Ex Parte Edwards et al

Patent Trial and Appeal Board

Jun 24, 2016

13088158 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/088, 158 04/15/2011
29855 7590 06/28/2016
Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
FIRST NAMED INVENTOR
Bryan Edwards
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.
199-0723US 7843
EXAMINER
DARAMOLA, ISRAEL 0
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
smcdermott@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRYAN EDWARDS, PETER SANTEUSANIO, JOHN BAHR,
KENT GRAHAM BODELL, STEPHEN ROLAPP,
and CAGLAN M. ARAS
Appeal2015-001894
Application 13/088,158
Technology Center 2600
Before THU A. DANG, CATHERINE SHIANG, and
MATTHEW J. McNEILL, 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 Examiner's
Final Rejection of claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appeal2015-001894
Application 13/088,158
A. INVENTION
According to Appellants, the invention relates to "configuring
electronic devices prior to their deployment in the field," and more
particularly, to "downloading configuration data to devices using RFID
technology" (Spec. i-f 1 ).
B. REPRESENTATIVE CLAIM
Claim 1 is exemplary:
1. A method of configuring a plurality of processor-based
systems each of which comprises
a radio-frequency receiver configured to provide
identifying information in response to a first type radio-
frequency signal and to store data received in a subsequent,
second type radio-frequency signal;
a data storage device in data communication with both
the receiver and the processor; and
a medium storing instructions for causing the processor
to retrieve the data received in the second type radio-frequency
signal from the data storage device and to configure the
operating characteristics of the processor-based system based
on the data;
the method comprising the steps of:
gathering a plurality of the processor-based systems into
a co-located set;
sending first type radio-frequency signals to the set;
receiving identifying information provided by a first
processor-based system in response to a first type radio-
frequency signal;
matching first configuration data to the identifying
information associated with the first processor-based system;
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receiving identifying information provided by a second
processor-based system in response to a first type radio-
frequency signal;
matching second configuration data to the identifying
information associated with the second processor-based system;
and,
sending the first and second configuration data in second
type radio-frequency signals to the set.
C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wolff-Petersen
Graczyk
August
Aleksic
US 8,281,046 B2
US 2011/0128129 Al
US 2006/0232417 Al
US 6,670,958B1
Oct. 2, 2012
June 2, 2011
Oct. 19, 2006
Dec. 30, 2003
Claims 1, 6-15, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Graczyk and August.
Claims 2, 3, and 16-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Graczyk, August, and Wolff-Petersen.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Graczyk, August, and Aleksic.
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
that Graczyk in view of August teaches or would have suggested "sending
first type radio-frequency signals to [a] set [of co-located processor-based
systems]," and "sending the first and second configuration data in second
type radio-frequency signals to the set" (claim 1 ).
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Application 13/088,158
Ill. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Graczyk
1. Graczyk discloses an asset tracking system including a plurality of
asset tracking tags, a controller, and a host computer coupled to a reader
(iT 30).
2. A tag receives a sleep command from the host computer, responds
when the password associated with the command is correct, and the host
computer determines the tag identification (iT 34).
3. The host computer receives and analyzes a signal from the tag to
determine whether the tag is operating with the correct configuration, and to
configure the tag, the host computer directs the controller to issue a wake
command to the tag (iT 35).
IV. ANALYSIS
Appellants contend Graczyk does not describe sending system
configuration data "for configuring the operating characteristics of the
processor-based system (which comprises a radio-frequency receiver) that is
being stored for subsequent use by the system" (App. Br. 15-16).
Appellants also contend "provisioning system according to claims 1, 6-15
and 19 sends two types of signals, both of which are received by the RFID
tags" wherein "[ s ]uch a system is not described in either Graczyk et al. or
August et al." (App. Br. 16). In particular, Appellants contend that in the
claimed invention, "[t]he first type signal is a request for identifying
information" and "the second type signal contains configuration information
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for the device to which the RFID tag is attached" (id.). Appellants add in the
Reply Brief, neither Graczyk nor August "describes a configuration system
that transmits two, different types of signals - namely, a general command
for all receiving units to transmit their i.d., and a unit-specific command to
store certain configuration data" (Reply Br. 2).
We have considered all of Appellants' arguments and evidence
presented. However, we disagree with Appellants' contentions regarding the
Examiner's rejections of the claims. We agree with the Examiner's findings,
and find no error with the Examiner's conclusion that the claims would have
been obvious over the combined teachings.
As a preliminary matter of claim construction, we give the claims
their broadest reasonable interpretation consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). While we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane).
As to Appellants' contentions: 1) that Graczyk does not describe
sending system configuration data ''for configuring the operating
characteristics of the processor-based system ... that is being stored for
subsequent use by the system" (App. Br. 15-16 (emphasis added)), 2) that
"the second type signal contains configuration information for the device to
which the RFID tag is attached" (App. Br. 16 (emphasis added)), and 3) that
neither Graczyk nor August "describes a configuration system that transmits
... a general command for all receiving units to transmit their i.d., and a
unit-specific command to store certain configuration data" (Reply Br. 2
(emphasis added)), such contentions are not commensurate with the scope of
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the claims. In particular, claim 1 does not recite any "general" command or
"unit-specific" command. Claim 1 also does not recite configuration
information/data "for the device," for "configuring the operating
characteristics of the processor-based system" or "being stored for
subsequent use by the system" (App. Br. 15-16). 1
1 We also note that by arguing the prior art transmitted data differs from the
claimed transmitted commands (Reply Br. 2), and in particular, Graczyk's
transmitted data differ from the claimed "configuration data" sent with the
transmitted commands (App. Br. 15-16), Appellants are contending the data
being transmitted in the claimed invention differs from the data transmitted
in the prior art. However, a question arises as to whether such contention
urging patentability is predicated on non-functional descriptive material (i.e.,
the type or content of the data being sent/transmitted). Here, the data is
sent/transmitted to the RFIDs, but the particular content of the data ("first
type radio frequency signals," "second type radio frequency signals" and
"configuration data" therein) is not positively recited as actually being used
to change or affect the manner in \~1hich the data is sent/transmitted.
Moreover, the informational content of the data is not positively recited as
actually being used to change or affect any machine or computer function,
within the broad scope of claim 1. (Contrary to Appellants' contention that
the prior art transmitted data is not used for "configuring the operating
characteristics of the processor-based system" or "being stored for
subsequent use by the system" (App. Br. 15-16), claim 1 does not require
any such function for the data.) The PT AB has provided guidance in
decisions on the appropriate handling of claims that differ from the prior art
only based on "non-functional descriptive material." See Ex parte Nehls, 88
USPQ2d 1883, 1889 (BPAI 2008) (precedential) ("[T]he nature of the
information being manipulated does not lend patentability to an otherwise
unpatentable computer-implemented product or process."); Ex parte
Mathias, 84 USPQ2d 1276, 1279 (BP AI 2005) (informative)
("[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art."),
aff'd, 191 Fed. App'x 959 (Fed. Cir. 2006)(Rule 36); Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) ("Nonfunctional descriptive
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Rather, claim 1 merely recites matching "configuration data" with
identifying information "associated with" the first and second processor-
based systems, and sending the "configuration data" to the set (claim 1 ).
That is, claim 1 does not require that the configuration data are "for" the
specific device/processor-based system but rather merely requires that the
data is matched with identifying information "associated with" the
device/system and is generally sent to the set. In fact, claim 1 does not
require that the matched configuration data be sent to any specific
device/ system, or that the data are "for configuring the operating
characteristics" of a specific device/system or "being stored for subsequent
use" by the device/system, as Appellants contend (App. Br. 15-16).
Nevertheless, we agree with the Examiner's finding (Ans. 2-3) that
Graczyk discloses and suggests sending sleep commands to tracking tags
and determining the identification of the tags in response (FF 1-2),
analyzing a signal from the tags to determine whether the tags are operating
with the correct configuration (id.), and sending wake commands to the tags,
wherein the wake commands are sent with data to configure the operating
characteristics of the specific tags (FF 3). Thus, contrary to Appellants'
contentions, we are not persuaded of error with the Examiner's reliance on
Graczyk for disclosing or at least suggesting sending general "first type"
(sleep command) signals to a set of "co-located processor-based systems"
(tracking tags) to obtain identification information, matching the
identification information with configuration data, and sending configuration
material cannot render nonobvious an invention that would have otherwise
been obvious."), affd, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36).
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data in unit-specific "second type" (wake command) signals to the set to
configure the tags (Ans. 2-3; FF 1-3).
We also agree with the Examiner's reliance on August for disclosing
and suggesting RFID signal transmissions (Ans. 2). Accordingly, we find
no error in the Examiner's reliance on the combination of Graczyk and
August for teaching and suggesting the steps of sending "first type radio-
frequency signals" and sending "configuration data" in "second type radio-
frequency signal[ s ]" of claim 1.
Furthermore, the test for obviousness is what the combined teachings
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). We find sending two types
of signals wherein the second type of signal comprises configuration data for
configuring the operating an RFID tag, to an ordinarily skilled artisan, is
simply a combination of familiar prior art practices or acts (as taught or
suggested by the cited combination of references) that would have realized a
predictable result. The skilled artisan is "a person of ordinary creativity, not
an automaton." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 420-21 (2007).
Based on this record, we find no error in the Examiner's rejection of
independent claim 1, and claims 6-15 and 19, not separately argued and
falling therewith (App. Br. 16), over Graczyk and August.
As for claims 2-5 and 16-18, Appellants contend Wolff-Peterson and
Aleksic do not disclose the contested limitations (App. Br. 9-10). However,
we find no error with the Examiner's conclusion that the claims would have
been obvious over the cited references (Ans. 9-10). Therefore, we adopt the
Examiner's findings which we incorporate herein by reference.
Consequently, we have found no reversible error in the Examiner's rejection
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of claims 2, 3, and 16-18 over Graczyk and August, in further view of
Wolff-Petersen; and of claims 4 and 5 over Graczyk and August, in further
view of Aleksic.
V. CONCLUSION AND DECISION
We affirm the Examiner's rejections of claims 1-19 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.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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