the partial declaration testimony of one Dr.
Melvin Ray Mercer in the related litigation in support of its position.
Exhibit 26.
Initially, we note that we are not informed of the qualifications of Dr.
Melvin Ray Mercer. We are also not provided with any deposition
testimony concerning Dr. Mercer’s cross-examination, if any occurred.
Consequently, we have little basis to be able to accord this testimony much
weight.
However, for purposes of our analysis in this decision only, we shall
assume Dr. Mercer would be found to be qualified to testify to the subject
matter of this proceeding.
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Patent Owner asserts that:
Dr. Mercer specifically addressed the battery life issue, noting that it
creates “a significant problem for battery life because of the
significant energy drain.” Id. at 15. That supports Patent Owner’s
position that the third embodiment monitor of claims 34, 45, 53 and
54 is not obvious, and that Kulka does not offer a battery life solution
that makes it obvious.
Request to Reopen, 15.
We observe that Dr. Mercer specifically testifies:
59. Note that with respect to these first two embodiments, the monitor
only transmits signals according to one manufacturer’s code in order
to communicate one measured tire pressure so as to inform humans in
the vehicle of that tire pressure measurement. In contrast, the third
embodiment requires that all manufacturer’s codes be transmitted
each time one measured tire pressure is communicated to inform
humans in the vehicle of that tire pressure. Thus, for example, in the
third embodiment, if 15 manufacturer’s codes are utilized, the length
of the required transmission (and the energy supplied by the battery)
will be roughly 15 times what would be required using either of the
first two embodiments.
Ex. 26, p. 14.
We are cognizant of the commercial issue of having the system
transmit, for the life of a tire, multiple codes because of the considerable
power drain of transmission. See also Ex. 26, ¶¶ 65-70. It is an issue.
On the other hand, the Examiner finds that in Kulka the RFID 18
mounted on the tires of a vehicle is in the form of a single integrated circuit
chip which is mounted on the substrate 12 and connected to the battery 14.
The Examiner further finds that Kulka’s RFID 18 transmits tire, pressure,
and revolution count information. RFID 18 also transmits in each signal
transmitted to the remote interrogation source 80 various other tire data or
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information as shown in Table 1 of Kulka, 9:22–10:25. Table 1 of Kulka
describes myriad tire parameters or information that are transmitted serially.
Determination, 8.
Moreover, the Examiner found that Kulka discloses RFID 18 not only
transmits upon interrogation, but also wakes up on its own accord to
generate and supply the appropriate activation signal directly to the power
switch driver 132 to turn on the timer 134 to set the appropriate data
collection time window. This auto generation of the activation signal can be
on a time basis at any selectable time interval. Id., citing Kulka, 10:54–63.
The Examiner additionally found that Kulka does not impose any
limitations on the frequency of how often it would transmit and even
suggests that it can be frequent, e.g. once each day, once per start-up of the
vehicle, etc. Id., citing Kulka 11:1–3.
The Examiner thus concludes that Kulka’s battery is long-lasting and
small in size, as Kulka discloses power saving features such as the RFID 18
performing “auto-activation” at “any selectable time interval” and even
“once per start-up”. The Examiner finds that Kulka’s teachings are designed
to “provide[] sufficient power to receive and transmit tire parameter data
throughout the entire useful life of the tire, including several recappings of a
tire.” Id., citing Kulka, 4:2–5.
In response to the Examiner’s new findings, Patent Owner asserts that
when one reads Kulka in its entirety, it is clear Kulka is dealing with an
interrogated system in which the monitor typically runs in a low power
mode, and only transmits upon interrogation. Comments, 10. According to
Patent Owner, the tire pressure monitor wakes for transmission only when
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interrogated, and accordingly the energy demand on the battery is much
lower. Id.
Patent Owner reasons that a person of ordinary skill in the art reading
Kulka would not view Kulka as teaching that battery life is an issue that one
of ordinary skill in the art would readily dismiss as a constraint when
considering other types of tire pressure monitors. Id., 11.
Dr. Mercer’s testimony, when weighed against the Examiner’s
findings concerning the express discussion of power-saving methodologies
in Kulka, fails to persuade us that a person of ordinary skill would have any
difficulty sizing a battery appropriately for the system of Tsui as modified
by AAPA and Vredevoogd to be operational in light of Kulka. Kulka
expressly 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. We also observe that
service life of the battery is not a claim element.
Consequently, while we agree on the one hand with Patent Owner that
it is known and generally advisable to conserve power to extend sensor life,
we on the other hand are satisfied that selecting an appropriate power source
to handle expected life of the tire was within the skill of the art at the time
the invention was made and would not have caused one of ordinary skill in
the art not to consider the combination as made.
Dr. Mercer further testifies:
63. First, the ‘495 specification provides no disclosure of how to
transmit multiple protocols within certain transmission limits set by
the FCC. …
Ex. 26, p. 15.
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Dr. Mercer describes certain limits set upon transmissions by the
Federal Communications Commission (FCC). None of these, however, are
technical issues which would deter one of ordinary skill in the art from
considering the invention to be obvious, rather, they are challenges to legal
commercialization within the radio framework authorized by the FCC.
We therefore are not persuaded by Patent Owner’s contention.
Patent Owner also urges that the prior art teaches that data clashing is
a problem with tire pressure monitors. Request to Reopen, 14. Patent
Owner relies upon the newly submitted evidence in support of its assertion
concerning the understanding of one of ordinary skill in the art. Id. at 15,
citing Ex. 26 at 17-22. Patent Owner specifically notes that U.S. Patent No.
6,486,773 (“Bailie” – Exhibit E) teaches that data transmitted from tire
pressure monitors can clash if two or more transmitters transmit data at the
same time, and thereby cause the receiver to not reliably decode the
transmissions. Bailie 1:29–31. Patent Owner asserts that by transmitting
multiple signals for different codes per claims 34 and 45, the patentees went
against these teachings and the wisdom in the art by choosing an approach
that leads to faster battery drain and a greater susceptibility of data clashing.
Request to Reopen 16.
The weakness in this argument is that although data clashing is a
known problem (Bailie 1:29–30) known solutions are provided for at Bailie
1:35, and Bailie’s method in general illustrates the use of variable time
delays. Accordingly, we are not persuaded by this argument.

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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.
As previously noted by the Board in the Decision, Kulka describes
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.” Decision, 23, citing Kulka 4:2–5.
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.
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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
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 (JP ‘817) states
that a universal tire pressure monitor is “not possible.” PO App. Br. 11.
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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 that is relied upon for teaching a
universal transmitter. As discussed above, it is the combination of
references, not a singularly considered reference, that is relied upon. Patent
Owner does not adequately address the impact of Tsui’s description on this
analysis. Second, JP ‘817 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).5
The paragraph discusses costs of manufacturing types of sensors and
states 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

5 The translation is taken from 3PR App. Br., Ex. A. We are cognizant of
the Request to Reopen’s arguments stating that this reference recites it is
“not possible” and the solution is to standardize protocols. Request to
Reopen, 14. See also Comments, 3, where Patent Owner asserts this
establishes it is against conventional wisdom. We, on the other hand, find
that the term is more in line with the translation “cannot be manufactured”
for the reasons discussed herein concerning codes and FCC regulatory
restrictions and the associated rise in cost if the reception device is in fact
manufactured. JP ’817 at [0006].
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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.
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 pointed adequately 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.
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,
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failure of others, etc., might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to
be patented.
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.
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The Examiner observes that the claims are not identical, including
differences such as “a plurality of selectable communication protocols” and
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, we find Patent Owner’s 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 little 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
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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,
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. The Appellant’s brief
does not cite us to persuasive 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).
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Accordingly, we cannot ascribe significant meaningful weight to this
secondary consideration.
iii. Acquiescence
We are also 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.
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.
iv. Skepticism – Embodiment Three – Claims 34 and 45.
In the Request to Reopen, Patent Owner points to the testimony of
Thomas LeMense, an inventor of the ’495 Patent. According to Patent
Owner, Mr. LeMense testified that he was “pretty skeptical” of the third
embodiment approach, i.e., the approach of claims 34 and 45. Request to
Reopen, 16–17, citing Ex. 27 at 50:10–19. Patent Owner notes that Mr.
LeMense highlighted the battery issue as the first reason for his skepticism.
Id. at 50:19–51:5; see also id. at 52:20–24. Moreover, it is urged that Mr.
LeMense referred to the concept as a “radical suggestion.” Id. at 53:13–16.
Mr. LeMense is credited with saying the concept was “almost ridiculous,”
again pointing to the battery and other issues one of which one of ordinary
skill in the art would be aware. Id. at 55:9–23.
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We have carefully studied Mr. LeMense’s testimony. We do agree
that battery life was discussed as a challenge to be overcome. Ex. 26,
51:24–25. However, reading the entirety of the testimony, it becomes
evident to us that other non-technical challenges made him skeptical as well,
including FCC restrictions as particularly difficult, as well as obtaining
proprietary code.
Q. Who, do you know who contributed the embodiment where codes
-- I'm sorry -- do you know who contributed the embodiment where
RF protocols are prestored and then one is selected?

A. That might have been me.

Q. Okay.

A. Yeah.

Q. And how about the one where -- how about the embodiment where
RF protocols are prestored and the tire pressure sensor transmits
pursuant to all of them?

A. Right. So I don't remember where that came from. I do remember
being pretty skeptical with that idea when it came up at the time
because it certainly would -- there are a number of challenges to doing
that, right, in the sense that it -- these are battery-powered
devices. You put them in your tire. They're sealed up. They're not
battery replaceable. They're pretty much disposable units. So if I'm --
if I'm sending if I've got 10 different protocols, so I'm using 10 times
as much energy as I would in the system that only has to send one,
that's going to result in a shorter battery life, and then there's some
hindrances by the Federal Communication Commission in how much
information -- how much spectrum you can use and how often you
can use it that would be particularly difficult. So I do recall that when
that came up, I was not one of the proponents of that, that approach,
so, but I don't remember who suggested it, and I don't even recall if it
was part of the -- I don't even recall if it was disclosed in the invention
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disclosure or it might have come up in subsequent discussion with the,
the patent, you know, the outside patent attorney.
Ex. 27, p. 50–51.
In follow-up questioning by Continental’s attorney, Mr. LeMense
equated this skepticism with it being a radical suggestion.
Q. Okay. All right. So you were skeptical about embodiment three,
right?

A. I remember at the time it was kind of a radical suggestion, right,
yeah.
Ex. 27, p. 53.
Additionally, Mr. LeMense testified that, concerning the problems
with developing a sensor:
A. Embodiment number three, thank you. Like I said, to me that
seemed like, wow, that's really hard or that's almost ridiculous, right,
because of all these problems with, you know, battery and, and getting
around FCC regulations and could you even do it and, you know --
there are already a lot of challenges in a universal sensor, a universal
tire pressure monitor sensor in that you need to gather some inform –
you need to gather information on the protocols, and this doesn't
matter -- this is regardless -- this is embodiment one, two, or three.
They all have this challenge involved that you need to have the
information on the protocols at your disposal, either you need to
reverse engineer it or you need to have it provided to you, and that's
not publicly available. So there's -- in the case of embodiment
three -- so sorry -- in embodiments one and two, you're going to --
you're going to emulate a sensor that already exists, and so
presumably all the challenges with FCC and battery life and all that
have already been met because you're going to act -- you're going to
make a sensor that behaves in the same way as a sensor that's been
marketed and it's been type approved by FCC and all these other
things.
Embodiment three is really creating a new is creating a new
animal, right, creating a sensor that's, that's using a bunch of different
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protocols, and you don’t have that -- you don't have that up-front
knowledge that it's solvable, right. You don't have that up-front
knowledge that what you’re going to end up with is going to be -- is
going to have an acceptable battery life or it's going to have or it's
going to be legal to have it transmitting or that's certainly going to
constrain it to the point where if it only has two protocols in it, well
then, it's not really so universal then, right.
Ex. 27, 55–56.
While there were many challenges to implementing a commercially
successful product, the battery life is not a claimed element, and much of the
skepticism is due to the other problems to be solved – FCC regulations,
acquiring code, etc.
On balance, then, 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 (in view of Kulka); and
2) The rejection of Claims 27, 34, 35, 45, and 46 under §103(a) as
being unpatentable over Tsui, Vredevoogd, and the AAPA (in view of
Kulka)
are AFFIRMED.
CONCLUSION
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
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38
rejections); and the rejection of Claims 27, 34, 35, 45, and 46 under §103(a)
as being unpatentable over Tsui, Vredevoogd, and the AAPA (each rejection
as considered in view of Kulka).
We have reconsidered the evidence of record in light of the secondary
considerations presented by the Patent Owner, and the further positions
based on new evidence presented in the Request to Reopen as to claims 34
and 45, but on balance, find that the conclusion of obviousness is not in
error.

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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39

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