Ex Parte Rodgers

Patent Trial and Appeal Board

Apr 17, 2014

11689316 (P.T.A.B. Apr. 17, 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.
11/689,316 03/21/2007 James Neil Rodgers 1663
7590 04/17/2014
James Neil Rodgers
22915 Billy Brown Rd.
Langley, BC V1M 4G3
CANADA
EXAMINER
YANG, JAMES J
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
04/17/2014 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 2011-011370
Application 11/689,316
Technology Center 2600
________________

Before CARLA M. KRIVAK, JASON V. MORGAN, and
STANLEY M. WEINBERG, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–9. App. Br. 15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION under
the provisions of 35 C.F.R. § 41.50(b).
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Invention
Appellant invented a method for tracking chose in action using a nano
silicon radio frequency identification (RFID) transponder chip and
embedded antenna, either laminated or fiber woven into a chose in action.
Spec. 9, ll. 8–11. Appellant’s chose in action is defined to “include, inter
alia, polymer banknotes, paper banknotes, travelers checks, revenue and
postage stamps, certificates, coupons and tickets of value, security inks,
certificates of origin, checks, gift certificates, passports, plastic cards, stock
certificates, vehicle titles, vital statistics records, insurance policies,
Treasury Bills, bonds, and derivative certificates or receipts.” Id. at 4, ll. 5–
9. The method includes assigning resonate frequencies to categories of
chose in action in 2 MHz increments in the 24 GHz to 40 GHz range. Id. at
15, ll. 8–19.
Exemplary Claims
Claims 1 and 8 are reproduced below with disputed limitations
emphasized:
1. A method of tracking and tracing chose in action throughout
an economy using an RFID nano size silicon integrated circuit
package known as an RFID transponder, the method
comprising:
selecting a chose in action from the group comprising
polymer banknotes, paper banknotes, travelers checks, revenue
and postage stamps, certificates, coupons and tickets of value,
security inks, certificates of origin, checks, gift certificates,
passports, plastic cards, stock certificates, vehicle titles, vital
records, insurance policies;
selecting an RFID nano size silicon integrated circuit
package with fully housed silicon antenna the whole known as
an RFID transponder;
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assigning a specific frequency for each category of chose
in action to be tracked or traced and tuning the RFID
transponder antenna contained within the nano size silicon
integrated circuit package to a specific assigned category of
chose in action at 2 MHz intervals in the 24 GHz to 40 GHz
frequency range;
embedding the said integrated circuit package
constructed of nano size silicon into chose in action and
whereby a laminate process is used to embed into polymer
substrate chose in action and further a weaving fiber process is
used to embed into chose in action comprised on a paper
substrate;
providing real time information regarding current levels
of inventory of tracked or traced chose in action to a centralized
database;
providing RFID transponder interrogators at key transit
points, including check out and cash register points in a retail
environment, teller windows at banking institutions, back end
cage offices at stock brokerage firms;
providing means of collecting and collating the
interrogated RFID data of the movement of chose in action via
middleware into a central processing database.
8. The method of claim 1 whereby a frequency division
process is utilized to designate each category of chose in action
as a unique category and to assign to said category a frequency
between 24 and 40 GHz separated by at least 2 MHz from the
frequency assigned to any other category of chose in action.
Rejections
The Examiner rejects claims 1–7 under 35 U.S.C. § 103(a) as being
unpatentable over Lee (US 2003/0006121 A1), Rodenbeck (US 7,345,647
B1), Robertz (US 6,206,292 B1), and Nakagawa (US 2005/0198920 A1).
Ans. 5–11.
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The Examiner rejects claims 8 and 9 under 35 U.S.C. § 103(a) as
being unpatentable over Lee, Rodenbeck, Robertz, Nakagawa, and Dey (US
4,882,569). Ans. 12–19.
ISSUES
1. Did the Examiner err in finding the combination of Lee,
Rodenbeck, Robertz, and Nakagawa teaches or suggests “assigning a
specific frequency for each category of chose in action to be tracked or
traced and tuning the RFID transponder antenna contained within the nano
size silicon integrated circuit package to a specific assigned category of
chose in action at 2 MHz intervals in the 24 GHz to 40 GHz frequency
range,” as recited in claim 1?
2. Did the Examiner err in finding the combination of Lee,
Rodenbeck, Robertz, and Nakagawa teaches or suggests “embedding the
said integrated circuit package constructed of nano size silicon into chose in
action,” as recited in claim 1 (emphasis added)?
ANALYSIS
The Examiner finds the combination of Lee, Rodenbeck, Robertz, and
Nakagawa teaches or suggests “assigning a specific frequency for each
category of chose in action to be tracked or traced and tuning the RFID
transponder antenna contained within the nano size silicon integrated circuit
package to a specific assigned category of chose in action at 2 MHz intervals
in the 24 GHz to 40 GHz frequency range,” as recited in claim 1. Ans. 7
(citing Rodenbeck, col. 2, ll. 4–20). Specifically, the Examiner finds
Rodenbeck’s disclosure of RFID transponders operating between 100 MHz
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and 200 GHz teaches or suggests the range of 24 GHz to 40 GHz. Ans. 7–8.
The Examiner further finds
because the antennas may be adjusted to be any length to
correspond with any frequency, one of ordinary skill in the art
would be motivated to adjust specific tag antennas for each type
of chose in action such that different types of chose in action
would operate at different frequencies to avoid tag collisions
from multiple tags responding at the same frequency, as is well-
known in the art.
Ans. 8.
Appellant contends—albeit with respect to claim 8 rather than claim
1—the combination of Lee, Rodenbeck, Robertz, Nakagawa, and Dey does
not teach or suggest “assigning [an antenna] to a specific assigned category
of chose in action at 2 MHz intervals in the 24 GHz to 40 GHz frequency
range.” App. Br. 20–21 (emphasis added). We agree with Appellant that
the Examiner erred.
Rodenbeck’s teaching of RFID transponders operating in a frequency
range from 100 MHz to 200 GHz encompasses Appellant’s range of 24 GHz
to 40 GHz. As the Examiner correctly finds, an artisan of ordinary skill
would recognize that antennas of RFID transponders could be matched to
any frequency in the range disclosed by Rodenbeck. Ans. 7. However, we
do not find persuasive the Examiner’s conclusion that a skilled artisan’s
knowledge of the adjustability of antennas to match any frequency teaches
assigning 2 MHz intervals to different categories of items. The Examiner’s
findings merely show RFID operating frequencies are configurable based on
antenna length, without showing the claimed 2 MHz interval in frequency
assignments was known or would have been obvious to an artisan of
ordinary skill. Therefore, we agree with Appellant that the Examiner has not
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shown the combination of Lee, Rodenbeck, Robertz, Nakagawa, and Dey
teaches or suggests “assigning a specific frequency for each category of
chose in action to be tracked or traced and tuning the RFID transponder
antenna contained within the nano size silicon integrated circuit package to a
specific assigned category of chose in action at 2 MHz intervals in the 24
GHz to 40 GHz frequency range,” as recited in claim 1.
The Examiner also finds the combination of Lee, Rodenbeck, Robertz,
and Nakagawa teaches or suggests “embedding the said integrated circuit
package constructed of nano size silicon into chose in action,” as recited in
claim 1 (emphasis added). Ans. 6–7. Specifically, the Examiner interprets
Appellant’s “nano” size to mean small and finds Rodenbeck teaches small
sized silicon RFID transponders. Id. at 7 (citing Rodenbeck, Fig. 5 and col.
5, ll. 28–46).
Appellant contends the Examiner’s interpretation that “nano” means
small is erroneous in light of Appellant’s Specification. App. Br. 23.
Appellant asserts nano size tags “are as small as 0.05 millimeters by 0.05
millimeters.” App. Br. 23 (citing Spec. 10). We agree with Appellant that
the Examiner’s interpretation is unreasonably broad in light of Appellant’s
Specification. Appellant’s Specification makes clear that while not literally
measured on the scale of nanometers, “nano size” means a chip
commensurate in size with Hitachi’s RFID chip released February 2007,
which measures 0.05 millimeters by 0.05 millimeters. Spec. 6. Further, the
cited portion of Rodenbeck does not mention size (Col. 5). However,
Column 7, Table 1 of Rodenbeck does. This table shows the sizes of wiring
and antennae in Rodenbeck generally fall within the range of millimeters or
relatively large fractions thereof (0.25 mm being the smallest physical
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dimension listed). Thus, we conclude the Examiner’s interpretation that
“nano” means small, such that Rodenbeck’s RFID transponder is a “nano
sized” RFID chip, is overly broad. Thus, the Examiner’s reliance on
Rodenbeck to teach small RFID chips does not meet the requirement of a
nano sized RFID chip as recited in claim 1.
1

Accordingly, we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a), or claims 2–8 which depend therefrom, and claim
9, which contains similar recitations.
NEW GROUNDS OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b). We reject claim 8 under 35 U.S.C.
§ 112, fourth paragraph, for failing to further limit claim 1.
Independent claim 1 recites “assigning a specific frequency . . . to a
specific assigned category of chose in action at 2 MHz intervals” (emphasis
added). Dependent claim 8 recites a similar, but broader limitation: that
“each category of chose in action . . . [is] separated by at least 2 MHz from
the frequency assigned to any other category of chose in action” (emphasis
added). Claim 8 merely defines 2 MHz as the minimum frequency interval,
rather than establishing 2 MHz as both the minimum and the maximum
frequency interval as is recited in claim 1. “It is axiomatic that a dependent
claim cannot be broader than the claim from which it depends.” Alcon

1
In the event of further prosecution, we suggest that the Examiner might
consider whether the Hitachi RFID chip on which Appellant relies
constitutes admitted prior art that cures this deficiency in the prior art of
record.
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Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1367 (Fed. Cir. 2012). Claim
8 broadens claim 1, and therefore claim 8 is not a proper dependent claim.
Accordingly, we newly reject claim 8 under 35 U.S.C. § 112, fourth
paragraph, for failing to further limit the subject matter of claim 1.
DECISION
We reverse the Examiner’s decision to reject claims 1–9 under 35
U.S.C. § 103(a).
We newly reject claim 8 under 35 U.S.C. § 112, fourth paragraph.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)
kis