Zest Labs, Inc.

Patent Trials and Appeals Board

Mar 2, 2021

2019005286 (P.T.A.B. Mar. 2, 2021)

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.
15/729,417 10/10/2017 William Henry Bares IFLXP039A 7838
28875 7590 03/02/2021
Zilka-Kotab, PC
1155 N. 1st St.
Suite 105
SAN JOSE, CA 95112
EXAMINER
HUNNINGS, TRAVIS R
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
03/02/2021 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):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM HENERY BARES and PETER ARNOLD MEHRING
____________________

Appeal 2019-005286
Application 15/729,417
Technology Center 2600
____________________

Before ROBERT E. NAPPI, MARC S. HOFF, and BETH Z. SHAW,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 through 31. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Zest Labs Inc. is the real party in
interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a method to coordinate RFID reader
transmissions. See Spec. Abstract. Claim 1 is reproduced below.
1. A method for coordinating reader transmissions,
comprising:
at a first reader, receiving from a second reader a request
to transmit to a radio frequency identification tag;
in response to receiving the request, determining whether
the first reader is transmitting;
and
sending a denial of the request from the first reader to the
second reader in response to determining that the first reader is
transmitting.
Appeal Br. 97 (Claims Appendix).

REJECTIONS2
The Examiner rejected claims 1 through 7, 10 through 16, and 19
through 31 under 35 U.S.C. § 103 as unpatentable over Powell (US
7,969,282 B2, published June 28, 2011), and Choi (US 2007/0126554 A1,
published June 7, 2007). Final Act 2–8.
The Examiner rejected claim 1 through 5, and 8 through 31 based
upon nonstatutory double patenting over claims 1 through 27 of Bares (US
Patent 9,805,222 B2, published Oct. 31, 2017). Final Act 9.

2 Throughout this Decision we refer to the Appeal Brief filed April 15, 2019
(“Appeal Br.”); Reply Brief filed June 28, 2019 (“Reply Br.”); Final Office
Action mailed October 16, 2018 (“Final Act.”); and the Examiner’s Answer
mailed May 9, 2019 (“Ans.”).
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Obviousness Rejections
Claims 1 through 4, 7 and 27
With respect to claims 1 through 4 and 7, Appellant has argued these
claims together on pages 9 through 13 of the Appeal Brief and pages 2
through 7 of the Reply Brief. Appellant argues that the combination of the
references do not teach the claim 1 limitation of “in response to receiving the
request, determining whether the first reader is transmitting; and sending a
denial of the request from the first reader to the second reader in response to
determining that the first reader is transmitting.” Appeal Br. 10. Appellant’s
arguments focus on Choi, and argue that Choi does not teach sending a
denial message from a first reader to a second reader, alleging that in Choi,
the denial message is sent from a connection manager, which is not a reader.
Id. Appellant additionally argues that the Examiner has not shown that the
skilled artisan would be motivated to combine the references and that the
Examiner has shown that a skilled artisan would have had reasonable
success in implementing the proposed combination. Id. at 11–13.
With respect to claim 27, Appellant identifies that the Examiner
rejected this claim applying the same rationale as claim 1 and that the
rejection of claim 27 is in error for the same reasons as claim 1. Appeal Br.
55–58; Reply Br. 35–37.
The Examiner provided a comprehensive response to Appellant’s
arguments directed to claim 1 on pages 3 and 4 of the Answer. In the
response, the Examiner states:
Choi is not being used to teach the source of transmission
but rather that a denial of a request to transmit can be sent to a
reader. Powell already discloses that two readers can
communicate between one another (Powell: column 8, lines48-
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49 “the reader may request and receive approval from the
reader network” and figures 4 and 5 showing communication
between readers in the network). Choi is only being used to
teach what the content of the communication may be, namely a
“denial” of a request to transmit.

Ans. 3. Further, with respect to the rationale for combining the references
the Examiner considers that because Powell teaches sending an approval but
does not send a denial (as claimed), the additional step of adding a denial
message would add to the system and that a:
step would provide the system with a way to determine if they
are in fact denied permission to transmit as opposed to the
Powell system where the lack of receiving an approval
transmission could mean either 1) the approval was not granted
or 2) there was some interference that caused the approval
transmission to fail to be received. In the system of Powell and
Choi shown in the rejection to claim 1, the lack of receiving an
approval or denial transmission would alert the system to the
presence of that interference
Ans. 4.
We have reviewed the teachings of Powell and Choi and concur with
the Examiner’s findings and conclusions. Powell teaches a system with
plural RFID tag readers, and where the readers communicate with each other
in a distributed elements network. Powell, Abstract. Powell, in numerous
instances, identifies that the communication between the readers includes
requesting and receiving approval to issue an interrogation command (to
transmit). See e.g. Powell col. 8, ll. 3–5, 48–51. Choi teaches a system with
multiple RFID readers that includes a central connection manager from
which individual readers make requests to connect to the system and
transmit. See Choi, ¶ 22. Choi teaches that the central connection manager
may send a denial of the reader’s request to activate or an approval to
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activate. See Choi, Fig 2b, and ¶ 22 and discussion of step 223(denying
activation of the reader) and step 229(activating the reader). While Choi
teaches the source of the denial is from a central controller and not a reader,
as argued by Appellant, the Examiner’s rejection is based on Choi’s teaching
of issuing a denial to a request combined with Powell’s system. We concur
with the Examiner’s conclusion that the skilled artisan would recognize that
it would have been obvious to modify Powell, which already teaches an
approval to activation command similar to the command in Choi step 229, to
also include a denial message as taught by Choi if approval is not granted
(i.e., affirmatively identify that approval is not granted).
Further, we are not persuaded by Appellant’s arguments that the
Examiner did not provide sufficient motivation to combine the teachings of
Powell and Choi. In KSR, the Supreme Court rejected the rigid application
of the teaching, suggestion, or motivation (TSM) test in favor of a more
expansive and flexible approach to the determination of obviousness. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). The determination of
obviousness can be supported with an “articulated reasoning with [a]
rational underpinning to support the legal conclusion of obviousness.” Id.
We consider the Examiner’s rationale to combine the references, reproduced
above, which is based upon teachings of the references, to be a reasoned
rationale. We note that this combination is merely modifying Powell to
affirmatively identify that approval is not granted. We do not consider
modifying Powell to communicate positive and negative approval “uniquely
challenging or difficult for one of ordinary skill in the art” or “represent[] an
unobvious step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Thus, we are also not
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persuaded that the Examiner has failed to show a likelihood of success of the
combination. Accordingly, we are not persuaded of error in the Examiner’s
obviousness rejection of claim 1 and sustain the obviousness rejection of
claims 1 through 4 and 7 grouped together. As Appellant’s arguments
directed to the obviousness rejection of claim 27 rely on the same rationale,
we similarly sustain the Examiner’s rejection of claim 27.

Claim 5
With respect to claim 5, Appellant has argued the rejection of this
claim is in error on pages 13 through 18 of the Appeal Brief and pages 7
through 10 of the Reply Brief. Appellant argues that the combination of the
references do not teach the claim 5 limitation of “wherein the second reader
transmits to the radio frequency identification tag in response to not
receiving a denial of the request after a predetermined amount of time has
elapsed since the second reader transmitted the request to transmit.” Appeal
Br. 15–16. Appellant argues that the listen-before-talk protocol in Powell,
cited by the Examiner does not teach the disputed limitation, as no request to
transmit has been sent to during the listen-before-talk protocol. Appeal Br.
14–16, Reply Br 7–8. Further, Appellant repeats the arguments directed to
motivation to combine the references and whether there is a reasonable
success in implementing the proposed combination, discussed above with
respect to claim 1. Appeal Br. 16–19.

The Examiner in response to Appellant’s arguments on states:
the teaching of Powell of a Listen-Before-Talk system would
read on the claimed limitation because of the functionality of a
Listen-Before-Talk system. One of ordinary skill in the art
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would know that for a Listen-Before-Talk system to function,
there needs to be some time period of “listening” before
determining that the channel being listening to is clear so that
the device may then begin to “talk” on that channel. Therefore,
when the combination of Powell and Choi is modified
according to the teachings of Powell of the Listen-Before-Talk
protocol, the system would listen for a period of time, and in
response to not hearing any other communication, including a
denial of a request to transmit, the system would then proceed
to transmit.
Appellant further argues that with the Listen-Before-Talk
system of Powell, there is no request to transmit ever sent by
the reader in the first place and the therefor the modification
would not read on the claimed limitation.
Examiner notes that appellant is again confusing what is
actually being taught and what is already present in the
combination. As seen in the rejection, the combination of
Powell and Choi prior to the teaching of the Listen-Before-Talk
protocol already includes a transmission by a first reader. The
teaching of the Listen-Before-Talk protocol is merely
modifying what happens after this transmission and not
usurping the entire transmission protocol altogether. By adding
additional means by which to prevent communication
collisions, namely a Listen-Before-Talk protocol in addition to
the already existing request/approve/deny scheme of Powell
and Choi, this would improve the overall communication
scheme of the system.
Ans. 5–6.
We have reviewed the teachings of Powell and Choi and we disagree
with the Examiner’s findings and conclusions. Claim 5 recites a limitation
directed to the second reader transmitting to the tag if a denial is not
received after a predetermined amount of time since the transmission of the
request to transmit (i.e. the predetermined amount of time is measured based
upon when the request for transmission is sent). Powell discusses the listen-
before-talk feature as being performed by a reader before any interrogations
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of the tags and before the request for approval. Thus, any time delay created
by the listen-before-talk is not based upon when the request for transmission
is sent, but rather is before the request for transmission is sent. As such, we
do not consider the Examiner to have shown that the combination of the
references teach the limitations of claim 5, and we do not sustain the
Examiner’s obviousness rejection of claim 5.

Claims 6 and 15
With respect to claim 6, Appellant has argued the rejection of this
claim is in error on pages 19 through 23 of the Appeal Brief and pages 10
through 13 of the Reply Brief. Appellant argues that the combination of the
references do not teach the claim 6 limitations of “wherein the first and
second readers receive a request to transmit from a third reader, wherein a
denial of the third reader's request is sent from the first and second readers
when the first reader is transmitting and the second reader is waiting to
transmit.” Appeal Br. 20. Further, Appellant repeats the arguments directed
to motivation to combine the references and whether there is a reasonable
success in implementing the proposed combination, discussed above with
respect to claim 1. Appeal Br. 21–25. Appellant presents similar arguments
with respect to claim 15 on pages 32 through 36 of the Appeal Brief.
The Examiner responds to Appellant’s arguments by identifying that
Powell teaches a first and second reader reviving requests from a third
reader. Ans. 7 (citing Powell col. 8, ll. 26–34). Further, the Examiner states
“The claimed ‘first reader is transmitting and the second reader is waiting to
transmit’ would again clearly be met by the disclosure of Powell of ‘placing
the reader into a queue for interrogating the tag until other readers with
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higher priority have finished their interrogation(s).’” Id. (citing Powell, col.
9, ll. 33–36).
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claim 6. Dependent claim 6 recites “wherein a denial of the
third reader's request is sent from the first and second readers when the first
reader is transmitting and the second reader is waiting to transmit.” Thus,
the claim recites that both the first and second readers send a denial when
the first is transmitting and the second is waiting. We concur with the
Examiner that Powell teaches that plural readers can receive requests from
another reader. Further, similar to analysis of claim 1 we concur that the
combination teaches sending a denial when the first is transmitting, but we
do not find the references teach or suggest that a denial is sent from both
readers the when the first is transmitting and the second is waiting. We have
reviewed Powell’s disclosure of a queue for interrogating the tag, in col. 9,
ll. 33–35, cited by the Examiner, and do not find that it teaches or suggests
sending a notification approving or denying interrogation from both
transmitters as claimed. Rather, this teaching is discussing a primary reader
(i.e. only one reader) transmitting rules which establish a queue for
interrogation of the tag (i.e. the transmission is neither an approval, nor a
denial; is not based upon whether a tag is transmitting or waiting; and is not
sent by more than one transmitters).
Thus, we do not find that the Examiner has shown the combination of
Powell and Choi teach all of the limitations of claim 6. Claim 15, recites
similar limitations. Accordingly, we do not sustain the Examiner’s rejection
of claims 6 and 15.

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Claims 10, 12 through 14 and 29
With respect to claims 10 and 12 through 14 Appellant has argued
these claims together on pages 23 through 27 of the Appeal Brief and pages
13 through 16 of the Reply Brief. Appellant argues that the combination of
the references do not teach the claim 10 limitations of “from a first reader,
sending to a plurality of readers a request to transmit to a radio frequency
identification tag”; “waiting for responses from the plurality of readers”;
“not transmitting to the radio frequency identification tag in response to the
first reader receiving a denial of the request from any of the readers”; and
“transmitting to the radio frequency identification tag in response to the first
reader not receiving a denial of the request from any of the readers.” Appeal
Br. 24–25. Further, Appellant repeats the arguments directed to motivation
to combine the references and whether there is a reasonable success in
implementing the proposed combination discussed above with respect to
claim 1. Appeal Br. 25–27.
With respect to claim 29, Appellant identifies that the Examiner
rejected this claim applying the same rationale as claim 10 and that the
rejection of claim 27 is in error for the same reasons as claim 1. Appeal Br.
63–67; Reply Br. 41–42.
The Examiner responds to Appellant’s arguments by identifying that
Powell teaches the limitations directed to the first readers sending a request
to a plurality of other readers, waiting for responses before communicating
with the tag and communicating with the tag when allowed. Ans. 10 (citing
Powell col. 8, ll. 1–49). The Examiner identifies that the limitation of not
transmitting to the tag in response to receiving a denial to transmit from one
receiver when that other receiver is transmitting is taught by Choi. Ans. 10
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(citing Choi, ¶¶ 29–33). Further, the Examiner identifies that the rationale to
combine arguments by Appellant are addressed in the response to the
rejection of claim 1.
We have reviewed the teachings of Powell and Choi and concur with
the Examiner’s findings and conclusions. Claim 10 recites limitations of a
reader sending a request to transmit to plural readers and waiting for a
response from the readers, not transmitting to the tag in response to the first
reader transmitting a denial of the request from any of the readers, and
transmitting in response to not receiving a denial. We concur with the
Examiner that Powell teaches a reader sending a transmission request to
plural readers, and that the reader waits for a response from the other readers
to respond prior to transmitting to the tag. See Powell col. 8, ll. 26–37, and
ll. 5–6.
Appellant has not addressed these findings by the Examiner. Further,
as discussed above with respect to claim 1, we concur with the Examiner’s
finding that Choi teaches issuing a denial if the first reader is transmitting.
In combination we consider these teaching to teach transmitting if no denial
is received. As such, we are not persuaded by Appellant’s arguments that
the Examiner erred in finding that the combination of Powell and Choi teach
the limitations of claim 10. As discussed above with respect to claim 1,
Appellant’s arguments directed to the rationale to combine and expectancy
of success are not persuasive. Accordingly, we are not persuaded of error in
the Examiner’s obviousness rejection of claim 10 and sustain the
obviousness rejection of claims 10 through 12 through 14 grouped together.
As Appellant’s arguments directed to the obviousness rejection of claim 29
rely on the same rationale, we similarly sustain the Examiner’s rejection of
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claim 29.

Claim 11
With respect to claim 11, Appellant has argued the rejection of this
claim is in error on pages 27 through 31 of the Appeal Brief and pages 16
through 19 of the Reply Brief. Appellant argues that the combination of the
references do not teach the claim 11 limitation of “wherein the readers
communicate directly with each other via radio frequency signal.” Appeal
Br. 28. Appellant argues that Powell teaches that the communications
between the reader and the tags are made using radio frequency
communication but does not teach that the communication between the
readers is by radio frequency. Appeal Br. 28 (citing Powell col. 4, ll. 52–
53). Appellant acknowledges that Powell teaches the reader has one antenna
used to communicate with the tags and is also used by the reader interface
module to communicate with the other readers. Appeal Br. 29 (citing Figs.
1, 3, col. 6, ll. 4–35). Further, Appellant repeats the arguments directed to
motivation to combine the references and whether there is a reasonable
success in implementing the proposed combination discussed above with
respect to claim 1. Appeal Br. 29–31.
The Examiner, in response to Appellant’s arguments identifies that
Powell teaches that the readers communicate with each other, and the
readers have a single antenna for communication that operates using radio
frequency. Ans. 11 (citing Powell col. 5, ll. 41–42, col. 4, ll. 52–53).
Further the Examiner states:
nothing in the disclosure of Powell indicates that he single
antenna would "be used to communicate with different
components using different signals" and that one of ordinary
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skill in the art would consider the single antenna of Powell,
communicating using RF signals with one element of the
system would continue to communicate with RF signals with
other elements of the system. Examiner also notes that the
radio-frequency spectrum is extremely broad, covering
frequencies as low as 3kHz all the way up to 300 GHz and that
even if appellants assertion that a single antenna “may be used
to communicate with different components using different
signals” is possible, nothing in Powell indicates that these
multiple different signals would fall outside the radio-frequency
range into other spectrums like infrared, ultraviolet, x-ray, etc.
Ans. 11–12
We have reviewed the teachings of Powell and Choi and concur with
the Examiner’s findings and conclusions. In the teachings of Powell cited
by both the Examiner and Appellant, it is clear that Powell teaches the
readers communicating with each other using the antenna. See e.g. col. 8,
ll. 28–30. (“Reader network interface module 312 also receives reader
communication signals 114 through antenna 308 that were transmitted by
other readers.”)
We concur with Appellant, the discussion of radio frequency
transmissions in the cited portions of columns 4 and 5 discuss the specific
frequencies used to interrogate the tags, and not for communication between
the readers. Nonetheless, we concur with the Examiner that the skilled
artisan would recognize that the term radio frequency encompasses a large
part of the electromagnetic spectrum, and that the use of radio frequency for
reader to reader communication is taught or suggested. This is supported by
the fact that the same antenna is used for both reader to tag communication
(which is radio frequency) and reader to reader communication, and also
because Powell does not discuss using anything other than radio frequency
with the antenna. As such we are not persuaded by Appellant’s arguments
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that the Examiner erred in finding that the combination of Powell and Choi
teach the limitations of claim 11. As discussed above with respect to claim
1, Appellant’s arguments directed to the rationale to combine and
expectancy of success are not persuasive. Accordingly, we are not
persuaded of error in the Examiner’s obviousness rejection of claim 11 and
sustain the obviousness rejection of claim 11.

Claims 19 through 25, 30, and 31
With respect to independent claim 19, Appellant has argued the
rejection of this claim is in error on pages 36 through 41 of the Appeal Brief
and pages 22 through 26 of the Reply Brief. The dispositive issue presented
by these arguments is, did the Examiner err in finding the combination of the
references teach the claim 19 limitation of “the first reader sends a request to
transmit to those readers determined to interfere with the first reader or vice
versa prior to transmitting to a radio frequency identification tag, the request
to transmit being directed to those readers determined to interfere with the
first reader or vice versa”? Appellant presents similar arguments with
respect to claims 30 and 31 on pages 67 through 76 of the Appeal Brief.
The Examiner, in response to Appellant’s arguments identifies that
Powell teaches determining whether a first reader interferes with any other
readers and Choi teaches creating a list of readers who will interfere with
each other. Ans. 15 (citing Powell col. 8, ll. 3–49, and Choi ¶¶ 29–33).
Further, the Examiner cites to Powell as teaching the reader sends a request
to transmit to the readers determined to interfere with the first reader. Ans.
15, citing Powell col. 8, ll. 3–49).
Appellant’s arguments have persuaded us of error in the Examiner’s
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rejection. Independent claim 19 recites limitations directed to making a
determination whether a first reader interferes with any other reader, storing
the determination and sending a request to transmit to those readers
determined to interfere with the first reader. Claims 30 and 31 recite similar
limitations.
We have reviewed the cited teachings of Powell and disagree that
Powell teaches making a determination of which readers the first reader may
interfere with and then sending a request to transmit to those readers. The
cited passages of Powell teaches two embodiments, one where the request to
transmit is made to a primary reader and a second where the request to
transmit is made to the other readers in the system. Neither of these
teachings is directed to the request to transmit being sent to the readers
determined to interfere with the reader. Further, while Choi does maintain a
list of readers that may interfere with a reader (see e.g. step 219 Fig 2b), this
list is not used by a reader to determine which readers should be sent a
request to transmit. Thus, we do not consider the Examiner to have shown
that all of the limitations of independent claim 19 are taught by the
combination of Powell and Choi. Accordingly we do not sustain the
Examiner’s rejection of independent claims 19, 30, 31 and dependent claims
20 through 25.

Claim 26
With respect to claims 1 through 4 and 7, Appellant has argued these
claims together on pages 50 through 54 of the Appeal Brief and pages 31
through 35 of the Reply Brief. Appellant argues that the combination of the
references do not teach the claim 26 limitation of “at a first reader, receive
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from a second reader a request to transmit to a radio frequency identification
tag; and send a denial of the request from the reader to the second reader
when the first reader is transmitting upon receiving the request from the
second reader.” Appeal Br. 50. Appellant repeats the arguments discussed
above asserting that Choi does not teach sending a denial message from a
first reader to a second reader. Appeal Br. 51. Appellant additionally argues
that claim 26 recites “processing circuit, memory coupled to the processing
circuit; and an antenna coupled to the processing circuit” and that the
Examiner took official notice to find this limitation but did not produce
documentary evidence to support finding when challenged. Appeal Br. 51–
52. Further, Appellant repeats the arguments directed to motivation to
combine the references and whether there is a reasonable success in
implementing the proposed combination, discussed above with respect to
claim 1. Appeal Br. 52–54.
The Examiner provides a response to Appellant’s arguments
concerning Choi, similar to those discussed above, identifying that Powell is
relied upon to teach readers sending the requests to transmit to each other
and that Choi is relied upon to teach the content of the communication (a
denial). Ans. 22. Further, in response to Appellant’s arguments regarding
the taking of official notice, the Examiner identifies that Satou (U.S.
2006/0158313) was cited to provide the documentary evidence. Ans. 21–22;
Final Act 13.
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection. As discussed above with respect to claim 1,
Appellant’s arguments that Choi does not teach a reader transmitting the
denial are not persuasive of error. With regard to Appellant’s challenge of
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official notice, we note that the Examiner did provide evidence, the Satou
reference which Appellant did not address in the Appeal Brief. Final Act.
13; Ans. 21–22. We recognize that Appellant did address the Satou
reference on pages 32 and 33 of the Reply Brief; however these arguments
are deemed waived. These new arguments, directed to Satou in the Reply
Brief, could have been presented in the Appeal Brief, are not prompted by
the Examiner’s Answer, and are not based on any new arguments or grounds
of rejection in the Examiner’s Answer. As a result, Appellant has waived
these untimely arguments because Appellant has not shown good cause for
belatedly raising the new argument. See 37 C.F.R. § 41.41(b)(2). As
discussed above with respect to claim 1, Appellant’s arguments directed to
the rationale to combine and expectancy of success are not persuasive.
Accordingly, we are not persuaded of error in the Examiner’s obviousness
rejection of claim 26 and sustain this rejection.

Claim 28
With respect to claim 28 Appellant has argued the Examiner’s
obviousness rejection is in error on 59 through 63 of the Appeal Brief and
pages 37 through 41 of the Reply Brief. Appellant’s arguments directed to
claim 28 present similar issues to those discussed with respect to claims 10
and 26. Similar to claim 10, Appellant argues that claim 28 recites
limitations directed to sending to plural readers a request to transmit, waiting
for a response from the readers, not transmitting if the response is a denial
and transmitting if there is no denial, which are features not taught by the
combination of Powell and Choi. Appeal Br. 59–60. Similar to claim 26,
Appellant argues that claim 28 recites limitations which the Examiner
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addressed via official notice, but the Examiner did not produce documentary
evidence to support finding when challenged. Appeal Br. 60 and 61.
Further, Appellant repeats the arguments directed to motivation to combine
the references and whether there is a reasonable success in implementing the
proposed combination, discussed above with respect to claim 1. Appeal Br.
61–63.
We are not persuaded of error in the Examiner’s rejection of claim 28
by these arguments, which are similar arguments to those discussed above
directed to claims 1, 10 and 26. As discussed above, Appellant has not
persuaded us of error in the Examiner’s obviousness rejection of claims 1,
10 and 26, and as such we are similarly not persuaded of error in the
Examiner’s rejection of claim 28 and we sustain the Examiner’s rejection for
the reasons discussed above.

Double Patenting Rejection
Appellant agues the Examiner’s rejection of Double Patenting
Rejection of claims 1 through 5, 8, and 9 is in error as:
Here, the rejection merely alleges “[a]lthough the claims at
issue are not identical, they are not patentably distinct from
each other because the claims are essentially identical with only
minor differences” without conducting a proper analysis of the
claims or underlying elements of obviousness. Nor does the
rejection allege issuance of a patent in the present application
would result in unjust timewise extension of patent rights.

Appeal Br. 78–79. Appellant repeats this same statement with respect to
other groups of claims. Appeal Br. 79–96.
At the outset, we note that repeating the same generic arguments is
not considered to be separate arguments under 37 C.F.R § 41.37. These
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conclusory arguments that the additional claims are patent eligible are
considered to be nothing more than a general allegation of patentability and
are not considered separate patentability arguments. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”). Accordingly,
we treat claims 1 through 5 and 8 through 31 as grouped together with
respect to the Double Patenting Rejection.
We are not persuaded of error by Appellant’s arguments in the Appeal
Brief. The Examiner in the Final Rejection stated:
Although the claims at issue are not identical, they are not
patentably distinct from each other because the claims are
essentially identical with only minor differences. The
independent claims of the '222 patent include additional
limitations which are not included in the independent claims of
the current application but are instead broken out into
dependent claims. Additionally the minor differences in the
independent claims is merely a re-phrasing of the same claimed
limitations.

Final Act 9. Additionally, in the Final Action, the Examiner provided a
table identifying which claim of the patent corresponds to the rejected claims
of the application. Final Act 14–15. Further, the Examiner states “a mere
cursory glance between the claims would allow one to easily see that the
claim limitations in the pending application were the same with some
limitations from the patent being removed, making the pending application's
claims broader in scope.” Final Act 14. In the Answer, the Examiner
provided a table to provide an even further clearer correspondence between
Appeal 2019-005286
Application 15/729,417

20
the specific limitation claims on appeal and the claims of U.S. Patent
9,805,222 (hereinafter ‘222 patent).3 Ans. 34–43.
Here, the Examiner identified that the claims on appeal are broader, in
that they recite fewer limitations than the claims of the ‘222 patent (in
essence that the claims on appeal are a genus of the species claims in the
‘222 patent) and demonstrated where each of the limitations of the claims on
appeal are taught in the claims of the ‘222 patent. In this case, we consider
the Examiner’s analysis sufficient. See MPEP 804 § II (B)(b)(1) (“In this
type of nonstatutory double patenting situation, an obviousness analysis is
not required for the nonstatutory double patenting rejection. The
nonstatutory double patenting rejection in this case should explain the fact
that the species or sub-genus claimed in the conflicting patent or application
anticipates the claimed genus in the application being examined and,
therefore, a patent to the genus would improperly extend the right to exclude
granted by a patent to the species or sub-genus should the genus issue as a
patent after the species or sub-genus”).
The Examiner has found, and we concur, that other than the additional
limitations of the ’222 patent (i.e., the species limitations), which are not
repeated in the claims on appeal, there are only minor wording differences
between the claims. For example, both claims recite a step of a first reader
receiving from a second reader a request to transmit a radio frequency
identification tag. Ans. 34. Further, the claims differ in that appealed claim
1 states “in response to receiving the request, determining whether the first
reader is transmitting sending a denial of the request from the first reader to

3 Bares, US 9,805,222 issued October 31, 2017 share the same priority
document, US application 12/350,804 filed January 8, 2009.
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Application 15/729,417

21
the second reader in response to determining that the first reader is
transmitting” and to claim 1 of the ‘222 patent which recites “if the first
reader is transmitting, sending a denial of the request from the first reader to
the second reader” (i.e. claim ’222 of the patent does not explicitly recite
determining whether the first reader is transmitting). We consider claim 1 of
patent ’222 step of “if the reader is transmitting” to imply a determination of
whether the reader is transmitting. Thus, Appellant has not persuaded us the
Examiner did not provide analysis sufficient to establish a Double Patenting
Rejection, and we sustain the Examiner’s rejection of claims 1 through 5 and
8 through 31.

CONCLUSION

In summary:
Claim(s)
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–7, 10–16,
19–31
103 Powell, Choi 1–4, 7, 10–
14, 26–29
5, 6, 15,
19–25, 30,
31
1–5, 8–31 Double Patenting,
Bares
1–5, 8–31
Overall
Outcome
1–5, 7–31 6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2018).
AFFIRMED–IN-PART