Ex Parte Scalisi et alDownload PDFPatent Trial and Appeal BoardDec 12, 201411933024 (P.T.A.B. Dec. 12, 2014) Copy Citation 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. 11/933,024 10/31/2007 Joseph F. Scalisi LB1-001US 3171 119491 7590 12/12/2014 Wengreen PLLC 4713 231st Place SE Sammamish, WA 98075 EXAMINER TSVEY, GENNADIY ART UNIT PAPER NUMBER 2648 MAIL DATE DELIVERY MODE 12/12/2014 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 JOSEPH F. SCALISI, DAVID M. MORSE, and DAVID BUTLER ____________________ Appeal 2012-008628 Application 11/933,024 Technology Center 2600 ____________________ Before JOHN A. EVANS, ROBERT L. KINDER, and WILLIAM M. FINK, Administrative Patent Judges. FINK, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 18, 21–23, and 25–30. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is Location Based Technologies, Inc. (App. Br. 3.) Appeal 2012-008628 Application 11/933,024 2 STATEMENT OF THE CASE Appellants’ Invention Appellants’ invention relates to tracking systems. (Spec. 1.)2 Specifically, Appellants claim a wireless location and tracking system with at least two antennas. (Id.) Claims on Appeal Claim 18 is the independent claim on appeal and is reproduced below: 18. A tracking device comprising: a transceiver for transmitting and receiving one or more location and tracking signals, the one or more location and tracking signals carrying information regarding location of the tracking device; a printed circuit board substrate comprising wireless location and tracking circuitry to assist in monitoring location coordinates of an object or individual attached thereto; a first patch antenna mounted on a first surface of the tracking device; a second patch antenna disposed substantially parallel to the first patch antenna and mounted on a second surface of the tracking device, the second surface opposed to the first surface of the tracking device, wherein the first surface is in a different plane than the second surface; wherein the first patch antenna and the second patch antenna are configured to periodically communicate signals to the wireless location and tracking circuitry processor to determine if the first patch antenna or the second patch antenna provides optimal antenna performance when the transceiver is placed in a low-power mode or when the tracking device has an at least partially obstructed communication path; and 2 Our decision refers to Appellants’ Appeal Brief filed December 19, 2011 (“Br.”); Examiner’s Answer mailed February 17, 2012 (“Ans.”); the Final Office Action mailed June 15, 2011 (“Final Act.”); and the original Specification filed October 31, 2007 (“Spec.”). Appeal 2012-008628 Application 11/933,024 3 wherein the signals configured to determine optimal antenna performance are processed by the tracking device using a sampling interval that is substantially less than a duration of one or more communicated location and tracking signals. Evidence Considered Hanekom US 3,924,102 Dec. 2, 1975 Stilp US 2004/0212493 A1 Oct. 28, 2004 Nguyen US 2005/0181870 A1 Aug. 18, 2005 Forster ’247 US 2007/0285247 A1 Dec. 13, 2007 Osada US 2008/0252254 A1 Oct. 16, 2008 Butler US 2008/0252459 A1 Oct. 16, 2008 Forster ’984 US 7,501,984 B2 Mar. 10, 2009 Examiner’s Rejections Claims 18, 22, 23, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Butler, Forster ’247 or Forster ’984, and Hanekom. (Ans. 4–16.) Claims 21 and 27–29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Butler, Forster ’247 or Forster ’984, Hanekom, and Osada. (Ans. 16–21.) Claim 30 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Butler, Forster ’247 or Forster ’984, Hanekom, Osada, and Stilp. (Ans. 21–23.) Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Butler, Forster ’247 or Forster ’984, Hanekom, and Nguyen. (Ans. 23–25.) Appeal 2012-008628 Application 11/933,024 4 Issue on Appeal Based on Appellants’ arguments, the dispositive issue on appeal is whether the Hanekom is prior art for teaching “signals configured to determine optimal antenna performance are processed by the tracking device using a sampling interval that is substantially less than a duration of one or more communicated location and tracking signals” required by claim 18. (Br. 20–27.) ANALYSIS In rejecting independent claim 18, the Examiner relies on the combination of Butler, Forster ’247 or Forster ’984, and Hanekom. In particular, the Examiner finds Hanekom teaches “signals configured to determine optimal antenna performance are processed by the tracking device using a sampling interval that is substantially less than a duration of one or more communicated location and tracking signals” (hereinafter, the “signal sampling limitation”) required by claim 18. (Ans. 11–13.) Among other things, Appellants contend “Hanekom would not be applicable to the present invention and would not, when combined with Butler and/or Forster247 or Forester894 [sic], render obvious” the signal sampling limitation. (Br. 22.) On this record, we must agree with Appellants. Regarding whether Hanekom is “applicable” to the present invention: A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, Appeal 2012-008628 Application 11/933,024 5 whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (internal citations omitted). As to the first part of the Klein test, it seems indisputable that Hanekom, a patent directed to an “[a]pparatus for controlling the temperature of a heating element,” (Hanekom, Abstract), is from a different field of endeavor than Appellants’ invention, which is directed to electronic location tracking (see Spec. 1). See Ans. 43 (“[Hanekom’s application is] [n]ot similar to tracking and location.”); Advisory Action, mailed September 30, 2011, at 15 (“[L]ocation and tracking is one art and test and measurement is completely another art.”). Therefore, Hanekom is prior art here only if it satisfies the second part of the Klein test—whether the reference is reasonably pertinent to the particular problem with which the inventor is involved. The Examiner finds Hanekom “is concerned with an apparatus for controlling temperature of heating element (therefore, in a similar endeavor of test and measurement. . . . When the switch is open by the sample initiator 36, the system performs measurement of the current flowing through the sensor.” (Ans. 43–44.) The Examiner finds “this brief sampling and measuring of some physical value on a periodic basis to make a controlling decision (regardless of where this process is used) that is informative from Hanekom.” (Id. at 44.) We are not persuaded by this finding. A reference is reasonably pertinent if: [E]ven though it may be in a different field from that of the inventor’s endeavor, . . . . If a reference disclosure has the same purpose as the claimed invention, the reference relates Appeal 2012-008628 Application 11/933,024 6 to the same problem, and that fact supports use of that reference in an obviousness rejection. Klein, 647 F.3d at 1348 (emphasis added). Here, the specific problem confronting the inventors is sampling radio frequency signals with a location and tracking processor to control optimum antenna selection. (Br. 30 (claim 18).) Defining the problem of the invention here as “sampling and measuring of some physical value to make a controlling decision,” as the Examiner does, is too broad because it does not define the problem with any degree of specificity. See Klein, 647 F.3d at 1352 (defining the problem specifically as preparing different ratios of sugar and water using a movable divider). Moreover, the Examiner cites no portion of Hanekom, nor can we find any, as to how its disclosures have broader applicability to other electronic fields. Rather, Hanekom’s single drawing and one page of written description simply describes a way of controlling the temperature of a heating element. Accordingly, we find that a person of ordinary skill confronted with the problem of sampling signals to configure antennas would not consider Hanekom as reasonably pertinent. As such, Hanekom is not prior art under § 103(a). Because the rejection of claim 18 relies on Hanekom to provide the teaching or suggestion of the signal sampling limitation, (Ans. 9 (“Butler does not teach . . . ‘using sampling interval that is substantially less than a duration of one or more communicated location and tracking signals.’”), see also id. at 11), we do not sustain the Examiner’s rejection of claim 18 under 35 U.S.C. § 103(a). With respect to dependent claims 21–23 and 25–30, which depend from claim 18, we also do not sustain the Examiner’s rejection. Appeal 2012-008628 Application 11/933,024 7 DECISION We reverse the Examiner’s final rejection of claims 18, 21–23, and 25–30. REVERSED cdc Copy with citationCopy as parenthetical citation