Ex Parte Driscoll et al

Patent Trial and Appeal Board

Sep 19, 2018

14011275 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/011,275 08/27/2013
44765 7590 09/21/2018
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg.4
Bellevue, WA 98005
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Tom Driscoll
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.
0513-035-001-CIPOO 1 3984
EXAMINER
WINDRICH, MARCUS E
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
ISFDocketlnbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOM DRISCOLL, RODERICK A. HYDE, JORDIN T. KARE,
DAVID R. SMITH, and CLARENCE T. TEGREENE
Appeal 2018-006151
Application 14/011,275
Technology Center 3600
Before JAMES P. CAL VE, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1-23 and 27-34. 3 We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 Appellants identify the real party of interest as Elwha LLC, an affiliate of
The Invention Science Fund II, LLC. Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated October 4, 2017, as
supplemented by the Advisory Action dated November 22, 2017.
3 See Preliminary Amendment dated Aug. 27, 2013 (cancelling claims 36-52
and 54---61); Amendment dated Feb. 26, 2016 (cancelling claims 24--26, 35,
and 53).
Appeal 2018-006151
Application 14/011,275
We AFFIRM.
STATEMENT OF THE CASE
Claims 1 and 18 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A radar identification device, comprising:
a memory configured to store demographic information
for user; and
a radar retroreflector, configured to be worn or carried by
the user and further configured to modulate a retroreflected radar
signal in the frequency range of about 1 to 300 GHz with at least
a subset of the stored demographic information.
THE REJECTI0NS 4
I. Claims 18 and 35 are provisionally rejected on the ground of
non-statutory obviousness-type double patenting as unpatentable over claims
1, 25, and 44 of co-pending U.S. Application No. 13/950,719. 5
II. Claims 13 and 30 stand rejected under 35 U.S.C. § 112(b) as
indefinite.
III. Claims 1-13, 16, and 17 stand rejected under 35 U.S.C. § 103
as unpatentable over Frysz (US 2010/0328049 Al; published Dec. 30,
2010), Moore, JR. (US 2012/0256727 Al; published Oct. 11, 2012), and
Fink (US 2012/0001735 Al; published Jan. 5, 2012).
IV. Claims 14 and 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Frysz, Moore, JR., Fink, and Beck (US 2013/0176125 Al;
published July 11, 2013).
4 Claims 24--26 have been cancelled. See Final Act. 15.
5 Claim 53 has been cancelled. See Final Act. 4.
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V. Claims 18-23 and 27-34 stand rejected under 35 U.S.C. § 103
as unpatentable over Beck, Moore, JR., and Fink.
ANALYSIS
Rejection I
Regarding the Examiner's provisional rejection of claims 18 and 35
on the ground of non-statutory obviousness-type double patenting,
Appellants submit that a terminal disclaimer will be filed, subject to certain
circumstances. Final Act. 4; Appeal Br. 22; Reply Br. 18.
Accordingly, we summarily sustain the Examiner's rejection. See
MPEP § 1205.02 (2017) ("If a ground of rejection stated by the examiner is
not addressed in the appellant's brief, appellant has waived any challenge to
that ground of rejection and the Board may summarily sustain it.)"; see also
Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) ("If an
appellant fails to present arguments on a particular issue-or more broadly,
on a particular rejection-the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.").
Re} ection II
Claims 13 and 30, which depend from independent claims 1 and 18,
respectively, recite, in relevant part, "wherein the demographic information
includes an expected maximum walking speed for the user." Appeal Br. 25,
26 (Claims App.). The Examiner finds that "it is unclear how the
information is determined or what this information is," because the
"[ m ]aximum walking speed of an individual is a changing variable." Final
Act. 5; see also Ans. 5 ("with no supporting information to provide context
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and/or scope, one of ordinary skill in the art would fail to have sufficient
understanding of how this variable is determined").
Appellants argue that the disputed claim language is clear, in that the
expected maximum walking speed for the user "is simply a piece of
demographic data that may be transmitted by the recited device or system."
Appeal Br. 22; see also Reply Br. 17-18 (arguing the Examiner has applied
the wrong standard to determine the definiteness of a claim).
During prosecution, a claim may be rejected as indefinite "when it
contains words or phrases whose meaning is unclear." MPEP § 2173.05(e).
Here, we agree with Appellants that it is clear that claims 13 and 30 mean
that the claimed demographic information includes a user's expected
maximum walking speed, regardless of variability or the method for
determining such speed.
Accordingly, we do not sustain the Examiner's rejection of claims 13
and 30 under 35 U.S.C. § 112(b) as indefinite.
Re} ection III
Regarding independent claim 1, the Examiner finds, inter alia, that
Frysz discloses "a radar identification device" (i.e., a radio frequency
identification device ( or an RFID tag)) comprising "a memory configured to
store demographic information for a user." Final Act. 6-7 (citing Frysz ,r
52). The Examiner determines that Frysz fails to disclose a "retroreflector,"
as defined in the Specification, and relies on Fink for teaching "a Van Atta
retroreflector within an RFID tag." Final Act. 7 (citing Fink ,r,r 37-38); see
Spec. 6:24--7:2. The Examiner reasons that it would have been obvious "to
use a Van Atta retroreflector in order to gain the benefit of providing a
higher gain antenna as taught by Fink." Id. (citing Fink ,r 37); see also Ans.
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3 ( discussing "use [ ofJ the retroflector of Fink as part of the device of Frysz
[to] increase gain").
First, Appellants argue that the Examiner fails to state a prima facie
case of obviousness, because "the Examiner has not interpreted the claims
according to their plain meaning" (Reply Br. 4) or "demonstrated how the
claims, interpreted according to their plain meaning, are taught or suggested
by the cited references" (id. at 5). See also, generally, Appeal Br. 13-18;
Reply Br. 3-8. Regarding the claim term "radar retroreflector," Appellants
submit that "a plain meaning of 'radar retroreflector"' is "an apparatus that
reflects back a radar signal." Reply Br. 6 ( also citing the definition of
"retroreflector," as provided in the Specification at page 6). Appellants
argue that the Examiner erred by finding that Frysz discloses a radar
retroreflector, and also that the Examiner fails to explain "how an RFID tag
is equivalent [to a radar retroreflector]." Id. (citing Moore, JR. ,r 15 (as
evidence that "RFID technology is not the same as 'a radar retroreflector"')).
Appellants' argument, however, is not responsive to the Examiner's
rejection, which does not rely on Frysz's RFID tag as a radar retroreflector,
but rather, as set forth supra, proposes modifying Frysz's RFID tag to
include a retroreflector, as taught by Fink, to provide a higher gain antenna.
Appellants also argue that the Examiner failed to present a finding
that Frysz or Moore, JR. "disclose or suggest 'a memory configured to store
demographic information for a user,' a subset of which may be modulated
by the retroreflector," as recited in claim 1. Reply Br. 8, 14. Specifically,
Appellants submit that "Frysz is directed to 'identifying implanted medical
devices,' or specific patient information such as' ... [the patient's] medical
condition and treatment,"' and Moore, JR. "is not directed to storing or
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modulating demographic information." Id. at 8 (citing Frysz ,r 15; Moore,
JR. ,r,r 2, 3).
To the extent that Appellants argue that Frysz does not disclose a
memory, we disagree, in that Frysz's RFID tag has an inherent memory
configured to store demographic information (i.e., a patient's medical
condition (or capabilities)). See, e.g., Frysz, Abstract (disclosing an RFID
tag "having retrievable information relating to the [implanted medical device
(IMD)]"); ,r 15 (disclosing that "it would be beneficial if physicians were
able to obtain additional information" such as the "medical condition of the
patient," from a device). Moore, JR. is also evidence that RFID tags use
chips having memory for storing information to be transmitted (i.e., a stream
of data to an RFID reader). See, e.g., Moore, JR. ,r,r 25, 27, 28.
Regarding demographic information, the Specification broadly
discloses that "demographic information may include species (e.g., a dog, a
cat, or another pet), age (e.g., a child or an elderly person), sex, or physical
capabilities (e.g., maximum walking speed)" (Spec. 4: 15-17), and we are
not apprised of error in the Examiner's finding that a patient's human name
and medical condition, as disclosed in Frysz, qualifies as such demographic
information. See, e.g., Frysz ,r 15. To the extent Appellants are arguing that
the radar retroreflector must be configured to modulate the retroreflected
radar signal to include stored demographic information, such a limitation is
not claimed. Rather, as set forth supra, claim 1 requires the retroreflector to
be configured to modulate a retroreflected radar signal with ( or possessing)
at least a subset of the stored demographic information, wherein the signal
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modulated by the radar retroreflector may already possess the subset of
demographic information. 6
Second, Appellants argue that Frysz is improperly relied on by the
Examiner as non-analogous art to the claimed invention. Appeal Br. 17.
Appellants submit that Frysz is "a fixed system designed for indoor use, for
scanning hospital patients to locate and identify any medical implants that
they may have," whereas the instant invention involves "a pedestrian on the
street [that] cannot be brought to a more convenient position to be scanned,
but must be identified in situ." Id. The Examiner responds that Frysz is
analogous art because Frysz is "directed towards the use of RF
identification." Ans. 3; cf Appeal Br. 24 (Claims App.) (claim 1: "A radar
identification device .... "). Appellants reply that Frysz's field of endeavor
is "an identification system for implanted medical devices ... for use 'in
close proximity to a patient,"' as compared to "a system using radar
retroreflectors to reflect or modulate data." Reply Br. 11 ( citing Frysz,
Abstract ,r 2).
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).
Two separate tests define the scope of analogous art: (1) whether
the art is from the same field of endeavor, regardless of the
6 Notwithstanding, the Specification admits that it is known for a Van Atta
array to include switches for modulating the reflected signal. See Spec.
6:24--7:2 (citation omitted). Fink also discloses that although the
retroreflector disclosed with respect to Figure 5A "does not impart any type
of identification within the reflected signal," the retroreflector disclosed with
respect to Figure 5B contains microstrip patch elements "to provide the
identification function for the retro-reflector." Fink ,r 69.
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problem addressed, and (2) if the reference is not within the field
of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The "field of endeavor"
test asks if the structure and function of the prior art is such that it would be
considered by a person of ordinary skill in the art because of similarity to the
structure and function of the claimed invention as disclosed in the
application. Id. at 1325-26. "A reference is reasonably pertinent ... if it is
one which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his problem." In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Here, we determine that Frysz's RFID tag, or radar identification
device, which provides information about the wearer (i.e., patient
information) in response to an interrogating signal, is in the same field of
endeavor as Appellants' claimed invention, namely, radar identification
devices, which also function to provide information about the wearer (i.e., a
pedestrian) in response to an interrogating signal. Notwithstanding, under
prong two, we also determine that a particular problem addressed by
Appellants is how to determine information from a person using an
interrogating signal, and by also addressing the need to determine
information about a patient using an interrogating signal, Frysz logically
would have commended itself to Appellants' attention. Thus, we are not
apprised of error in the Examiner's reliance on Frysz as prior art.
Third, Appellants argue that "one of ordinary skill in the art would not
seek to use an implanted retroreflector as part of a medical device." Appeal
Br. 17. In support, Appellants submit that "[t]he retroreflector increases
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gain for reflecting signals coming from an unknown direction back toward
their source, and would not be needed for an implanted device whose
location is already known." Id. Appellants also submit that "[s]uch a
retroreflector would not substantially increase the gain for such a device,
because ... the patient and/or scanner can be moved if necessary to acquire
an adequate signal." Id. Appellants further submit that "the scanner ...
would always use a strong enough signal to locate the implant whether or
not a retroreflector is present." Id.
The Examiner responds that "[i]ncreased gain results in better
reception of the return signal, even in a noisy RF environment, such as one
surrounded by other medical equipment, and provides more reliability in
receiving the desired information." Ans. 4.
Appellants reply that because Frysz's system "is used in close
proximity to the patient," one of ordinary skill in the art would not have
combined "Fink with Frysz to increase the gain of the RFID device of
Frysz." Reply Br. 13-14.
Frysz discloses that "[ t ]he more recent trend has been to RF distance
telemetry," wherein "the [ active implantable medical devices ( AIMDs)] has
a telemetry receiver and an antenna which works at very high frequency,"
for example, "in the hundreds of megahertz or even gigahertz frequency
bands," with the advantage that "the interrogating antenna does not have to
be set close to the patient's implanted AIMD." Frysz ,r 4. Frysz also
identifies the problem of being able to identify whether there is an AIMD
within a patient "where the patient ... cannot clearly state that he or she
even has an AIMD," or in other words, where the location of the implanted
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device is not known. Id. ,r 6. Thus, Appellants' arguments are not
persuasive of Examiner error.
Finally, Appellants argue that the Examiner improperly relied on
hindsight by using the Specification "as a blueprint to identify references
that include the component parts of the claimed invention, without regard to
how those references use those parts or how the references might reasonably
be viewed by one of ordinary skill in the art." Appeal Br. 18 ( citations
omitted). We are not persuaded by Appellants' argument, because the
Examiner's rationale, i.e., to increase the gain of Frysz's RFID tag, is
supported by evidence (teachings) from both Frysz, as set forth supra, and
Fink. See, e.g., Fink ,r 37 (citing US Patent 2,908,002, issued to Van Atta
for disclosing "an apparatus for reflecting an electromagnetic wave back in
the same direction as the incident wave, thereby effectively providing a
higher gain antenna"); ,r 82 ("the interrogator 650 may detect or use only the
'Van Atta response', which will typically be significantly larger in terms of
signal strength"); see also In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir.
2016) (hindsight argument is of no moment where the Examiner provides a
sufficient, non-hindsight reason to combine the references).
Accordingly, we sustain the Examiner's rejection of independent
claim 1. Appellants chose not to present separate arguments for the
patentability of claims 2-13, 16, and 17, which depend from claim 1, and
therefore, for essentially the same reasons as set forth supra, we also sustain
that Examiner's rejection of claims 2-13, 16, and 17. Appeal Br. 18; Reply
Br. 8.
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Re} ection IV
Appellants argue that the Examiner's reliance on Beck does not cure
the deficiencies in the Examiner's reliance on the prior art as applied to
claim 1. Appeal Br. 19. Because we do not agree that there are deficiencies
in the Examiner's findings or reasoning with respect to the patentability of
claim 1, for essentially the same reasons discussed supra, we also sustain the
Examiner's rejection of claims 14 and 15.
Rejection V
Regarding independent claim 18, the Examiner finds, inter alia, that
Beck generally discloses a wearable radar identification system as claimed,
except that Beck fails to disclose "demographic information" and "a
retroreflector." Final Act. 11-12. The Examiner relies on Moore, JR. for
teaching transmitting "identification information about the user." Id. at 12
(citing Moore, JR. ,r 24). The Examiner reasons that it would have been
obvious "to provide identification information in order to gain the benefit of
providing the user with information about the person with the tag using
passive technology in the radar reflector to eliminate dependence on
battery." Final Act. 12. The Examiner relies on Fink for teaching "a Van
Atta retroreflector within an RFID tag." Id.
Appellants argue that "neither Beck, nor Moore, JR., nor Fink, nor
even Frysz, teaches or suggests a radar retroreflector that reflects
demographic information for a pedestrian." Appeal Br. 21; see also Reply
Br. 16-1 7 ( arguing that "none of the references cited disclose transmission
of demographic information of any sort.").
Moore, JR. discloses that "RFID tags ... may be used to store ...
personal information" and that "when a RFID tag passes within the range of
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an RIFD reader, the RFID reader may be able to extract personal ...
information from the RFID tag." Moore, JR. ,r 2. Thus, we are not apprised
of error in the Examiner's finding that Moore, JR. discloses transmission of
demographic information for an associated user. See Spec. 4: 15-18
( describing "demographic information" as including personal information,
such as age).
Accordingly, we sustain the Examiner's rejection of independent
claim 18. Appellants chose not to present separate arguments for the
patentability of claims 19-23 and 27-34, which depend from claim 18, and
therefore, for essentially the same reasons as set forth supra, we also sustain
that Examiner's rejection of claims 19-23 and 27-34. Appeal Br. 21.
DECISION
The Examiner's decision rejecting claims 18 and 35 on the ground of
non-statutory obviousness-type double patenting is AFFIRMED.
The Examiner's decision rejecting claims 13 and 30 stand rejected
under 35 U.S.C. § 112(b) as indefinite is REVERSED.
The Examiner's rejections of claims 1-23 and 27-34 under 35 U.S.C.
§ 103 are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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