Ex Parte BEIGEL et al

Patent Trial and Appeal Board

May 9, 2016

12748428 (P.T.A.B. May. 9, 2016)

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.
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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).
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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'
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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
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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.
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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
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