Ex Parte Martins et al

Patent Trial and Appeal Board

Sep 14, 2016

12546498 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/546,498 08/24/2009 Carlos Martins
42624 7590 09/14/2016
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
8300 Greensboro Dr, Suite 500
McLean, VA 22102
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.
2540-1187 3502
EXAMINER
HENRY, MARIEGEORGES A
ART UNIT PAPER NUMBER
2455
MAILDATE DELIVERY MODE
09/14/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARLOS MAR TINS, NEI CHIARADIA, and
ARNALDO ZIMMERMANN
Appeal2015-003095
Application 12/546,498
Technology Center 2400
Before ST. JOHN COURTENAY III, NATHAN A. ENGELS, and
MATTHEW J. McNEILL, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 11and13-15. Claims 1-10, 12, and 16-20 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We Affirm.
Invention
The disclosed and claimed invention on appeal "relates to information
technology components in a data center, and more particularly to automatic
Appeal2015-003095
Application 12/546,498
location tracking of information technology components, such as servers,
routers and switches, in a data center." (Spec. iJ 2).
Representative Claim 11
11. A data processing system for automatically tracking
locations of IT components in a data center, comprising:
a rack comprising a plurality of slots configured to store
an IT component comprising an RFID tag uniquely identifying
the IT component;
[L] each slot of the plurality of slots configured to store an
IT component, comprising:
an antenna configured to receive a signal from the RFID
tag indicating an identification of the IT component; and
an RFID reader configured to receive the signal from the
antenna, process the signal, and send the identification to a
module;
the module configured to send the identification to a
database, wherein the module sends the identification to a master
module configured to receive identifications from a plurality of
modules; and
the database configured to store identification and location
information of IT components in the data center, and to update
upon receipt of the identification from the module.
(Emphasis and bracketed lettering added to highlight contested limitation L.)
Rejection
Claims 11and13-15 are rejected under 35 U.S.C. §102(b) as being
anticipated by Tourrilhes et al. (US 2007 /0222597 Al; pub. Sep. 27, 2007).
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Grouping of Claims
Based on Appellants' arguments, we decide the appeal of all rejected
claims on the basis of representative independent claim 11. See 3 7 C.F .R.
§ 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. For the reasons discussed below, and regarding contested
limitation L of claim 11, we disagree with Appellants' arguments regarding
at least the specific embodiment described in Tourrilhes at paragraph 14, and
depicted in Figure 2. (See Final Act. 4; Ans. 4). We highlight and address
specific findings and arguments for emphasis in our analysis below.
Rejection of Independent Claim 11under35 U.S.C. § 102(b)
Contentions
Appellants contest the anticipation rejection over Tourrilhes by
focusing on limitation L:
the claim requires multiple slots ("each slot of the plurality of
slots") and each of the multiple slots must have both an antenna
and an RFID reader for each slot. Paragraphs 15 and 55 are
explicit that this is not the case in Tourrilhes et al.:
... a reader antenna positioned relative to each slot in the
rack, instead of using a reader per slot, to read the RFID
tags .... Multiple antennas in the RFID reader array 113
may be connected to a single reader. . . 117 represents an
antenna per slot. .. (Paragraph 15; emphasis added).
Paragraph 55 further makes it clear that there is either one
antenna per slot or one reader per slot, but not both.
" ... the number of slots in a rack, which corresponds to the
number of RFID antennas in the RFID reader array 113
when one antenna is provided per slot or the number of
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RFID readers when one reader is provided per slot.
(Paragraph 55;emphasis added).
The embodiment with a reader per slot is disclosed in
paragraph 14 of Tourrilhes et al., the embodiment with an
antenna per slot is disclosed in paragraph 15. There is no
disclosure for both an antenna per slot and a reader per slot for
multiple slots in Tourrilhes et al., and any interpretation to the
contrary runs counter to the clear written disclosure of the
Tourrilhes et al.
(App. Br. 5, emphasis added).
Regarding paragraphs 14, 15, and 17 ofTourrilhes, the Examiner
disagrees with Appellants, and finds:
One of skill in the art understands that a reader energizes
a RFID tag by using an antenna. It is clearly stating that each
reader is energizing a corresponding tag. Therefore in this
embodiment, each reader would have an antenna. This is
exemplified by Fig. 2 showing each reader giving off a wave
signal. There is no suggestion in this paragraph of not having an
antenna on each slot, as implied by Appellant[ s].
Paragraph 15 is just indicating that as an alternative
embodiment, one could keep all the antennas there but instead
have less readers. Overall, Paragraph 17 makes it distinctly clear
that the number of readers and antennas per slot is a design
choice. Specifically, it states "the number of readers or the
number of reader antennas is not necessarily equivalent to the
number of slots in a rack. There may be more or less readers or
reader antennas than number of slots." This clearly means one
can have a design where the number of readers and antennas is
equivalent to the number of slots. Therefore, Tourrilhes'
reference feature meets the claim limitation.
(Ans. 4-5, emphasis added).
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Issue: Under 35 U.S.C. § 102(b), did the Examiner err in finding
Tourrilhes expressly or inherently discloses contested limitation L:
[L] each slot of the plurality of slots configured to store an IT
component, comprising:
an antenna configured to receive a signal from the RFID
tag indicating an identification of the IT component; and
an RFID reader configured to receive the signal from the
antenna, process the signal, and send the identification to a
module[,]
within the meaning of claim 11? 1 (Emphasis added).
Turning to the evidence, we reproduce paragraph 14 of Tourrilhes:
[0014] In one embodiment, the RFID reader array 113
includes a reader positioned relative to each slot in the rack 110
to read the RFID tags l 12a-x for each asset 11 la-x. For example,
each reader energizes a corresponding RFID tag l l 2a-x
mounted to an asset 111 a-x in a slot in the rack 11 On. If the
RFID tag, and thus the asset, is present, the RFID tag in that slot
transmits its asset ID to the RFID reader in the RFID reader array
113 and is sent to the rack sensor controller 114. In this
embodiment, 117 represents a reader per slot. (Emphasis
added).
We find paragraph 14 of Tourrilhes describes an embodiment with
one RFID reader per slot in the rack: "In this embodiment, 117 represents a
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). See, e.g., Spec. ,-i3 l ("The foregoing
description of various embodiments provides illustration and description, but
is not intended to be exhaustive or to limit the invention to the precise form
disclosed.").
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reader per slot." See also Figure 2. 2 (We further discuss the embodiment
described in paragraph 14, infra).
In contrast, paragraph 15 of Tourrilhes describes an alternative
embodiment having "[m]ultiple antennas in the RFID reader array 113 [that]
may be connected to a single [RFID] reader ... One RFID reader 113 array
may be provided for multiple antennas, thus saving costs on readers. In this
embodiment, 117 represents an antenna per slot." We agree with Appellants
the embodiment described in paragraph 15 of Tourrilhes (i.e., describing
multiple antennas, one per slot, coupled to a single RFID reader) does not
anticipate contested limitation L of claim 11. 3
Regarding the Examiner's additional citation (Ans. 4-5) to paragraph
17 of Tourrilhes, we note "design choices" are insufficient to support an
anticipation rejection. 4 Therefore, to the extent the Examiner's has relied
2 See Tourrilhes (,-i 4)("FIG. 2 shows an example of at least a portion of
message that may be sent by a rack sensor controller and other components
of the system shown in FIG. 1, according to an embodiment;").
3 Paragraph 15 of Tourrilhes describes additional arrangements:
In other embodiments, an antenna is not provided per slot.
Instead, a single antenna is operable to read tags for assets in
multiple slots. More than one antenna may be used, but the
number of antennas is less than the number of slots. Also, a single
reader may be coupled to multiple antennas such that a reader per
slot is not required.
4 .A claimed modification to the prior art may be obvious if the claimed
structure performs the same function as in the prior art and lt presents no
novel or unexpected result over the prior art. See In re Kuhle, 526 F.2d 553,
555 (CCP A 1975) (use of claimed feature solves no stated problem and
presents no unexpected resuH and "\vouki be an obvious matter of design
choice within the skrn of the art"). However, when the clahned structure
performs differently from the prior art, a finding of obvious design choice is
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on paragraph 17 of Tourrilhes as evidencing various "design choices," such
evidence is misplaced under §102. (Ans. 4-5). 5
Instead, we find the dispositive issue in this appeal turns on whether
the Examiner's finding regarding the particular embodiment described in
Tourrilhes, at paragraph 14, is correct- that each RFID reader would
necessarily have an antenna: "One of skill in the art understands that a
reader energizes a RFID tag by using an antenna. It is clearly stating that
each reader is energizing a corresponding tag. There/ ore in this
embodiment, each reader would have an antenna." (Ans. 4, emphasis
added).
In the Reply Brief (3), Appellants respond to the Examiner's finding
of inherent anticipation: "There is no actual disclosure that there is an
antenna in the reference. If it is not actually shown, it must be inherent, i.e.,
necessary and required with no other possible way to do it." (citing
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325 at 1332 (Fed.
precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious
design choice precluded when claimed structure and the function it performs
are difforent frorn the prior art). Because the issue of obviousness is not
before us on appeal, \Ve do not reach, and express no opinion regarding the
purported "design choices" described by Tourrilhes (,-i 17), as found by the
Examiner. (See Ans. 4-5).
5 Paragraph 17 of Tourrilhes describes other arrangements, which the
Examiner finds are "design choices." (Ans. 4-5):
[0017] In another embodiment, there is 1-s readers for 1-n slots
in a rack. In this embodiment, one or more readers may be
provided for a rack, but the number of readers or the number of
reader antennas is not necessarily equivalent to the number of
slots in a rack. There may be more or less readers or reader
antennas than number of slots.
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Cir. 2010).
Regarding the issue of inherency, our reviewing court guides: "a
prima facie case of anticipation [may be] based on inherency." In re King,
801 F.2d 1324, 1327 (Fed. Cir. 1986). Once a prima facie case of
anticipation has been established, the burden shifts to the Appellants to
prove that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255
( CCP A 1977) ("Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product."); see also In re Spada, 911 F.2d 705,
708-09 (Fed. Cir. 1990).
Here, Appellants have not persuasively traversed the Examiner's
finding of inherency by stating in the record that RFID readers or sensors
217 (Tourrilhes, Fig. 2) do not contain an antenna element integral to the
reader, as would be necessary to both transmit the energizing beam (for
passive RFID tags, as depicted emanating from each sensing RFID 21 7 in
Figure 2 of Tourrilhes), and also to receive the returned tag ID information.
See the Examiner's finding of inherency regarding Figure 2 of Tourrilhes
and the description in paragraph 14: "Therefore in this embodiment, each
reader would have an antenna. This is exemplified by Fig. 2 showing each
reader giving off a wave signal." (Ans. 4, emphasis added). We
particularly note paragraph 14 of Tourrilhes expressly describes an
embodiment wherein "each reader energizes a corresponding RFID tag
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l 12a-x mounted to an asset 11 la-x in a slot in the rack l lOn." (Emphasis
added).
Moreover, Appellants have not met their burden of providing
objective evidence during prosecution before the Examiner (and entered into
the record) that the embodiment relied on by the Examiner in Tourrilhes
c,-i 14) does not necessarily or inherently possess the characteristics of
Appellants' claimed product. See re Spada, 911 F.2d at 708-09. See
Evidence Appendix: "None." (App. Br. 9).
For these reasons, and on this record, we find a preponderance of the
evidence supports the Examiner's finding of anticipation regarding
independent claim 11. Because Appellants have not persuaded us the
Examiner erred, we sustain the anticipation rejection of representative claim
11, and the anticipation rejection the associated grouped claims, which fall
with claim 1. See Grouping of Claims, supra.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.4l(b)(2).
Conclusion
For at least the aforementioned reasons, and on this record, we are not
persuaded the Examiner erred. We find a preponderance of the evidence
supports the Examiner's finding of anticipation regarding contested
limitation L of representative independent claim 11.
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DECISION
We affirm the Examiner's rejection of claims 11and13-15, under 35
U.S.C. § 102(b).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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