Ex Parte Voegele

Board of Patent Appeals and Interferences

Sep 21, 2009

10752458 (B.P.A.I. Sep. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KEVIN D. VOEGELE
____________________

Appeal 2009-003905
Application 10/752,4581
Technology Center 2600
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Decided: September 21, 2009
____________________

Before KENNETH W. HAIRSTON, MARC S. HOFF,
and KARL D. EASTHOM, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Honeywell International, Inc.
Appeal 2009-003905
Application 10/752,458

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention relates to a method and system for resolving
contentions among passive identification tags within any Radio Frequency
Identifications system. Employing a tree-splitting algorithm, a reader may
divide a possible range of values into a number of smaller ranges. For each
smaller range, the reader may then poll the tags to determine which tags
have tag values that fall within the smaller range. If more than one tag
responds simultaneously, then the reader may further divide the smaller
range into even smaller ranges and poll the tags with respect to those even
smaller ranges. Once the range partition gets small enough, the reader may
then opt to poll the tags for a match of each possible value in the range,
rather than partitioning further. This arrangement enables the reader to
efficiently identify tags, by quickly eliminating from analysis any range of
tag values to which no tags match or only one tag matches (Abstract, Spec.
2:6-12, 6:16 - 7:.22).
Claim 1 is exemplary:
1. A method for identifying a plurality of passive identification tags in a
field of view, each tag having a respective identification value, and each tag
having a register value within a predetermined range, the method comprising
the following steps:
splitting the predetermined range into a plurality of first sub-ranges;
for each first sub-range, requesting each tag whose register value falls
within the first sub-range to communicate the tag's identification value; and
in response to a determination that more than one tag has a register
value within a given first sub-range:
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splitting the given first sub-range into a plurality of second sub-
ranges; and
for each second sub-range, requesting each tag whose register value
falls within the second sub-range to communicate the tag's identification
value.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brophy US 4,071,908 Jan. 31, 1978
Dodd US 5,339,073 Aug. 16, 1994
Schoch US 5,973,609 Oct. 26, 1999
The Examiner rejected claims 1 to 3 and 5 to 10 under 35 U.S.C. §
103(a) based upon the teachings of Dodd and Schoch.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) based upon
the teachings of Dodd, Schoch, and Brophy.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Appeal Brief (filed May 17, 2007), the Reply Brief
(filed October 22, 2007), and the Examiner’s Answer (mailed August 21,
2007) for their respective details.

ISSUES
Appellant contends that the Examiner erred in finding that the
combination of Dodd and Schoch would change Dodd’s principle of
operation, in that Dodd requires that “an n-bit number requires an n-level
search” (App. Br. 3, FF 5). Appellant contends that the Examiner has
improperly dissected Appellant’s claimed invention into discrete elements.
Appellant contends that the Examiner has erred in his finding that the
combination of Dodd and Schoch teaches that the plurality of second sub-
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ranges result “in response to a determination that more than one tag has a
register value within a given first sub-range” (App. Br. 5-6).
The Examiner finds that the combination of Dodd and Schoch would
not change the principle operation of Dodd since it would have been obvious
to one of ordinary skill in the art at the time of the invention to have the tags
of Dodd respond to group polls with their unique ID in an effort to reduce
the number of sub-group polls during a lightly loaded operation (Ans. 7; FF
2, 6). In response to the argument of improperly dissecting the Appellant’s
claimed invention, the Examiner finds that Dodd's interrogation process
splits the transponders into a plurality of sub-groups, wherein each sub-
group is formed in response to a group reply signal (Ans. 6, 8, FF 2
(emphasis added)).
Appellant’s contentions present us with the following two issues:
1. Did Appellant show that the Examiner erred in finding that the
combination of Dodd and Schoch would not change Dodd’s principle of
operation?
2. Did Appellant show that the Examiner erred in finding that the
combination of Dodd and Schoch teaches that a plurality of second sub-
ranges result “in response to a determination that more than one tag has a
register value within a given first sub-range”?

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FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns a method and
system for resolving contentions among passive identification tags within
any Radio Frequency Identifications system. Employing a tree-splitting
algorithm, a reader may divide a possible range of values into a number of
smaller ranges. For each successive range, the reader may then poll the tags
to determine which tags have tag values that fall within the smaller range. If
more than one tag responds simultaneously, then the reader may further
divide the smaller range into even smaller ranges and poll the tags with
respect to those even smaller ranges. Once the range partition gets small
enough, the reader may then opt to poll the tags for a match of each possible
value in the range, rather than partitioning further. This arrangement enables
the reader to efficiently identify tags, by quickly eliminating from analysis
any range of tag values to which no tags match or only one tag matches
(Abstract; Spec. 2:6-12; 6:16 - 7:22).
Dodd
2. Dodd teaches access control equipment that includes an
interrogation unit which emits an interrogation signal to a plurality of
transponders wherein each transponder has a distinct, stored identity code
having a plurality of fields. The interrogation unit determines the identity of
each and every valid transponder within range by sending an interrogation
signal to all transponders within range to interrogate the fields of each
transponder in a serial manner using a tree search wherein successive
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interrogations are narrowed such that only those transponders for which
group reply signals have been received are further interrogated. Any
transponder having a matching bit designated by the interrogation signal
sends a group reply signal back to the interrogation unit. (Abstract, Fig. 1A,
1B, col. 7, ll. 47-55).
3. Dodd teaches that the equipment can operate regardless of the
number of transponders within range. The group reply signals do not
interfere one with another, wherein there is clear resolution of the signals.
Each transponder is only required to transmit an identity code once in an
entire interrogation sequence (col. 2, ll. 39-47).
4. Dodd’s objective is to provide “[t]he simplest (and fastest) tree
search” (col. 4 ll. 46-53, 62-63, col. 5, ll. 57-59).
5. Dodd teaches that a tree search requires an n-level search for an
n-bit number. Dodd acknowledges that the time savings are only significant
with this type of tree search when there are a large number of transponders,
e.g., 65536 transponders require only 16 interrogations (col. 4 ll. 43-53).

Schoch
6. Schoch teaches a communication system that includes a
controller and a plurality of data terminals, wherein the controller polls each
data terminal which in response transmits a data message that includes
protocol data and its terminal identification number over a radio frequency
channel back to the controller (Abstract, col. 5, ll. 9-12)
7. Schoch teaches that the controller effectively assigns data
terminals to polling groups based on the number of data collisions that
occur, and dynamically adjusts the number of groups as the number of
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collisions changes. Each data terminal can transmit data only when its group
is polled, and cannot transmit out of turn because of a polling signal
transmitted by the controller (col. 2, ll. 37-46).
8. Schoch teaches that the protocol control for data transmission is
dynamically changed from a contention protocol to a polling protocol and to
intermediate combinations of the two in response to the data transmission
needs of the system's users. When the system is heavily loaded, a polling
protocol is used in which each user is granted time in sequence. When the
system becomes less heavily loaded, users are divided into groups that are
then polled, the size of the groups being selected on the basis of the number
of users having data to transmit. When the system is lightly loaded, all of
the users are assigned to one large group, in effect adopting a contention
protocol (col. 2, ll. 15-36).
Brophy
9. Brophy teaches an adaptive polling technique and probing
system wherein a polling station queries groups of remote stations and, in
the event that an acknowledgement is received from a group, proceeds to
probe the group by calling smaller and smaller subgroups using a tree search
technique until an individual remote station acknowledging the probe is
called whereupon this remote station returns a stored message (Fig. 1, col. 2,
l. 54-col. 3, l. 26).

PRINCIPLES OF LAW
When evaluating the scope of a claim, every limitation in the claim
must be considered. It is improper to dissect a claimed invention into
discrete elements and then evaluate the elements in isolation. Instead, the
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claim as a whole must be considered. Diamond v. Diehr, 450 U.S. 175, 188
(Fed. Cir. 1981) ("It is inappropriate to dissect the claims into old and new
elements and then to ignore the presence of the old elements in the
analysis.").
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991). If the proposed modification would render the prior
art invention being modified unsatisfactory for its intended purpose, then
there is no suggestion or motivation to make the proposed modification. In
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re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court
has held that “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. v. SGS Importers
Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).
If the proposed modification or combination of the prior art would
change the principle of operation of the prior art invention being modified,
then the teachings of the references are not sufficient to render the claims
prima facie obvious. In re Ratti, 270 F.2d 810 (CCPA 1959) (Claims were
directed to an oil seal comprising a bore engaging portion with outwardly
biased resilient spring fingers inserted in a resilient sealing member. The
primary reference relied upon by the Examiner disclosed an oil seal wherein
the bore engaging portion was reinforced by a cylindrical sheet metal casing.
The primary reference taught the device required rigidity for operation,
whereas the claimed invention required resiliency.) The court reversed the
rejection holding the "suggested combination of references would require a
substantial reconstruction and redesign of the elements shown in [the
primary reference] as well as a change in the basic principle under which the
[primary reference] construction was designed to operate" Id. at 813.

ANALYSIS
Claims 1-3 and 5-10
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
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Claim 1 recites “splitting the predetermined range into a plurality of
first sub-ranges; for each first sub-range, requesting each tag whose register
value falls within the first sub-range to communicate the tag's identification
value; and in response to a determination that more than one tag has a
register value within a given first sub-range: splitting the given first sub-
range into a plurality of second sub-ranges; and for each second sub-range,
requesting each tag whose register value falls within the second sub-range to
communicate the tag's identification value.”
Appellant contends that the Examiner erred in finding that the
combination of Dodd and Schoch would not change Dodd’s principle of
operation, which Appellant perceives to require a tree search in which “an n-
bit number requires an n-level search” (App. Br. 3, FF 5). Appellant
contends that the Examiner has improperly dissected Appellant’s claimed
invention into discrete elements, since claim 1 does not merely recite tags
responding with their identification values but that the plurality of second
sub-ranges result “in response to a determination that more than one tag has
a register value within a given first sub-range” (App. Br. 6).
The Examiner finds that the combination of Dodd and Schoch would
not change the principle operation of Dodd, since it would have been
obvious to one of ordinary skill in the art at the time of the invention to have
the tags of Dodd respond to group polls with their unique ID, as taught in
Schoch, in an effort to reduce the number of sub-group polls during a lightly
loaded operation (Ans. 7; FF 2, 6). The Examiner finds that Dodd discloses
that the access control equipment can operate regardless of the number of
transponders within range, wherein the interrogation unit will analyze the
series of group reply signals and will be informed by those signals of the
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identity codes of those transponders present (Ans. 5, FF 3). In response to
Appellant’s argument that the Examiner improperly dissected the
Appellant’s claimed invention, the Examiner finds that Dodd's interrogation
process splits the transponders into a plurality of sub-groups, wherein each
sub-group is formed in response to a group reply signal (Ans. 8, FF 2.
We are not persuaded by Appellant’s arguments. We do not find that
inclusion of the teachings of Schoch, wherein the interrogation unit requests
the identification number from the transponders, would change the basic
principle of operation of Dodd, for the following reasons. First, Dodd
teaches that the identity code of the transponder is transmitted to the
interrogation unit (FF 3). Further, Dodd’s objective is to provide “the
simplest (and fastest) tree search” (FF 4). Although the tree search of Dodd
requires an n-level search for an n-bit number, Dodd acknowledges that this
requirement only provides significant time savings when there is a large
number of transponders, i.e. 65536 transponders require only 16
interrogations (FF 5). Enhancing the teachings of Dodd with those of
Schoch will further improve the access control equipment such that fewer
interrogations are required. Accordingly, we agree with the Examiner that it
is clear that those skilled in the art would have been motivated to combine
the teachings of Dodd and Schoch to provide “the simplest (and fastest) tree
search” by reducing the number of sub-group polls when the system is
lightly loaded (Ans. 7, FF 5).
Moreover, we agree with the Examiner’s finding that Dodd discloses
that the access control equipment can operate irrespective of the number of
transponders within range, wherein the interrogation unit will analyze the
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series of group reply signals and will be informed by those signals of the
identity codes of those transponders present (Ans. 5, FF 3).
Finally, we agree with the Examiner’s finding that Dodd's
interrogation process splits the transponders into a plurality of sub-groups,
wherein each sub-group is formed in response to a group reply signal (Ans.
8, FF 2 . Therefore, we find that the combination of Dodd and Schoch
teaches that a plurality of second sub-ranges result “in response to a
determination that more than one tag has a register value within a given first
sub-range,” as required by claim 1.
We therefore find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 103, nor that of dependent claims 2-3 and 5-10.
Claim 4
Appellant argues that claim 4 is allowable for the reasons presented
with regard to respective independent claim 1 without presenting any
argument as to why this claim should be separately patentable. (App. Br. 8).
As noted supra, we affirmed the rejection of claim 1. Therefore,
because Appellant has failed to identify any error in the Examiner’s rejection
of claim 1 under 35 U.S.C. § 103, we affirm the Examiner’s rejection of
claim 4 under 35 U.S.C. § 103 over Dodd and Schoch in view of Brophy, for
the same reasons expressed with respect to parent claim 1, supra.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in finding that the
combination of Dodd and Schoch would not change Dodd’s principle of
operation.
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Appellant has not shown that the Examiner erred in finding that the
combination of Dodd and Schoch teaches that a plurality of second sub-
ranges result “in response to a determination that more than one tag has a
register value within a given first sub-range.”

ORDER
The Examiner’s rejection of claims 1-10 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)(1)(iv).

AFFIRMED

ELD

HONEYWELL INTERNATIONAL INC.
101 COLUMBIA ROAD
P O BOX 2245
MORRISTOWN, NJ 07962

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