Ex Parte Atkins et al

Patent Trial and Appeal Board

Jun 29, 2016

11392429 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
111392,429
97928 7590
Zebra/ Alston & Bird
101 S. Tryon Street
Suite 4000
FILING DATE
0312912006
07/01/2016
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Raymond Catherall Atkins
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
054054/309841 6769
EXAMINER
HOLLOWAY III, EDWIN C
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
07/01/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
jonathan.thomas@alston.com
IP _Legal@zebra.com
USPTOmail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND CATHERALL ATKINS,
MARLO ALPHONSO MARAIS,
and HENDRIK VANZYL SMIT
Appeal2013-002583
Application 11/392,429
Technology Center 2600
Before MARC S. HOFF, STEPHEN C. SIU, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-002583
Application 11/392,429
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 27--44. See generally Final Act. 1 These claims stand
rejected under 35 U.S.C. § 103(a) as obvious over Snodgrass (US 5,365,551;
issued Nov. 15, 1994) in view of Sharpe (US 5,621,412; issued Apr. 15,
1997). Claims 1-26 are canceled. App. Br. 28.
In the Answer, the Examiner withdrew two additional rejections-
(i) an obviousness rejection of claims 27--44 over Snodgrass in view of
Marsh (US 5,966,083; issued Oct. 12, 1999); and (ii) a double patenting
rejection of claims 1-24 over Snodgrass. Ans. 4.
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellants, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We affirm the Examiner's decision rejecting claims 27-38.
We reverse the Examiner's decision rejecting claims 39--44.
1 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the following documents for their respective
details: the clean copy of the Substitute Specification filed August 25, 2006,
as amended August 31, 2009 ("Spec."); the Final Action mailed December
8, 2011 ("Final Act."); the Appeal Brief filed August 8, 2012 ("App. Br.");
the Examiner's Answer mailed October 9, 2012 ("Ans."); and the Reply
Brief filed December 7, 2012 ("Reply Br.").
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Application 11/392,429
STATEMENT OF CASE
Appellants describe the present invention as follows:
Abstract.
A method and an identification system used for
communicating between a reader and a plurality of
transponders are disclosed. The reader has a transmitter
for transmitting a signal and each transponder includes a
receiver for receiving the reader signal and a transmitter
for generating a transponder signal. When the reader
[recognizes] a transponder signal from one of the
transponders it immediately issues a mute instruction,
muting all other active transponders and passing control to
the said transponder, without the need for a specifically
timed acknowledgement to the said controlling
transponder. The reader may issue a single
disable/wakeup instruction which disables the controlling
transponder returning control to the reader and reactivated
all muted (but not disabled) transponders.
Independent claim 27, reproduced below, is illustrative of the
appealed claims:
27. A system comprising:
a reader; and
a plurality of transponders;
wherein the reader is configured to transmit a
powering signal to the plurality of transponders,
wherein each of the transponders is configured to
transmit identifying data subsequent to receiving the
powering signal,
wherein the reader is further configured to transmit
a mute instruction muting all transponders except for a
controlling transponder,
wherein a coded instruction is included in the mute
instruction,
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Application 11/392,429
wherein the controlling transponder is configured to
perform an operation in accordance with the coded
instruction, and
wherein the mute instruction comprises a
modulation of the powering signal while the powering
signal maintains a pre-selected frequency.
CONTENTIONS and ANALYSIS
The Examiner finds that Snodgrass teaches all of the limitations of
independent claim 2 7 except for the final limitation that "the mute
instruction comprises a modulation of the powering signal while the
powering signal maintains a pre-selected frequency." Final Act. 2-3. The
Examiner relies upon Sharpe for teaching this final limitation and asserts
that it would have been obvious to incorporate this feature of Sharpe into
Snodgrass's system. Id. at 3--4.
Appellants set forth multiple arguments for why Snodgrass and
Sharpe, either alone or in combination, fail to teach various claim
limitations. See generally App. Br. Appellants also argue that Snodgrass
and Sharpe are not combinable. Id. at 10. Appellants additionally present
separate arguments with respect to various dependent claims. Id. at 11-24.
We address these arguments individually.
Claims 27, 29-32, and 34-38
Appellants argue that Snodgrass does not teach the limitation of claim
27 that "each of the transponders is configured to transmit identifying data
subsequent to receiving the powering signal." App. Br. 6-7. Appellants
effectively argue that in the present invention, this identifying step should be
interpreted narrowly, consistent with the Specification, so as to require the
act of identifying data responsive to receiving the powering signal and with
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Application 11/392,429
no intervening steps. Id. Appellants also present the same argument in
relation to independent claims 32 and 37, which recite similar limitations.
Id. at 12, 16-17.
This argument is unpersuasive. While Appellants' Specification
unquestionably describes protocols where transponders identify themselves
responsive to receiving the powering signal, the independent claims merely
recite the identification step being "subsequent to." The claims do not recite
something narrower along the lines of "responsive to." Furthermore,
Appellants' Specification does not express a clear intent to redefine
"subsequent to" so as to be limited to the narrower meaning proposed by
Appellants.
Appellants argue that independent claim 2 7 recites both a powering
signal and a muting signal. App. Br. 7. In contrast, according to Appellants,
Snodgrass's wake-up signal 17 4 is not separate from the received signal
172-the single signal received in Snodgrass. Id.
This argument is unpersuasive. Claim 27, itself, requires that "the
mute instruction comprises a modulation of the powering signal." As such,
it is reasonable to interpret various signals contained within a single received
signal as reading on plural signals, as claimed. In the present case, the
Examiner explains that received signal 172 includes wake-up signal 174 and
a separate muting/activation command. Ans. 5; see Snodgrass Fig. 3. It is
these latter two, separate signals within received signal 172 upon which the
Examiner is basing the rejection.
Appellants argue that Snodgrass's opcode only constitutes an
activation command-not a muting instruction. App. Br. 7-8. This
argument is unpersuasive. As explained by the Examiner (Ans. 5),
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Application 11/392,429
Snodgrass's opcode only causes one or a subset of identified responders to
respond (or become active), but causes other, non-identified responders to be
muted. As such, Snodgrass's command reasonably can be interpreted as
constituting a mute instruction.
Appellants argue that the present invention entails transponders
transitioning from an active state to a muted state. App. Br. 8. In contrast,
Appellants urge, Snodgrass's transponders do not transition to a mute state
from a prior active state. Id. This argument is unpersuasive. As noted by
the Examiner, "the claims do not require an active state[,] nor transition
from [an] active state. The claimed mute may be from any state." Ans. 5.
Appellants argue that Snodgrass does not teach the reader transmitting
a muting instruction because Snodgrass's "responder station 40 does not
wait for clear medium prior to broadcasting the response. According to the
present invention, collision detection by responder stations is not necessary
to accomplish uninterrupted communication." App. Br. 9. This argument is
unpersuasive. While the present invention may provide the benefit of
obviating collision detection, this benefit is not claimed.
We now tum to the last limitation, "wherein the mute instruction
comprises a modulation of the powering signal while the powering signal
maintains a pre-selected frequency," as well as Appellants' arguments
regarding Sharpe. Specifically, Appellants argue that Sharpe's On-Off
Keying (OOK) does not teach or suggest the claimed modulation. App. Br.
9-10. According to Appellants, Sharpe's OOK signal is an interrogation
signal-not a muting signal. Id.
Appellants further argue Snodgrass and Sharpe are not combinable
because the use of Sharpe's "OOK signal does not add any functionality to
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Snodgrass, but instead renders at least [Snodgrass's arithmetic-logic unit
(ALU)] inoperable for its intended purpose." App. Br. 10. Appellants
additionally argue that the rejection is based upon impermissible hindsight
reconstruction. Id.
These arguments are unpersuasive. The Examiner explains that
Sharpe's OOK "applies to any instruction and Sharpe includes instructions
that cause[] transponders to sleep." Ans. 6 (citing Sharpe cols. 21-22). We
understand the Examiners position to be, then, that Sharpe is not being relied
upon for combining the specific instruction contained within Sharpe's OOK
signal. Rather, the Examiner is relying upon Sharpe for the broader
proposition that signals, in general, may be transmitted using On-Off keying.
Appellants do not present persuasive arguments for why Snodgrass's muting
instruction reasonably could not be carried out with an OOK signal, or why
the use of such OOK signaling for transmitting the mute instruction would
fail to correspond to the disputed claim limitation.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner's obviousness rejection of independent claim 27.
Accordingly, we sustain the Examiner's rejection of that claim. We likewise
sustain the rejection of independent claims 3 2 and 3 7, which contain similar
limitations and for which, Appellants present similar arguments. App. Br.
11-16, 17-21. We likewise sustain the Examiner's obviousness rejection of
dependent claims 29-31, 34--36, and 38, which are not argued separately.
See App. Br. 6-24.
Claims 28 and 33
Claim 28 depends from claim 27, reading as follows:
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28. The system of Claim 27, wherein each transponder
is further configured to:
recognize the mute instruction; and
when each respective transponder is not the
controlling transponder, inhibit transmissions for a
predetermined period of time.
Claim 33 depends from claim 32, setting forth similar language.
Appellants reassert that "Snodgrass does not teach or suggest the mute
instruction as is described above." App. Br. 11. We have already explained
in the preceding section why this argument is unpersuasive. Appellants
further argue,
App. Br. 11.
However, even if the responder station entering the no
response state of Snodgrass is akin the mute instruction,
which it is not, there is no teaching or suggestion of,
inhibiting transmissions for a predetermined amount of
time. Instead the responder stations of Snodgrass reenter
an inactive state after a predetermined time period and
may not enter an active state until a new instruction is
received. As such, the responder stations require another
command to cause a transmission which is unlike the
Claims.
This argument is unpersuasive because Appellants' argument,
itself, constitutes an acknowledgement that "the responder stations of
Snodgrass reenter an inactive state after a predetermined time period."
Id. Appellants do not explain how, nor provide persuasive evidence
that, "inhibiting transmissions" is somehow narrower than, or
distinguishable from, waiting a "predetermined time period." Id.
Accordingly, Appellants have not persuaded us of error in the
Examiner's obviousness rejection of dependent claims 28 and 33.
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Claims 39--44
Claims 39 and 42 depend from claim 27, respectively reading as
follows:
39. The system of Claim 27, wherein each of the
transponders is configured to transmit the identifying data
in response to the powering signal without a need for an
instruction in the powering signal.
42. The system of Claim 27, wherein the reader is
configured to transmit an acceptance instruction
subsequent to receiving identifying data from the
controlling transponder.
Claims 40 and 41, which respectively depend from independent
claims 32 and 37, set forth language similar to that of claim 39. Claims 43
and 44, which respectively depend from independent claims 32 and 37, set
forth language similar to that of claim 42.
The only statements the Examiner sets forth in the Final Action in
relation to these claims is as follows:
Final Act. 5.
Regarding claims 39--41, transponders transmitting
ID in response to a powering signal without the need for
an instructions in the powering signal would have been
obvious in view of the tag response to unmodulated carrier
in fig. 3 of Sharpe to provide backscatter modulation.
Regarding claims 42--44, reader transmitting
acceptance instruction subsequent to receiving data from
the controlling transponder would have been obvious in
view of the acknowledge signal in Sharpe (fig.3) to
confirm reception to transponder.
In the Answer, the Examiner provides further discussion of Sharpe
teaching unmodulated interrogation signals. Ans. 8. The Answer does not
address claims 42--44. See Ans.
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We agree with Appellants that these findings of obviousness are
conclusory, lacking sufficient articulated reasoning with some rational
underpinnings to support the legal conclusion of obviousness. See App. Br.
21-24. The rejection simply does not set forth how Sharpe's teaching of
unmodulated interrogation signals is applicable to Snodgrass's
communication protocol or how, exactly, Snodgrass's communication
protocol is being modified.
The proposed modifications of causing Snodgrass's transponders to
transmit without an instruction beyond a powering signal (claims 39--41) and
causing Snodgrass's reader to transmit an acceptance instruction after
receiving identifying data from the controlling transponder (claims 42--44)
constitute the exact opposite communication protocol that Snodgrass
discloses. This proposed complete change in Snodgrass's communication
protocol is especially questionable in light of the fact that Snodgrass's entire
invention is directed to a communication protocol that enables the use of
responder stations having minimal logic and circuitry to respond to multiple
commander stations. Snodgrass, Abstract. The rejection simply fails to
explain how Snodgrass is being modified, or articulate why one of ordinary
skill would have attempted such a modification in light of the stated goals of
Snodgrass's invention.
DECISION
The Examiner's decision rejecting claims 27-38 is affirmed.
The Examiner's decision rejecting claims 39--44 is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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