Ex Parte ZegowitzDownload PDFPatent Trial and Appeal BoardJun 22, 201712720794 (P.T.A.B. Jun. 22, 2017) 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. 12/720,794 03/10/2010 Guenter Zegowitz 27602-0022001 9823 26211 7590 06/26/2017 FISH & RICHARDSON P.C. (NY) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER WHALEN, MICHAEL F ART UNIT PAPER NUMBER 3665 NOTIFICATION DATE DELIVERY MODE 06/26/2017 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUENTER ZEGOWITZ Appeal 2016-002114 Application 12/720,7941 Technology Center 3600 Before CARLA M. KRIVAK, BRUCE R. WINSOR, and SHARON FENICK, Administrative Patent Judges. FENICK, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1—4, 6—11, and 14—18. (Appeal Br. 7.) Claims 5, 12, and 13 have been cancelled. (Final Action 2.) We have jurisdiction under 35 U.S.C. § 6(b)(1). We AFFIRM. Invention Appellant’s invention relates to a road finisher comprising a tractor with a control unit and at least one auxiliary component adapted to be 1 Appellant identifies WIRTGEN GROUP Holding GmbH and JOSEPH VOEGELE AG as the real parties in interest. (Appeal Br. 2.) Appeal 2016-002114 Application 12/720,794 selectively attached to the tractor. The auxiliary component includes an RFID (radio frequency identification) transponder and the control unit receives information from the transponder to provide information regarding the auxiliary component to the control unit. Additionally, transit time of signals from the RFID transponder may be used to determine distance to the auxiliary component. (Spec. 3—5, 7, Abstract.) Exemplary Claim Claim 1, reproduced below, is exemplary: 1. A road finisher comprising a tractor, a programmed or programmable control unit, and at least one mechanical auxiliary component configured to be selectively attached to the tractor, the at least one mechanical auxiliary component includes an RFID (radio frequency identification) transponder, the tractor having a read head suitable for reading the output of the RFID transponder, and wherein the identification of the auxiliary component read by the read head is supplied to the control unit, and the road finisher having a sensor for measuring a length characterizing the current position or dimensions of a component so as to configure, in dependence upon the measured length, in the control unit the program used for controlling the road finisher and wherein the sensor is configured to measure the length by means of a transit time measurement of the radio waves emitted by the read head to communicate with the RFID transponder under the high temperatures required for roadmaking. Rejection The Examiner rejects claims 1—4, 6—11, and 14—18 under 35 U.S.C. § 103(a) as unpatentable over Baldinger et al. (EP 2018981 Al; pub. Jan. 1, 2009) (hereinafter “Poettinger”2), Buschmann (US 2007/0243017 Al; pub. 2 Both the Examiner and Appellant refer to this reference by the applicant name (Alois Pottinger) as “Poettinger” or “Pottinger” rather than by inventor 2 Appeal 2016-002114 Application 12/720,794 Oct. 18, 2007), and Breed et al. (US 6,748,797 B2; iss. June 15, 2004) (hereinafter “Breed”). (Final Action 4—13.) Issues A. Did the Examiner err in finding that Poettinger is analogous prior art? B. Did the Examiner err finding that claim 1 is unpatentable over the combination of Poettinger, Breed, and Buschmann? ANALYSIS A. Poettinger as Analogous Prior Art The Examiner cites Poettinger, in combination with Buschmann and Breed, in rejecting claim 1. (Final Action 4—6.) Appellant argues that Poettinger is not analogous art. (Appeal Br. 7—11.) The two-prong test to define the scope of analogous prior art is (1) “whether the art is from the same field of endeavor, regardless of the problem addressed,” and (2) even “if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004.) With respect to the first prong, the Examiner finds that Poettinger and the instant invention “address the issue of detecting an attachment to a vehicle using an RFID system” and that both are “in the field of attaching an implement to a tractor.” (Final Action 2—3.) The Examiner additionally finds that Poettinger and the instant invention both relate to a way to name (see generally Final Action 2—5, Appeal Br. 7—11); we adopt their usage for consistency. 3 Appeal 2016-002114 Application 12/720,794 communicate with an auxiliary component. (Answer 2.) In addition, the Examiner makes findings regarding the second prong, finding that Poettinger is reasonably pertinent to the problem of “using an RFID system to detect an attachment.” (Final Action 3.) Appellant argues that Poettinger is an agricultural device, in contrast to Buschmann which is a road-fmishing machine. (Appeal Br. 8.) While the proper determination is whether the art being considered is from the inventor’s field of endeavor (as opposed to whether it is from the field of another applied reference) we understand Appellant to be arguing that Poettinger and the invention are not in the same field of endeavor of road- fmishing machines. Appellant also argues that Poettinger is not reasonably pertinent to the problem addressed by the appellant, because “Poettinger . . . does not deal with the problem of high temperature bitumen emulsion that is encountered in road finishing (paving) machines.” (Appeal Br. 8—9.) We agree with the Examiner that Poettinger is prior art which would be reasonably pertinent to the particular problem with which the inventor was involved, and thus is analogous art under the second prong of the analogous art test. The Federal Circuit notes, “[t]he Supreme Court[] . . . directs us to construe the scope of analogous art broadly” because “'familiar items may have obvious uses beyond their primary purposes.” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting with emphasis, KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007)). While the references may or may not be in different fields,3 we agree with the 3 Because we find Poettinger is reasonably pertinent to Appellant’s problem, we need not decide whether or not Poettinger is in Appellant’s field of endeavor. 4 Appeal 2016-002114 Application 12/720,794 Examiner that in construing the scope of analogous art broadly, Poettinger’s agricultural device using an RFID system to detect an attachment would have been reasonably pertinent to an inventor facing a problem of detecting attachments to a tractor of road finishing machine. Additionally, we note while Appellant argues that the problem with which the inventor was involved occurs in the context of high temperature bitumen emulsion, Appellant’s Specification describes, in addition to spray paver components such as those applying binders such as bitumen emulsion, other auxiliary components such as screeds. (Spec. 1.) Thus, we are not persuaded that Appellant was solely concerned with spray paver auxiliary components for a road-finishing, let alone spray paver auxiliary components for application of bitumen emulsion. B. Combination of Poettinger, Breed, and Buschmann The Examiner rejects claim 1 over a combination of Poettinger, Breed, and Buschmann. (Final Action 4—6.) The Examiner specifically finds that one of ordinary skill in the art would combine Poettinger and Buschmann to “allow a machine to monitor attachments for finishing a road, thus making the system easier to use” {id. at 5), and would further combine the teachings of Breed to determine a distance in a cost-effective way using RFID technology {id. at 6.) Appellant argues that one of ordinary skill in the art would not use an RFID sensor, such as those found in Poettinger and Breed, in a road finishing machine such as that found in Buschmann. (Appeal Br. 11—12; Reply Br. 2—3.) Appellant contends that “the inventor overcame the previously existing belief that RFID chips are heat sensitive and cannot be deployed in high temperature environments.” (Reply Br. 2.) In fact, 5 Appeal 2016-002114 Application 12/720,794 according to the Appellant, “the invention included the discovery that ordinary RFID chips could survive and operate successfully in the high temperature and contaminant filled environment encountered in road paving.” (Reply Br. 1.) Appellant notes that the Specification discloses high temperatures will not impair the efficiency of RFID communications {Id. at 2, citing Spec. 4:4—7.) Appellant further notes that the Isemura reference, relied upon by the Examiner to show heat-resistant RFID tags, in fact discloses that RFID tags are subject to adverse effects caused by high heat. (Appeal Br. 10.) One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of “unexpected results,” i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). However, for us to find unexpected results to be probative of non obviousness, the record must show “(1) that there actually is a difference between the results obtained through the claimed invention and those of the prior art; and (2) that the difference actually obtained would not have been expected by one skilled in the art at the time of invention.” In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citations omitted). In this case, Appellant does not persuasively show that RFID sensors were thought to be heat sensitive and not usable in the claimed context, and thus that the results achieved were unexpected. We agree with the Examiner that the only evidence in our record which supports Appellant’s contention is the indication in Isemura that an RFID chip might not be affixed to a sheet of paper before it is printed in a situation combining high temperature and high pressure. (Answer 4, citing Isemura 197.) We further note that Isemura 6 Appeal 2016-002114 Application 12/720,794 contains other embodiments in which an RFID chip is attached to a printing sheet before printing. (See Isemura 1103.) Appellant’s specification notes only that RFID communications would not be subject to adverse effects of high heat, but not that this was unexpected. Given the evidence before us, Appellant has not persuasively shown that the results achieved were unexpected, compared with the prior art applied by the Examiner. Appellant additionally argues Poettinger and Breed are from disparate technical fields which “weighs in favor of non-obviousness.” (Reply Br. 3.) However, we are mindful that “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellant also argues that Breed includes a temperature sensor; that Breed’s seats are permanently attached and not “mechanical auxiliary components;” and that one of ordinary skill would not combine Breed with Poettinger and Buschmann. (Appeal Br. 12.) However, the Examiner uses Breed’s teaching or suggestion of a distance measurement technique, in the proposed combination, and not Breed’s thermal sensor or seats, and further provides a motivation for the combination not addressed by Appellant’s arguments. (Final Action 6). We are not persuaded by Appellant’s arguments that the Examiner erred in rejecting claim 1. Therefore, we sustain the obviousness rejection of claim 1, as well as the rejection of independent claims 16 and 17 and dependent claims 2-4, 6—11, 14, 15, and 18, argued on the same basis. (Appeal Br. 7, 12.) 7 Appeal 2016-002114 Application 12/720,794 DECISION The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1—4, 6—11, and 14—18 is affirmed. Pursuant to 37 C.F.R. § 1.136(a)( 1 )(iv), no time period for taking any subsequent action in connection with this appeal may be extended. AFFIRMED 8 Copy with citationCopy as parenthetical citation