13539432 (P.T.A.B. Sep. 18, 2017)

Ex Parte Salour et al

Patent Trial and Appeal BoardSep 18, 2017

13539432 (P.T.A.B. Sep. 18, 2017)

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. 13/539,432 06/30/2012 Ali Salour 11-0684-US-NP 9489 122219 7590 09/20/2017 Miller, Matthias & Hull LLP/ The Boeing Company One North Franklin, Suite 2350 Chicago, IL 60606 EXAMINER ALAM, MIRZA F ART UNIT PAPER NUMBER 2689 NOTIFICATION DATE DELIVERY MODE 09/20/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): bmatthias @ millermatthiashull. com patentadmin @ boeing. com ynunez@millermatthiashull.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALI SALOUR, AYYANGAR R. HARISH, and SANTOSH R. WARE Appeal 2016-007231 Application 13/539,4321 Technology Center 2600 Before CARLA M. KRIVAK, ERIC B. CHEN, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Boeing Company is identified as the real party in interest. See App. Br. 1 Appeal 2016-007231 Application 13/539,432 STATEMENT OF THE CASE Introduction The Application is directed to a “production tool having a dielectric inclusion, and an RFID [(Radio Frequency Identification)] device mounted within the dielectric inclusion,” wherein the production tool can be a tool for use in a factory. Spec. 14, Fig. 7. Claims 1,10, and 15 are independent. Claim 1 is reproduced below for reference (with additional formatting and certain limitations italicized (hereafter, the “disputed limitations”)): 1. Apparatus comprising a portable production tool having a dielectric inclusion, the dielectric inclusion including a cavity within a portion of the tool; and an RFID device mounted within the cavity, the RFID device including an antenna located entirely within the cavity, the dielectric inclusion configured to cause electromagnetic waves incident on the tool to create reflected waves, the incident and reflected waves undergoing constructive interference to extend communications range of the RFID device. References and Rejections The prior art relied upon by the Examiner in rejecting the claims on appeal is: Creel US 2003/0102970 A1 June 5, 2003 Tethrake US 2006/0043178 A1 Mar. 2, 2006 Dixon US 2007/0171081 A1 July 26, 2007 Shanks US 2008/0129453 A1 June 5, 2008 Claim 20 stands rejected under 35U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Non-Final Act. 3. 2 Appeal 2016-007231 Application 13/539,432 Claims 1—3, 6, 9-11, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as being obvious over Tethrake and Shanks. Id. at 4. Claims 15—19 stand rejected under 35 U.S.C. § 103(a) as being obvious over Tethrake, Shanks, and Creel. Id. at 11. Claims 4, 5, 7, 8, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as being obvious over Tethrake, Shanks, and Dixon. Id. at 17. ANALYSIS A. 35 U.S.C. § 112, first paragraph The Examiner finds claim 20 fails to comply with the enablement requirement, because the claim recites “a non-zero distance from the dielectric inclusion to an outer surface of the tool portion,” whereas “Applicant’s disclosure lacks any specific information as to particular structure and fails to show how the various structures are interconnected.” Non-Final Act. 3. Appellants argue the Examiner’s rejection is in error, because “[t]he application provides several examples of the non-zero distance.” App. Br. 13 (citing Figs. 4—6; Spec. 27—30). We agree with Appellants. We note the Examiner does not respond to the points Appellants raise with respect to the enablement rejection. See Reply Br. 2. More critically, Appellants’ figures depict the inclusion is spaced from the outer surface (i.e., the distance is non-zero), and the Specification provides various examples of non-zero distances, such as “greater than 5 mm.” See Figs 4—6; Spec. 128. As such, we find Appellants’ disclosure would have enabled a person skilled in the art to practice the invention commensurate in scope with the claims. 3 Appeal 2016-007231 Application 13/539,432 Thus, we do not sustain the rejection of claim 20 under 35 U.S.C. §112, first paragraph, for failing to comply with the enablement requirement. B. 35 U.S.C. § 103(a) Appellants argue the Examiner’s rejection of independent claim 1 is in error, because “Shanks provides no guidance for modifying Tethrake’s depression to function as a dielectric inclusion, or placing the antenna segments 110 and 112 entirely within a dielectric inclusion to benefit from constructive interference of incident and reflected waves.”2 App. Br. 9. Particularly, Appellants contend that, although Shanks teaches using waveguides with RFID devices, “Shank’s [sic] emphasis is on reducing the number of discontinuities” between waveguides, and thus Shanks does not teach or suggest the disputed limitations. App. Br. 8. We agree with Appellants that the combination of cited references does not teach or suggest the disputed limitations. The Examiner finds Shanks teaches or suggests “waveguides to guide RF energy from reader, discontinuity exists between surface waveguides of adjacent cases (i.e., undergoing interference)).” Non-Final Act. 6; Shanks Tflf 8, 9, 186; see also Ans. 4. Shanks’ waveguide discontinuities, however, do not cause constructive interference of incident and reflected waves as claimed. See Reply Br. 3. Rather, Shanks teaches the discontinuities between the waveguides will “limit power,” and therefore are to be reduced. App. Br. 8; Shanks 1186. Thus, we find Shanks does not teach or suggest the disputed 2 Appellants present additional arguments that raise additional issues, but we do not reach them because the identified issue is dispositive of the appeal. 4 Appeal 2016-007231 Application 13/539,432 limitations. Tethrake, similarly, does not teach or suggest a device configured to cause constructive interference, as claimed. See Non-Final Act. 5. Accordingly, we are persuaded that the cited references do not teach or suggest the claim 1 limitation “the dielectric inclusion configured to cause electromagnetic waves incident on the tool to create reflected waves, the incident and reflected waves undergoing constructive interference to extend communications range of the RFID device.” Independent claims 10 and 15 recite similar limitations to those discussed above with respect to independent claim 1. See App. Br. 11—12. We do not sustain the Examiner’s obviousness rejection of the independent claims, or the claims dependent thereon. DECISION The Examiner’s decision rejecting claims 1—20 is reversed. REVERSED 5