Ex Parte Batra

Patent Trial and Appeal Board

Mar 28, 2013

11423408 (P.T.A.B. Mar. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NARESH BATRA
____________________

Appeal 2010-006703
Application 11/423,408
Technology Center 2600
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006703
Application 11/423,408

2
STATEMENT OF CASE1
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Throughout our opinion, we refer to the Appeal Brief filed by Appellant on
August 28, 2009 (“App. Br.”); the Examiner’s Answer mailed March 2,
2010 (“Ans.”); and the Reply Brief filed by Appellant on February 2, 2010
(“Reply Br.”). Because the arguments and responses found in the Reply
Brief filed on March 4, 2010 and the Examiner’s Answer mailed on
December 2, 2009 are repetitive of the positions presented in the Reply Brief
filed on February 2, 2010 and the Examiner’s Answer mailed March 2,
2010, respectively, we do not further address these documents in our
opinion.
Appeal 2010-006703
Application 11/423,408

3
Appellant’s Disclosure
Appellant’s invention relates to Radio Frequency Identification
(RFID) tags, and methods related to the use thereof. Spec. 1:5-7; Abs. The
RFID systems and methods can be used in tracking assets, ownership
transfer tracking, and toll collection (Spec. 3:5-8). The RFID tags can have
a permanent housing for coupling to a vehicle (claims 1 and 32), a housing
for detachable coupling to a vehicle (claim 19), a non-battery power source
and secondary power source for recharging the non-battery power source
(claims 20 and 21); and the methods may include transmitting a query to the
RFID tag that contains a security code (claims 26 and 29), and querying the
RFID tag for information about a service record of a vehicle (claim 32)
(Spec. 4:4 to 6:12).
Exemplary Claims
Exemplary independent claims 1 and 19 under appeal, with emphases
added, read as follows:

1. A Radio Frequency Identification (RFID) tag for use with a
vehicle, comprising:
a housing adapted for permanent coupling to a vehicle;
control circuitry coupled to the housing;
a battery for providing power to the control circuitry;
a secondary power source for recharging the battery; and
a memory for storing information relating to at least one of the vehicle
and an owner of the vehicle.

19. A Radio Frequency Identification (RFID) tag for use with a
vehicle, comprising:
a housing adapted for detachable coupling to a vehicle;
control circuitry coupled to the housing;
a battery for providing power to the control circuitry;
a secondary power source for recharging the battery; and
Appeal 2010-006703
Application 11/423,408

4
a memory for storing information relating to at least one of the vehicle
and an owner of the vehicle.

The Examiner’s Rejections
(1) The Examiner rejected claims 1-4, 9, 11-13, and 15-18 as being
unpatentable under 35 U.S.C. § 103(a) over Yamagiwa ‘003 (US
2006/0007003 A1) and Borean (US 2007/0247333 A1). Ans. 4-8.
(2) The Examiner rejected claim 19 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Yamagiwa ‘003, Borean, and
Nishiwaki (US 7,138,917 B2). Ans. 8-10.
(3) The Examiner rejected claim 5 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Yamagiwa ‘003, Borean, and
Krumpelt (US 4,292,378). Ans. 10-11.
(4) The Examiner rejected claim 6 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Yamagiwa ‘003, Borean, and
Tang (US 2006/0176153 A1). Ans. 11.
(5) The Examiner rejected claims 7 and 8 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Yamagiwa ‘003, Borean, and
Goel (US 2005/0162255 A1). Ans. 11-13.
(6) The Examiner rejected claim 10 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Yamagiwa ‘003, Borean, and
Ratnakar (US 2006/0202862 A1). Ans. 13-14.
(7) The Examiner rejected claim 14 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Yamagiwa ‘003, Borean, and
Mays (US 2004/0233045 A1). Ans. 14.
Appeal 2010-006703
Application 11/423,408

5
(8) The Examiner rejected claim 20 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Yamagiwa ‘003, Borean, and
Fabian (US 2006/0187059 A1). Ans. 14-16.
(9) The Examiner rejected claims 21, 22, and 25 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Yamagiwa ‘003, Borean,
and Yamagiwa ‘883 (US 2005/0143883 A1). Ans. 16-18.
(10) The Examiner rejected claims 23 and 24 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Yamagiwa ‘003, Borean,
Yamagiwa ‘883, and Murdoch (US 5,153,583). Ans. 18.
(11) The Examiner rejected claims 26, 28, 29, and 31 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Yamagiwa
‘003, Borean, and Davis (US 2007/0035381 A1). Ans. 19-21.
(12) The Examiner rejected claims 27 and 30 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Yamagiwa ‘003, Borean,
Davis, and Vijay-Pillai (US 2006/0202804 A1). Ans. 21-22.
(13) The Examiner rejected claim 32 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Yamagiwa ‘003, Borean, and Ku
(US 7,183,924 B1). Ans. 22-24.
Appeal 2010-006703
Application 11/423,408

6
Appellant’s Contentions2
(1) Appellant contends (App. Br. 12-18; Reply Br. 1-7) that the
Examiner erred in rejecting claims 1, 4, 9, 11-13, and 15-18 under
35 U.S.C. § 103(a) over Yamagiwa ‘003 and Borean for numerous reasons
including:
(a) Borean’s paragraph [0040] teaches tags being freely
displaceable (App. Br. 13); and

2 Separate patentability is not argued for claims 4, 9, 11-13, and 15-18
rejected over Yamagiwa ‘003 and Borean (App. Br. 15; Reply Br. 4-5).
Appellant relies on the arguments presented for claim 1 with regard to
claims 5, 6, and 10 which depend from claim 1 (see App. Br. 20-22 and 25;
Reply Br. 9-11 and 13). In view of the foregoing, we select claim 1 as
representative of the group of claims 1, 4, 9, 11-13, and 15-18, and decide
the appeal of claims 1, 4-6, 9, 10-13, and 15-18 on the basis of
representative claim 1.
Separate patentability is not argued for claims 22 and 25 rejected over
Yamagiwa ‘003, Borean, and Yamagiwa ‘883 (App. Br. 30; Reply Br.16).
Appellant relies on the arguments presented for claim 21 with regard to
claims 23 and 24 which depend from claim 1 (see App. Br. 31-32; Reply Br.
16). In view of the foregoing, we select claim 21 as representative of the
group of claims 21, 22, and 25, and decide the appeal of claims 21-25 on the
basis of representative claim 1.
Separate patentability is not argued for claims 28, 29, and 31 rejected
over Yamagiwa ‘003, Borean, and Davis (App. Br. 34; Reply Br.17).
Appellant relies on the arguments presented for claim 26 with regard to
claims 28, 29, and 31 (see id.). Appellant relies on the arguments presented
for claim 26 and 29 with regard to claims 27 and 30 (App. Br. 35; Reply Br.
18). In view of the foregoing, we select claim 26 as representative of the
group of claims 26, 28, 29, and 31, and decide the appeal of claims 26-28
and 29-31 on the basis of representative claim 26.

Appeal 2010-006703
Application 11/423,408

7
(b) Yamagiwa ‘003 and Borean fail to teach or suggest a
housing adapted for permanent coupling to a vehicle as recited in
claim 1 (App. Br. 16-18; Reply Br. 2-4);
(c) Borean teaches away from Yamagiwa ‘003’s permanent
attachment, as recited in claim 2 (App. Br. 15-16; Reply Br. 5-6); and
(d) Borean teaches away from integrating the housing into a
portion of a vehicle, as recited in claim 3 (App. Br. 16-18; Reply Br.
6-7).
(2) Appellant contends (App. Br. 22-25; Reply Br. 11-13) that the
Examiner erred in rejecting claims 7 and 8 under 35 U.S.C. § 103(a) over
Yamagiwa ‘003, Borean, and Goel for numerous reasons including that the
Examiner has used Official Notice as a grounds for rejecting claims 7 and 8.
(3) Appellant contends (App. Br. 26; Reply Br. 13-14) that the
Examiner erred in rejecting claim 14 under 35 U.S.C. § 103(a) over
Yamagiwa ‘003, Borean, and Mays because Mays fails to disclose or
suggest that a memory stores information of a toll payment account as
recited.
(4) Appellant contends (App. Br. 18-20; Reply Br. 7-9) that the
Examiner erred in rejecting claim 19 under 35 U.S.C. § 103(a) over
Yamagiwa ‘003, Borean, and Nishiwaki because Nishiwaki teaches away
from Appellant’s housing, which is recited as being detachably coupled to a
vehicle, since Nishiwaki (col. 6, ll. 1-26; Fig. 2) teaches that removal of the
radio tag 2 from windshield 18 will release a corrosive fluid from pack 21 to
Appeal 2010-006703
Application 11/423,408

8
destroy the IC chip 20 to permanently invalidate the function of the radio tag
2.
(5) Appellant contends (App. Br. 27-28; Reply Br. 14-15) that the
Examiner erred in rejecting claim 20 under 35 U.S.C. § 103(a) over
Yamagiwa ‘003, Borean, and Fabian because Fabian’s paragraph [0029]
teaches away from Borean’s freely displaceable e-tags because Fabian
discloses a burned-in code present in the read-only memory.
(6) Appellant contends (App. Br. 28-31; Reply Br. 15-16) that the
Examiner erred in rejecting claim 21, 22, and 25 under 35 U.S.C. § 103(a)
over Yamagiwa ‘003, Borean, and Yamagiwa ‘883 because Yamagiwa
‘883’s paragraph [0063] and Figure 7 do not teach or suggest storing
information relating to previous and current owners, and because Yamagiwa
‘003 and Borean teach away from each other.
(7) Appellant contends (App. Br. 32-34; Reply Br. 17) that the
Examiner erred in rejecting claims 26, 28, 29, and 31 under
35 U.S.C. § 103(a) over Yamagiwa ‘003, Borean, and Yamagiwa ‘883
because Yamagiwa ‘003 and Borean teach away from each other, and Davis’
paragraph [0062] teaches using /receiving a light signal and therefore
teaches away from Yamagiwa ‘003’s IC tag 40 being installed on the back
of a meter panel 31.
(8) Appellant contends (App. Br. 35-37; Reply Br. 18) that the
Examiner erred in rejecting claim 32 under 35 U.S.C. § 103(a) over
Yamagiwa ‘003, Borean, and Ku because Yamagiwa ‘003 teaches at
paragraph [0059] that resin is on a back surface of a meter panel, and thus
teaches away from Borean’s paragraph [0040] which says that an e-tag must
be freely displaceable.
Appeal 2010-006703
Application 11/423,408

9
Issues on Appeal
Based on Appellant’s arguments, the following issues are presented
for appeal:
(1) Did the Examiner err in rejecting claims 1-4, 9, 11-13, and 15-18
as being obvious because (a) Yamagiwa ‘003 fails to teach or suggest a
housing for permanent coupling to a vehicle as recited in claims 1-3, and (b)
Yamagiwa ‘003 and Borean teach away from Appellant’s invention?
(2) Did the Examiner err in rejecting claim 19 because Nishiwaki
teaches away from the recited feature in claim 19 of the RFID housing being
detachable?
(3) Did the Examiner err in rejecting claims 7 and 8 as being obvious
because the Examiner improperly used Official Notice as to how a control
circuit would remain in the active state?
(4) Did the Examiner err in rejecting claim 14 as being obvious
because the combination of Yamagiwa ‘003, Borean, and Mays fails to teach
or suggest the limitation at issue of a memory that stores information of a
toll payment account?
(5) Did the Examiner err in rejecting claim 20 as being obvious
because Fabian’s paragraph [0029] teaches away from Borean’s freely
displaceable e-tags since Fabian discloses a burned-in code present in the
read-only memory?
(6) Did the Examiner err in rejecting claims 21, 22, and 25 as being
obvious because the combination of Yamagiwa ‘003, Borean, and
Yamagiwa ‘883, and specifically Yamagiwa ‘883’s paragraph [0063] and
Figure 7, fails to teach or suggest the limitations at issue of storing
information relating to previous and current owners?
Appeal 2010-006703
Application 11/423,408

10
(7) Did the Examiner err in rejecting claims 26, 28, 29, and 31 as
being obvious because (i) the Yamagiwa ‘003 and Borean teach away from
each other, and (ii) Davis’ paragraph [0062] teaches using/receiving a light
signal that teaches away from Yamagiwa ‘003’s IC tag 40 being installed on
the back of meter panel 31?
(8) Did the Examiner err in rejecting claim 32 as being obvious over
the combination of Yamagiwa ‘003, Borean, and Ku because Yamagiwa
‘003 teaches at paragraph [0059] that resin is on the back surface of the
meter panel, and therefore teaches away from Borean’s paragraph [0040]
which says that an e-tag must be freely displaceable?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis (see In re Fine, 837 F.2d 1071, 1073
(Fed. Cir. 1988)), and provide articulated reasoning in the rejection
possessing a rational underpinning to support the legal conclusion of
obviousness (KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). When an examiner
establishes a prima facie case of obviousness, the burden shifts to the
applicant to show non-obviousness. See In re Rijckaert, 9 F.3d 1531, 1532
(Fed. Cir. 1993).
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).
Appeal 2010-006703
Application 11/423,408

11
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
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 examining] 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.” Para-Ordnance
Mfg., Inc. v. SGS Importers Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995)
(quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 9-14) and the Reply Brief (Reply
Br. 2-6) that the Examiner has erred. We agree with Appellant’s
conclusions as to Issue (2) regarding Rejection (2) supra. However, as to
Issues (1) and (3)-(8) regarding Rejections (1) and (3)-(13), supra, we agree
with the Examiner’s conclusions. Our reasoning follows below, first
discussing Issue (2) corresponding to Rejection (2), and then discussing
Issues (1) and (3)-(8) corresponding to Rejections (1) and (3)-(13).

Appeal 2010-006703
Application 11/423,408

12
Issue (2): Rejection (2) of Claim 19 Over Yamagiwa ‘003, Borean, and
Nishiwaki

With regard to claim 19, rejected for obviousness over Yamagiwa
‘003, Borean, and Nishiwaki, we agree with Appellant’s contentions (App.
Br. 18-20; Reply Br. 7-9) that Nishiwaki teaches away from the recited
feature in claim 19 of the RFID housing being detachable. Appellant’s
arguments (App. Br. 18-20; Reply Br. 7-9) that it would clearly not have
been obvious to have bonding material used in Nishiwaki be detachable
based on the resistance of the specific adhesive material as the Examiner
asserts (Ans. 9) are persuasive. This is because Nishiwaki’s Figures 2, 3A,
and 3B, as well as column 5, line 60 to column 6, line 26 specifically teach
and promote that if the radio tag 2 is removed from the vehicle’s windshield
18, destroying the protection sheet 22, the IC chip 20 will be completely
destroyed so as to be made inoperable by releasing corrosive fluid from
corrosive fluid pack 21 onto the IC chip 20 (col. 6, ll. 8-26). In view of the
foregoing, we do not sustain the Examiner’s rejection of claim 19.
Issues (1) and (3)-(8): Rejections (1) and (3)-(13) Over the Base
Combination of Yamagiwa ‘003 and Borean in Combination with Various
other References

With regard to the remaining rejections of claims 1-18 and 20-32, we
disagree with Appellant’s conclusions. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief (see Ans. 4-8
and 10-32). We concur with the conclusions reached by the Examiner. We
highlight and amplify certain teachings and suggestions of the references, as
Appeal 2010-006703
Application 11/423,408

13
well as certain ones of Appellant’s arguments, as follows.
Issue (1):
Appellant’s arguments (App. Br. 15-18 ; Reply Br. 2-7) that there is
no motivation to combine the references with each other because they teach
away from each other (e.g., Yamagiwa ‘003 teaches away from Borean
because one reference teaches a detachable tag while the other reference
teaches a permanently mounted tag) citing In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983) are unpersuasive because Grasselli is precedent based on
the old teaching-suggestion-motivation (TSM) test, and is now obviated by
KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d at 988) (holding that the
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness).
The proper test for teaching away is whether or not the reference in
question teaches away from the claimed invention, not the references with
which it is combined. Teaching away from the claimed invention can be
shown if (i) the proposed modification would render the reference in
question being modified unsatisfactory for its intended purpose (Gordon,
733 F.2d at 902), or (ii) “a person of ordinary skill, upon examining] 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.” Para-Ordnance Mfg., 73 F.3d at 1090 (quoting
Gurley, 27 F.3d at 553).
While we agree with Appellant (App. Br. 13) that Borean’s paragraph
[0040] teaches tags being freely displaceable, this does not discourage
permanently mounting a radio tag as provided by Yamagiwa ‘003’s housing
30. In fact, permanent mounting may be desirable for any number of
Appeal 2010-006703
Application 11/423,408

14
reasons, including a fixed power supply to retain power to Yamagiwa ‘003’s
IC tag 40 (see Yamagiwa ‘003, Figs. 2-4; ¶¶ [0059]-[0062], and [0065]), or
to protect the IC tag 40 “from wind, rain and dust without interrupting its
transmitted/received electromagnetic wave” (Yamagiwa ‘003, ¶ [0138]).
The Examiner did not err in rejecting claims 1-4, 9, 11-13, and 15-18
as being obvious because Yamagiwa ‘003 teaches or suggests a housing for
permanent coupling to a vehicle as recited in claims 1-3, and Borean does
not teach away from Appellant’s invention by being freely displaceable
because Borean does not discourage the housing from being permanently
mounted. Accordingly, we sustain the Examiner’s rejection of claims 1-3,
as well as claims 4, 9, 11-13, and 15-18 grouped with representative claim 1.
For the same reasons, we also sustain the Examiner’s rejections of claims 5,
6, and 10.
Issue (3):
Appellant’s contentions (App. Br. 22-25; Reply Br. 11-13) that the
Examiner erred in rejecting claims 7 and 8 under 35 U.S.C. § 103(a) over
Yamagiwa ‘003, Borean, and Goel because the Examiner has improperly
used Official Notice as a grounds for rejecting claims 7 and 8 are not
persuasive. We agree with the Examiner (Ans. 12 and 30) that Goel teaches
that the solar cell or secondary power source is used to power the control
circuitry (Goel, ¶ [0039]). We also agree with the Examiner (Ans. 30) no
Official Notice was taken, and that a person of ordinary skill in the art at the
time of Appellant’s invention would know that control circuit could remain
in the active state when drawing power from the secondary power source
(i.e., Goel’s solar cell). Accordingly, we sustain the Examiner’s rejection of
claims 7 and 8.
Appeal 2010-006703
Application 11/423,408

15
Issue (4):
With regard to Rejection (7) of claim 14 Over Yamagiwa ‘003,
Borean, and Mays, we agree with Appellant’s argument (App. Br. 26; Reply
Br. 13-14) that Mays fails to teach or suggest a memory that stores toll
payment account information because Mays’ cited portions fail to disclose
any memory at all, just the toll amount being sent/received. However, we
agree with the Examiner’s new reliance on Yamagiwa ‘003’s paragraph
[0136] in the Answer’s responsive arguments (Ans. 30) as teaching or
suggesting a memory for storing toll payment account information.
Therefore, since the combination of Yamagiwa ‘003, Borean, and Mays
teaches or suggests the limitation at issue of a memory that stores
information of a toll payment account, we sustain the Examiner’s rejection
of claim 14.
Issue (5):
Appellant’s contentions (App. Br. 27-28; Reply Br. 14-15) that the
Examiner erred in rejecting claim 20 under 35 U.S.C. § 103(a) over
Yamagiwa ‘003, Borean, and Fabian because Fabian’s paragraph [0029]
teaches away from Borean’s freely displaceable e-tags (because Fabian
discloses a burned-in code present in the read-only memory) are
unpersuasive for similar reasons as provided regarding Rejection (1)
corresponding to Issue (1), and because we agree with the Examiner (Ans.
31) that Fabian has a non-battery power source (Fabian, Abs.; Ans. 16), and
therefore the combination of Yamagiwa ‘003, Borean, and Fabian teaches or
suggests the subject matter of claim 20. Accordingly, we sustain the
Examiner’s rejection of claim 20.

Appeal 2010-006703
Application 11/423,408

16
Issue (6):
Appellant’ contentions (App. Br. 28-31; Reply Br. 15-16) that the
Examiner erred in rejecting claim 21, 22, and 25 under 35 U.S.C. § 103(a)
over Yamagiwa ‘003, Borean, and Yamagiwa ‘883 because Yamagiwa ‘003
and Borean teach away from each other are unpersuasive for similar reasons
as provided regarding Rejection (1) corresponding to Issue (1).
We agree with the Examiner (Ans. 16) that paragraphs [0060] and
[0061] of Yamagiwa ‘003 discloses an owner record (i.e., information on the
owner of the vehicle), and paragraph [0063] of Yamagiwa ‘883 discloses
information concerning a change of ownership. We therefore agree with the
Examiner (Ans. 31) that “owner changes” and “owner registrations” meet
the limitations of claim 21 of “information relating to previous and current
owners” and “information about a new owner” (claim 21), and that the
combination of Yamagiwa ‘003, Borean, and Yamagiwa ‘883 teaches or
suggests the subject matter of representative claim 21 (see Ans. 16-18 and
31).
Accordingly, we sustain the Examiner’s rejection of representative
claim 21, as well as claims 22 and 25 grouped therewith. For the same
reasons, we also sustain the Examiner’s rejection of claims 23 and 24.
Issue (7):
Appellant’s contentions (App. Br. 32-34; Reply Br. 17) that the
Examiner erred in rejecting claims 26, 28, 29, and 31 under
35 U.S.C. § 103(a) over Yamagiwa ‘003, Borean, and Davis because (i)
Yamagiwa ‘003 and Borean teach away from each other, and (ii) Davis’
paragraph [0062] teaches using /receiving a light signal and therefore
teaches away from Yamagiwa ‘003’s IC tag 40 being installed on the back
Appeal 2010-006703
Application 11/423,408

17
of a meter panel 31, are unpersuasive for similar reasons as provided
regarding Rejection (1) corresponding to Issue (1).
We agree with the Examiner (Ans. 31-32) that Davis does not teach
away from Appellants’ invention or making the combination because Davis
is only relied upon as disclosing the use of a security code (Davis, ¶ [0060]
disclosing an access authorization process used to determine the identity of a
given reader 112 to authorize access to memory 320, while maintaining the
memory 320 in a secure state). We therefore agree with the Examiner that
Borean teaches “transmitting a query,” Davis teaches a “security code” used
to control access authorizations, and the combination of Yamagiwa ‘003,
Borean, and Davis teaches or suggests the subject matter of representative
claim 26 (see Ans. 19-21 and 31-32).
Accordingly, we sustain the Examiner’s rejection of representative
claim 26, as well as claims 28, 29, and 31 grouped therewith. For the same
reasons, we also sustain the Examiner’s rejection of claims 27 and 30.
Issue (8):
Appellant’s contentions (App. Br. 35-37; Reply Br. 18) that the
Examiner erred in rejecting claim 32 under 35 U.S.C. § 103(a) over
Yamagiwa ‘003, Borean, and Ku because Yamagiwa ‘003 teaches at
paragraph [0059] that resin is on a back surface of a meter panel, and thus
teaches away from Borean’s paragraph [0040] (which says that an e-tag
must be freely displaceable) is unpersuasive for similar reasons as provided
regarding Rejection (1) corresponding to Issue (1).
We agree with the Examiner (Ans. 22-24 and 32) that Yamagiwa ‘003
teaches a permanent housing 30, Ku (col. 2, l. 15 to col. 4, l. 18) teaches
querying an RFID tag for service records of a vehicle, and therefore the
Appeal 2010-006703
Application 11/423,408

18
combination of Yamagiwa ‘003, Borean, and Ku teaches or suggests the
subject matter of claim 32. Notably, Ku’s Title and Abstract clearly indicate
that Ku pertains to a system for reading and storing information on service
records to/from an RFID tag.
In view of the foregoing, we sustain the Examiner’s rejection of
representative claim 32.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-18 and 20-32 as
being obvious because the various base combinations of Yamagiwa ‘003,
Borean, Goel, Mays, Fabian, Yamagiwa ‘883, Davis, and/or Ku teach or
suggest Appellant’s invention recited in representative claims 1, 21, and 26,
as well as claims 2, 3, 7-9, 14, 20, and 32.
(2) Appellant has shown that the Examiner erred in rejecting claim 19
because Nishiwaki teaches away from the claimed invention because
Nishiwaki discloses destroying the circuit upon removal (see Figs. 2, 3A,
and 3B; col. 5, l. 60 to col. 6, l. 26), therefore it would not have been
obvious to have the bonding be detachable based on the resistance of the
specific adhesive material.

DECISION
The Examiner’s rejections of claims 1-18 and 20-32 are affirmed.
The Examiner’s rejection of claim 19 is reversed.
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).
Appeal 2010-006703
Application 11/423,408

19

AFFIRMED-IN-PART

llw