Ex Parte Tuttle

Board of Patent Appeals and Interferences

Nov 2, 2006

09524804 (B.P.A.I. Nov. 2, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK E. TUTTLE
__________

Appeal No. 2006-2548
Application No. 09/524,804
__________

ON BRIEF
__________

Before JERRY SMITH, BLANKENSHIP, and SAADAT, Administrative Patent
Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 50-52, 54-69 and 71-106. Claims 1-49, 53,
70 and 107 have been cancelled.
The disclosed invention pertains to wireless communication devices,
radio frequency identification devices, methods of forming a wireless
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communication device, and methods of forming a radio frequency
identification device.
Representative claim 59 is reproduced as follows:
59. A wireless communication device comprising:
• communication circuitry configured to communicate wireless
signals; and
• an encapsulant configured to encapsulate and contact at least
a portion of the communication circuitry, wherein the
encapsulant defines at least one side surface and the at least
one side surface has visibly perceptible information thereon.

The examiner relies on the following references:
Walton 4,782,342 Nov. 1, 1988
Sawada 5,424,250 Jun. 13, 1995
Lebby et al. (Lebby) 5,493,437 Feb. 20, 1996
Drabeck et al. (Drabeck) 5,598,169 Jan. 28, 1997
MacLellan et al. (MacLellan) 5,649,296 Jul. 15, 1997
Brady et al. (Brady) 6,100,804 Aug. 8, 2000
(effective date Jul. 16, 1998)

We note that Brady is not prior art with respect to the instant
invention, as acknowledged by the examiner in the answer [page 15]. The
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instant application was filed on March 14, 2000. We note that appellant
amended the instant specification on March 14, 2002 to claim priority from
parent application 08/920,329, filed Aug. 20, 1997, now U.S. Pat. No.
6,052,062. We note that Brady is not available as prior art because Brady
was filed on Oct. 29, 1998 and claims priority to provisional application
60/093,088, filed Jul. 16, 1998.

Appellant relies upon the following extrinsic evidence submitted during
the prosecution on Nov. 17, 2003:

• Zeller, “The RFID Handbook, Radio-Frequency Identification
Fundamentals and Applications”, John Wiley & Sons, 1999, pages 21
and 22.

The following rejections are on appeal before us:
1. Claims 59, 61, 76 and 78 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Walton [answer, page 3].
2. Claims 60 and 77 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Walton in view of Lebby
[answer, page 4].
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3. Claims 99 and 100 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Walton in view of
MacLellan [answer, pages 4 and 5].
4. Claims 50, 51, 54-56, 58, 66-68, 71-73, 75, 82 and 101 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
teachings of Walton in view of Drabeck [answer, pages 5-7].
5. Claims 102-106 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Walton in view of Drabeck and
further in view of Sawada [answer, pages 7-9].
6. Claims 65, 84, 86, 88, 92, 94 and 96 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the teachings of
Walton in view of Drabeck and further in view of Brady [answer,
pages 9-11].
7. Claims 52, 57, 62-64, 69, 74, 79, 80 and 81 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the teachings of
Walton in view of Drabeck and further in view of Lebby [answer,
page 11].
8. Claims 89 and 97 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Walton in view of Drabeck and
further in view of Lebby, and further in view of MacLellan [answer,
pages 12 and 13].
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9. Claims 90 and 98 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Walton in view of Drabeck and
further in view of Lebby, and further in view of Brady [answer, page
13].
10. Claims 83, 85, 87, 91, 93 and 95 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the teachings of
Walton in view of Drabeck and further in view of MacLellan [answer,
pages 13 and 14].

Rather than repeat the arguments of appellant or the examiner, we
make reference to the briefs and the answer for the respective details
thereof.
OPINION

We have carefully considered the subject matter on appeal, the
rejections advanced by the examiner and the evidence of anticipation and
obviousness relied upon by the examiner as support for the rejections. We
have, likewise, reviewed and taken into consideration, in reaching our
decision, the appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer. Only those arguments actually made by
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appellant have been considered in this decision. Arguments which appellant
could have made but chose not to make in the briefs have not been
considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii)(2004). See also In re Watts, 354 F.3d
1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).
It is our view, after consideration of the record before us, that the
evidence relied upon by the examiner does not support the examiner’s
rejections of claims 50-52, 54-58, 62-69, 71-75 and 79-106 but does
support the examiner’s rejections of claims 59-61 and 76-78. Accordingly,
we affirm-in-part.
ANTICIPATION REJECTION (Walton)
In rejecting claims under 35 U.S.C. §102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). To establish
inherency, the extrinsic evidence “must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d
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1746, 1749 (Fed. Cir. 1991). “Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (internal citations
omitted). To anticipate, 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, 58
USPQ2d 1286, 1291 (Fed. Cir. 2001); Scripps Clinic & Research Foundation
v. Genentech, Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir.
1991). Anticipation of a patent claim requires a finding that the claim at
issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc., 190
F.3d 1342, 1346, 51 USPQ2d 1943, 1945 (Fed. Cir. 1999) (“In other words,
if granting patent protection on the disputed claim would allow the patentee
to exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).

I. We consider the examiner’s rejection of claims 59, 61, 76 and 78 as
being anticipated by Walton. Since Appellant’s arguments with respect to
this rejection have treated these claims as a single group which stand or fall
together, we will select independent claim 59 as the representative claim for
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this rejection because it is the broadest independent claim. See
37 C.F.R. § 41.37(c)(1)(vii)(2004). We note that we have identified this
rejection as rejection #1 supra.
Appellant argues the examiner fails to identify any teachings of the
prior art which support the allegation that circuit 212 or rod 216 or any other
circuitry considered to teach the instant claimed communication circuitry is
contacted by an encapsulant [brief, page 23]. Appellant further asserts that
Walton is void of any disclosure of bar 610 contacting communication
circuitry [id.].
The examiner disagrees [answer, page 18, ¶3]. The examiner
maintains that Walton teaches the following limitations:
• communication circuitry (see col. 6, lines 1-53, i.e., radio
frequency identifier circuit 212), with indicia thereon (see fig. 6,
i.e., PRINTED LABEL surface including barcode 612), and
• an encapsulant configured to encapsulate and contact (see
fig. 6, i.e., the communication circuit includes antenna 216 and
identifier circuit 212 are contacting an encapsulant; see also
Walton at col. 6, lines 44-53, i.e., the assembly is encapsulated
in a plastic rectangular bar but one side of identifier circuit 212 is
exposed as shown in fig. 6),
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• at least a portion of the communication circuitry, wherein the
encapsulant defines at least one side surface and the at least
one side surface has visibly perceptible information thereon (see
fig. 6, col. 6, lines 44-53, i.e., the assembly is encapsulated in a
plastic rectangular bar 610; see fig. 6 - the PRINTED LABEL
surface including barcode 612).
The examiner concludes that Walton clearly teaches that
communication circuitry comprising identifier circuit 212 and antenna 216 is
partially encapsulated as shown in figure 6 [answer, page 18, ¶3].
In the reply brief, appellant merely asserts: “the anticipation rejection
is improper for the reasons set forth in the Brief” [reply brief, page 16].
We note that the language of claim 59 requires: “an encapsulant
configured to encapsulate and contact at least a portion of the
communication circuitry, wherein the encapsulant defines at least one side
surface and the at least one side surface has visibly perceptible information
thereon” [claim 59].
We note that Walton explicitly discloses at col. 6, lines 46-51:
The assembly is encapsulated in a plastic rectangular
bar 610, which includes on one surface written
identification, which includes a bar code 612, and on
the back surface, some fastening means 620, such
as velcro, buttons, pins, bolts, rivets, or a collar.

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Referring to fig. 6, we note that identifier circuit 212 and magnetic
antenna rod 216 are shown in contact with plastic rectangular bar 610.
Furthermore, plastic rectangular bar 610 is shown in fig. 6 having a
“PRINTED LABEL” and a bar code 612 (i.e., “visibly perceptible
information”) clearly printed on one side of the encapsulating bar 610.
We note that the Court of Appeals for the Federal Circuit has
determined: “[d]uring patent examination, the pending claims must be given
their broadest reasonable interpretation consistent with the specification.”
In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).
The broadest reasonable interpretation of the claims must also be consistent
with the interpretation that those skilled in the art would reach. In re
Cortright, 165 F.3d 1353, 1358, 49 USPQ2d 1464, 1467 (Fed. Cir. 1999).
Claim language is given its plain, ordinary, or accustomed meaning to one of
ordinary skill in the relevant art, unless the applicant has imparted a novel
meaning to the language. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1325, 63 USPQ2d 1374, 1380 (Fed. Cir. 2002).
In the instant case, when we properly construe the recited term
“encapsulant” in accordance with its plain, ordinary, or accustomed meaning
to one of ordinary skill in the art, we find that the claimed “encapsulant”
broadly but reasonably reads on the plastic material that forms Walton’s
rectangular bar 610 [col. 6, line 47]. We further find that plastic rectangular
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bar 610 encases (i.e., encapsulates) and contacts Walton’s communication
circuitry (i.e., identifier circuit 212 and magnetic antenna rod 216), as
shown in fig. 6. We acknowledge that Walton is silent with respect to
whether plastic rectangular bar 610 is a solid bar or a hollow bar. However,
we find that plastic rectangular bar 610 still encases (i.e., encapsulates) the
communication circuitry regardless of whether it is solid or hollow, in
accordance with the plain meaning of the recited term “encapsulate.”
Therefore, we find that representative claim 59 reads on the reference in the
manner asserted by the examiner.
Because we find that Walton teaches all that is claimed, we will sustain
the rejection of representative claim 59 as being anticipated by Walton for
essentially the same reasons argued by the examiner. We note that
independent claim 76 is a method claim that recites essentially equivalent
limitations corresponding to the limitations of representative claim 59.
Therefore, we will sustain the examiner’s rejection of claim 76 for the same
reasons discussed supra with respect to representative claim 59.
We note that claims 61 and 78 depend upon independent claims 59
and 76, respectively. We note that appellant has not presented any
substantive arguments directed separately to the patentability of these
claims. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987). See also 37 C.F.R. § 41.37(c)(1)(vii)(2004). We further
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note that claims 61 and 78 each require communication circuitry that
comprises “radio frequency identification device circuitry.” We agree with
the examiner that the claimed “radio frequency identification device
circuitry” reads on Walton’s identifier circuit 212 [Walton, col. 4, lines 52-56;
see also instant claims 61 and 78]. Therefore, we will sustain the
examiner’s rejection of dependent claims 61 and 78 as being anticipated by
Walton for the same reasons set forth in the rejection.

OBVIOUSNESS REJECTIONS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). The examiner must articulate reasons for the
examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1433 (Fed. Cir. 2002). In particular, the examiner must show that there is a
teaching, motivation, or suggestion of a motivation to combine references
relied on as evidence of obviousness. Id. 277 F.3d at 1343, 61 USPQ2d at
1433-34. The examiner cannot simply reach conclusions based on the
examiner’s own understanding or experience - or on his or her assessment
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of what would be basic knowledge or common sense. Rather, the examiner
must point to some concrete evidence in the record in support of these
findings. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed.
Cir. 2001). Thus the examiner must not only assure that the requisite
findings are made, based on evidence of record, but must also explain the
reasoning by which the findings are deemed to support the examiner’s
conclusion. However, a suggestion, teaching, or motivation to combine the
relevant prior art teachings does not have to be found explicitly in the prior
art, as the teaching, motivation, or suggestion may be implicit from the prior
art as a whole, rather than expressly stated in the references. The test for
an implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art. In re Kahn,
441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
See also In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed.
Cir. 2002). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the applicant to
overcome the prima facie case with argument and/or evidence. Obviousness
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is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).

II. We consider next the examiner’s rejection of claims 60 and 77 as
being unpatentable over the teachings of Walton in view of Lebby [answer,
page 4]. We note that we have identified this rejection as rejection #2
supra.
We note that claims 60 and 77 depend upon independent claims 59
and 76, respectively. In particular, we note that appellant has failed to
present any arguments in the briefs directed to the patentability of claims 60
and 77. As discussed supra, we note that arguments which appellant could
have made but chose not to make in the briefs are deemed to be waived.
See In re Nielson, 816 F.2d at 1572, 2 USPQ2d at 1528. See also
37 C.F.R. § 41.37(c)(1)(vii)(2004). Furthermore, we agree with the
examiner that the combination of Walton and Lebby meets the language of
the claim that requires: “at least one side surface of the encapsulant has a
thickness less than about 100 mils” [claim 60]. We note that claim 77
recites equivalent language: i.e., “at least one side surface of the
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encapsulant has a dimension less than about 100 mils.” In particular, we
note that Lebby explicitly discloses a casing (fig. 1, casing 11) with a
thickness “on the order of one millimeter or less” [col. 3, lines 24-27]. We
note that one millimeter equals 0.03937 inches, or 39.37 mils, where a mil
is a unit of distance equal to 0.001 inch. Therefore, we will sustain the
examiner’s rejection of dependent claims 60 and 77 as being obvious over
Walton in view of Lebby for the same reasons set forth in the rejection and
the discussion above.

III. We consider next the examiner’s rejection of claims 50, 51, 54-56, 58,
66-68, 71-73, 75, 82 and 101 as being unpatentable over the teachings of
Walton in view of Drabeck [answer, pages 4-7]. We note that we have
identified this rejection as rejection #4 supra.
Appellant argues the combination of Walton and Drabeck is improper
with respect to each of the examiner’s rejections that rely upon the
combination of Walton and Drabeck (i.e., corresponding to rejections 4-10,
identified supra) [brief, page 12]. Appellant asserts the examiner has failed
to establish a proper motivational rationale for combining the teachings of
Walton and Drabeck [brief, page 12]. Appellant argues the examiner is
making an unsupported conclusory statement in suggesting that an artisan
would be motivated to modify Walton with Drabeck’s wireless microwave
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signals “for the purpose of providing efficient communication” (answer, page
5) [id.].
Appellant asserts that the only motivation to combine Walton with
Drabeck results from the examiner’s improper reliance upon appellant’s
disclosure [brief, page 12, cont’d page 13]. Appellant further argues that
Walton and Drabeck are disparate teachings, noting that Walton (e.g., figs.
2-4) is directed toward an inductively coupled system while Drabeck is
directed toward a microwave system (e.g., col. 1, “Background” section; col.
5, lines 25-40) [brief, page 13]. Appellant further points to extrinsic
evidence that shows inductively coupled systems and microwave systems
are recognized as entirely different systems in the art in terms of
communications technology and application (see Zeller, “The RFID
Handbook”, John Wiley & Sons, 1999, pages 21 and 22, submitted during
prosecution by appellant on Nov. 17, 2003) [id.].
Appellant further argues the examiner has failed to present any factual
support or evidence regarding the ability to modify a magnetic (i.e.,
inductively coupled) system using circuitry designed for microwave
communications [brief, page 14]. Appellant asserts there is no evidence of
record that demonstrates the teachings of a microwave system are
applicable to or may be utilized with a magnetic system [id.]. Appellant
asserts the disparate systems (i.e., inductively coupled RFID vs. microwave
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RFID) are described separately in terms of their principle of operation and
application in the art within the cited portion of the RFID Handbook [id.].
Even assuming, arguendo, that the examiner’s proffered modification was
possible, appellant further asserts that modifying the magnetic system of
Walton to incorporate the microwave teachings of Drabeck would change
Walton’s principle of operation [id.]. Appellant concludes that the examiner
has failed to establish a prima facie case of obviousness [id.].
The examiner disagrees [page 15]. The examiner maintains that
Walton teaches a radio frequency identification device comprising radio
frequency identification circuitry configured to communicate wireless signals
(col. 6, lines 1-53) and Drabeck teaches microwave communication in the
wireless identification communication device art (e.g., “2.45 Ghz” at col. 5,
lines 27-32; col. 1, lines 11-19) [answer, page 15].
At the outset, we note that to reach a proper conclusion under §103,
the examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
review the specific factual determinations of the examiner to ascertain
whether the examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
a person of ordinary skill in the art. When claim elements are found in more
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than one prior art reference, the fact finder must determine “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims.” In re Kahn 441 F.3d at 988, 78 USPQ2d at 1337. With respect
to the role of the examiner as finder of fact, the Court of Appeals for the
Federal Circuit has stated: “the examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. The
Court of Appeals for the Federal Circuit has also noted: “[w]hat the prior art
teaches, whether it teaches away from the claimed invention, and whether it
motivates a combination of teachings from different references are questions
of fact.” In re Fulton, 391 F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144
(Fed. Cir. 2004) (internal citations omitted). We further note that the Court
of Appeals for the Federal Circuit has determined that the motivation to
combine under § 103 must come from a teaching or suggestion within the
prior art, within the nature of the problem to be solved, or within the general
knowledge of a person of ordinary skill in the field of the invention, to look to
particular sources, to select particular elements, and to combine them as
combined by the inventor. Ruiz v. A.B. Chance Co., 234 F.3d 654, 665, 57
USPQ2d 1161, 1167 (Fed. Cir. 2000) [emphasis added].
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In the instant case, we note that the examiner asserts that Walton
teaches every aspect of the present invention except wireless signals
comprising microwave signals [answer, page 5, ¶2]. After carefully
considering all of the evidence before us, we find that Walton discloses an
RFID device that is fully functional for its intended purpose of relatively close
proximity identification such that no advantage would be gained by replacing
Walton’s inductive coupling mechanism with the microwave system of
Drabeck. In particular, we see no deficiency in Walton’s inductive coupling
RFID system that would motivate an artisan to look to Drabeck’s microwave
system as a viable substitute. To the contrary, we note that at longer
ranges (such as facilitated by Drabeck’s battery-powered microwave system)
the use of inductive coupling to power the RFID device is not possible [see
Walton, col. 1, lines 23-25, see also Drabeck, col. 1, lines 18 and 19, col. 2,
line 36 (i.e., battery), col. 5, line 32 (i.e., 2.45 GHz) ].
Furthermore, we have considered appellant’s extrinsic evidence of
record (i.e., Zeller’s “RFID Handbook”) and we find appellant’s arguments
persuasive that inductive coupling systems and microwave systems are
intended for different purposes and applications. We further agree with
appellant that the combination suggested by the examiner would change
Walton’s principle of operation (e.g., by requiring a battery and a drastic
increase in frequency of operation that would likely increase the potential for
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radio frequency interference). We further find the examiner has failed to
provide a compelling motivation in suggesting that an artisan would have
been motivated to modify Walton’s inductive coupling system by
incorporating Drabeck’s microwave system “for the purpose of providing
efficient communication” [see answer, page 5, emphasis added].
For all of the aforementioned reasons, we do not see how an artisan
having knowledge of Walton would have been reasonably motivated to look
to Drabeck to achieve the advantage proffered by the examiner without
relying upon the instant claims as a template or guide. We note that our
reviewing court has clearly stated: “[d]etermination of obviousness cannot
be based on the hindsight combination of components selectively culled from
the prior art to fit the parameters of the patented invention. There must be a
teaching or suggestion within the prior art, or within the general knowledge
of a person of ordinary skill in the field of the invention, to look to particular
sources of information, to select particular elements, and to combine them in
the way they were combined by the inventor.” ATD Corp. v. Lydall, Inc., 159
F.3d 534, 546, 48 USPQ2d 1321, 1329 (Fed. Cir. 1998).
In light of the foregoing, it is our determination that the examiner's
obviousness conclusion is based upon impermissible hindsight derived from
appellant’s own specification and claims rather than from some teaching,
suggestion or motivation derived from the prior art. Therefore, we agree
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with appellant that the examiner has failed to meet his/her burden of
presenting a prima facie case of obviousness. Accordingly, we will reverse
the examiner’s rejection of claims 50, 51, 54-56, 58, 66-68, 71-73, 75, 82
and 101 as being unpatentable over the teachings of Walton in view of
Drabeck (see rejection #4 identified supra).
Because the examiner has improperly combined Walton and Drabeck,
we will also reverse each of the examiner’s rejections that rely upon the
combination of Walton and Drabeck. We note that these rejections
correspond to rejections 4-10 identified supra. We further note that
rejections 4-10 correspond to claims 50-52, 54-58, 62-69, 71-75, 79-98 and
101-106 [see brief, page 10]. In summary, we will reverse the examiner’s
obviousness rejections of these claims for essentially the same reasons
argued by appellant on pages 10-15 of the brief and also for the reasons
discussed above.

IV. Lastly, we consider the examiner’s rejection of independent claims 99
and 100 as being unpatentable over the teachings of Walton in view of
MacLellan [answer, pages 4 and 5]. Since appellant’s arguments with
respect to this rejection have treated these claims as a single group which
stand or fall together, we will select independent claim 100 as the
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representative claim for this rejection because it is the broadest independent
claim from this group. See 37 C.F.R.§ 41.37(c)(1)(vii)(2004).
Appellant argues there is no motivation to combine the disparate
reference teachings of MacLellan with the teachings of Walton [brief, page
18]. Appellant notes that Walton is directed toward an inductive (magnetic)
coupled system [id.]. In contrast, appellant notes that MacLellan is directed
toward a microwave system [id.]. Appellant argues the Office Action and
the prior art are devoid of any teaching or suggestion of implementing
backscatter communications in an inductive (magnetic) coupled system [id.].
Appellant asserts the reflective properties of objects necessary for
communications generally increase with increasing frequency including
implementation at frequency ranges at 915 MHz or higher indicating that
backscattering would be inapplicable to the magnetic flux coupling of Walton
at relatively low frequencies around 13 MHz [brief, page 18; see also Walton
at col. 7, line 23, i.e., where Walton’s preferred frequency of 13.56 MHz is
disclosed]. Appellant asserts that the Office has failed to present any factual
support or evidence regarding the combining or applicability of
backscattering techniques to inductive (magnetic) systems despite
appellant’s response to the Office Action mailed November 17, 2003 stating

Appeal No. 2006-2548 Page 23
Application No: 09/524,804

that there is no teaching in the art of such a combination [brief, page 18,
cont’d page 19].
In addition, appellant asserts that the motivation suggested by the
examiner (i.e., “‘to better comply with the FCC regulatory requirement’”) is
not factually supported by evidence in the record and is merely based upon
conclusions of the examiner that are insufficient to establish a prima facie
case of obviousness [brief, page 19, referring to the examiner’s answer,
pages 15 and 16].
The examiner responds to appellant’s arguments by merely asserting
that he is “not saying to use backscatter in [an] inductive coupling system,”
without providing further explanation [answer, page 17].
We note that Walton is clearly directed to an inductive coupling
system, as discussed supra [see also Walton, col. 5, lines 10 and 11]. We
further note the examiner proffers in the rejection of claims 99 and 100 that
an artisan would have been motivated to modify Walton and implement
MacLellan’s backscatter communications “because Walton suggests the
communication circuitry is radio frequency identification and MacLellan
teaches the communication circuitry is configured to implement backscatter
communications to better comply the FCC regulatory requirement” [answer,
page 5, emphasis added].
Appeal No. 2006-2548 Page 24
Application No: 09/524,804

We note that Walton discloses that electronic identification devices
generate less interference if they operate with very low power on certain
allowed frequencies using antennas of minimum long distance radiation.
See Walton at col. 2, lines 59-68, cont’d col. 3, lines 1 and 2:

Still another problem with prior art identification systems
involves radio interference. In electronic identification systems,
it is necessary that the Federal Communications Commission
give its approval, since there is a risk that such identification
systems will cause interference to radio frequency
communications. To meet FCC requirements, identification
systems operate at either very low powers, or on certain
allowed frequencies, or with antennas of minimum long
distance radiation. The present invention avoids harmful far
field radiation through self neutralizing antenna design, in a
manner to be described below.

In particular, we note that Walton’s inductive coupling device is
disclosed as having the advantage of reducing far field radiation to a minimal
or zero amount, thus enabling FCC approval to be readily attained. See
Walton at col. 5, lines 59-68:

The present invention also has the advantage of reducing far
field radiation to a minimal or zero amount. The antenna pairs
have a net zero field at distances of several diameters. The
two coils create radio frequency fields of opposing polarities.
Thus, although there is an intense field near the coils, at
distances exceeding several coil diameters, the field falls rapidly
to zero. Thus, FCC approval can be readily attained. Further,
FIGS. 10 and 11 show means for further far field radiation
reduction.

Appeal No. 2006-2548 Page 25
Application No: 09/524,804

Significantly, when we look to MacLellan for the motivation suggested
by the examiner, we find MacLellan is silent regarding any mention of FCC
regulations. When we consider alternative sources of motivation, we find
the examiner has failed to set forth a rationale or convincing line of
reasoning explaining why the proffered combination would be obvious from
the nature of the problem to be solved, or from the general knowledge of a
person of ordinary skill in the field of the invention.
In particular, we find that Walton’s system for “reducing far field
radiation to a minimal or zero amount” presents no deficiency that would
lead an artisan to look to MacLellan for a microwave backscatter system “to
better comply the FCC regulatory requirement,” as suggested by the
examiner in the rejection [Walton, col. 5, lines 59 and 60; see also answer,
page 5, ¶1]. Therefore, we agree with appellant that the examiner’s
proffered motivation for combining Walton and MacLellan is not factually
supported by evidence in the record and is insufficient to establish a prima
facie case of obviousness. Accordingly, we will reverse the examiner’s
rejection of independent claims 99 and 100 as being obvious over Walton in
view of MacLellan for essentially the same reasons argued by appellant.
In summary, we have sustained the examiner’s rejections of claims
59-61 and 76-78 in view of the prior art of record, but we have not
sustained the examiner’s rejection of claims 50-52, 54-58, 62-69, 71-75 and
Appeal No. 2006-2548 Page 26
Application No: 09/524,804

79-106. Therefore, the decision of the examiner rejecting claims 50-52, 54-
69 and 71-106 is affirmed-in-part.
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).

AFFIRMED-IN-PART

)
Jerry Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Howard B. Blankenship )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Mahshid D. Saadat )
Administrative Patent Judge )
)

JS/kis
Appeal No. 2006-2548 Page 27
Application No: 09/524,804

WELLS ST. JOHN, P.S.
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