Ex Parte Zegowitz

Patent Trial and Appeal Board

Jun 22, 2017

12720794 (P.T.A.B. Jun. 22, 2017)

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.)
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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
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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.
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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.
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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,
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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
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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.)
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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
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