Ex Parte Jei et al

Board of Patent Appeals and Interferences

Mar 27, 2009

10777807 (B.P.A.I. Mar. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAE-GUNN JEI and SEO-YOUNG PARK
____________

Appeal 2008-5278
Application 10/777,807
Technology Center 2600
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Decided1: March 27, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-10 and 14-19 (see App. Br. 9-10, Final Rejection,

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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mailed October 4, 2006). We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

STATEMENT OF THE CASE
Appellants invented a mobile terminal circuit for transmitting radio
frequency identification (RFID) data to a RFID reader (See generally Spec.
4-6).

Claim 1, which further illustrates the invention, follows:
1. A mobile terminal circuit for transmitting radio frequency identification
(RFID) data to an RFID reader, comprising:
an antenna for communicating with the RFID reader;
a memory portion for storing the RFID data together with mobile terminal
protocol data;
a codec for encoding the RFID data into RFID codec data;
a modulator connected to the codec, for modulating the RFID codec data
into RFID modulation data;
a processor connected to the memory portion, for extracting RFID data
stored in the memory portion and delivering the extracted RFID data to the
codec;
a detector connected to the antenna and the processor, for informing the
processor of an approach of the RFID reader;
a first clock generator connected to the processor and the memory portion,
for providing operation timing to the processor and the memory portion; and
a second clock generator connected to the first clock generator, the codec,
and the modulator, for providing operation timing to the codec and the
modulator.

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The Rejections
The Examiner relies upon the following prior art references as
evidence of unpatentability:

Jenkins, IV US 6,172,518 B1 Jan. 9, 2001
Kuttruff US 2002/0080864 A1 Jun. 27 2002
Pratt US 2004/0198233 A1 Oct. 7, 2004
Twitchell Jr. US 2005/0215280 A1 Sep. 29, 2005
Ohkawa US 6,972,662 B1 Dec. 6, 2005
Appellants’ Admitted Prior Art
The following Examiner’s rejections are before us for review:
1. The Examiner rejected claims 1, 2, 5, 14, and 15 under 35 U.S.C. §
103(a) as being unpatentable over Kuttruff and Ohkawa.
2. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as being
unpatentable over Kuttruff, Ohkawa and Pratt.
3. The Examiner rejected claims 6, 7, and 16-19 under 35 U.S.C. § 103(a)
as being unpatentable over Kuttruff, Ohkawa and Twitchell Jr.
4. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Kuttruff, Ohkawa, Twitchell Jr. and Jenkins, IV.
5. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Kuttruff et al., Ohkawa., Twitchell Jr., and further in view
of Appellants’ Admitted Prior Art.
6. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Kuttruff, Ohkawa, Twitchell Jr. and Pratt.

Rather than repeat the arguments of the Appellants or the Examiner,
we refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
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Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

Appellants group the arguments according to the following: (A)
claims 1-5 and 14-15; (B) claims 6-10 and 16-19.2 Each group will be
addressed separately.
Claims 1-5, 14, and 15
Appellants state that claim 1 requires a first clock generator for
generating a system clock of the mobile terminal and a second clock
generator for generating a clock necessary for RFID operation (App. Br. 11).
Appellants indicate that neither Kutrruff, Ohkawa nor Twitchell Jr. discloses
such features however the Appellants do not expand upon the argument in
regards to claim 13 (App. Br. 11). Appellants argue that the Examiner
improperly rejects claim 14 by using the combination of Kuttruff and
Ohkawa to disclose the employment of separate first and second clocks for
the receiving and transmission portion of the RFID device (App. Br. 13,
lines 3-5).

2 Although claims 3 and 4 have been grouped by Appellants with claims 1,
2, 5 and 14-15, we nonetheless consider them separately because the
additional reference to Pratt has been applied against claims 3 and 4.
Although claims 8-10 have been grouped by Appellants with claims 6, 7 and
16-19, we likewise consider them separately because additional references
have been applied against claims 8-10.
3 Claims 1, 2, 5, 14, and 15 were rejected under 35 U.S.C. 103(a) as being
unpatentable over Kuttruff and Ohkawa, and claims 3 and 4 were rejected
under 35 U.S.C. 103(a) as being unpatentable over Kuttruff, Ohkawa et al.
and Pratt.

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It is the Examiner’s position that Ohkawa discloses a RFID device
with a first clock generator (61) and a second clock generator (62) (Ans. 16-
17).

ISSUE
1. Have the Appellants shown that the Examiner erred in finding that
Kuttruff in combination with Ohkawa disclose the limitation, “a second
clock generator connected to the first clock generator” in claim 1 and the
limitation “including a second clock generator for providing RFID operation
timing” in claim 14 in rejecting claims 1 and 14 under 35 U.S.C. § 103?

FINDING OF FACT
1. Figure 2 of Ohkawa

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Figure 2 of Ohkawa discloses an IC card circuit design having a carrier
signal generator circuit (62) which divides a frequency of the clock signal
from the demodulator clock generator (61) to a predetermined frequency.

PRINCIPLES OF LAW
"'A prima facie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the claimed subject
matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783
(Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA
1976)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Claims 1-5, 14, and 15
Claims 1, 2, 5, 14, and 15
The Appellants argue that the carrier signal generator (62) of Ohkawa
is not an independent clock as required by the claims because it divides the
frequency of clock (FF1) and does not have an independent frequency other
than some multiple of the clock (Reply Br. 4). This would make the carrier
signal generator a slave of the clock and not a second clock generator as
required by the claims (Reply Br. 4).
The Appellants also argue that the Ohkawa reference makes no
mention of a second clock generator to provide RFID operation timing using
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a system clock output from a first clock generator (App. Br. 13-14). It is the
Examiner’s position that although Ohkawa is silent regarding the connection
to an encoder, Ohkawa teaches employing a first and second clock for the
receiver and transmission part of the RFID device (Ans. 16-17). Therefore
the combination of Kuttruff and Ohkawa would render the limitation
unpatentable because Kuttruff has an encoder and modulator in the
transmission path in the RFID device (Ans. 16-17).
In addressing the Appellants’ arguments about the characterization of
Ohkawa’s carrier signal generator as a second clock generator, the Examiner
does not provide any rationale or support for his characterization (Ans. 17).
The Examiner simply restates his position by referring to the signal carrier
generator as a second clock generator (Ans. 17). Based on the record before
us, we agree with the Appellants that Ohkawa fails to disclose a second
clock generator. Further, since Ohkawa does not disclose a second clock
generator, the Appellants have shown that the combination of Kuttruff and
Ohkawa fails to disclose the employment of separate first and second clocks
for the receiving and transmission portions of the RFID device as required
by claims 1 and 14.
For the above reasons, Appellants have shown that the Examiner erred
in rejecting claims 1, 2, 5, 14, and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Kuttruff and Ohkawa.
Claims 3 and 4
The obviousness rejection of claims 3 and 4 is likewise reversed
because of their dependency from claim 1, and because Pratt does not
address the deficiencies of Kuttruff and Ohkawa.

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Claims 6-10 and 16-19
Claims 6-10
Appellants argue that claims 6 and 7 include similar recitations as
those disclosed in claim 1 such as a first clock generator and a second clock
generator required for RFID operation (App. Br. 15-17). Appellants
maintain for reasons stated previously that the combination of Kuttruff,
Ohkawa and Twitchell Jr. references do not address the first and second
clocks limitations of claim 14 (App. Br. 15).4

ISSUE
2. Have the Appellants shown that the Examiner erred in finding the
combination of Kuttruff, Ohkawa and Twitchell Jr. discloses a second clock
generator connected to the first clock generator for providing a second
operation timing to the circuit in rejecting claims 6 and 7 under 35 U.S.C. §
103?
ANALYSIS
As we previously determined based upon the record before us,
Ohkawa does not disclose a second clock generator. Twitchell Jr. does not
address the deficiencies of Kuttruff and Ohkawa (Ans. 17). Both claims 6
and 7 have limitations requiring first and second clock generators. Thus,
Appellants have shown that the Examiner erred in rejecting claims 6 - 10
under 35 U.S.C. § 103(a) as being unpatentable over Kuttruff, Ohkawa and
Twitchell Jr.

4 Claims 1-2, 5, 14-15 were rejected under 35 U.S.C. 103(a) as being
unpatentable over Kuttruff and Ohkawa.
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Claims 16-19
Appellants argue that Twitchell Jr. does not qualify as prior art
because it was filed as a PCT application and has a 35 U.S.C. § 371 date and
35 U.S.C. § 102(e) date of November 12, 2004 which is after February 12,
2004, the filing date of the pending application (App. Br. 16). The Examiner
indicates that Twitchell Jr. has a priority date of May 16, 2002 which
predates the Appellants’ effective filing date of October 7, 2003 (Ans. 17).
Twitchell Jr. was cited to teach the use of a microprocessor to control
power to a module (Ans. 17). The Examiner indicates that Kuttruff
discloses a power block comprising a rectifier and a voltage regulator for
supplying power to the RFID module illustrated in figure 2 (Ans. 17). The
Examiner further indicates that Ohkawa discloses a power block connected
to the first clock generator, the processor and the RFID module (Ans. 17).
Appellants argue that the obviousness rejection for claim 16 is
improper for reasons given in regard to claim 6 although there are some
differences between the two claims (App. Br. 17). The Appellants provide
the example that claim 6 recites “a second clock generator connected to the
first clock generator" whereas Claim 16 does not. (App. Br. 17). Appellants
do not indicate what claim 16 discloses that claim 6 does not, thus choosing
to focus on claim 6 instead of claim 16.
Appellants further state that the rejection of claim 16 is improper
because the Examiner grouped the rejection for claim 16 along with claim 6
without addressing the individual limitations of claim 16 (App. Br. 17). The
Examiner indicates that the claims have been addressed individually (Ans.
10, 11 and 18).
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Appellants also argue that the obviousness rejection of claim 18 is
improper for reasons given in regard to claim 6 although there are some
differences between the two claims (App. Br. 18). The Appellants provide
the example that claim 18 recites “a processor connected to the power block,
the first clock generator, the memory portion, and the RFID module, for
enabling an operation of the power block, extracting the RFID data, and
delivering the extracted RFID data to the RFID module" whereas Claim 6
does not. (App. Br. 18). Appellants state the rejection of claim 18 is
improper because the Examiner grouped the rejection for claim 18 along
with claim 6 without addressing the individual limitations of claim 18 (App.
Br. 18). The examiner indicates that the claims have been addressed
individually (Ans. 11, 12 and 18).

ISSUES
3. Does Twitchell Jr. qualify as prior art?
4. Have the Appellants shown that the Examiner erred in finding that
Kuttruff, Ohkawa and Twitchell Jr. collectively teach the invention claimed
in claim 16 under 35 U.S.C. § 103 by only addressing the limitations of
claim 6?
5. Have the Appellants shown that the Examiner erred in finding that
Kuttruff, Ohkawa and Twitchell Jr. collectively teach the invention claimed
in claim 18 under 35 U.S.C. § 103 by only addressing the limitations of
claim 6?

FINDING OF FACT
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2. Twitchell Jr. is the 35 U.S.C. 371 (c) application of PCT/US03/14987
filed May 14, 2003 which claims benefit of application 60/380,195 filed
May 14, 2002 and application 60/380,670 filed May 16, 2002.

ANALYSIS
Appellants argue that Twitchell Jr. does not qualify as prior art
because it was filed as a PCT application and has a 35 U.S.C. § 371 date and
35 U.S.C. § 102(e) date of November 12, 2004 which is after February 12,
2004 filing date of the pending application (App. Br. 16). This argument is
not persuasive because the Appellants fail to supply a rationale as to why
Twitchell Jr.’s priority date is not the date of the provisional applications as
indicated by the Examiner (FF2). Twitchell Jr. qualifies as prior art.
Appellants argue that the Examiner has not met his burden of
establishing a prima facie case of obviousness in respect to claim 16 because
the Examiner rejects claim 6 without addressing the merits of claim 16
separately (App. Br. 17). The Examiner addresses claim 16 separately, thus,
establishing a prima facie case of obviousness (Ans. 9-10). The Appellants
do not present arguments addressing the merits of the rejection of claim 16
by the combination of Kuttruff, Ohkawa and Twitchell Jr. Accordingly, we
will sustain the rejection of claim 16.
Appellants argue that the Examiner has not met his burden of
establishing a prima facie case of obviousness in respect to claim 18 because
the Examiner rejects claim 6 without addressing the merits of claim 18
separately (App. Br. 18). The Examiner addresses claim 18 separately thus
establishing a prima facie case of obviousness (Ans. 11-12). The Appellants
do not present arguments addressing the merits of the rejection of claim 18
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by the combination of Kuttruff, Ohkawa and Twitchell Jr. Accordingly, we
will sustain the rejection of claim 18.
The Appellants chose not to argue the merits of the rejection of
claims 17 and 19 separate from their arguments provided for claims 16 and
18 respectively. For the above reasons, the Appellants have not shown that
the Examiner erred in rejecting claims 17 and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Kuttruff, Ohkawa and Twitchell Jr.

CONCLUSIONS OF LAW
1. Appellants have shown that the Examiner erred in finding that Kuttruff in
combination with Ohkawa disclose the limitation, “a second clock generator
connected to the first clock generator” in claim 1 and the limitation
“including a second clock generator for providing RFID operation timing” in
claim 14 in rejecting claims 1 and 14 under 35 U.S.C. § 103.
2. Appellants have shown that the Examiner erred in finding the
combination of Kuttruff, Ohkawa and Twitchell Jr. discloses a second clock
generator connected to the first clock generator for providing a second
operation timing to the circuit in rejecting claims 6 and 7 under 35 U.S.C. §
103.
3. Appellants have not shown that the Examiner erred in relying on
Twitchell Jr. as prior art.
4. Appellants have not shown that the Examiner erred in finding that
Kuttruff, Ohkawa and Twitchell Jr. collectively teach the invention claimed
in claim 16 under 35 U.S.C. § 103 by only addressing the limitations of
claim 6.
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5. Appellants have not shown that the Examiner erred in finding that
Kuttruff, Ohkawa and Twitchell Jr. collectively teach the invention claimed
in claim 18 under 35 U.S.C. § 103 by only addressing the limitations of
claim 6.
DECISION
The decision of the Examiner to reject claims 16-19 is affirmed, and
the decision of the Examiner to reject claims 1-10, 14 and 15 is reversed.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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