Ex Parte Goetz

Board of Patent Appeals and Interferences

Jan 11, 2006

09834499 (B.P.A.I. Jan. 11, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSEPH R. GOETZ
____________
Appeal No. 2005-1817
Application No. 09/834,499
____________
ON BRIEF
____________
Before KRASS, BARRY, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-20, which are all of the claims pending in
this application.
We AFFIRM-IN-PART.
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Application No. 09/834,499
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BACKGROUND
The appellant's invention relates to an automatic vehicle
theft protection device having a transponder that is separate
from the ignition key (specification, pages 1 and 3).
Claim 1 is representative of the invention, and is reproduced as
follows:
1. An automatic vehicle theft prevention system for
selectively enabling an ignition system of a vehicle, said
ignition system being operable using an ignition key, and said
system comprising:
an interrogator circuit including a signal generator for
generating an excitation signal and an antenna coupled to said
signal generator for radiating said excitation signal and
receiving a return signal;
a transponder circuit separate from said ignition key for
detecting said excitation signal and radiating said return
signal, said transponder circuit modulating said excitation
signal to produce said return signal containing an identification
code for said transponder circuit;
a controller in communication with said antenna for
detecting said identification code in said return signal; and
a relay actuated to an enable mode by said controller when
said controller detects said identification code, said relay
being actuated to enable said ignition system.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Weber 3,784,839 Jan. 8, 1974
Flanagan 3,864,651 Feb. 4, 1975
Hansen 4,412,267 Oct. 25, 1983
Bethards 5,040,212 Aug. 13, 1991
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Bryant et al. (Bryant) 5,155,494 Oct. 13, 1992
Dodd et al. (Dodd) 5,313,189 May 17, 1994
Iijima et al. (Iijima) 5,708,307 Jan. 13, 1998
Tuttle 6,112,152 Aug. 29, 2000
Tallman et al. (Tallman) 6,175,308 Jan. 16, 2001
Takagi et al. (Takagi) 6,285,948 Sep. 4, 2001
(filed Apr. 6, 2000)
Strohbeck 6,580,972 Jun. 17, 2003
(filed Mar. 20, 2000)
Claims 1, 3, 4, 8, 9, 15 and 18 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Iijima in view of
Takagi.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Iijima in view of Takagi and further in view of
Tuttle.
Claims 5 and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Iijima in view of Takagi and further in
view of Tallman.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Iijima in view of Takagi and further in view of
Bathards.
Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Iijima in view of Takagi and further in
view of Strohbeck.
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Application No. 09/834,499
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Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Iijima in view of Takagi and further in view of
Weber.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Iijima in view of Takagi, Weber, and further in
view of Flanagan.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Iijima in view of Takagi, Weber, Flanagan and
further in view of Hansen.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Iijima in view of Takagi, Weber and Flanagan,
and further in view of Dodd.
Claims 14 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Iijima in view of Takagi, and further in
view of Bryant.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Iijima in view of Takagi, Weber, Flanagan,
Hansen, Dodd and further in view of Bryant.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (mailed December 29,
2004) for the examiner's complete reasoning in support of the
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rejections, and to the brief (filed August 16, 2004) for the
appellant's arguments thereagainst.
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant’s arguments set forth in the brief along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we make the
determinations which follow. We observe at the outset
appellant’s statement (brief, page 8) that “[i]t is Appellant’s
position that claim 1, 15, and 18 are separately patentable from
all other claims on appeal. It is Appellant’s position that
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claim 6 is separately patentable from all other claims on appeal.
It is Appellant’s position that claims 2-5, 7-14, 16-17, and 19-
20 stand or fall together and are separately patentable from
claims 1, 6, 15, and 18.” From the listing of the rejections,
supra, we find that appellant’s third grouping is not consistent
with the rejection as the grouping includes claims rejected under
different grounds. Appellant is entitled, procedurally, to
review of at least one claim for each separate ground of
rejection. Accordingly, we will consider a representative claim
for each different ground of rejection. We begin with the
rejection of claims 1, 3, 4, 8, 9, 15 and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Iijima in view of Takagi.
Turning to claim 1, which is representative of the group, we
note as background that in rejecting claims under 35 U.S.C. §
103, it is incumbent upon the examiner to establish a factual
basis to support the legal conclusion of obviousness. See In re
Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
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having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ
657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
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The examiner's position (answer, page 4) is that Iijima does
not disclose the transponder circuit being separate from the
ignition key. To overcome this deficiency of Iijima, the
examiner turns to Takagi for a teaching of a transponder circuit
separate from the ignition key in a vehicle access system.
Appellants' position (brief, page 10) is that if modified as
advanced by the examiner, Iijima would be unworkable for its
intended purpose and that the Iijima system utilizing a
specialized key suffers from the problems that appellant’s
invention of claim 1 corrects. It is argued (brief, page 11)
that the invention is to be gauged not only by the extent or
simplicity of the physical change, but also by the perception of
the necessity or desirability of making such changes to produce a
new result. It is further asserted (brief, page 12) that it is
the cooperative relationship of the claimed elements that
achieves a novel and unobvious benefit of cost savings when
obtaining duplicate keys, and that Iijima fails to express a
motivation for making the modification suggested by the examiner.
It is argued (brief, page 13) that Iijima requires the
specialized key to prevent car theft by shape forgery of the
mechanical key. It is further argued (id.) that separation of
the transponder from the key is contrary to the express purpose
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of the Iijima system, and the obviousness is derived not from the
prior art, but only from appellant’s disclosure.
From our review of the record, including the arguments
presented by appellant and the examiner, we find that the issue
before us is whether it would have been obvious to have separated
the transponder of Iijima from the ignition key, in view of the
combined teachings of Iijima and Takagi. As acknowledged by both
appellant and the examiner, Iijima does not disclose this
feature. From our review of Takagi we find that although
Takagi’s embodiment of figure 1 shows the transponder 18a to be
located within key 18, Takagi discloses (col. 6, lines 66 and 67)
that “[t]he transponder 18a may be provided separately from the
key 18.” From this disclosure of Takagi, we find that the
reference discloses alternatives of having the transponder be
either within the key or separate from the key. From the
alternatives presented, we agree with the examiner that an
artisan would have been taught that these two alternatives are
interchangeable and that an artisan would either form the
transponder within the key, or form the transponder separate from
the key. We find the disclosure of Takagi to be an express
suggestion of making the transponder separate from the key, and
that the disclosure of Takagi would have taught an artisan that
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the transponder of Iijima can be formed either within the key or
separate from the key. In sum, we find an express suggestion
within the prior art of making the transponder separate from the
key.
We are not persuaded by appellant’s assertion (brief, page
11) that “[i]t is Appellant’s position that invention is to be
gauged not only by the extent or simplicity of the physical
changes, but also by the perception of the necessity or
desirability of making such changes to produce a new result.”
Appellant is correct that the desirablilty of making the
modification should be considered. However, from the disclosure
in Takagi of forming the transponder either within the key or
separate from the key, we find the desirability of making the
modification. The disclosure of the two alternatives suggests
the equivalence and interchangeability of the alternate key and
transponder constructions.
We are not persuaded by appellant’s assertion (brief, page
12) that Iijima fails to articulate a motivation for making the
modification suggested by the examiner. It is the combined
teachings of the prior art that need to be considered, not the
teachings of Iijima alone. Nor are we persuaded by appellant’s
assertion (id.) that “it is the cooperative relationship of the
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claimed elements that achieves a novel and unobvious benefit for
Appellant’s invention of cost savings when obtaining duplicate
keys.” While the claimed relationship may achieve benefits over
Iijima alone, the combined teachings of Iijima and Takagi, for
the reasons set forth, supra, would have suggested the claimed
invention to an artisan. In addition, we agree with appellant
(brief, page 10) that the specialized key of Iijima suffers from
the problems that appellant’s invention of claim 1 corrects.
However, we do not agree that if the transponder of Iijima were
separated from the key that the device of Iijima would be
unworkable for its intended purpose, because in Iijima, the
intended purpose is an anti-theft car protection system (col. 2,
line 8) and the system would still function if the transponder
were separated from the key. From all of the above, we are not
convinced of any error on the part of the examiner, and find that
the combined teachings of Iijima and Takagi would have suggested
to an artisan the invention of claim 1. Accordingly, the
rejection of claim 1 under 35 U.S.C. § 103(a) is affirmed. As
independent claims 15 and 18 have not been separately argued,
these claims fall with claim 1. In addition, claims 3, 4, 8 and
9 have not been separately argued and therefore fall with claim
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1. The rejection of claims 3, 4, 8, 9, 15 and 18 under 35 U.S.C.
§ 103(a) is affirmed.
We turn next to claim 2. The examiner’s position (answer,
page 8) is that Iijima in view of Takagi do not explicitly
disclose that the transponder circuit is a mobile radio frequency
identification (RFID) data carrier including a memory element for
storing the identification code. To overcome this deficiency of
Iijima and Takagi, the examiner turns to Tuttle for a teaching of
a transponder circuit that is a RFID data carrier in a vehicle
access system.
Appellant’s position (brief, page 17) is that claims 2-5, 7-
14, 16 and 17, 19 and 20 were rejected as unpatentable over
Iijima in view of Takagi with some of the claims being further
rejected in view of one or more of the following references to
Tuttle, Tallman, Strohbeck, Weber, Flanagan, Hansen, Dodd and
Bryant. It is argued (id.) that the claims are patentable for the
reasons set forth, above, with respect to claim 1, and that “due
to the great number of disparate references cited in connection
with this case, it is Appellant’s position that the above-
identified application was used as a blueprint, with the
hypothetical combination of the Iijima and Takagi device as the
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main structural diagram.” We are not persuaded by appellant’s
assertion because the number of references cited, by itself, is
not evidence of non-obviousness. It is the teachings of the
references, when applied against the language of the claim as a
whole, that must be considered in the determination of whether
the invention set forth in a claim would have been suggested by
the prior art. As we address each additional rejection, we will
consider each of the applied references. Turning to claim 2, we
have no specific arguments presented for this claim. From our
review of the record, we find that in Iijima the identification
code is transmitted from the transponder (col. 23, lines 43 and
44) and that the identification code is stored in the EEPROM of
the transponder (col. 3, lines 41 and 42). From this disclosure,
we find that Iijima discloses the transponder to be a radio
frequency data carrier including a memory element for storing the
identification code, as recited in claim 2. In addition, from
our review of Tuttle, we find from the disclosure (col. 2, lines
38-41) that wireless transponder circuitry 14 comprises RFID
circuitry, including memory. From our review of the record, we
are in agreement with the examiner, for the reasons set forth in
the answer, that the teachings of Iijima, Takagi and Tuttle would
have suggested to an artisan the invention set forth in claim 2.
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From the lack of any specific arguments by appellant, and our
agreement with the examiner’s position, we are not persuaded of
any error on the part of the examiner regarding the rejection of
claim 2. Accordingly, the rejection of claim 2 under 35 U.S.C. §
103(a) is affirmed.
We turn next to the rejection of claims 5 and 16 under 35
U.S.C. § 103(a) as being unpatentable over Iijima in view of
Takagi and further in view of Tallman. The examiner (answer,
page 9) relies upon Tallman for a teaching of an input being a
data port configured for connection with an external programming
device, with the external programming device providing the
predetermined access code. The examiner asserts (id.) that the
modification would have been obvious so as to allow a programming
device to program ID code used in the vehicle theft protection
system. Appellant provides no specific arguments regarding these
claims, but generically argues (brief, page 24) that hindsight
has been used to make a host of obviousness rejections based on
disparate references and that the claims were used as a guide to
selectively pick and choose elements from the various references
so as to arrive at the claimed invention. Appellant’s general
assertion regarding the various references applied does not
address why appellant considers the language of claims 5 and 16
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to be non-obvious over the prior art.
From our review of Tallman, who provides, inter alia, theft
prevention for an automobile, and discloses data port 261 for
connection to an external programming device for entering a
unique identification code (col. 6, lines 40-63), we agree with
the examiner, for the reasons set forth in the answer, that the
teachings of Iijima, Takagi and Tallman would have suggested to
an artisan the invention set forth in claim 5. From the lack of
any specific arguments by appellant with respect to these claims,
we are not convinced of any error on the part of the examiner
with respect to the rejection of claims 5 and 16. Accordingly,
the rejection of claims 5 and 16 under 35 U.S.C. § 103(a) is
affirmed.
We turn next to the rejection of claim 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Iijima in view of Takagi and
Bethards. The examiner’s position (answer, pages 9 and 10) is
that Iijima and Takagi do not disclose that the input is an
antenna configured for radio frequency (RF) communication with an
external programming device, which provides the predetermined
authorized access code.
To overcome this deficiency of Iijima and Takagi, the
examiner turns to Bethards for a teaching of this feature.
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Appellant asserts (brief, page 15) that no motivation is provided
because Takagi already includes means for providing a
predetermined authorized access code via a wired connection. It
is argued (id.) that the key ID of Takagi is rewritable and can
be changed if the key is stolen, and that it would be redundant
to modify the combination of Iijima and Takagi. We agree.
However, because the program rewriting tool 14 of Takagi is hard
wired, as noted by appellant, we find that an artisan would have
been motivated to make the program rewriting tool 14 of Takagi
operate using RF in view of the disclosure of Bethards (col. 4,
lines 35-38 and col. 3, lines 17-21), as Bethards discloses using
RF communications for programming the subscriber unit with an
identification code. Takagi further discloses that electronic
control apparatuses are used to prevent intrusion into
automobiles and prevent burglary of the vehicle. Program
rewriting tools may be used to rewrite the anti-burglary function
by erasing the key ID check program, making it likely that
vehicles will be stolen.
The invention of Bethards provides a program rewriting
control for preventing unauthorized intrusion and burglary (col.
1, lines 17-19, 31-38 and 42-45). From these disclosures of
Takagi and Bethards, an artisan would have been taught to make
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the system of Iijima rewritable through a rewriting tool that
uses RF communications, in light of the teachings of the applied
prior art. Although we have relied upon the references in a
manner that is not identical to how the references were applied
by the examiner, we find that the prior art would have suggested
to an artisan the language of claim 6. Accordingly, the
rejection of claim 6 under 35 U.S.C. § 103(a) is affirmed.
We turn next to the rejection of claims 7 and 17 under 35
U.S.C. § 103(a) as being unpatentable over Iijima in view of
Takagi and Strohbeck. No specific arguments have been presented
for these claims by appellant. Accordingly, we select claim 7 as
being representative of the group. Claim 7 relates to the system
being actuated by more than one transponder, where there is a
second transponder and a second identification code that is
received by the controller, for actuating the relay. The
examiner (answer, pages 10, 11, 19 and 20) relies upon Strohbeck
for this feature.
From our review of Strohbeck, we find that this reference is
directed to a keyless access and/or drive authorization system
that includes a plurality of transponders (col. 1, lines 28-34
and 50-55; and col. 3, line 58 through col. 4, line 4). From the
disclosure of Strohbeck, we agree with the examiner, for the
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reasons cogently set forth on pages 11 and 12 of the answer, that
the teachings of Iijima, Takagi and Strohbeck would have
suggested to an artisan the invention set forth in claim 7. From
the lack of any specific arguments regarding this claim, we are
not convinced of any error on the part of the examiner.
Accordingly, the rejection of claim 7 under 35 U.S.C. § 103(a) is
affirmed. As claim 17 falls with claim 7, the rejection of claim
17 under 35 U.S.C. § 103(a) is affirmed.
We turn next to claim 10, which stands rejected under 35
U.S.C. § 103(a) as being unpatentable over Iijima in view of
Takagi and further in view of Weber. The examiner’s position
(answer, pages 13 and 14) is that Iijima and Takagi do not
disclose that the ignition switch is activated by an ignition
key, and that a latching relay is actuated in response to a
momentary actuation of the relay when the controller detects the
identification code, wherein the latching relay is adapted to
remain latched until the ignition switch is deactivated. To
overcome this deficiency of Iijima and Takagi, the examiner turns
to Weber for a teaching of these features. Appellant presents no
specific arguments regarding this claim. From our review of
Weber, we will sustain the rejection of claim 10 for the reasons
set forth in the examiner’s answer. From the lack of any
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specific arguments by appellant, we are not convinced of any
error on the part of the examiner. Accordingly, the rejection of
claim 10 under 35 U.S.C. § 103(a) is affirmed.
We turn next to the rejection of claim 11, rejected under 35
U.S.C. § 103(a) as being unpatentable over Iijima in view of
Takagi and further in view of Weber and Flanagan. Claim 11,
which depends from claim 10, is directed to an override switch in
communication with an input of the latching relay wherein
activation of the override switch causes the latching relay to be
latched to continuously enable the ignition system. The examiner
(answer, pages 14 and 15) turns to Flanagan for a teaching of “an
override switch (10)(i.e. a magnetic relay acts as an override
switch) in communication with an input of said latching relay
wherein activation of said override swtich (10) causes said
latching relay (26)(i.e. a latching switch) to be latched to
continuously enable said ignition system (col. 3 lines 39-66; see
Figure 1) in order to permit the automobile to start.”
Appellant’s position (brief, pages 19 and 20) is that appellant
does not dispute that override switches and relays are known, but
asserts that claim 11 is directed to a new combination of
elements, and that the prior art does not teach or suggest the
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inclusion of an override switch within a vehicle theft protection
system. It is asserted (id.) that there appears to be little
reasoning to support the examiner’s position and that the
examiner has used the claim as a guide to pick and choose
elements and concepts from the prior art.
From our review of Flanagan, we find that the reference is
directed to an override for an interlock system that will disable
the ignition system and prevent operation of the automobile (col.
1, lines 22-26 and 32-34 and col. 3, lines 39-60). Although the
system of Flanagan provides a single cycle override, the override
can be repeated as necessary, and is therefore continuously
enabled. We are not persuaded by appellant’s assertion that the
invention is directed to a new combination of elements because
the issue is whether the combination was suggested by the prior
art. In addition, from the disclosure of the latch override of
Flanagan for use in preventing the engine from being started, we
agree with the examiner that the teachings of the prior art would
have suggested to an artisan the language of claim 11. From the
disclosure of Flanagan, we are not persuaded that the examiner is
merely picking and choosing elements from the prior art to arrive
at appellant’s invention, as the prior art suggests the language
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of the claim. Accordingly, the rejection of claim 11 under 35
U.S.C. § 103(a) is affirmed.
We turn next to the rejection of claim 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Iijima in view of Takagi and
further in view of Weber, Flanagan and Hansen. The examiner’s
position (answer, page 15) is that “Iijma et al. in view of
Takagi et al., Weber and Flanagan did not explicitly disclose
wherein activation of said override switch causes said latching
relay to remain latched to continuously enable said ignition
system only following actuation of said latching relay by said
relay.” To overcome this deficiency of the prior art, the
examiner turns to Hansen for a teaching of an override switch,
which when activated, causes the latching relay to remain latched
to continuously enable said ignition system only following
actuation of said latching relay by said relay.
Appellant asserts (brief, page 20) that Hansen is not in the
same field of endeavor as a vehicle theft protection system. It
is asserted (brief, page 21) that an artisan would not have found
the invention of claim 12 obvious without using the claim as a
guide to selectively pick and choose elements and concepts from
the prior art. From our review of Hansen, we find that the
reference is directed to a circuit breaker relay for use in
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aircraft, and provides resistance to false trips due to vibration
(col. 1, lines 12-15 and 43-47). Although the reference does
show the claimed override switch as noted by the examiner, we
find that the reference is directed to preeventing problems
caused by vibration in an aircraft, and is not drawn to the same
field of endeavor nor reasonably related to the problem that
appellant is solving. We therefore find that an artisan would
not have been motivated to modify the teachings of Iijima,
Takagi, Weber and Flanagan with Hansen in order to arrive at the
claimed invention. From all of the above, we find that the prior
art fails to establish a prima facie case of obviousness of claim
12. The rejection of claim 12 under 35 U.S.C. § 103(a) is
reversed.
We turn next to the rejection of claim 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Iijima in view of Takagi and
further in view of Weber, Flanagan and Dodd. The examiner’s
position (answer, pages 16 and 17) is that Iijima, Takagi, Weber
and Flanagan do not suggest an indicator for the override switch.
The examiner turns to Dodd for this feature. Appellant
position (brief, pages 21 and 22) is that “[a]ppellant does not
dispute that it is known to include indicators to indicate when a
switch is activated.” However, appellant asserts that claim 13
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is directed to a new combination of elements and that none of the
prior art is directed to an override switch in a vehicle theft
prevention system. We note at the outset that as we indicated,
supra, Flanagan is directed to a system, including an override
switch, for preventing engine starting in an automobile. From
appellant’s admission that the use of an indicator for indicating
when a switch is activated and the disclosure of Dodd of
providing an indicator for an override switch for a vehicle, we
agree with the examiner, for the reasons set forth in the answer,
that the prior art would have suggested to an artisan the
language of claim 13. Accordingly, the rejection of claim 13
under 35 U.S.C. § 103(a) is affirmed.
We turn next to the rejection of claims 14 and 19 under 35
U.S.C. § 103(a) as being unpatentable over Iijima in view of
Takagi and further inn view of Bryant. We select claim 14 as
representative of the group. The examiner (answer, pages 17 and
18) relies upon Bryant for the placement of the antenna within
the passenger compartment of the vehicle. Appellant’s position
(brief, page 22) that Bryant is directed to cellular telephony
and is not in the same field of endeavor as the invention. It is
argued (brief, page 23) that “[m]oreover, no convincing line of
Appeal No. 2005-1817
Application No. 09/834,499
Page 24
reasoning as to why the claimed invention is obvious in light of
the teachings of the references has been presented in connection
with claim 14.”
From our review of claim 14, which depends from claim 1, we
find that the claimed antenna is coupled to the signal generator
of the interrogator circuit. Although Bryant is directed to an
antenna system for an automobile, the reference is directed to a
mobile antenna for use with cellular telephones (col. 1, lines 8-
10). From our review of Bryant, we find no suggestion for
modifying the antenna 2 of Iijima to be placed inside the
automobile passenger compartment as recited in claim 14, absent
appellant’s disclosure. In addition, although we find from the
disclosure of Iijima that the interrogator and antenna 2, 3 are
in the vehicle, we find no suggestion that the antenna 2 be
placed in the passenger compartment. Thus, we find that the
prior art would not have suggested to an artisan that the antenna
attached to the signal generator be located within the passenger
compartment. Accordingly, the rejection of claims 14 and 19
under 35 U.S.C. § 103(a) is reversed.
We turn next to claim 20. We reverse the rejection of claim
20 due to its dependency from claim 19, and the deficiencies of
Bryant.
Appeal No. 2005-1817
Application No. 09/834,499
Page 25
CONCLUSION
To summarize, the decision of the examiner to reject claims
1-11, 13 and 15-18 under 35 U.S.C. § 103(a) is affirmed. The
rejection of claims 12, 14, 19 and 20 under 35 U.S.C. § 103(a) is
reversed.
Appeal No. 2005-1817
Application No. 09/834,499
Page 26
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
SSL/kis
Appeal No. 2005-1817
Application No. 09/834,499
Page 27
Jordan M. Meschkow, Esq.
MESCHKOW & GRESHAM, P.L.C.
5727 North Seventh Street,
Suite 409
Phoenix, AZ 85018-5818