Ex Parte Rodgers

Patent Trial and Appeal Board

Sep 19, 2014

11747904 (P.T.A.B. Sep. 19, 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.
11/747,904 05/13/2007 James Neil Rodgers 5441
7590 09/19/2014
JAMES NEIL RODGERS
22915 BILLY BROWN ROAD
LANGLEY, BC V1M 4G3
CANADA
EXAMINER
GARNER, WERNER G
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
09/19/2014 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 JAMES NEIL RODGERS
____________________

Appeal 2012-004302
Application 11/747,904
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and
LISA M. GUIJT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004302
Application 11/747,904

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STATEMENT OF THE CASE
James Neil Rodgers (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1–4 and 8.1 The Examiner rejected
claims 1–4 and 8 under 35 U.S.C. § 112, second paragraph, as being
indefinite; rejected claims 2, 4, and 8 under 35 U.S.C. § 101 as not being
directed to a single statutory category of invention; rejected claims 1, 2, and
4 under 35 U.S.C. § 102(e) as being anticipated by Ronda (WO
2007/125476 A1, published November 8, 2007); and rejected claims 3 and
82 under 35 U.S.C. § 103(a) as unpatentable over Ronda and Savarese (US
2006/0122007 A1, issued June 8, 2006). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 The new claim added in the Amendment filed November 24, 2010, is
numbered “8” (not “5” as indicated by Appellant), despite the fact that
Appellant canceled claims 5–7. See 37 C.F.R. § 1.126 (stating: “When
claims are canceled the remaining claims must not be renumbered. When
claims are added, they must be numbered by the applicant consecutively
beginning with the number next following the highest numbered claim
previously presented (whether entered or not).”).
2 Although the Examiner’s statement of the rejection under 35 U.S.C.
§ 103(a) in the Final Office Action, mailed February 2, 2011, (hereinafter
“Final Office Action) refers to claims 3 and 4, it is quite apparent from the
Examiner’s explanation of the rejection, as well as the inclusion of claim 4
in the anticipation rejection under 35 U.S.C. § 102(e), that the Examiner
rejected claims 3 and 8 under 35 U.S.C. § 103(a). Final Office Action 8, 13,
15 (stating: “Regarding Claim 8 (New):”); see also Office Communication,
mailed Oct. 5, 2011 (notifying Appellant that claim 3 and 8 were rejected).
Appeal 2012-004302
Application 11/747,904

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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.3
1. A Radio Frequency Identification (RFID) system for real
time acquisition and processing of electro magnetic
signals reproduced as digital data to determine the
physical outer edges or perimeters for athletic objects of
play in relationship to the outside edges or perimeters and
relevant scoring or rules of play zones contained on an
athletic field of play comprising: determining “objects of
play”, “field(s) of play”, “boundaries of play”, “physical
position of objects of play” and/or physical performance
of one or a multitude of objects of play in motion on a
field of play in relationship to the “boundaries of play”,
A Radio Frequency Identification (RFID) system for real
time acquisition and processing of electromagnetic
signals, reproduced as digital data, to determine the
physical outer edges or perimeters for athletic objects of
play in relationship to the outside edges or perimeters and
relevant scoring or rules of play zones contained on an
athletic field of play comprising: determining “objects of
play”, “field(s) of play”, “boundaries of play”, “duration
of play”, “physical position of objects of play” and/or
physical performance of one or a multitude of objects of
play in motion on a field of play in relationship to the
“boundaries of play”[ ]where a “field of play” is defined
as a professional football field, college football field,
professional baseball field, professional ice hockey rink,
college hockey rink, professional soccer field,
professional basketball court, professional tennis court,
professional golf course, professional automobile racing

3 The “Claims Appendix” of Appellant’s Appeal Brief contains an incorrect
reproduction of the claims of record. The claims involved in this appeal are
the claims as presented in the “ANNOTATED VERSION” of the
“Amendments to the Claims” in the Amendment filed November 24, 2010,
as that was the last-entered amendment.
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Application 11/747,904

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track, professional horse racing track, professional dog
racing track, professional lacrosse box or field, or any
other such arena or stadium for professional sports;
where “objects of play” are defined as a professional
football or professional football player, college football
or college football player, professional baseball or
professional baseball player, professional ice hockey
puck or professional ice hockey player, college ice
hockey puck or college ice hockey player, professional
soccer ball or professional soccer player, professional
basketball or professional basketball player, professional
tennis ball or professional tennis player, professional golf
ball or professional golfer, professional racecar or
professional race car driver, professional quarter horse or
professional racing dog, professional lacrosse ball or
lacrosse player; where “boundaries of play” are defined
as the metes and bounds plus goal lines of a professional
football field, the metes and bounds plus goal lines of a
college football field, the metes and bounds of a
professional baseball diamond, the metes and bounds
plus goal lines of a professional and college ice hockey
rink; the metes and bounds of a professional soccer field
including the penalty box area, the metes and bounds
plus three point throw area of a professional basketball
court, the metes and bound of a professional tennis court,
the metes and bounds of a professional golf course, the
metes and bounds of a professional automobile racing
track, the metes and bound of a professional horse racing
track, the metes and bounds of a professional dog racing
track, the metes and bounds of a professional lacrosse
box or field, and the metes and bounds of any other
similar such arena, field or stadium used for professional
or college sports; RFID transponders embedded in the
objects of play; embedded interrogator antennas located
in the boundaries of play ; a backend : computer and
management system for processing digital data; electro
magnetically connecting the transponders located in the
objects of play, and interrogators and antennas located in
the boundaries of play, to the back end host computer
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Application 11/747,904

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management system; processing the digital data
emanating from electromagnetic signals of the RFID
transponders located in the objects of play and from
interrogator antennas located in the boundaries of play
such that the scoring zones and out of bounds zones are
identifiable through the digital processing of electro
magnetic signals for the function of providing objective,
unbiased and uninfluenced decisions as to the physical
position of objects in play and/or physical performance
of one or a multitude of objects of play in motion on a
field of play in relationship to the “boundaries of play[”]
on or near a field of play.

OPINION
Rejections under 35 U.S.C. §§ 112 and 101
Appellant identifies only the rejection of claims 1, 2, and 4 under
35 U.S.C. § 102(e) and the rejection of claims 3 and 8 under 35 U.S.C.
§ 103(a) 4 as “Grounds of Objection [sic Rejection] to be reviewed on
Appeal.” Appeal Br. 19. The Examiner repeated the rejections set forth in
paragraphs 8, 12, 14, 15, 16, 20, 22, and 24 of the Final Office Action,
including the rejections of claims 1–4 and 8 under 35 U.S.C. § 112, second
paragraph, and the rejection of claims 2, 4, and 8 under 35 U.S.C. § 101,
thus clearly indicating that these rejections have not been withdrawn.
Answer 5–7. Appellant does not address the rejections under 35 U.S.C.
§ 112 and 101, and, thus, has waived any argument of error. We, therefore,
summarily sustain the rejections of claims 1–4 and 8 under 35 U.S.C. § 112,
second paragraph, and the rejection of claims 2, 4, and 8 under 35 U.S.C.
§ 101. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding

4 We treat Appellant’s reference to a rejection of claims “3 and 4” under
“USC 35 102(A)” (Appeal Br. 19) as a reference to the rejection of claims 3
and 8 under 35 U.S.C. § 103(a).
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that the Board did not err in sustaining a rejection under 35 U.S.C. § 112,
second paragraph, when the applicant failed to contest the rejection on
appeal); MPEP § 1205.02, 8th ed., Rev. 8, July 2010 (“if a ground of
rejection stated by the examiner is not addressed in the appellant’s brief, that
ground of rejection will be summarily sustained by the Board.”).
Rejections under 35 U.S.C. §§ 102(e) and 103(a)
Appellant argues that Ronda uses LEDs and photodetectors, rather
than an RFID, as called for in claim 1. Appeal Br. 23. Appellant adds that
“[t]he metes and bounds of the Ronda claims do not include an interrogator,
embedded interrogator antennas or transponders embedded in objects of
play.” Id.
Appellant’s argument is not correct. As the Examiner found, Ronda
clearly discloses an embodiment of a marking system for sport areas wherein
ball 2 (or any other object) is provided with “an identifier (e.g., a RFID
transponder 3) that can communicate with a suitable detector 12 (e.g. a RF
receiver)” at demarcation (i.e., boundary) 100. Ronda 6:14–18; Answer 8–9.
The fact that Ronda’s claims may not contain any explicit recitation of an
RFID or RF receiver is not germane to the determination of whether Ronda
anticipates the subject matter of claim 1. To establish anticipation, every
element and limitation of the claimed invention must be found in a single
prior art reference, arranged as in the claim. Karsten Mfg. Corp. v.
Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). However, there
is no requirement that the prior art reference claim every element and
limitation of the claimed invention in order to establish anticipation. “The
use of patents as references is not limited to what the patentees describe as
their own inventions or to the problems with which they are concerned. They
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are part of the literature of the art, relevant for all they contain.” In re Heck,
699 F.2d 1331, 1332-33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d
1006, 1009 (CCPA 1968)). “The scope of a patent’s claims determines what
infringes the patent; it is no measure of what it discloses.” In re Benno, 768
F.2d 1340, 1346 (Fed. Cir. 1985).
Appellant also argues that Ronda does not “contemplate or teach the
precision or the Rodgers teachings with respect to unbiased adjudication of a
sports event as contained in [c]laim 2.” Appeal Br. 24. For the reasons
articulated by the Examiner in the paragraph bridging pages 19 and 20 of the
Answer, Appellant’s argument is not convincing. Ronda discloses that
controller 13 may communicate detection of a certain event (via processing
of signals generated by the interaction of the RFID and RF receiver) to a
referee on the sport area to assist the referee in the decision to be taken.
Ronda 6:31 – 7:4. Thus, the decision as to the event is made by Ronda’s
system without the involvement of a human being, thereby “providing
objective, unbiased and uninfluenced decisions,” as called for in claim 1.
Appellant adds that “Ronda simply refers to the sports object being
‘carried’” and observes that “these Ronda musings are not incorporated in
the metes and bounds of his claims and nor, contrary to USPTO
requirements does he specify, in a complete system, how this would work.”
Appeal Br. 25. Appellant does not specify where this purported reference to
the sports object being “carried” is found in Ronda. We find references in
Ronda to an identifier being carried by an object (Ronda 3:28–29) and to a
receiver carried by persons for receiving wireless communications from the
system of the detection of a game event (Ronda 4:3–4), but we find no
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reference in Ronda to the object (e.g., ball) being carried. Thus, Appellant’s
comments are unavailing.
Appellant does not assert any separate arguments directed specifically
to claim 4. Thus, claim 4 stands or falls with claim 1, from which it
depends. See 37 C.F.R. § 41.37(c)(1)(vii) ) (providing that when multiple
claims subject to the same ground of rejection are argued as a group by the
appellant, the Board may select a single claim from the group to decide the
appeal with respect to the group as to the ground of rejection on the basis of
the selected claim alone).
Appellant’s arguments with respect to the combination of Ronda and
Savarese (Appeal Br. 25–27) are not germane to the rejection of claims 1, 2,
and 4 as being anticipated by Ronda.
For the above reasons, Appellant’s arguments do not apprise us of
error in the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 102(e)
as being anticipated by Ronda. We, thus, sustain the rejection of claims 1
and 2, and of claim 4, which falls with claim 1, under 35 U.S.C. § 102(e) as
being anticipated by Ronda.
Appellant argues that Ronda “does not teach embedding of the
transponder in the object of play,” as called for in claim 3. Appeal Br. 24.
This argument is not convincing. An ordinary and customary meaning of
the term “embed” is “to set or fix firmly in a surrounding mass.” Webster's
New World Dictionary 456 (David B. Guralnik ed., 2nd Coll. Ed., Simon &
Schuster, Inc. 1984). Appellant’s Specification does not assign a special
definition to the term “embed” or use the term in a manner suggesting that
the term “embedded” in claim 3 should be construed in a manner different
from this ordinary and customary meaning. Spec. 7, 10, 11, 12, 13, 14.
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Ronda depicts RFID transponder 3 within ball 2. Fig. 2. Appellant does not
explain why this depiction does not teach, or at least suggest, an RFID
transponder embedded in the ball.
Moreover, in addressing the specific limitations of claim 3 with
respect to the RFID transponder and antenna, the Examiner found that
“Ronda fails to explicitly disclose the location of the RFID transponder or
the antenna associated with the RFID transponder,” but found that the details
of placement of RFID transponders and antennas on objects for locating
objects in space was well known at the time of the invention. Answer 13.
More specifically, the Examiner found that “Savarese teaches an apparatus
in which a golf ball is provided with an RFID coupled to an antenna located
on the surface of a ball.” Id. at 13–14 (citing Savarese ¶ 114); see also
Savarese ¶ 77 (disclosing an RFID IC embedded in the golf ball and coupled
to the antenna). In view of that teaching by Savarese, the Examiner
determined that it would have been obvious to substitute the general
discussion of RFID placement in Ronda with the more detailed description
of placing an RFID transponder in Ronda’s object (ball 2) “in order to
improve the marking system for sport areas” of Ronda. Id. at 14. The
modification proposed by the Examiner is nothing more than the simple
substitution of one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement. KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Appellant does not point out any error in the Examiner’s findings or
reasoning with respect to the combination of Ronda and Savarese. Rather,
Appellant contends that Savarese is concerned with finding golf balls, and
that Savarese’s teachings of embedding RFIDs in golf balls for that purpose
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“do not relate to or contemplate the embedding techniques taught by
[Appellant] nor the unbiased adjudication of a sports event.” Appeal Br. 25.
This argument is an attack on Savarese individually, rather than in
combination with Ronda, as proposed by the Examiner, and thus is not
convincing. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Moreover, “[i]n determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under § 103.”
KSR, 550 U.S. at 419. “Under the correct analysis, any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” Id. at 420. Although Savarese may have been concerned
specifically with finding an object, such as a golf ball, Savarese is pertinent
to Appellant’s invention, because, like Appellant’s invention, Savarese
addresses the problem of locating an RFID transponder and antenna on an
object. Savarese ¶¶ 77, 114.
Appellant also asserts that the Examiner has failed to demonstrate that
Ronda and Savarese, when combined or modified, present a person having
ordinary skill in the art with a reasonable expectation of success.
Appeal Br. 26. Appellant does not explain the basis for this assertion, which
appears to be predicated on Appellant’s incorrect characterization of Ronda
as not disclosing an RFID system, discussed supra. This line of argument is
not convincing.
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Appellant contends that Ronda and Savarese, individually or in
combination, do not contemplate or teach Appellant’s invention.
Appeal Br 27. According to Appellant, there is no suggestion or motivation
in either of the references to modify or combine them to achieve Appellant’s
invention. Id. This argument is not convincing, because “[t]he obviousness
analysis cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents.” KSR, 550
U.S. at 419. Instead, the relevant inquiry is whether the Examiner has set
forth “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). As
discussed above, the Examiner reasoned that it would have been obvious to
substitute the general discussion of RFID placement in Ronda with the more
detailed description of placing an RFID transponder in Ronda’s object (ball
2) “in order to improve the marking system for sport areas” of Ronda.
Answer 14. That articulated reasoning fulfills the requirement of providing
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.
For the above reasons, Appellant’s arguments do not apprise us of
error in the Examiner’s rejection of claim 3 as unpatentable over Ronda and
Savarese. Claim 8 falls with claim 1, because Appellant does not present
any separate argument as to why claim 8 might be patentable if claim 3 is
not. 37 C.F.R. § 41.37(c)(1)(vii). Thus, we sustain the rejection of claims 3
and 8 under 35 U.S.C. § 103(s) as being unpatentable over Ronda and
Savarese.
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Application 11/747,904

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DECISION
The Examiner’s decision rejecting claims 1–4 and 8 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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