11207419 (B.P.A.I. May. 31, 2011)

Ex Parte Philbrook

Board of Patent Appeals and InterferencesMay 31, 2011

11207419 (B.P.A.I. May. 31, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/207,419 08/19/2005 John S. Philbrook C382.12-0195 7699 27367 7590 05/31/2011 WESTMAN CHAMPLIN & KELLY, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER PIGGUSH, AARON C ART UNIT PAPER NUMBER 2858 MAIL DATE DELIVERY MODE 05/31/2011 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 JOHN S. PHILBROOK ____________________ Appeal 2009-007917 Application 11/207,4191 Technology Center 2800 ____________________ Before ROBERT E. NAPPI, MARC S. HOFF, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-13 and 16-22.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is Midtronics, Inc. 2 Claims 14 and 15 have been cancelled. Appeal 2009-007917 Application 11/207,419 2 Appellant’s invention concerns a system for automatically gathering battery information for use during battery testing/charging. A radio frequency identification (RFID) tag may be affixed to a storage battery, the RFID tag configured to store and transmit information related to the battery. A battery tester and/or charger includes (a) a radio frequency (RF) receiver configured to receive the transmitted information related to the battery and (b) testing and/or charging circuitry configured to use the received information (Spec. 15). Claim 1 is exemplary of the claims on appeal: 1. An apparatus for testing a storage battery comprising: a radio frequency identification (RFID) label configured to be affixed to a surface of the storage battery, the RFID label is configured to store and transmit information related to the battery; and a battery tester comprising: a receiver configured to receive transmitted information related to the battery; and test circuitry configured to utilize the received information related to the battery to test the storage battery, wherein the information related to the battery comprises information related to manufacture of the battery. The Examiner relies upon the following prior art in rejecting the claims on appeal: Lauper US 2002/0041175 A1 Apr. 11, 2002 Mikuriya US 2004/0113588 A1 June 17, 2004 Lyon US 2004/0145342 A1 July 29, 2004 Appeal 2009-007917 Application 11/207,419 3 Claims 1-13 and 16-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lyon in view of Lauper and Mikuriya. Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed June 27, 2008), the Reply Brief (“Reply Br.,” filed Nov. 17, 2008) and the Examiner’s Answer (“Ans.,” mailed Sep. 17, 2008) for their respective details. ISSUES Appellant argues that Lyon’s “RFID” processor 240 tags device 204, and not battery 234 (App. Br. 6). Appellant asserts that because there is no evidence that Lyon’s device will function if processor 240 is disconnected from device 204 and affixed to a replaceable party, one having ordinary skill in the art would not have been motivated to modify Lyon in view of Lauper and Mikuriya in the manner asserted by the Examiner (Id.). Appellant’s contentions present us with the following issue: 1. Does the combination of Lyon, Lauper, and Mikuriya teach or fairly suggest a radio frequency identification (RFID) label configured to be affixed to a surface of a storage battery, and configured to store and transmit information related to the battery? FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Appeal 2009-007917 Application 11/207,419 4 Lyon 1. Lyon teaches an inductive charger 106 and a device to be charged 204 which includes a battery 234 (¶¶ [0018],[0023]). 2. Processor (RFID) 240, within device 204, receives commands and power from inductive charger 106 and responds by sending data, clock, and power information back over the same charging channel (¶ [0025]). 3. In operation of the charger, the RFID device “may transmit the device model and type enabling the inductive charger to then determine the optimal charging parameters for the device” (¶ [0032]). 4. Lyon’s RFID tag “can include the appropriate charging parameters and information for the device” (¶ [0033]). PRINCIPLES OF LAW One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). The test of obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, at 425. Appeal 2009-007917 Application 11/207,419 5 ANALYSIS We select claim 1 as representative of this group of claims, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii). Appellant asserts that Lyon describes a device 204 that includes a battery 234 and processor (RFID) 240 (App. Br. 6). According to Appellant, processor 240 has optional tagging capability for device 204, and not a label that can be affixed to a battery, and there is no evidence that Lyon’s device will function if processor 240 is disconnected from device 204 and affixed to a replaceable battery (id.). Appellant therefore contends that it would not have been obvious to affix a label to the surface of the storage battery of Lyon, as taught by Lauper, in order to achieve the claimed invention (id.). We are not persuaded by Appellant’s argument. Lyon teaches an inductive charger 106 and a device to be charged 204 which includes a battery 234 (FF 1). Processor (RFID) 240, within device 204, receives commands and power from inductive charger 106 and responds by sending data, clock, and power information back over the same charging channel (FF 2). In operation of the charger, the RFID device “may transmit the device model and type enabling the inductive charger to then determine the optimal charging parameters for the device” (FF 3). Alternately, the RFID tag “can include the appropriate charging parameters and information for the device” (FF 4). Taking these facts together, we find that Lyon clearly teaches an RFID tag (240) configured to store and transmit information related to the battery 234 (e.g., device model, type, charging parameters) in device 204, as Appeal 2009-007917 Application 11/207,419 6 claim 1 requires. The Examiner admits that Lyon does not teach the RFID label affixed to the battery, and relies on Lauper for that particular teaching (Ans. 3; Lauper ¶ [0023]). Appellant does not contest the Examiner’s characterization of Lauper (or Mikuriya). Appellant’s arguments (summarized supra) against the combination of Lauper and Lyon amount to an argument that the references cannot be bodily incorporated, which is not the test of obviousness. See In re Keller, 642 F.2d at 425. We agree with the Examiner that the combined teachings of the references would have suggested to the person of ordinary skill in the art the modification of Lyon such that the RFID tag is affixed to the battery, according to the teachings of Lauper (Ans. 3-4, 11-12). We further agree with the Examiner that the combined teachings of the references would have suggested to the skilled artisan that an RFID tag be affixed to the surface of the storage battery to facilitate the replacement of the battery while still maintaining RFID benefits for each particular battery (Ans. 4). We find that the Examiner did not err in rejecting claims 1-13 and 16- 22 under § 103 as being unpatentable over Lyon in view of Lauper and Mikuriya, and we will sustain the Examiner’s rejection. Appeal 2009-007917 Application 11/207,419 7 CONCLUSIONS 1. The combination of Lyon, Lauper, and Mikuriya suggests a radio frequency identification (RFID) label configured to be affixed to a surface of a storage battery, and configured to store and transmit information related to the battery. ORDER The Examiner’s rejection of claims 1-13 and 16-22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rwk