Ex Parte Bohnenberger et al

Patent Trial and Appeal Board

Dec 23, 2016

13577176 (P.T.A.B. Dec. 23, 2016)

United States Patent and Trademark Office
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.
13/577,176 10/26/2012 Andreas Bohnenberger 03869.119147 1375
86528 7590 12/28/2016
Slay den Grubert Beard PLLC
401 Congress Avenue
Suite 1900
Austin, TX 78701
EXAMINER
HAILE, BENYAM
ART UNIT PAPER NUMBER
2686
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
trosson @ sgbfirm.com
patent @ sgbfirm. com
dallen @ sgbfirm. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS BOHNENBERGER, DANIEL EVERS, MARTIN
GLANZER, ULRIKE HEIM, and FABIAN KURZ
Appeal 2016-004323
Application 13/577,176
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and SCOTT E.
BAIN, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 14—30, which are all of the pending claims. Claims 1—13 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-004323
Application 13/577,176
A. INVENTION
According to Appellants, the claimed invention relates to “a mobile
direction-finding device for locating an object that is marked with an active
transponder” (Spec. 1,11. 6—7).
B. ILLUSTRATIVE CLAIM
Claim 14 is exemplary:
14. A mobile reading device used with a transponder located
within a defined space, comprising:
an antenna device receiving a transponder signal
transmitted by the transponder, the antenna device having a
main radiation direction;
an orientation detector producing an orientation signal
indicating at least one of orientation and a change in the
orientation of the reading device with regard to a coordinate
system of the defined space;
an electronic assembly calculating a direction from the
reading device to the transponder based on the transponder
signal and the orientation signal; and
a display device displaying the calculated direction.
C. REJECTIONS
Claims 14—18, 22, and 28—30 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Tsai et al. (US 2010/0283602 Al; pub. Nov. 11,
2010), and Lee et al. (US 2008/0147461 Al; pub. June 19, 2008).
Claims 19-21, 23, and 25—27 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Tsai, Lee, and Nonaka et al. (US 2009/0079543 Al;
pub. Mar. 26, 2009).
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Tsai, Lee, Nonaka, and Govari et al. (US 2003/0004411 Al; pub. Jan.
2, 2003).
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II. ISSUES
The principal issues before us are whether the Examiner erred in
finding the combination of Tsai and Lee, teaches or would have suggested a
“mobile reading device” comprising an “orientation detector” producing an
orientation signal and an “electronic assembly” calculating a direction based
on the orientation signal (claim 14).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Lee
1. Lee discloses portable devices, such as tags, configured to perform
dead reckoning processes within a monitored environment (| 36). A dead
reckoning system is implemented using devices that generate navigational
sensing information such as inertia-sensing devices, magnetic field sensing
devices, gyroscopic devices, etc., which include compasses, accelerometers,
and gyroscopes (137). The dead reckoning system depends on stimuli that
is readily available such as the Earth’s magnetic field as measured by the
compass and a person’s generated motion as measured by the accelerometer
and gyroscope (id.).
2. In particular, a tag is provided with navigational data sensors such as
motion sensors (accelerometers and gyroscopes) and compasses (1 67; Fig.
1). Motion sensors are used to generate acceleration and movement
information while the compass is used to generate direction information in
which a person is facing and/or moving, and to determine if a person is
facing a product (id.).
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Application 13/577,176
IV. ANALYSIS
With respect to claim 14, Appellants contend there is no suggestion in
Lee of a sensor “used for detecting ‘orientation of the reading device with
regard to a coordinate system of the defined space’” (App. Br. 4).
According to Appellants, “[t]he ‘direction of travel’ of a person and
‘orientation of a device held in the person’s hand are totally independent”
(id.). Although Appellants concede that Lee discloses the use of “dead
reckoning,” and that the tag containing the dead reckoning system “may be
carried by a person” (id. at 5), Appellants contend “[s]uch ‘dead reckoning
systems’ do not necessarily detect the orientation of the device, since they
are concerned with determining a direction of travel” (id.). Thus, although
Appellants concede that “it might be possible to use these navigational data
sensors to determine orientation of the tag” (id. at 6), Appellants contend
that Lee’s reason for inclusion of such “compass, accelerometer and/or
gyroscope” is “to detect movement and/or motion to compute a new position
relative to a previous position” but not to determine orientation of the tag
(id.).
As an initial matter of claim construction, we note Appellants attempt
to distinguish the apparatus of claim 14 in terms of contested functions,
rather than structure. That is, claim 14 is directed to a “device” that
comprises an “orientation detector” and an “electronic assembly.”
Regarding apparatus (device) claims generally, our reviewing court
guides the patentability of an apparatus claim “depends on the claimed
structure, not on the use or purpose of that structure.” Catalina Marketing
Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see
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also Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir.
2009).
Further, independent claim 14 does not recite limitations such as
“configured to” or “adapted to” that might impose a structural limitation,
such that the structural components of the device/apparatus must be “capable
of’ performing the contested functions. Thus, we conclude contested
functional limitations “producing an orientation”, and “calculating a
direction” do not further limit the structure of the apparatus of claim 14,
under a broad but reasonable interpretation. See In re Man Mach. Interface
Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016) (“We have noted that the
phrase ‘adapted to’ generally means ‘made to,’ ‘designed to,’ or ‘configured
to,’ though it can also be used more broadly to mean ‘capable of or ‘suitable
for.’”) (internal citations omitted).
Nevertheless, to the extent that our reviewing court may give
patentable weight to the contested functions performed by the “orientation
detector” and “electronic assembly” in the claimed device of claim 14, we
disagree with Appellants’ contentions regarding the Examiner’s rejections of
claim 14. Based on the evidence and record before us, we are not persuaded
that the Examiner erred in concluding that claim 14 would have been
obvious over the teachings of Tsai and Lee.
We give the claims their broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
Although Appellants contend that Lee’s reason for inclusion of the
compass, accelerometer and gyroscope is “to detect movement and/or
motion to compute a new position relative to a previous position” (App. Br.
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6), we note that claim 14 does not preclude the “orientation detector” from
being provided for detecting movement or motion or for computing a new
position, as long as it is also capable of “producing an orientation signal”
indicating orientation and/or a change in the orientation of the reading
device. (Claim 1). Moreover, “neither the particular motivation nor the
avowed purpose of the [Appellants] controls” in an obviousness analysis.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Lee’s tags are configured to perform dead reckoning processes using
inertia-sensing, magnetic field sensing, and/or gyroscopic devices to
generate navigations sensing information, wherein tags depend on stimuli
such as the Earth’s magnetic field (as measured by a compass) and a
person’s generated motion (as measured by the accelerometers and
gyroscopes) (FF 1). We are unconvinced that the Examiner erred in
concluding it would have been obvious to one of ordinary skill in the art that
an inertial navigation system comprising sensors such as a compass,
accelerometer, and gyroscope for dead reckoning (measuring the magnetic
field and generated motion) (id.) could have been used for determining the
orientation of a device and the like, in order to determine direction, motion
and movement within a monitored environment without external reference.
Appellants concede, these “navigational data sensors” may be used to
determine orientation of the tag (App. Br. 6). Thus, we are unpersuaded of
error in finding that Fee discloses or at least suggests using the dead­
reckoning navigational data sensors for determining information such as
orientation, and from such information, determining the direction, movement
and motion (FF 1).
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As Lee specifically discloses (1 67; Fig. 1), “the compass 214 may be
used to generate motion and direction of travel information to generate the
relative location information ... to indicate the location of the tag 104,”
which we find would have provided an indication of the direction in which a
person holding the tag is facing and/or moving, and to thus determine if a
person is facing a product (FF 2). We are unconvinced by Appellants’
contention that “[t]he ‘direction of travel’ of a person and ‘orientation of a
device held in the person’s hand are totally independent” (App. Br. 5).
Instead, we agree with the Examiner’s finding that the compass “determines
the orientation of the device” since the compass “is used to determine what
direction the tag [i.e., the device that the compass is implemented on] is
facing [i.e., its orientation]” in order to determine what direction the user
holding the tag is facing (Ans. 2).
Furthermore, since the Examiner rejects the claims as obvious over
the combined teachings of Tsai and Lee under 35 U.S.C. § 103(a), the
relevant inquiry is what the combination would have suggested to one of
ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986); see also Merck & Co., Inc. v. Biocraft Laboratories, Inc.,
874 F. 2d 804, 807-808 (Fed. Cir. 1989), cert, denied, 493 U.S. 975 (1989);
MPEP § 2123(E).
Thus, although Appellants contend “‘dead reckoning systems’ do not
necessarily detect the orientation of the device” (App. Br. 5), a
determination of obviousness does not require that an embodiment must be
“necessarily” there, but rather whether the contested limitation would have
been at least suggested, and therefore obvious, to one of ordinary skill in the
art. Here, we find that one of ordinary skill in the art, upon reading Lee’s
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inertial navigation system using a dead reckoning process, would have found
it obvious to apply the navigational data sensors to determine the
direction/orientation of the tag in order to determine the direction of travel of
the user holding the tag, as well as to determine the user’s movement
and/motion. As discussed above, even Appellants concede, these
“navigational data sensors” may be used to determine orientation of the tag
(App. Br. 6).
The Supreme Court has determined the conclusion of obviousness can
be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR, 550 U.S. at 418. The skilled artisan is “a person of ordinary
creativity, not an automaton.” Id. at 421.
Here, Appellants have presented no evidence that using navigational
data sensors in a dead reckoning system to determine the orientation of the
tag in determining direction, movement and motion would have been
“uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). Instead, we find that it would have
been well within the skill of one skilled in the art to use the navigation data
sensors provided to determine the orientation of the tag to determine the
user’s direction, movement and motion. See KSR, 550 U.S. at 417. That is,
we find that Appellants’ invention is simply a combination of familiar prior
art teachings (as taught or suggested by the cited references) that would have
realized a predictable result, KSR, 550 U.S. at 421.
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On this record, we find no error in the Examiner’s rejection of
claim 14, of claim 22 not argued separately (App. Br. 7), and of claims 15—
18, and 28—30, depending respectively therefrom {id.), over Tsai and Lee.
Appellants merely contend that Nonaka and Govari do not suggest the
contested limitations {id.), and thus, we also affirm the rejections of claims
19-21, 23, and 25—27 over Tsai, and Lee, in further view of Nonaka; and
claim 24 over Tsai, and Lee, in further view of Nonaka, and Govari.
V. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 14—30 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.L.R. § 1.136(a)(l)(iv).
ALLIRMED
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