Ex Parte Wacyk

Board of Patent Appeals and Interferences

Aug 23, 2006

09903882 (B.P.A.I. Aug. 23, 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not binding precedent of the Board.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 IHOR WACYK
__________

Appeal No. 2006-1156
Application No. 09/903,882
___________

ON BRIEF
___________

Before HAIRSTON, KRASS, and SAADAT, Administrative Patent Judges.

KRASS, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the final rejection of claims 1-4 and 9-17. Claims 5-8
have been indicated by the examiner as being directed to allowable subject matter and are not
before us on appeal.
The invention pertains to wireless control of one or more nearby devices, best illustrated
by reference to representative independent claim 1, reproduced as follows:
1. A system comprising a wireless controller that binds one or more devices from a
neighborhood group of devices to the controller, the controller having a processor that processes
data and formats signals and a transceiver that transmits and receives signals, the controller in a
binding procedure transmitting an address inquiry signal to an address (ADDR1) of a first device
in the neighborhood, receiving back a response to the address inquiry signal from the first
device, determining whether one or more additional responses to the address inquiry signal are
received from one or more of the other devices in the neighborhood group, and sending a
randomize address signal addressed to ADDR1 if one or more additional responses to the
address inquiry signal is received.
The examiner relies on the following references:
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Houggy et al. (Houggy) 5,838,226 Nov. 17, 1998

Winder et al. (Winder) 6,133,832 Oct. 17, 2000

Kowalski et al. (Kowalski) 6,337,619 Jan. 08, 2002
(filed Nov. 06, 1998)

Guerrieri et al. (Guerrieri) 2002/0084890 Jul. 04, 2002
(filed Dec. 28, 2000)

Armstrong et al. (Armstrong) 2002/0175805 Nov. 28, 2002
(filed Nov. 29, 2000)

Claims 1-4 and 9-17 stand rejected under 35 U.S.C. § 103. As evidence of obviousness,
the examiner offers Kowalski and Armstrong with regard to claims 1-3, 12, and 13, adding
Winder with regard to claims 4 and 14-16. With regard to claims 9 and 10, the examiner offers
Armstrong and Houggy, adding Guerrieri with regard to claim 11. The examiner offers
Kowalski, Armstrong, and Guerrieri with regard to claim 17.
Reference is made to the briefs and answer for the respective positions of appellant and
the examiner.

OPINION
While the examiner recognizes that Kowalski does not describe a step of sending an
interrogation signal or address inquiry signal to determine the presence of modules having a
specific address, “the common knowledge of controllers transmitting interrogation signals

addressed to specific transponders is taken to be admitted prior art since the applicant failed to
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traverse the examiner’s assertion of official notice…” (answer-page 5). Thus, the examiner
concluded that it would have been obvious to modify Kowalski such that terminal T or a
controller transmits an address inquiry signal addressed to a specific transponder 150 in order to
determine the presence of modules having a specific address and to identify duplicate addresses
prior to transmitting commands, thereby preventing the reception of a command by a plurality of
modules having the same addresses.
The examiner also recognized that Kowalski does not describe the claimed steps of
determining whether one or more additional responses to the address inquiry are received from
one or more modules in the group, instructing all devices having the same address to generate a
random address, and repeating the entire process if one or more additional responses are
received.
The examiner turned to Armstrong for its teaching at paragraph [0062] of transmitting a
command to transponders 150 and determining from the received signals if there is a transponder
150 that has the same Tag ID or address as another transponder 150, as well as the host computer
100 transmitting a Re-select ID command or “Randomize Address” signal to a group of
transponders 150 having the same Tag ID, and instructing transponders 150 to generate a
random Tag ID.
The examiner concluded that it would have been obvious to modify Kowalski with
Armstrong “because causing modules/device to generate random addresses upon detection of
duplicate addresses greatly reduces interference and enables terminal T/controller to control
and/or communicate with a particular module” (answer-page 6).
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For his part, appellant asserts that the examiner has failed to present a prima facie case of
obviousness with regard to claim 1 because the examiner has relied on Official Notice for
transmitting an address inquiry signal to an address despite appellant’s traversal of that Notice;
the examiner has failed to cite a reference that describes determining whether more than one
response is received to an address inquiry signal; and the examiner has failed to cite a reference
that teaches sending a randomize address signal addressed to a specific address (principal brief-
page 15).
We have considered the evidence before us, including, inter alia, the disclosures of the
applied references and the arguments of appellant and the examiner, and we conclude therefrom
that the examiner has established a prima facie case of obviousness with regard to independent
claim 1 that has not been successfully rebutted by appellant.
We adopt the examiner’s reasoning as our own and respond to appellant’s arguments.
Appellant first argues that appellant did traverse the examiner’s taking of Official Notice
that was well known to transmit an address inquiry signal to an address. However, appellant
merely points to a statement by appellant in an earlier paper (“Appellant’s Response to Office
Action mailed December 10, 2003, page 20, last two lines” – see page 12 of the principal brief),
viz., “‘The Applicant denies any statement, position or averment of the Examiner that is not
specifically addressed by the foregoing argument and response.’” We agree with the examiner
that this is not a proper traversal of the examiner’s taking of Official Notice as it does not
directly respond to that of which the examiner takes Official Notice. The statement does not
indicate with what, exactly, appellant disagrees.
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Moreover, at page 11 of the answer, the examiner proffers evidence in the form of two
U.S. Patents (5,798,693 and 5,952,922) alleged to show that “transmitting an address inquiry
signal to an address” was well known in the art, and appellant never addresses this showing by
the examiner even though appellant did file a reply brief.
Accordingly, we accept as true the examiner’s allegation that “transmitting an address
inquiry signal to an address” was well known in the art.
Appellant also argued that the examiner failed to cite a reference that describes
determining whether more than one response is received to an address inquiry signal. Again, we
disagree. At the bottom of page 9 (Paragraph [0063]) of Armstrong, it is indicated that if it is
found that the Tag ID of a particular transponder is identical to an existing Tag ID, then a
Replace Tag ID command is given. Now, while Armstrong is not specific on exactly how it is
determined that two Tag IDs are identical, other than that a Tag ID is identical to an existing Tag
ID stored in memory in host computer 100, it would appear reasonable, and obvious, that a
device was addressed and responsive to that addressing, the device responded, with that device
having the same address, or Tag ID, as another responding device. In any event, Armstrong is
clearly suggesting that there is more than one response to some type of address inquiry signal,
and it is determined that the Tag IDs of these responding units are identical, at which point a
command is given for one of the duplicate Tag IDs to be replaced. Thus, there is some
determination in Armstrong of whether there is more than one response to an address inquiry
signal.
Appellant also asserts that the examiner has failed to cite a reference that teaches sending
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a randomize address signal addressed to a specific address. We disagree. In Armstrong, in
Paragraph [0062], in the Reselect Tag ID mode, a command is issued to select a new Tag ID
when it is found that there are duplicate Tag IDs. This is a randomization step since each
transponder randomly selects a new Tag ID in response to that command.
Having considered each of appellant’s arguments regarding the rejection of independent
claim 1, and having found the arguments unpersuasive of nonobviousness, we will sustain the
rejection of claim 1 under 35 U.S.C. § 103.
With regard to claim 2, appellant argues that although Kowalski may teach a controller
sending a transmit address request signal to the devices in a neighborhood group, any established
communication will be with the addressed module because the reference assumes a system
containing uniquely addressed modules. Moreover, argues appellant, if Kowalski is combined
with Armstrong, a person would establish a separate interrogation zone in which to detect the
duplicate data of more than one module having the same identification data. Appellant notes that
this would not result in using a first address received from neighborhood devices in response to
an address request signal as address ADDR1 of a first device in the neighborhood, transmitting

an address inquiry signal to address ADDR1, and determining whether more than one response is
received to the address inquiry signal, as required by claim 2.
We will sustain the rejection of claim 2 under 35 U.S.C. § 103.
Kowalski clearly teaches (see the abstract, for example) the concept of selecting a
module that responds first to a signal sent by a controller. Thus, Kowalski taught a controller
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that sends a transmit address request signal to neighborhood devices and uses a first address
received from the devices in response to the address request signal. That address may be labeled
ADDR1. This step is performed prior to any later transmission of an address inquiry signal to
address ADDR1 of the first device because the controller did not yet have the address ADDR1 of
the first device until after the response to the address request signal. At this point, the
combination of Kowalski/Armstrong suggested the transmission of an address inquiry signal to
the address of the first device, as well as the remaining elements of the system of claims 1 and 2
for the reasons set forth supra with regard to claim 1.
With regard to claim 3, appellant argues that while the examiner asserts that actions (a)–
(d) are suggested by Kowalski in order for terminal T to select other modules that have yet to
communicate with terminal T, and that action (f) is suggested by Armstrong’s transmitting a
Reselect Tag ID command, the examiner does not assert that Armstrong teaches repeating action
(e), determining whether more than one device responds to an address inquiry signal sent to a
specified address.

We agree with the examiner (answer-page 15) that because Armstrong teaches that the
process of transmitting a Reselect Tag ID command continues until each transponder has a
unique Tag ID, a step (e), as recited in claim 3, i.e., determining whether one or more additional
responses to the address inquiry signal are received from one or more of the other devices, must
also be repeated in Armstrong.
Accordingly, we will sustain the rejection of claim 3 under 35 U.S.C. § 103.
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Turning to independent claim 12, we will also sustain the rejection of this claim under 35
U.S.C. § 103 as the arguments are similar to those addressed supra with regard to claims 1-3. In
addition, appellant again argues that Armstrong teaches that duplicate addresses are detected by
comparison to existing addresses stored in the memory of a host computer rather than
determining whether more than one response is received to query as to whether devices have a
specified address, as recited in claim 12. We do not find a comparison technique and a
determination of whether one or more responses is received to query as to whether devices have
a specified address to be mutually exclusive.
For the reasons set forth by the examiner, regarding claims 1-3, we will also sustain the
rejection of claim 12 under 35 U.S.C. § 103.
Since appellant’s arguments regarding claim 13 appear to be identical to previous
arguments, for the reasons supra, we will also sustain the rejection of claim 13 under 35 U.S.C.
§ 103.

The rejection of claims 4 and 14-16 depends on the Winder reference in addition to the
Kowalski and Armstrong references.
With regard to claims 4 and 14 the examiner relied on Winder’s teaching of an audible or
visual output from a receiver tag when activated for the claimed sensory output of a device that
identifies itself to an operator. Appellant merely incorporates the same arguments as before in
the argument regarding these claims (see page 31 of the principal brief). Accordingly, we will
sustain the rejection of claims 4 and 14 under 35 U.S.C. § 103.
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With regard to claim 15, in addition to similar arguments made before, appellant
indicates that the limitation of “binding the first device as part of the control group” is not taught
by Kowalski’s module in an EXEC state, as asserted by the examiner, because the object of
Kowalski is to select a single module from a plurality of modules in order to establish
communication between a terminal and the selected module. Thus, appellant concludes,
Kowalski cannot suggest binding a module to a group, as recited in claim 15.
We agree with the examiner, at page 18 of the answer, that a control group can have a
single device, as suggested by even appellant’s disclosure of binding “one or more” lamps.
Moreover, as pointed out by the examiner, at page 18 of the answer, the modules with which T
establishes communication in Kowalski and are commanded to perform operations are
understood to be part of a control group.
Accordingly, we will sustain the rejection of claim 15 under 35 U.S.C. § 103.

We will also sustain the rejection of claim 16 under 35 U.S.C. § 103 for the reasons given
by the examiner at page 19 of the answer in response to appellant’s argument at pages 34-35 of
the principal brief.
The rejection of claims 9 and 10 depends on a combination of Armstrong and Houggy.
The examiner pointed to the description of Armstrong’s transponder 150 shown in Figure 11 and
noted that Armstrong disclosed the claimed subject matter but for the processor of the
transponder transmitting a response to the host computer 100 after a predetermined time period
upon receiving a Read Tag ID command or address request signal. The examiner turned to
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Houggy to show a processor programmed to transmit status information in an assigned time slot
and found that it would have been obvious to modify Armstrong’s transponder 150 with the
teachings of Houggy such that Armstrong’s transponder transmits the address in an assigned
time slot upon receiving a Read Tag ID command in order to avoid interference, noting such an
advantage taught by Houggy at column 3, lines 2-4.
Appellant argues that the time slots of Houggy are synchronized to the zero crossings of
the AC power supplied to the master station and that the point in time at which a dimmer in
Houggy transmits its status is determined by the timing of a subsequent zero crossing of the AC
power line, rather than by the passing of a pre-determined period of time after the receipt of a
command, as in claim 9.
For the reasons set forth by the examiner, at pages 19-20 of the answer, reasons which we
adopt as our own, we will sustain the rejection of claim 9 under 35 U.S.C. § 103. Quite clearly,
a “‘pre-determined period of time after receipt of an address request signal’” can be interpreted
as set forth by the examiner at pages 19-20 of the answer.
Similarly, we will also sustain the rejection of claim 10 under 35 U.S.C. § 103 for the
reasons given by the examiner at page 20 of the answer, wherein the examiner has shown that
the Replace Tag ID of Armstrong may be considered the claimed “‘signal addressed to the
address and comprising a new address.’” Appellant’s argument that Armstrong uses two signals
to reprogram a transponder Tag ID is not persuasive.
The rejection of claim 11 is based on the combination of Armstrong and Houggy with the
addition of Guerrieri. The examiner employs Guerrieri for the teaching of a lamp comprising a
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transponder. Appellant does not argue this combination except to rely on previous arguments
made with regard to claims 9 and 10. Accordingly, we will sustain the rejection of claim 11
under 35 U.S.C. § 103.
Finally, with regard to claim 17, this rejection is based on a combination of Kowalski,
Armstrong and Guerrieri. Appellant merely relies on the arguments made previously anent
claim 12. Accordingly, we will sustain the rejection of claim 17 under 35 U.S.C. § 103.
The examiner’s decision rejecting claims 1-4 and 9-17 under 35 U.S.C. § 103 is affirmed.

No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED

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Application No. 09/903,882

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KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )

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