Ex Parte Beigel et al

Board of Patent Appeals and Interferences

Jun 27, 2005

10064380 (B.P.A.I. Jun. 27, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL L. BEIGEL, NATHANIEL POLISH,
STEVEN R. FRANK and ROBERT E. MALM
____________
Appeal No. 2005-0171
Application No. 10/064,380
____________
ON BRIEF
____________
Before JERRY SMITH, BARRETT, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the Examiner’s rejection
of claims 1-17, 20-25, 32, 36-45, 47-68, and 70-80.
The disclosed invention relates to an electronic
identification system in which the identifying agency and the
object to be identified cooperate in the identification process.
More particularly, an interrogator (reader) is inductively coupled
to a transponder (tag) in which the reader is associated with the
identifying agency and the tag is associated with the object to be
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2
identified. Two-way communication is provided between the reader
and the tag through inductively-coupled coils. The reader drives
its coils through capacitors at a driving frequency and the tag
detects the reader’s signal by way of the tag’s inductively-coupled
coil connected in parallel with a capacitor.
Claims 1 and 32 are illustrative of the invention and read as
follows:
1. A reader for use with a tag that communicates data to the
reader, the reader comprising:
a transformer having a plurality of windings, each winding
having first and second terminals;
a coil driver having first and second output terminals;
two capacitors, each capacitor having first and second
terminals, the first and second output terminals of the coil driver
being connected to the first terminals of the capacitors, the
second terminals of the capacitors being connected to the first and
second terminals of a winding of the transformer;
a coil having first and second terminals connected
respectively to the first and second end terminals of a winding of
the transformer;
a data extractor for extracting data from the signal induced
in the coil, the data extractor having first and second terminals
connected respectively to first and second terminals of a winding
of the transformer.

32. A reader for use with a tag that transmits a data sequence
to the reader by repeating a message a plurality of times, the
message comprising a preamble, a tag data group of T bits, and an
error-detecting group of E bits, the preamble consisting of a sync
sequence of S bits, the tag data group and the error-detecting
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3
group possibly including false-sync sequences, the reader
comprising:
a means for receiving the data sequence transmitted by the
tag;
a means for detecting each sync sequence in the received data
sequence;
a means for identifying the preamble;
a means for extracting the tag group from the received data
sequence utilizing the identification of the preamble.
The Examiner relies on the following prior art:
McFarlane 3,223,779 Dec. 14, 1965
Kurusu 3,587,017 Jun. 22, 1971
Ogita et al. (Ogita) 4,278,980 Jul. 14, 1981
Chatelot 4,864,633 Sep. 05, 1989
Waraksa et al. (Waraksa) 4,942,393 Jul. 17, 1990
Buchele 5,276,910 Jan. 04, 1994
Carroll et al. (Carroll) 5,517,194 May 14, 1996
(filed Feb. 10, 1994)
Claims 20-24 stand rejected under 35 U.S.C. § 112, first
paragraph, as being based on an inadequate disclosure. Claims 32
and 72 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Waraksa. Claims 36-40 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Buchele. Claims 70, 71, and 73-80 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Carroll.
Claims 1, 3, 41 and 43 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Chatelot and Kurusu.
Claims 1, 2, 4, 41, 42, 44, and 45 stand rejected under 35 U.S.C.
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§ 103(a) as being unpatentable over the combination of Chatelot and
Ogita. Claims 5-13, 25, 47-60, and 62-64 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Carroll alone.
Claims 14-17, 61, and 64-68 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Carroll in view of McFarlane.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Brief (dated April 23, 2004,
Paper No. 8) and Answer (mailed July 1, 2004, Paper No. 9) for the
respective details.
OPINION
We have carefully considered the subject matter on appeal, the
rejections advanced by the Examiner and the evidence of
anticipation and obviousness relied upon by the Examiner as support
for the prior art rejections. After reviewing and taking into
consideration Appellants’ arguments set forth in the Brief along
with the Examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the Examiner’s Answer, we
affirm-in-part.
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5
The rejection of claims 20-24 under the enablement
requirement of the first paragraph of 35 U.S.C. § 112.
In order to comply with the enablement provision of the
statute, the disclosure must adequately describe the claimed
invention so that the artisan could practice it without undue
experimentation. In re Scarbrough, 500 F.2d 560, 566, 182 USPQ
298, 305 (CCPA 1974); In re Brandstadter, 484 F.2d 1395, 1404, 179
USPQ 286, 293 (CCPA 1973); and In re Gay, 309 F.2d 769, 774, 135
USPQ 311, 316 (CCPA 1962). If the Examiner has a reasonable basis
for questioning the sufficiency of the disclosure, the burden
shifts to Appellants to come forward with evidence to rebut this
challenge. In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232
(CCPA 1973), cert. denied, 416 U.S. 935 (1974); In re Brown, 477
F.2d 946, 950, 177 USPQ 691, 694 (CCPA 1973); and In re Ghiron, 442
F.2d 985, 992, 169 USPQ 723, 728 (CCPA 1971). However, the burden
is initially upon the Examiner to establish a reasonable basis for
questioning the adequacy of the disclosure. In re Strahilevitz,
668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re Angstadt,
537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976); and In re
Armbruster, 512 F.2d 676, 677, 185 USPQ 152, 153 (CCPA 1975).
The Examiner has questioned the sufficiency of Appellants’
disclosure in describing the specific weighted integrations set
Appeal No. 2005-0171
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6
forth in claims 20-24. After careful review of the arguments of
record, however, we are in agreement with Appellants’ position as
stated in the Brief. As asserted by Appellants (Brief, pages 30-
32), the Examiner, aside from a general allegation of
insufficiency, has never specifically indicated how Appellants’
disclosure would not be enabling with regard to the particular
features recited in claims 20-24. We find no basis for the
Examiner’s conclusion that one of ordinary skill would not be able
to implement, without undue experimentation, the claimed weighted
integration functions, especially in view of Appellant’s disclosure
at paragraphs 56-62 of the specification, as well as the evidence
presented in the Attachments I and II appended to the Brief, which
had previously been submitted in the amendment filed October 29,
2003, Paper No. 5.
In view of the above, since we find that the Examiner has not
established a reasonable basis for challenging the sufficiency of
the instant disclosure with respect to claims 20-24, we will not
sustain the rejection of claims 20-24 under the enabling clause of
the first paragraph of 35 U.S.C. § 112.
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The 35 U.S.C. § 102(b) rejection of claims 32
and 72 based on Waraksa.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
indecency, each and every element of a claimed invention as well as
disclosing structure which is capable of performing the recited
functional limitations. RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc. v.
Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
With respect to the appealed independent claims 32 and 72, the
Examiner attempts to read the various limitations on the disclosure
of Waraksa. In particular, the Examiner directs attention to the
illustration in Waraksa’s Figure 9 illustration along with the
accompanying description beginning at column 5, line 55 (and
including column 9, lines 40-55) of Waraksa.
Appellants’ arguments in response assert a failure of Waraksa
to disclose every limitation in independent claims 32 and 72 as is
required to support a rejection based on anticipation. In the
arguments appearing at pages 38-40 of the Brief, Appellants’
assertions focus on the contention that, in contrast to the claimed
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invention, Waraksa does not disclose any structure which would
detect “each sync sequence in the received data sequence,” the data
sequence “possibly including false-sync sequences.”
After reviewing the Waraksa reference in light of the
arguments of record, we are in general agreement with Appellants’
position as expressed in the Brief. We agree with Appellants that
Waraksa has no disclosure of any structure which would distinguish
between a genuine sync sequence and a false-sync sequence since
Waraksa avoids the possibility of false-sync sequences appearing in
the data sequence by attaching a SYNC pattern to the beginning of
the Miller encoded code word.
We recognize that the Examiner has taken the position (Answer,
pages 10 and 11) that the “false-sync sequence” limitation is not a
positive limitation and is in effect an alternative language
limitation which need not be given patentable weight. We find no
basis for the Examiner interpreting the claim language in this
manner. The “false-sync sequence” language is indeed a positive
limitation since it establishes conditions and an environment in
which the claimed data sequence and preamble identifying functions
must operate.
We further disagree with the Examiner (Answer, page 11) that
the “false-sync sequence” language can be given no patentable
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9
weight since such language appears only in the claim preamble and
merely recites the intended use of a structure. Contrary to the
Examiner’s contention that the claim preambles merely recite
intended use, the data sequence limitations appearing in the
preambles of claims 32 and 72 are directly tied to the data
sequence detecting and preamble identifying features recited in the
body of the claims and, as discussed supra, establish conditions
under which these functions must operate. As pointed out by
Appellants (Brief, page 39), the sole reason for the claimed
detecting and identifying limitations in the body of claims 32 and
72 is because of the need to process data sequences which could
possibly contain false-sync sequences. Our reviewing court has
stated in Bell Communications Research, Inc. V. Vitalink
Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed.
Cir. 1995) that:
[A] claim preamble has the import that the claim as a whole
suggests for it. In other words, when the claim drafter
chooses to use both the preamble and the body to define the
subject matter of the claimed invention, the invention is so
defined.
Each of claims 32 and 72 refers in the body of the claim to
the detecting of a data sequence and the identifying of a preamble
of the data sequence. We thus regard the preamble recitations
which describe the contents of the data sequence as providing
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antecedent reference for the corresponding elements in the body of
the claims, and limiting the claimed subject matter accordingly.
For the above reasons, since all of the claim limitations are
not present in the disclosure of Waraksa, we do not sustain the
Examiner’s 35 U.S.C. § 102(b) rejection of independent claims 32
and 72.
The 35 U.S.C. § 102(e) rejection of claims 36-40
based on Buchele.
In making this rejection, the Examiner makes reference
(Answer, page 5) to the driving circuitry including a bridge
circuit of 4 FETs illustrated in Figure 2 of Buchele. With respect
to claims 36 and 39, argued together by Appellants, we find no
convincing arguments from Appellants that convince us of any error
in the Examiner’s position which asserts that the Figure 8
structure of Buchele discloses a capacitor coupled to a coil with
driving circuitry including a bridge circuit of four FETs as
claimed. To whatever extent Appellants’ argument (id., at 49) that
Buchele does not have a “high power PWM signal” at opposing
transistor junctions may be correct, there is no such requirement
appearing in claims 36 and 39.
We also agree with the Examiner, with respect to Appellants’
argument based on In re Donaldson Co., 16 F.3d 1189, 29 USPQ2d 1845
Appeal No. 2005-0171
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(Fed. Cir. 1994) that Buchele’s coupling structure does not include
a transformer, that the Figure 2 embodiment of Appellants’
disclosed coupling arrangement also does not include a transformer.
It is also our view that the Examiner is correct in the assertion
(Answer, page 14) that Appellants’ Donaldson argument with respect
to the driving circuit features of claim 36 is unpersuasive because
of the presence of significant structure in the claim which
modifies the “means for driving” claim language.
In view of the above discussion, since all of the claimed
limitations are present in the disclosure of Buchele, the
Examiner’s 35 U.S.C. § 102(e) rejection of appealed claims 36 and
39 is sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 102(e) rejection of claims 37, 38, and 40, we note that, while we
found Appellants’ arguments to be unpersuasive with respect to the
rejection of claims 36 and 39, we reach the opposite conclusion
with respect to claims 37, 38, and 40. We agree with Appellants
that the language of claim 37, upon which claim 38 depends, recites
a bridge circuit which “comprises two series-connected P- and N-
channel field effect transistors connected in parallel,” and is
therefore in direct contrast to the circuit structure of Buchele
which discloses only n-channel devices. Since there is no response
Appeal No. 2005-0171
Application No. 10/064,380
1 Since the Examiner has not addressed the issue of obviousness to the
skilled artisan of interchangeably using P- and N-channel devices according to
particular circuit considerations, we have no such rejection before us and,
accordingly, we decline to rule on the merits of such a rejection.
12
by the Examiner to Appellants’ arguments, we are constrained on the
record before us to reverse the anticipatory rejection of claims 37
and 38.1 Similarly, the rejection of claim 40 is also reversed
since the Examiner has never explained how the circuitry disclosed
by Buchele satisfies the language of claim 40 which requires, inter
alia, “a two-winding transformer associated with each transistor.”
The 35 U.S.C. § 102(e) rejection of claims
70, 71, and 73-80 based on Carroll.
In addressing the limitations set forth in independent claim
70, we note that the Examiner makes reference to the illustrations
in Carroll’s Figures 3 and 4B as disclosing the claimed alternating
magnetic field embedding of a bit-timing clock signal. Appellants’
arguments in response (Brief, pages 51-54) assert that, unlike the
claimed invention in which a bit timing clock signal is embedded in
an alternating magnetic field generated by the reader, the
transponder 40, i.e., the tag, in Carroll embeds a clock signal in
the carrier transmitted from the controller 10, i.e., the reader.
According to Appellants (id., at 52), when Carroll’s controller 10
receives a transmission from transponder 40, it extracts the bit
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13
timing clock signal and then transmits data to the transponder
utilizing the extracted bit timing signal, thereby avoiding the
need to include a bit timing signal in its transmission.
After reviewing the Carroll reference in light of the
arguments of record, we find ourselves in general agreement with
the Examiner’s position as stated in the Answer. As asserted by
the Examiner (Answer, pages 14 and 15), to whatever extent
Appellants are correct in their characterization of Carroll as
originating the generation of a bit timing clock signal at the
transponder, no such requirement is set forth in claim 70 which
merely requires the embedding of a bit timing clock signal in an
alternating magnetic field generated by the reader. We agree with
the Examiner that the alternating magnetic field generated from the
reader in Carroll and received at element 58 in Carroll’s Figure 3
transponder, the output of which is a clock signal input to timing
control 60, has embedded therein a bit timing clock signal as
claimed, regardless of the fact that such bit timing clock signal
may have ultimately originated in the transponder.
The Examiner makes a similar rejection with respect to
independent claim 71 which differs in one respect from claim 70 by
reciting the generation of a bit-timing clock signal. We again
find ourselves in agreement with the Examiner (Answer, page 15)
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that the claimed clock signal generating feature is met by the
encoder 70 in the transponder of Carroll since the body of the
claim does not require that the clock signal generation originate
at the reader.
With regard to the clock signal generation feature, claim 71
also differs from claim 70 by including in the claim preamble
language which recites that a bit timing signal generated by the
tag is synchronized with a bit timing signal “originating with the
interrogator.” Although we disagreed with the Examiner’s treatment
of claim preamble language with respect to previously discussed
claim 32 and 72, we agree with the Examiner that the language of
claim 71 does not require that limitations in the preamble be given
patentable weight. A review of the limitations in claim 71 reveals
that a step of “generating a bit-timing clock signal” (our
emphasis) is set forth. There is no clear indication or
requirement that such a bit-timing clock signal corresponds to the
bit-timing clock signal referenced in the preamble. In other
words, the preamble of claim 71 which sets forth a specific manner
in which an interrogated tag responds to an interrogation, is a
mere intended use of the claimed method of interrogating a tag set
forth in the body of the claim.
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We also sustain the Examiner’s rejection of independent claim
75 based on Carroll. Appellants reiterate their contention (Brief,
pages 73 and 74) that Carroll does not disclose the embedding of a
bit-timing clock signal in the alternating magnetic field generated
at the reader. For all of the reasons discussed previously, we
find such argument to be unpersuasive since there is no claimed
requirement that the bit-timing clock signal originate at the
reader. We also find no argument from Appellants that would
convince us of any error in the Examiner’s position (Answer, page
18) that Carroll discloses the control of the start of a
transmitted bit sequence by a bit-timing signal since the disclosed
transmitted bit sequence follows the bit-timing signal (e.g.,
Carroll, Figure 4A).
Further, with respect to claims 70, 71, and 75, we find to be
unpersuasive Appellants’ arguments which assert that the claims are
set forth in step-plus-function format and that the Examiner has
not properly interpreted the limitations of the appealed claims in
accordance with the decision in In re Donaldson, 16 F.3d 1189,
1191, 29 USPQ2d 1845, 1848-49 (Fed. Cir. 1994). The Federal
Circuit has cautioned that, in order for elements in a method claim
to be construed as step–plus-function limitations, steps plus
function without acts must be present. “If we were to construe
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16
every process claim containing steps described by an ‘ing’ verb,
such as passing, heating, reacting, transferring, etc., into a
step-plus-function, we would be limiting process claims in a manner
never intended by Congress.” See O.I. Corp. v. Tekmar, 115 F.3d
1576, 1583, 42 USPQ2d 1777, 1782 (Fed. Cir. 1997).
The Federal Circuit has also recognized, as is the case here,
that the absence of explicit “step for” language in the claims does
not automatically prevent a limitation from being construed as a
step-plus-function limitation. “[C]laim elements without express
step-plus-function language may nevertheless fall within Section
112, Para. 6 if they merely claim the underlying function without
recitation of acts for performing that function. See Seal-Flex
Inc. v. Athletic Track and Court Construction, 172 F.3d 836, 850,
50 USPQ2d 1225, 1234 (Fed. Cir. 1999). The Court in Seal-Flex, 172
F.3d at 849, 50 USPQ2d at 1234 provided guidance as to how to
interpret process claims that may lack explicit step-plus-function
language as follows:
In general terms, the “underlying function” of a
method claim element corresponds to what that
element ultimately accomplishes in relationship
to what the other elements of the claim and the
claim as a whole accomplish. “Acts,” on the other
hand, correspond to how the function is accomplished.
Therefore, claim interpretation focuses on what the
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claim limitation accomplishes, i.e., its underlying
function, in relation to what is accomplished by the
other limitations and the claim as a whole.
(Emphasis in original).
With the above discussion in mind, it is our view that the
underlying function set forth in claims 70 and 71, and what is
accomplished by the claim as a whole, is the interrogation of a
tag. Further, it is our opinion that, contrary to Appellants’
contention (Brief, pages 55 and 60), the method steps of “embedding
a bit-timing clock signal” (claim 70) and “generating a bit-timing
clock signal” (claim 71) do not set forth “functions” but, rather
recite “acts” which, when considered with the other method steps
such as “generating an alternating magnetic field,” “embedding
data,” and “extracting data,” describe how the underlying function
of tag interrogation is performed. We take a similar view with
respect to method claim 75 and consider the underlying function to
be the responding by a responder (tag) to the data transmitted from
the reader. Similar to the discussion with regard to claims 70 and
71, we consider the method step of “generating a bit-timing clock
signal” to merely recite an “act” which, when considered with the
other method steps, describes how the underlying function of tag
response to transmitted data from a reader is performed.
We do not sustain, however, the Examiner’s rejection of
independent claim 76 (nor its dependent claim 79) which, in
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contrast to claim 75 discussed supra, contains a positive
limitation in the body of the claim that the bit-timing clock
signal generated by the responder is synchronized to the bit-timing
clock signal “originating with the interrogator.” We do not
disagree with the Examiner (Answer, page 19) that the sync
generator 70 in the transponder of Carroll is synchronized to the
received clock signal from the interrogator. As pointed out by
Appellants (Brief, pages 77 and 78), however, the received bit-
timing clock signal received at the transponder in Carroll from the
interrogator originates in the transponder (which the interrogator
then uses to transmit data to the transponder), and not the
interrogator as claimed.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 102(e) rejection, based on Carroll, of independent claim 73,
which includes a limitation directed to the maintaining of
resonance of the claimed resonating circuit, we find ourselves in
agreement with Appellants’ arguments at pages 62-64 of the Brief.
In addressing the claimed resonance maintaining feature, the
Examiner relies on the principle of inherency by asserting (Answer,
page 16) that “[t]his feature is inherent to any receiver that is
attempting to receive data on a carrier ....”
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Application No. 10/064,380
2 We make the observation that the language “the sequence of bits” at
line 6 of claim 73 lacks antecedent basis.
19
Although the Examiner contends that Appellants have ignored
the Examiner’s evidence that supports the assertion of inherency,
our review of the record before us reveals no such evidence
forthcoming from the Examiner. To establish inherency, evidence
must make clear that the missing descriptive matter is necessarily
present in the thing described in the reference and would be
recognized as such by persons of ordinary skill. In re Robertson,
169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999), citing
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d
1746, 1749 (Fed. Cir. 1991). “Inherency, however, may not be
established by probabilities or possibilities. The mere fact that
a certain thing may result from a given set of circumstances is not
sufficient.” Id. citing Continental, 948 F.2d at 1269, 20 USPQ2d
at 1749.
In view of the above discussion, since all of the claim
limitations are not present in the disclosure of Carroll, we do not
sustain the Examiner’s 35 U.S.C. § 102(e) rejection of independent
claim 73, nor of claim 78 dependent thereon.2
We also do not sustain the Examiner’s 35 U.S.C. § 102(e)
rejection, based on Carroll, of independent claims 74 and 77 (and
Appeal No. 2005-0171
Application No. 10/064,380
3 The copy of the claims appearing in the appendix to the Brief
mistakenly has claim 80 dependent on claim 7.
20
its dependent claim 80), each of which includes the feature of
“performing at least one weighted integration” of a signal derived
from an alternating magnetic field generated by an interrogator.3
Although the Examiner asserts (Answer, page 17) that the “divide-
by-64" operation performed by timing control circuit 60 in Carroll
is a “weighted integration” as claimed, we find no support for such
a conclusion. As pointed out by Appellants (Brief, page 68), the
timing control circuit 60 in Carroll is merely a synchronous
counter and has little relevance to the claimed performance of a
weighted integration of a received signal which, at a minimum,
would involve the multiplication by a weighting function of a
received signal during a bit period and the integration of the
result.
The 35 U.S.C. § 103(a) rejection of claims 1, 3, 41, and
43 as being unpatentable over Chatelot in view
of Kurusu.
Independent claims 41 and 43 are directed to the particulars
of a coupling arrangement for the reader and tag circuitry which
ties together a transformer, a coil, two capacitors and a coil
driver. In making the obviousness rejection, the Examiner asserts
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(Answer, pages 6, 7, 20, and 21) the obviousness to one of ordinary
skill to include transformers, as taught by Kurusu, in the system
of Chatelot, relying on the general principle that transformers are
well known to provide an isolation feature that serves to protect
circuit elements from damage.
Although we do not dispute the Examiner’s generalized
assertion that transformers can be used to provide isolation among
circuit elements, we agree with Appellants (Brief, page 95) that
the Examiner has not established proper motivation for the proposed
combination of Chatelot and Kurusu. The disclosure of Chatelot is
directed to coil and coupling circuitry for communication between a
tag and a reader which, as recognized by the Examiner, lacks any
disclosure of a transformer coupling. On the other hand, Kurusu is
directed to an overvoltage protection circuit which, although
including a transformer 17, utilizes the transformer only as a
coupling connection from filter 13 to transistor 16. Given the
fact that Chatelot and Kurusu are directed to different problems in
the communication art, with disparate solutions to such problems,
it is our view that any attempt to combine them could come only
from Appellants’ own disclosure and not from any teaching or
suggestion in the references themselves.
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22
Further, even if proper motivation were found to exist for the
proposed combination of Chatelot and Kurusu, we find no indication
from the Examiner as to how and in what manner the references would
be combined to arrive at the specific combination set forth in
appealed independent claims 1 and 41. In our view, the Examiner
has combined the transformer connection teachings of Kurusu with
the reader and tag communication circuitry disclosure of Chatelot
in some vague manner without specifically describing how the
teachings would be combined to arrive at the claimed invention.
This does not persuade us that one of ordinary skill in the art
having the references before her or him, and using her or his own
knowledge of the art, would have been put in possession of the
claimed subject matter.
In view of the above discussion, since all of the claim
limitations are not taught or suggested by the applied prior art,
it is our opinion that the Examiner has not established a prima
facie case of obviousness, based on the combination of Chatelot and
Kurusu, with respect to appealed independent claims 1 and 41.
Therefore, we do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claims 1 and 41, nor of claims 3 and 43 dependent
thereon.
Appeal No. 2005-0171
Application No. 10/064,380
4 The Examiner’s statement of the grounds of rejection (Answer, page 7)
apparently mistakenly omits independent claims 41 and 43 since the Office
action mailed January 15, 2004, Paper No. 6, as well as the arguments at page
21 of the Answer indicate they are to be included.
23
The 35 U.S.C. § 103(a) rejection of claims 1, 2, 4,
41, 42, 44, and 45 as being unpatentable over
Chatelot in view of Ogita.4
We do not sustain this rejection for reasons similar to those
discussed supra with respect to the Examiner’s obviousness
rejection based on Chatelot and Kurusu. As with the Examiner’s
proposed combination of Chatelot and Kurusu, we simply find no
indication as to how and in what manner the transformer circuitry
of Ogita, which connects tuning capacitor 34 to amplifier 37, would
be combined with the tag and reader circuitry of Chatelot to arrive
at the specific combination set forth in independent claims 1 and
41. Similarly, as with the rejection based on Chatelot and Kurusu,
we find no evidence that would support the Examiner’s contention
that one of ordinary skill would look to the disclosure of Ogita,
which suggests the use of a transformer to provide impedance
matching between an antenna and an amplifier, to solve a problem
associated with coupling a driving signal to a coil in a tag and
reader communication circuit as in Chatelot.
Appeal No. 2005-0171
Application No. 10/064,380
5 As noted by Appellants (Brief, page 2), and verified by the Examiner’s
arguments (Answer, page 24), claim 49 was apparently mistakenly omitted from
the statement of the grounds of rejection at page 7 of the Answer.
24
The 35 U.S.C. § 103(a) rejection of claims 5-13,
25, 47-60, and 62-64 as being unpatentable over
Carroll.5
We consider first the Examiner’s rejection of independent
claim 5 which includes, inter alia, connecting circuitry for a
reader which includes a capacitor coupled to a driving coil. In
addressing this limitation, the Examiner, while recognizing that
Carroll lacks a disclosure of a capacitor coupled to a coil in the
reader (controller) 10 circuitry of Carroll, nevertheless directs
attention to the tuning capacitor 44 in the tag (transponder) 40 of
Carroll. According to the Examiner (Answer, pages 8, 21, and 22),
the skilled artisan would have been motivated and found it obvious
to include a tuning capacitor in the reader circuitry of Carroll
since Carroll teaches the use of a capacitor to provide tuning in
the tag circuitry.
After reviewing the arguments of record, we are in general
agreement with Appellants’ assertions at pages 118 and 119 of the
Brief. In particular, we find to be misplaced the Examiner’s
argument (Answer, page 21) that Appellants have provided no
evidence as to why a tuning capacitor would not be desirable in the
reader of Carroll. To the contrary, it is the Examiner who has the
Appeal No. 2005-0171
Application No. 10/064,380
25
burden of establishing, by convincing arguments and/or evidence, a
prima facie case of obviousness. With regard to the issue of
obviousness in the present factual situation, we find particularly
compelling Appellants’ arguments (Brief, page 119) that, although
Carroll found the need to use a tuning capacitor in the tag
circuitry 40, he found no such need and did not do so in the reader
circuitry 10.
Accordingly, since all of the claim limitations are not taught
or suggested by the applied prior art, it is our opinion that the
Examiner has not established a prima facie case of obviousness with
respect to appealed independent claim 5. Therefore, we do not
sustain the Examiner’s 35 U.S.C. § 103(a) rejection of independent
claim 5, nor of claims 6-13 dependent thereon.
Turning to a consideration of the Examiner’s obviousness
rejection of independent claim 25 based on Carroll, we do not
sustain this rejection as well. We agree with Appellants that, in
contrast to the requirements of claim 25, Carroll does not disclose
the use of frequency shift keying (FSK) to transmit data from the
transponder/tag 40 to the reader/controller 10 but, rather,
utilizes a phase shift keying technique (PSK). Further, to
whatever extent the Examiner is suggesting the interchangeability
Appeal No. 2005-0171
Application No. 10/064,380
26
of FSK and PSK transmission techniques, we find no evidence
forthcoming from the Examiner that would support such an assertion.
We do agree with the Examiner, however, that the limitations
of independent claims 47 and 56 are taught by Carroll. Appellants’
arguments in response (Brief, pages 140, 151, and 152) refer to
similar arguments made with respect to the Examiner’s 35 U.S.C.
§ 102(e) rejection of claim 70 based on Carroll, which arguments we
found to be unpersuasive as discussed supra. As discussed
previously, it is our view that the transponder 40 in Carroll
receives from the reader 10 a transmitted signal which has embedded
therein a bit-timing clock signal, regardless of the fact that such
bit-timing clock signal may have ultimately originated at the
transponder. Similarly, Appellants’ argument that Carroll does not
receive a bit-timing clock signal originating at the reader upon
which the transponder synchronizes its own bit-timing clock signal
is without merit since the claim language does not require that the
bit-timing clock signal originate at the reader. We further find
no error in the Examiner’s position (Answer, pages 23 and 24) that
the sync element 70 in the transponder 40 of Carroll synchronizes
the transponder bit-timing clock signal with the received periodic
bit signal from the reader with start/end points which embed the
bit-timing signal into the driving signal.
Appeal No. 2005-0171
Application No. 10/064,380
27
We do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection,
based on Carroll, of dependent claims 48-50, each of which contains
limitations directed to the weighted integration feature. As
previously discussed with respect to the Examiner’s 35 U.S.C.
§ 102(e) rejection, based on Carroll, of independent claims 74 and
77, we find no support on the record before us that the timing
control circuit 60 or the address register 62 perform a weighted
integration operation as asserted by the Examiner.
We also do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection, based on Carroll, of dependent claims 51-55, which are
directed to the particulars of a bit-identifying operation and the
adjustment of bit-start indicators. As asserted by Appellants
(Brief, pages 148-150), the Examiner has never attempted to show
how the disclosure of Carroll teaches or suggests the claimed
limitations, and, accordingly, no prima facie case of obviousness
has been established.
We do, however, sustain the Examiner’s 35 U.S.C. § 103(a)
rejection, based on Carroll, of dependent claims 57-60, which are
directed to the particulars of the phase-shift coding technique
used for transmitting data from the tag to the reader. As asserted
by the Examiner (Answer, page 25), the language of claims 57-60
simply does not require the interpretation urged by Appellant at
Appeal No. 2005-0171
Application No. 10/064,380
28
pages 153-158 of the Brief. We find no error in the Examiner’s
stated position that the phase-shift coding procedure disclosed by
Carroll, in which a “O” is transmitted during a first phase of a
bit portion of a signal and a “1" is transmitted during a second
phase of the bit portion of the signal, satisfies the requirements
of the claims.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection, based on Carroll, of dependent claims 62-64, we
do not sustain this rejection for essentially the same reason as
previously discussed with regard to independent claim 25. As with
claim 25, dependent claims 62-64 are directed to a frequency-shift
keying procedure for transmitting data from the tag to the reader.
In our view, regardless of the merits of Appellants’ arguments
directed to the significance of the presence of “periodic signal”
language in claims 62-64, the disclosure of Carroll, which utilizes
phase-shift keying to transmit data from the transponder/tag 40 to
the reader/controller 10, does not satisfy the frequency-shift
keying requirements of claims 62-64.
Appeal No. 2005-0171
Application No. 10/064,380
29
The 35 U.S.C. § 103(a) rejection of claims 14-17,
61, and 64-68 as being unpatentable over Carroll in
view of McFarlane.
Dependent claims 14-17, 61, and 64-68 are directed to the
feature of transmitting data between a reader and tag utilizing
combined frequency-shift and phase-shift coding techniques. In
addressing the limitations of these claims, the Examiner adds
McFarlane, which describes a combined frequency-shift and phase-
shift keying system, to the disclosure of Carroll.
After reviewing the McFarlane reference in light of the
arguments of record, we find Appellants’ arguments to be
persuasive. With respect to claims 14 and 61, we agree with
Appellants that, although the Examiner asserts (Answer, page 26)
correspondence between the illustrated system in Figure 2a of
McFarlane and that claimed, we fail to find any support for such a
conclusion. As pointed out by Appellants, the fact that McFarlane
may disclose that a driving signal may have one of two frequency
values and one of two phase values, does not satisfy the claim
language which requires that the phase of a driving signal have one
of two frequency values and one of two phase values.
Similarly, it is our view that McFarlane’s disclosure of a
combined frequency-shift and phase-shift keying system does not
disclose the particular features of claims 15-17 and 64-68 which
Appeal No. 2005-0171
Application No. 10/064,380
30
set forth varying techniques of applying FSK/PSK modulation
techniques to a periodic signal and then using the modulated
periodic signal to modulate the driving signal.
Accordingly, since, even if combined, the collective teachings
of Carroll and McFarlane would not satisfy the claimed limitations,
a prima facie case of obviousness has not been established, and,
therefore, the Examiner’s obviousness rejection of claims 14-17,
61, and 64-68 based on the combination of Carroll and McFarlane is
not sustained.
In summary, we have not sustained the Examiner’s 35 U.S.C.
§ 112, first paragraph, rejection of claims 20-24, nor the 35
U.S.C. § 102(b) rejection of claims 32 and 72 based on Waraksa.
With respect to the 35 U.S.C. § 102(e) rejection of claims 36-40
based on Buchele, we have sustained the rejections of claims 36 and
39, but have not sustained the rejections of claims 37, 38, and 40.
With respect to the 35 U.S.C. § 102(e) rejection of claims 70, 71,
and 73-80 based on Carroll, we have sustained the rejection of
claims 70, 71, and 75, but have not sustained the rejection of
claims 73, 74, and 76-80. We also have not sustained the 35 U.S.C.
§ 103(a) rejection of claims 1, 3, 41, and 43 based on the
combination of Chatelot and Kurusu, nor the 35 U.S.C. § 103(a)
Appeal No. 2005-0171
Application No. 10/064,380
31
rejection of claims 1, 2, 4, 41, 42, 44, and 45 based on the
combination of Chatelot and Ogita. With respect to the 35 U.S.C.
§ 103(a) rejection of claims 5-13, 25, 47-60, and 62-64 based on
Carroll, we have sustained the rejection of claims 47 and 56-60,
but have not sustained the rejection of claims 5-13, 25, 48-55, and
62-64. Lastly, we have not sustained the 35 U.S.C. § 103(a)
rejection of claims 14-17, 61, and 64-68 based on the combination
of Carroll and McFarlane. Accordingly, the Examiner’s decision
rejecting claims 1-17, 20-25, 32, 36-45, 47-68, and 70-80 is
affirmed-in-part.
Appeal No. 2005-0171
Application No. 10/064,380
32
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a)(1)(iv)
(effective September 13, 2004; 69 Fed. Reg. 49960 (August 12,
2004); 1286 Off. Gaz. Pat. and TM Office 21(September 7, 2004)).
AFFIRMED-IN-PART

JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR/dal
Appeal No. 2005-0171
Application No. 10/064,380
33
Robert E. Malm
16624 Pequeno Place
Pacific Palisades, CA 90272