Ex parte Gray

Board of Patent Appeals and Interferences

Sep 10, 1998

08141412 (B.P.A.I. Sep. 10, 1998)

Application for patent filed October 22, 1993. According to1
appellants, this application is a continuation of application 07/996,515,
filed December 16, 1992, which is a continuation of application 07/691,680,
filed April 25, 1991, which is a continuation of application 07/627,544, filed
December 10, 1990, which is a continuation of application 07/262,799, filed
October 26, 1988, which is a continuation of application 06/848,287, filed
April 4, 1986 (now U.S. patent no. 4,782,341), which is a continuation of
application 06/510,753, filed July 1, 1983 (now U.S. patent no. 4,652,877).
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 49
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BRUCE E. GRAY
_____________
Appeal No. 95-0005
Application 08/141,4121
______________
ON BRIEF
_______________
Before KRASS, FLEMING and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 44-50. All other claims have
been canceled. No claim has been allowed.
Appeal No. 95-0005
Application 08/141,412
2
References relied on by the Examiner
Tolson 3,337,992 Aug. 29, 1967
White 4,132,981 Jan. 02, 1979
Lapsley (UK) 1,253,826 Nov. 17, 1971
(United Kingdom)
The Rejection on Appeal
Claims 44-50 stand finally rejected under 35 U.S.C. § 103
as being unpatentable over Lapsley, Tolson, and White.
The Invention
The invention is directed to a method and apparatus for
determining the quantity of utility consumed during a given
time period by a customer. Claims 44, 47 and 50 are the only
independent claims, of which claim 44 is drawn to a method and
claims 47 and 50 are drawn to an apparatus. All of the claims
specifically require a single inductive coupling for bidirec-
tional communication of signals and data between an
interrogator and a meter transponder. While method claim 44
does not recite the words "single inductive coupling," it
explicitly recites a primary winding and a secondary winding,
and according to claim 44, the signal from the interrogator to
the transponder is induced from the primary winding to the
Appeal No. 95-0005
Application 08/141,412
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secondary winding, and
the signal from the transponder to the interrogator is induced
from that same secondary winding in the transponder to the
primary winding in the interrogator. All of the claims
require that a clock signal is transmitted from the
interrogator to the transponder, and that utility consumption
data is determined in the transponder and modulated over the
transmitted clock signal for transmission back to the
interrogator. Claims 47 and 50 include various means-plus-
function clauses which must be interpreted in accordance with
35 U.S.C. § 112, sixth paragraph.
Representative claims 44 and 47 are reproduced below:
44. A method for determining the quantity of utility
consumed during a given time period by a utility
customer, comprising:
(a) providing a meter for making a measurement
of the amount of utility passing therethrough;
(b) providing a register adapted to supply
electrical indications of said measurement;
(c) providing a meter transponder coupled to
said register for determining electrical
manifestations of the measurement from said
indications obtained from said register, said
Appeal No. 95-0005
Application 08/141,412
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meter transponder being electrically connected
to a secondary winding;
(d) allowing passage of the utility through the
meter to provide the measurement;
(e) determining the electrical manifestations of
the measurement in the meter transponder;
(f) providing a portable interrogator having a
primary winding;
(g) bringing the portable interrogator to a
position in relation to the meter transponder
whereby the secondary winding and the primary
winding are disposed such that a signal in
either would induce the same signal in the other
by inductive coupling;
(h) actuating the portable interrogator and
transmitting an electrical signal having a clock
pulse component, from the portable interrogator
to the meter transponder, by placing the
electrical signal on the primary winding whereby
it is induced in the secondary winding, thereby
activating the meter transponder and causing the
meter transponder to obtain said electrical
manifestations, and modulate said electrical
signals with respect to said clock pulse
component, thereby generating a signal represen-
tative of the electrical manifestations of the
measurement available to the interrogator and
placing the signal on the secondary winding; and
(i) determining from the signal the measurement
of utility represented thereby.
47. A utility data gathering system comprising:
an interrogator comprising;
Appeal No. 95-0005
Application 08/141,412
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means for transmitting an interrogation
signal across a single inductive coupling
permitting bidirectional communication
between a meter transponder and the
interrogator, said interrogation signal
including a clock signal,
means for receiving signals representative
of utility consumption data,
a meter transponder comprising;
register means coupled to a utility meter,
for providing consumption signals
representing utility consumption data,
signal processing means comprising;
means for accessing said register means to
obtain said consumption signals, means for
modulating said consumption signals in
accordance with said clock signal to
generate consumption signals representing
said utility consumption data, means for
transmitting said consumption signals to
said interrogator across said single
inductive coupling,
whereby said interrogator means for
receiving further includes means for
demodulating said consumption signals to
determine said utility consumption data.
Opinion
We do not sustain the rejection of claims 44-50 as being
unpatentable over Lapsley, Tolson, and White, as is stated and
explained by the examiner on this record. This reversal,
Appeal No. 95-0005
Application 08/141,412
6
however, should not be construed as an indication that the
claims are patentable over other combinations of prior art or
even the same references in a rejection based on different
rationale.
Claim 47 recites several limitations in means-plus-
function language, including (1) means for transmitting an
interrogation
signal across a single inductive coupling permitting bidirec-
tional communication between a meter transponder and an inter-
rogator, (2) register means coupled to a utility meter, for
providing consumption signals representing utility consumption
data, (3) means for accessing said register means to obtain
said consumption signals, (4) means for modulating said
consumption signals in accordance with said clock signal [from
the inter-rogator], and (5) means for transmitting said
consumption signals to said interrogator across said single
inductive coupling. The various means (3), (4), and (5) are
defined as being within a meter transponder. Similarly, claim
50 recites several means-plus-function limitations, including
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Application 08/141,412
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a register means, an identification mean, and means for
repeatedly accessing said register means and said
identification means, means for modulating the accessed
signals, means for transmitting the modulated signals back to
the interrogator through a single inductive coupling. The
access means, modulating means, and transmitting means are
contained in a meter transponder separate from the
interrogator which communicates with the transponder through
the single inductive coupling. According to 35 U.S.C.
§ 112, sixth paragraph, such means-plus-function features must
be construed to cover the corresponding structure, materials,
or acts, disclosed in the appellant’s specification, and their
equivalents, for performing the respective functions. In re
Donaldson Co., Inc., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848
(Fed. Cir. 1994) (in banc).
The examiner has not made any meaningful analysis under
35 U.S.C. § 112, sixth paragraph, in comparing the appellant’s
claimed invention with the applied prior art. Lapsley
discloses a system having individual conductive paths from one
Appeal No. 95-0005
Application 08/141,412
8
end to another whose connections are completed only if the
associated measuring index wheel is in a certain corresponding
position. It does not appear that such a system is similar to
the appellant’s disclosed invention, wherein a transponder
first determines the measurements, and then transmits the
determined measurements back to an interrogator through a
single inductive coupling. The examiner has failed to analyze
each claimed "means" on its own merit based on the appellant’s
disclosed embodiments, and also overly generalized the
appellant’s claimed invention. For instance, the examiner
concluded that there is no invention in
substituting wireless means for a wired path (answer at page
5). However, he overlooked that the information being
transmitted should be the same and further that the device
which does the transmission should be the same. Each claimed
means must be properly and individually accounted for. That,
the examiner has failed to do. As for the reliance on Tolson,
the appellant is correct that it discloses only wireless
communication of command signals in one direction. It would
Appeal No. 95-0005
Application 08/141,412
9
not have reasonably suggested a single inductive coupling for
communicating between the interrogator and the transponder.
In that regard, we have found that White (column 7, lines 23-
28) discloses that inductive coupling may be used to send
information back and forth between an interrogator and a
memory system which stores utility measurement data. But the
examiner did not rely on White for that purpose, and White
does not disclose that the interrogator sends a clock signal
to a transponder and that the transponder modulates the
measurement data over the clock signal for transmission back
to the interrogator through the same single inductive
coupling. The "single inductive coupling" claimed by the
appellant is more specific than the general inductive coupling
teaching of White.
In Lapsley, there is a group of signal input lines 35 and
a group of signal output lines 31. Depending on the state of
the measurement index wheels, different electrical contacts
are made in the signal path and thus different output lines
will carry a corresponding output. It is not seen how such a
system includes a transponder which first "determines" the
Appeal No. 95-0005
Application 08/141,412
10
measurements from the meter and then "transmits" them to an
interrogator. It is also not seen how any separate
transmission of signals is initiated other than the original
application of the input signal.
As for method claim 44, much of our discussions above
concerning the over generalization of the appellant’s claimed
invention is applicable. For example, claim 44 requires that
the same pair of primary and secondary windings is used for
bidirectional communication between the interrogator and the
transponder. Claim 44 requires that the transponder first
"determine" the utility measurement data, modulate the
determined data over a clock signal sent by the interrogator,
and placing the modulated signal back onto the secondary
winding for inductive coupling to the primary winding in the
interrogator. These features of the appellant’s claimed
invention have not been
adequately specifically account for. We agree with the
appellant that it is unreasonable to regard Lapsley as
disclosing or suggesting a transponder having the signal
determining and processing capabilities of the appellant’s
claimed transponder. It is not enough that in Lapsley’s
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Application 08/141,412
11
system, the measurements are ultimately somehow determined
somewhere. The determination must be done in a transponder
which in turn communicates the results to an interrogator.
Also, the prior art must reasonably suggest the specific
manner of communication claimed by the appellant.
Responding to the appellant’s argument that the claimed
invention is not mechanical as is shown in Lapsley, the
examiner states (answer at 7) that to replace mechanical
registers and scan means with electronic chips would not give
unexpected results. However, The mere fact that the prior art
may be modified in the manner suggested by the examiner does
not make the modification obvious unless the prior art
suggested the desirability of the modification. In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
Moreover, the examiner may not properly account for the
myriad of specific differences between the claimed invention
and the disclosed
system of Lapsley by simply noting that one system is
mechanical and the other electronic. That is over
generalizing the claimed invention. Even if we assume that an
electronic version of Lapsley’s system would be desirable, the
Appeal No. 95-0005
Application 08/141,412
12
examiner has failed to explain why the particular electronic
system claimed by the appellant would have been obvious.
The examiner has failed to set forth a reasonable case of
prima facie obviousness. The examiner’s explanations are
largely incomplete and do not focus on the specifics of what
has been claimed. Also, the requirements of 35 U.S.C. § 112,
sixth paragraph, have evidently been ignored. For these
reasons, we do not sustain the rejection of claims 44-50 under
35 U.S.C. § 103 as being unpatentable over Lapsley, Tolson,
and White.
Conclusion
The rejection of claims 44-50 under 35 U.S.C. § 103 as
being unpatentable over Lapsley, Tolson, and White is
reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
Appeal No. 95-0005
Application 08/141,412
13
) INTERFERENCES
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 95-0005
Application 08/141,412
14
Anthony M. Lorusso
Lorusso & Loud
440 Commercial Street
Boston, MA 02109