Ex Parte Howell

Patent Trial and Appeal Board

Mar 8, 2016

12856587 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/856,587 08/14/2010 Daniel R. Howell
29468 7590 03/10/2016
C RICHARD MARTIN
MARTIN &MARTIN, ATTORNEYS AT LAW, PC
POBOX29
BOONVILLE, IN 47601
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.
CHR0:007CIP 2433
EXAMINER
MAI, THIENT
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
03/10/2016 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):
rick@martinlawyers.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Ex parte DANIEL R. HOWELL 1
Appeal2014-002349
Application 12/856,587
Technology Center 2800
Before TERRY J. OWENS, MARK NAGUMO, and JAMES C. HOUSEL,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Daniel R. Howell ("Howell") timely appeals under 35 U.S.C. § 134(a)
from the Final Rejection2 of claims 1-20, which are all of the pending
claims. We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The real party in interest is listed as Chronotrack Systems. Inc. (Appeal
Brief, filed 14 June 2013 ("Br."), 2.)
2 Office action mailed 17 December 2012 ("Final Rejection"; cited as
"FR").
Appeal2014-002349
Application 12/856,587
A. Introduction3
OPINION
The subject matter on appeal relates to a race-bib fitted with a
plurality of radio frequency identification ("RFID") circuits, also referred to
as RFID timing tags. (Spec. 4, 11. 10-15.) The RFID timing tags are said to
comprise a dipole antenna that can transmit a unique RFID chip number to
sensors at least at the start and finish lines of a race so that the times of
individual runners may be determined. (Id. at 1, last para.) Due in large part
to the disputed limitations discussed infra, the system is said to be over
99. 8% accurate, not to suffer from interference, and to be so cheap that the
bibs may be discarded after use. (Id. at 2.)
Claim 1 is representative and reads:
A disposable race bib timing device for attachment to a race
participant's garments, comprising:
a thin, flexible planar sheet member having a front surface
for displaying information, and a rear surface;
a plurality of RFID timing tags permanently affixed to said
thin, flexible planar sheet member, each one of said RFID
timing tags having a rear surface engaging one of either the
front surface or rear surface of the thin flexible planar sheet
member,
said plurality of RFID timing tags being spaced a
distance apart from one another and positioned in
parallel in relation to one another; and
a thermal and moisture resistant layer of material
positioned between each one of said plurality of RFID
timing tags and said participant's garments.
(Claims App., Br. 8; some indentation, paragraphing, and emphasis added.)
3 Application 12/856,587, Race bib timing device, filed 14 August 2010.
We refer to the '"587 Specification," which we cite as "Spec."
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Appeal2014-002349
Application 12/856,587
The Examiner maintains the following ground of rejection4 :
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Lamp, 5 Claver, 6 and Kia. 7
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Howell presents arguments for patentability based solely on certain
limitations in claim 1. Accordingly, all claims stand or fall together.
37 C.F.R. § 41.37(c)(l)(iv) (2012).
Briefly, the Examiner finds that Lamp describes a race bib having a
single RFID tag. (FR 2, sentence bridging 6-7; Ans. 4, § 2, and 9, 11. 6-8,
citing Lamp, Fig. 12.) The Examiner also finds that Claver, in Fig. 1 and
paragraphs [0017]-[0018], describes a race bib with an RFID tag embedded
in a layer, such that the tag may be visible. The Examiner finds further that
Kia teaches race bibs having a plurality of RFID tags. (FR 2; Ans. 4.) The
Examiner finds that Kia is "silent to parallel," but reasons that "it has been
well recognized that rearrangement of parts is an obvious expedient." (FR,
para. bridging 2-3; Ans 5, 11. 2-3; both citing In re Japikse, 181F2d1019
4 Examiner's Answer mailed 29 August 2013 ("Ans.").
5 Shauna L. Lamp, RFID tag assembly and method of managing a race,
U.S. Patent Application Publication 2009/0309735 Al (17 December 2009),
based on an application filed 11 June 2008.
6 Bruce Claver, Safety contestant progress registration, U.S. Patent
Application Publication 2010/0227659 Al (9 September 2010), based on an
application filed 23 February 2010.
7 Arash Kia, UHF timing system for participatory athletic events, U.S.
Patent Application Publication 2009/0184806 Al (23 July 2009).
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Appeal2014-002349
Application 12/856,587
(CCPA 1950).) The Examiner explains further that "the RFID tags are
adhered permanently on the perforated bib (see Kia, Figs. 6-7, 3) and
removable when desired)." (FR 3, 11. 3-4; Ans. 5, 11. 3-5.) The Examiner
concludes that the claimed bibs with plural RFID timing tags permanently
affixed and positioned in parallel, including all other limitations recited in
the claims, 8 would have been obvious.
Howell urges that the Examiner erred in finding that Kia teaches a
plurality of RFID timing tags permanently affixed to the bib, and that Kia
actually teaches away from permanent affixation. (Br. 3.)
Initially, we find that the term "permanent" and its cognates are not to
be found in the '587 Specification. Howell directs us to page 8, lines 1-3,
for support of this subject matter. (Br. 2, 11. 16-18.) These lines read, in
relevant part, "[a ]ccording to the present invention, two or more timing
tags l8a[9J, 18b are associated with the race bib 12 for obtaining timing
information about the participant when used in conjunction with a race
timing system and readers." (Spec. 8, 11. 1-3.) We are unable to discern in
this passage any definition of the term "permanently affixed" that excludes
the Examiner's interpretation, which we understand to mean the tags do not
fall off during use in a race, absent deliberate action to remove them.
8 The Examiner makes additional findings regarding other limitations, but
because Howell does not dispute these findings or the Examiner's
conclusions that it would have been obvious to incorporate these feature into
a race bib, we need not review those findings here.
9 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Appeal2014-002349
Application 12/856,587
Moreover, as the Examiner points out (Ans., para. bridging 7-8), Kia
explains that the multiple tags shown on an "event participant" in Figure 4,
are "[p]referably ... attached to the bib 410 when the participant 400 picks
up the bib 410 . .. Prior to the start of the event, the participant 400 may
detach some of the tags and reattach them to [various articles of clothing or
equipment]." (Kia 4 [0054]; emphasis added.)
{Kia Fig. 4 shows a runner wearing a race bib 410 with an RFID tag 420,
and several additional RFID tags on his shoes, ankle, wrist, and head}
The Examiner also points out (Ans., para. bridging 7-8), that Kia describes
pilot testing in which RFID tags attached to the racing bibs were read by
antennas mounted on poles (about 50% ), as well as RFID tags attached to
the runner's shoes that were read by antennas laid down on the road (about
60%). (Id. at 6 [0072]-7 [0075].)
Although Kia appears to prefer detachable RFID tags, there is no
doubt that Kia does describe plural RFID tags attached to the race bib.
Moreover, Kia recognized that racers did not always detach the tags from the
bib and attach those tags to their shoes; and Kia also demonstrated that the
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Appeal2014-002349
Application 12/856,587
RFID tags attached to the bibs could be read by antennas mounted on poles.
In light of these teachings, the preference for detachable tags does not
amount to a teaching that "permanently affixed" tags should not be used
because they would not work. Para-Ordnance Mfg., Inc. v. SGS Importers
Int'!, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (to teach away, a reference
must state that it "should not" or "cannot" be used in combinations with the
other references.) Accordingly, we are not persuaded of harmful error in
this aspect of the appealed rejection. 10
Howell urges further that the applied references do not teach or
suggest that the timing tags be positioned in parallel relation to one another.
(Br. 5.)
This argument is not persuasive in light of Kia's disclosure that the
race participant had detached four tags 420 from bib 410 and affixed them to
her shoes, ankle, wrist, and head. Although we do not understand the
drawing to be to scale, we have no difficulty perce1vmg that virtually any
orderly distribution of five rectangular tags on the bib would have resulted in
two or more tags being "positioned in parallel in relation to one another," as
required by representative claim 1. Our conclusion is strengthened by Kia
Figures 6 and 7, which show diagrams of manufacturing lines for bibs with
attached RFID strips. A straight-forward way to attach more RFID strips to
10 It has not escaped our notice that Claver specifically teaches that the RFID
tag is "permanently embedded into or onto a racing bib." (Claver, abstract,
and 1 [0008].) Thus, even if a more limiting definition of "permanently
affixed" could be demonstrated for claim 1, the evidence of record supports
the obviousness of a permanent fixation of RFID tags onto a racing bib.
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Appeal2014-002349
Application 12/856,587
the bibs would be to arrange the additional strips in parallel to the first strip,
displaced by an appropriate distance.
While we do not endorse the uncritical citation of case law as a
reasoned explanation of obviousness, we observe that obviousness under
35 U.S.C. § 103 does not require that the reasons for arriving at a specified
configuration of elements be the same as the reasons taught by the applicant,
provided the proposed reasons would have been apparent to persons skilled
in the art no later than the date of invention. We have no difficulty
determining that the present case is one in which, as the Supreme Court has
explained, "[i]f a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007).
Howell has not raised any other substantive arguments for
patentability.
C. Order
It is ORDERED that the rejection of claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
7