Ex Parte RE42821 et al

Patent Trial and Appeal Board

Apr 29, 2014

90012241 (P.T.A.B. Apr. 29, 2014)

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.
90/012,241 04/05/2012 RE42821 012378/000003-821-2 8454
27299 7590 04/30/2014
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/30/2014 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 ROUND ROCK RESEARCH, LLC
____________________

Appeal 2014-001850
Reexamination Control 90/012,241
Patent RE42,821 E
Technology Center 3900
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2014-001850
Reexamination Control 90/012,241
Patent RE42,821 E

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STATEMENT OF THE CASE
1

Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 46-77. Claims 1-45 were
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Representative Claims
Independent claims 46, 67, and 73, reproduced below, with disputed
limitations italicized (and formatting altered), further illustrate the invention:
46. A method for remotely sensing articles, comprising:
providing a group of articles having a common
identification;
providing a first radio frequency identification (RFID)
device associated with the group of articles comprising a
substrate;
one or more antennas disposed adjacent the substrate;
a radio frequency transceiver integrated circuit disposed
adjacent the substrate comprising a radio frequency receiver for
receiving radio frequency signals, a radio frequency transmitter
for communicating radio frequency signals, control logic, a
memory for persistently storing data including the common
identification indicating the group, the radio frequency
transceiver integrated circuit coupled to the one or more

1
We refer to Appellant’s issued patent U.S. RE42,821 E (“Dando”) issued
Oct. 11, 2011 and Appeal Brief (“Br.”) filed May 15, 2013. We also refer to
the Examiner’s Advisory Action (“Advisory Act.”) mailed January 25, 2013,
Answer (“Ans.”) mailed August 14, 2013, and Final Rejection (“Final Rej.”)
mailed October 15, 2012.
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antennas, and a power source coupled to the radio frequency
transceiver integrated circuit;
transmitting to the first RFID device from a radio
frequency interrogator in remote proximity to the group of
articles, a radio frequency signal including a command
interrogating the first RFID device to determine the common
identification;
receiving in response, a radio frequency signal
communication from the first RFID device including the
common identification;
affixing to a selected article from the group a second
RFID device comprising a substrate, a radio frequency
transceiver integrated circuit disposed adjacent the substrate
comprising a radio frequency receiver, a radio frequency
transmitter, control logic, a memory for persistently storing
data, the radio frequency transceiver integrated circuit coupled
to the one or more antennas, and a power source coupled to the
radio frequency transceiver;
transmitting to the second RFID device, from a radio
frequency interrogator in remote proximity to the selected
article a radio frequency signal including a second identification
and a command to store the second identification in the
memory within the second RFID device;
storing the second identification in the memory of the
second RFID device; and
associating the common identification and the second
identification in a database.

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67. A method comprising:
providing a group of articles having a common
identification, wherein the group of articles are packaged up
together;
providing, on a package comprising the group of articles,
a first radio frequency identification (RFID) device associated
with the group of articles comprising a substrate;
one or more antennas disposed adjacent the substrate, a
radio frequency transceiver integrated circuit disposed adjacent
the substrate comprising a radio frequency receiver for
receiving radio frequency signals, a radio frequency transmitter
for communicating radio frequency signals, control logic, a
memory for persistently storing data including the common
identification indicating the group;
the radio frequency transceiver integrated circuit coupled
to the one or more antennas, and a power source coupled to the
radio frequency transceiver integrated circuit;
transmitting to the first RFID device, from a radio
frequency interrogator in remote proximity to the group of
article, a radio frequency signal including a command
interrogating the first RFID device to determine the common
identification;
receiving in response, a radio frequency signal
communication from the first RFID device including the
common identification;
affixing to a selected article from the group a second
RFID device comprising a substrate, a radio frequency
transceiver integrated circuit disposed adjacent the substrate
comprising a radio frequency, a radio frequency transmitter,
control logic, a memory for storing data including a
second identification, the radio frequency transceiver integrated
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circuited coupled to the one or more antennas, and a power
source coupled to the radio frequency transceiver;
transmitting to the second RFID device, from a radio
frequency interrogator in remote proximity to the selected
article, a radio frequency signal including a command
interrogating the second RFID device to determine the second
identification;
receiving in response, a radio frequency signal
communication from the second RFID device including the
second identification;
associating the common identification and the second
identification in a database;
associating the common identification of the group of
articles and the second identification of the selected article
from the group, with information about those articles in the
database.
73. A method comprising:
receiving a group of articles having a common
identification, the group of articles are packaged together,
wherein a first radio frequency identification (RFID) device is
affixed to the package and is associated with the group of
articles, and at least a second RFID device is affixed to a
selected article from the group, wherein at least the first and
second RFID comprise a substrate, one or more antennas
disposed adjacent the substrate, a radio frequency transceiver
integrated circuit disposed adjacent the substrate comprising a
radio frequency receiver for receiving radio frequency signals, a
radio frequency transmitter for communicating radio frequency
signals, control logic, a memory for storing identification data,
the radio frequency transceiver integrated circuit coupled to the
one or more antennas, and a power source coupled to the radio
frequency transceiver integrated circuit;
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transmitting to the first RFID device from a radio
frequency interrogator in remote proximity to the group of
articles, a radio frequency signal including a command
interrogating the first RFID device to determine the common
identification;
receiving in response, a radio frequency signal
communication from the first RFID device including the
common identification;
accessing a database wherein the common identification
is associated with at least the second identification in the
database;
transmitting to at least the second RFID device affixed to
the selected article from the group, from a radio frequency
interrogator in remote proximity to the selected article, a radio
frequency signal including a command interrogating the second
RFID device to determine the second identification;
receiving in response, a radio frequency signal
communication from the second RFID device including the
second identification;
accessing the database wherein at least the second
identification of the selected article from the group is
associated with information about the articles of the group; and
separating the selected article from the group and
redistributing the selected article.

Rejections on Appeal
(1) The Examiner rejects claims 46-51, 53-69, 71-74, 76, and 77
under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No.
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5,497,140, issued Mar. 5, 1996 (“Tuttle ‘140”) and U.S. Patent No.
5,886,634, issued Mar.23, 1999 (“Muhme”).
(2) The Examiner rejects claims 52, 70, and 75 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Tuttle ‘140, Muhme, and John R.
Tuttle, Traditional and Emerging Technologies and Applications in the
Radio Frequency Identification (RFID) Industry, 1997 IEEE RADIO
FREQUENCY INTEGRATED CIRCUITS SYMPOSIUM (Micron Communications,
Inc.,), pp. 5-8 (“the Tuttle article”). Ans. 3; Final Rej. 34-35.
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Appellant’s Contentions in the Appeal Brief
2

(1) Appellant contends that the Examiner erred in rejecting claims 46-
51, 53-69, 71-74, 76, and 77 under 35 U.S.C. § 103(a) as being unpatentable
over Tuttle ‘140 and Muhme for numerous reasons, including:
(a) with regard to claims 46 and 67, Tuttle ‘140 fails to teach a
“common identification” for a group of articles as that term is defined
in column 1, lines 34-37 of the Specification of Dando (Br. 5-8);
(b) Muhme fails to teach storing a second identification in a
memory of a second RFID device, as recited in independent claim 46
(Br. 7);

2
Appellant argues separate patentability only for independent claims 46, 67,
and 73 (see Br. 5-13).
With regard to claims 46-51, 53-69, 71-74, 76, and 77 rejected under
35 U.S.C. § 103(a) over Tuttle ‘140 and Muhme, we consider (i)
independent claim 46 to be representative of the group of claims including
46-51 and 53-66; (ii) independent claim 67 to be representative of the group
of claims including claims 67-69, 71, and 72; and (iii) independent claim 73
to be representative of the group of claims including claims 73, 74, 76, and
77.
With regard to claims 52, 70, and 75 rejected under 35 U.S.C.
§ 103(a) over Tuttle ‘140, Muhme, and the Tuttle article, “Applicant does
not wish to provide any additional explicit reasons for patentability for
Claims 52, 70, and 75” (Br. 12). Therefore, the outcome of the instant
appeal with regard to claims 52, 70, and 75 will depend upon the outcome of
the appeal with regard to claims 46, 67, and 73, from which claims
respectively depend.
Accordingly, our analysis herein will only address representative
claims 46, 67, and 73.
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(c) neither Tuttle ‘140 nor Muhme teach or suggest associating
a common identification of a group of articles and second
identification of a selected article from the group with information
about those articles in the database, as recited in independent claim 67
(Br. 7-9);
(d) Muhme’s tag association identification cannot be interpreted
as equivalent to both a tag association and tag information about
articles, as recited in independent claim 67 (Br. 10);
(e) nothing in Muhme’s associated tag identification list 116
associates a second identification of a selected article from the group
with information about articles of the group, as recited in independent
claim 73 (Br. 10-12); and
(f) Muhme teaches away from removing a selected article from
the group as recited in independent claim 73 (Br. 11).
Examiner’s Response in the Answer
The Examiner responds to Appellant’s arguments in the Brief with
articulated reasoning and findings, including new citations to (i) Muhme’s
Figure 3 and column 6, lines 12-13 pertaining to claim 67 at issue (see Ans.
8), and/or (ii) Muhme’s column 4, lines 23-28 and column 8, lines 29-30
pertaining to claim 73 at issue (see Ans. 9)
Reply Brief
No Reply Brief has been presented. Therefore, Appellant has not
disputed the Examiner’s articulated reasoning and findings found at pages 8-
9 of the Answer, including the new citations to (i) Muhme’s Figure 3 and
column 6, lines 12-13 pertaining to claim 67 at issue (see Ans. 8), and/or (ii)
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Muhme’s column 4, lines 23-28 and column 8, lines 29-30 pertaining to
claim 73 at issue (see Ans. 9).

ISSUES
Based on our review of the administrative record, Appellant’s
contentions, the Examiner’s findings and conclusions as well as the
Examiner’s response to Appellant’s contentions, the three pivotal issues
before us follow:
(1) Did the Examiner err in concluding that the base combination of
Tuttle ‘140 and Muhme is properly combinable and the applied references
collectively teach or would have suggested a group of articles having a
“common identification” and storing a second identification in the memory
of a second RFID device within the meaning of representative claim 46 and
the commensurate limitations of claims 47-52?
(2) Did the Examiner err in concluding that the base combination of
Tuttle ‘140 and Muhme is properly combinable and the applied references
collectively teach or would have suggested “associating the common
identification of the group of articles and the second identification of the
selected article from the group, with information about those articles in the
database,” within the meaning of representative claim 67 and the
commensurate limitations of claims 68-72?
(3) Did the Examiner err in concluding that the base combination of
Tuttle ‘140 and Muhme is properly combinable and the applied references
collectively teach or would have suggested “accessing the database wherein
at least the second identification of the selected article from the group is
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associated with information about the articles of the group,” within the
meaning of representative claim 73 and the commensurate limitations of
claims 74-77?

ANALYSIS
Based on Appellant’s arguments (Br. 5-13), we select independent
claims 46, 67, and 73 as representative of Appellant’s arguments and
groupings with respect to claims 46-77 as indicated (supra fn. 2). 37 C.F.R.
§ 41.37(c)(1)(iv) (2011).
We have reviewed the Examiner’s rejections (Final Rej. 2-35) in light
of Appellants’ contentions in the Appeal Brief (App. Br. 5-13) that the
Examiner has erred, as well as the Examiner’s response to Appellant’s
arguments in the Brief (Ans. 3-12). We disagree with Appellants’
conclusions. With regard to representative claims 46, 67, and 73, we concur
with the conclusions reached by the Examiner, and we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Rej. 2-34; Ans. 3-12), and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 3-12). We highlight and amplify certain
teachings and suggestions of the references, as well as certain ones of
Appellant’s arguments as follows.
We agree with the Examiner’s interpretation that the term “common
identification” as used in claims 46 and 67, and interpreted in light of
Appellant’s Specification (col. 1, ll. 34-47 of Dando), encompasses the
identification of units originating from a common source (Ans. 5).
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Representative claims 46 and 67 merely recite a method for remotely
sensing articles using RFID technology that provides a “common
identification” for a group of articles, and do not include the limitations read
from the Specification including tracking meat units from a common animal
carcass as asserted by Appellant in the Brief (Br. 5-6). One of ordinary skill
in the art reading Appellant’s claims in light of the Specification would
understand that the claimed invention in representative claims 46, 67, and 73
applies to all types of articles, and that Tuttle ‘140’s point of origin (Tuttle
‘140, col. 6, l. 20) is equivalent to the common source of the Specification
(Dando, col. 1, l. 35).
In view of the foregoing, we agree with the Examiner that Tuttle ‘140
teaches providing a “common identification” (claims 46 and 67) for a group
of articles because Tuttle ‘140’s RFID identifying information for “an article
in the form of a ‘package shipment by the postal service’ that includes an
RFID device storing identifying information such as ‘the owner’s name, ID
number, point of origin, weight, size, route, destination, and the like’ (see,
e.g., column 6, lines 14-28)” (Ans. 4). We also agree with the Examiner that
Muhme teaches a common identification by way of container tag 56 for a
group of items 12 in a container 50 or 54 that is associated with the
identification of each item tag 20 (i.e., the second identification) in a
database (see Ans. 7 citing Muhme, Fig. 5; col. 4, ll. 53-62).
Additionally, we agree with the Examiner (Ans. 11-12) that Muhme
does not teach away from removing a selected article from a group of
articles because the activation of an alarm and locking of a door cited by
Appellant at page 11 of the Brief are immaterial to the rejection which is
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based merely on the separation of an item from the container 50 or 54 before
being removed from the facility.
Further, Appellant failed to file a Reply Brief rebutting the findings
and responsive arguments made by the Examiner in the Answer (Ans. 8-9).
Thus, for all these reasons (supra), we sustain the Examiner’s obviousness
rejection of independent claims 46, 67, and 73. Dependent claims 47-66,
68-72, and 74-77 (see supra fn. 2) include limitations of commensurate
scope and were not separately argued with particularity (see Br. 7, 10, and
12-13). Accordingly, we affirm the Examiner’s obviousness rejections of
representative claims 46, 67, and 73 and claims 47-66, 68-72, and 74-77, not
separately argued.

CONCLUSION
The Examiner did not err in rejecting claims 46-77 under 35 U.S.C.
§ 103(a) as being unpatentable over the base combination of Tuttle ‘140 and
Muhme.

DECISION
We affirm the Examiner’s rejections of claims 46-77.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

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Patent Owner:

GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO CA 92127

Third Party Requester:

TUCKER ELLIS LLP
925 EUCLID AVENUE
SUITE 1150
CLEVELAND, OH 44115-1414

ELD