Ex Parte Beigel et alDownload PDFPatent Trial and Appeal BoardMay 9, 201612748428 (P.T.A.B. May. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121748,428 03/28/2010 23586 7590 05/10/2016 ROBERT E MALM 16624 PEQUENO PLACE PACIFIC PALISADES, CA 90272 FIRST NAMED INVENTOR MICHAEL L. BEIGEL 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. P313DC 5261 EXAMINER TERRELL, EMILY C ART UNIT PAPER NUMBER 2689 MAILDATE DELIVERY MODE 05/10/2016 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 Ex parte MICHAEL L. BEIGEL, NATHANIEL POLISH, STEVEN R. FRANK, and ROBERT E. MALM Appeal2014-008345 Application 12/748,428 Technology Center 2600 Before JOHN A. EV ANS, CATHERINE SHIANG, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-5, which constitute all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Appellants' invention relates to cooperative identification systems utilizing a reader (interrogator) and tag (transponder) in order to, for example, identify an object or transact information. Spec. 1-2. Each of 1 Appellants identify Avid Identification Systems Inc. as the real party in interest. App. Br. 2. Appeal2014-008345 Application 12/748,428 claims 1-5 is independent, and each recites similar limitations (with one important exception, discussed below). Claim 2 is illustrative of the invention: 2. A tag for use with a reader, the reader transmitting a bit- timing clock signal originating in the reader to the tag, the tag compnsmg: a coil; a capacitor; a means for coupling the capacitor to the coil; a means for driving the coil with a driving signal; a means for generating the driving signal; a means for generating a bit-timing clock signal synchronized to the bit-timing clock signal originating in the reader; a means for embedding a sequence of bits to be communicated to a reader in the driving signal, the start of each bit being controlled by the bit-timing clock signal generated in the tag and synchronized to the bit-timing clock signal originating in the reader. App. Br. 58-59. 2 Appeal2014-008345 Application 12/748,428 PRIOR ART The Examiner relies upon the following prior art in rejecting the claims: Carroll Goto Reis US5,517,194 us 5,610,384 US 2003/0024985 Al THE REJECTIONS ON APPEAL May 14, 1996 Mar. 11, 1997 Feb. 6,2003 2 Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Reis. Final Act. 6-7. Claim 2 stands rejected under 35 U.S.C. § 102(e) as anticipated by Reis. Final Act. 2-3. Claim 3 stands rejected under 35 U.S.C. § 102(b) as anticipated by Goto. Final Act. 3--4. Claims 4 and 5 stand rejected under 35 U.S.C. § 102(b) as anticipated by Carroll. Final Act. 4--5. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments presented in this appeal. Any other arguments Appellants could have made but chose not to make in the Briefs are deemed waived. See 37 C.F.R. § 41.37(c)(l)(iv). With respect to the rejections of claims 1 and 3-5 (analysis below), we agree with the Examiner's findings and 2 The following prior art references also were made of record, but not relied upon for the rejections on appeal: Tyburski (US 4,912,471; Mar. 27, 1990); Beigel (US 4,333,072; June 1, 1982); and Walton (US 3,970,824; July 20, 1976). 3 Appeal2014-008345 Application 12/748,428 conclusions and adopt them as our own. With respect to the rejection of claim 2, however, we are persuaded by Appellants' arguments that the Examiner erred. We provide the following to highlight and address specific arguments. Claim 2 Appellants argue the cited prior art (Reis) fails to disclose a "means for generating the driving signal," as recited in the claim. App. Br. 16. Appellants contend this element is limited by the structure disclosed in the Specification, see In re Donaldson Co., Inc., 16 F.3d 1189, 1194 (Fed. Cir. 1994), in particular, a "resonance-tracking modem" that "supplies signals to the driver" which "drives the coil/capacitor resonant circuit." App. Br. 16 (citing Spec. 8, Fig. 1 ). According to Appellants, no such components or circuitry is found in Reis. App. Br. 16-17. The Examiner responds that "Reis discloses the means for generating the [driving] signal in ... paragraph [0029], Generating Means 10 for the generation of signal CLK." Ans. 12. The Examiner, however, already had found the same "signal CLK" corresponds to the "bit-timing clock signal" element in claim 2. Ans. 12 ("Generating Means 10 for the generation of signal CLK, as cited above in response to argument (Limitation 1 ). ") (emphasis added); Ans. 10-11. The Examiner errs in relying on the "signal CLK" in Reis as both the "driving signal" and the "bit-timing clock signal." Appellants' "driving signal," as recited in the claim, drives the coil in the tag, while the separately recited "bit-timing clock signal" synchronizes to the corresponding bit timing signal in the reader. App. Br. 58-59. The single "signal CLK" in Reis cannot correspond to the two distinct signals as recited in Appellants' 4 Appeal2014-008345 Application 12/748,428 claim. See, e.g., Jn re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claim requiring three means not anticipated by structure containing two means, where one of the two means was argued to meet two different claim limitations); cf Lantech, Inc. v. Keip Machine Co., 32 F.3d 542, 547 (Fed. Cir. 1994). Because the "signal CLK" cannot be both the "driving signal" and the "bit-timing clock signal" in claim 2, the Examiner errs in finding Reis' "Generating Means 10 for the generation of signal CLK" discloses "means for generating the driving signal." Accordingly, we do not sustain the rejection of claim 2 under 35 U.S.C. § 102(e) as anticipated by Reis. Remaining Claims Remaining claims 1 and 3-5 do not recite a "driving signal" or "means for generating the driving signal," as discussed above. Appellants' arguments with respect to these claims rely essentially upon a single premise-that the Examiner errs in finding the references disclose a "bit- timing clock signal" (and generating, embedding, transmitting and synchronizing a bit-timing clock signal) as recited throughout Appellants' claims. See, e.g., App. Br. 23 ("The rationale for all of the claims in this application is based on the idea of a 'bit-timing clock signal' shared by reader and tag."); App. Br. 31-33. We agree with the Examiner's findings and conclusions regarding the remaining claims, and adopt them as our own. Appellants' Specification defines a "bit-timing clock signal" as a signal the reader and tag use "for timing their bit transmissions." App. Br. 4. Although the Specification describes various particular embodiments (circuits) involving timing and 5 Appeal2014-008345 Application 12/748,428 synchronization of signals, the claim elements reciting "bit-timing clock signal" are (with one exception) 3 not limited to these embodiments. The Examiner therefore does not err in finding, for example, Carroll discloses "the start of each bit being determined by a bit-timing clock signal generated by the tag and synchronized with a bit-timing clock signal originating with the interrogator," as recited in claim 4. Ans. 15-16 ("The sending of the command word 11 bits is bit-by-bit synchronized with the timing of the bits of the configuration word and any data following by timing from the synchronization block 102 and start bit 104") (citing Carroll col. 7, 11. 8-16, 40-65; Carroll col. 16, 11. 49---65). Nor does the Examiner err in finding Carroll discloses "the start of each transmitted bit being governed by the bit-timing clock signal," as recited in claim 5. Ans. 16-17; see also Ans. 13-14 (finding Goto discloses "embedding a bit-timing clock signal," as recited in claim 3, noting that "Appellants have not explicitly defined the bit-timing clock signal"). For the foregoing reasons, we sustain the Examiner's rejection of claims 1 and 3-5. 3 Claim 1 (rejected as obvious over Reis) recites "means for generating a bit- timing clock signal that is synchronized to the bit-timing clock signal originating in the reader and embedded in the transmitted signals," which Appellants assert is a means-plus-function limitation. We agree with the Examiner's finding of structure in Reis teaching Appellants' claimed means. See Final Act. 6-7; Ans. 17-18. Claims 3-5 include no means-plus-function limitations. 6 Appeal2014-008345 Application 12/748,428 DECISION We affirm the Examiner's decision rejecting claim 1under35 U.S.C. § 103(a), and rejecting claims 3-5 under 35 U.S.C. § 102(b). We reverse the decision rejecting claim 2 under 35 U.S.C. § 102(e). 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) (2013). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation