Ex Parte May

Board of Patent Appeals and Interferences

Jan 28, 2011

10620811 (B.P.A.I. Jan. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/620,811 07/17/2003 Alistair Edwin May 8054.010.NPUS00 8991
98943 7590 01/31/2011
Novak Druce DeLuca + Quigg LLP (CSR)
300 New Jersey Avenue, NW
Fifth Floor
Washington, DC 20001
EXAMINER
SHERMAN, STEPHEN G
ART UNIT PAPER NUMBER
2629
MAIL DATE DELIVERY MODE
01/31/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALISTAIR EDWIN MAY
____________

Appeal 2009-008802
Application 10/620,811
Technology Center 2600
____________

Before ALLEN R. MACDONALD, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008802
Application 10/620,811

2
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 of the Final Rejection of
claims 1-20. See Appeal Brief 5. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). We reverse.

Exemplary Claim
1. A radio-capable device, comprising:
a data collection unit for collecting data, and having a normal
operating mode, in which it is enabled for collecting data, and a low-power
mode;
a radio communication unit for transmitting over a radio channel data
collected by the data collection unit; and
a radio channel sensor coupled to the radio communication unit for
sensing at least one physical characteristic of the radio channel, and arranged
to cause the data collection unit to enter the normal operating mode if the
physical characteristic meets a pre-set threshold.

Rejections on Appeal
The Examiner rejected claims 1-3, 6, 13, 15-17 and 20 as being
unpatentable under 35 U.S.C. § 102(e) as being unpatentable over US
2002/0126094 A1 to Junod (“Junod”).
The Examiner rejected dependent claims 4, 5 and 14 as being
unpatentable under 35 U.S.C. § 103(a) as being unpatentable over Junod.
The Examiner rejected dependent claims 7-12, 18 and 19 as being
unpatentable under 35 U.S.C. § 103(a) as being unpatentable over Junod and
US 2002/0021278 A1 to Hinckley (“Hinckley”).
Appeal 2009-008802
Application 10/620,811

3
Appellants’ Contention
Appellant contends that “The capacitance or inductance of an antenna is
not a physical characteristic of a radio channel, as required by the claims.”
(Appeal Brief 5).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Office personnel must rely on Appellants' disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim ‘is not to be confused
with adding an extraneous limitation appearing in the specification, which is
improper.”’ In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002)(emphasis in original) (citations and quotations omitted).

Issue on Appeal
Did the Examiner err in rejecting claims 1-20 as being unpatentable
because the reference fails to disclose a physical characteristic of a radio
channel?

Appeal 2009-008802
Application 10/620,811

4
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
The Examiner’s position is that Junod discloses that during the sleep mode,
the hand detection circuit detects the capacitance of the antenna and since
the same antenna is used for transmitting RF signals from the RF circuit and
detection, the antenna is a “‘radio channel’” in a physical sense, and
therefore the capacitance detected is the “‘physical characteristic.’” Answer
18. The Examiner also contends that the claims do not require the detection
of RF signals and there are no limitations within the claims that prevent the
Examiner from interpreting the claim language in this manner. Id.
Appellant’s Specification discloses, “The physical characteristic is
suitably the tendency of the channel to return to the radio communication
unit radio signals transmitted by the radio communication unit.”
Specification 3.
Appellant argues that:
Junod discloses that a switch 130 switches a capacitor 132
and RF circuit 128 into contact with the antenna electrodes
during antenna mode, and switches hand detect circuit126
into contact with the antenna electrodes during a sleep
mode. In such configuration, the antenna when used to
sense the presence of a user's hand cannot be used to
detect any characteristic of a radio channel, as the RF
circuit would be disconnected from the antenna in this
mode. Appeal Brief 5-6.

We find the Appellant’s arguments to be persuasive. We disagree with the
Examiner’s reasoning that a physical characteristic of a radio channel is
sensed by measuring the capacitance of Junod’s antenna. Each of the
Appeal 2009-008802
Application 10/620,811

5
independent claims has a derivation of the claim limitation that requires “a
radio channel sensor coupled to the radio communication unit for sensing at
least one physical characteristic of the radio channel.” Therefore we will not
sustain the Examiner’s anticipation rejection of claims 1-3, 6, 13, 15-17 and
20. Accordingly, we will not sustain the Examiner obvious rejections of
dependent claims 4, 5, 7-12, 14, 18 and 19.

CONCLUSION
The Examiner has erred in rejecting claims 1-20 as being unpatentable.

DECISION
The Examiner’s rejection of claims 1-20 is reversed.

REVERSED

kis

Novak Druce DeLuca + Quigg LLP (CSR)
300 New Jersey Avenue, NW
Fifth Floor
Washington, DC 20001