Ex Parte Colburn

Patent Trial and Appeal Board

Jul 31, 2018

14699013 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/699,013 04/29/2015
23413 7590 08/02/2018
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Craig Alexander Colburn
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PHC0002USC 2064
EXAMINER
BEE, ANDREW W.
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG ALEXANDER COLBURN
Appeal2017-011854
Application 14/699,013
Technology Center 2600
Before: JEAN R. HOMERE, JASON V. MORGAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-14. App. Br. 5. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Invention
Appellant invented an electronic vehicle key that includes "a passive
device configured to be receptive to a field external [to] the electronic
vehicle key for inducing an electric current in the passive device." Abstract.
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Application 14/699,013
The passive device "transmit[ s] a radio-frequency signal as a result of the
electric current induced in the passive device [to] enable activation of a
vehicle feature." Id.
Illustrative Claim (key limitations emphasized)
1. An electronic vehicle key comprising:
a controller receptive to electrical power from both conductive
transmission and inductive transmission, the controller having a
processor that is responsive to executable computer instructions for
controlling operation of the electronic vehicle key; and
a passive device configured to be receptive to the inductive
transmission, the inductive transmission generating a magnetic field
that induces an electric current in the passive device, the passive
device being in communication with the controller, the controller
being configured and disposed to cause the passive device to transmit
a radio-frequency signal as a result of the electric current induced in
the passive device, wherein the radio-frequency signal when received
at a vehicle will enable activation of a vehicle feature.
App. Br. 10 (Claims App.).
Rejections
The Examiner rejects claims 1-3, 5-8, and 10-13 on the grounds of
non-statutory obviousness-type double-patenting over claims 1, 6, 10-12,
18, and 28 of Colburn (US 9,058,704 B21; issued June 16, 2015) ("Colburn
'704") and Nantz et al. (US 6,291,968 Bl; issued Sept. 18, 2001) ("Nantz").
Final Act. 8-9.
The Examiner rejects claims 1-14 under 35 U.S.C. § I03(a) as being
unpatentable over Dimig et al. (US 2011/0115605 Al; published May 19,
2011) ("Dimig") and Nantz. Final Act. 2-7.
1 The Examiner and Appellant both incorrectly cited to US 9,058,074,
transposing the last two-digits. Final Act. 8; see also App. Br. 8; Ans. 4.
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Application 14/699,013
35 U.S.C. § 103(a)
Findings and Contentions
Dimig teaches an energy harvesting system, which includes a plurality
of low-frequency (LF) antennas that "are components of a passive entry
and/or passive start system in the vehicle ... in which neither a key nor the
active pressing of a fob button to unlock the vehicle ... or start the vehicle's
engine is required." Dimig ,r 14. The Examiner finds Dimig's energy
harvesting system teaches or suggests "a passive device that receives [a
radio frequency (RF)] signal, or RF field," where "current is induced on the
antenna" leading to a microprocessor sending "RF commands via the
antenna [to] enable activation of a vehicle feature." Final Act. 3 ( citing
Dimig ,r,r 4--5, 14--16, 18 and Fig. 2). The Examiner acknowledges Dimig's
device is receptive to a radio-frequency signal rather than an inductive
transmission. Final Act. 3. Thus, the Examiner relies on the charging circuit
of Nantz-used to activate an inductive field to charge a remote keyless
entry (RKE) transmitter battery-to teach or suggest use of an "inductive
transmission" in place of Dimig's radio-frequency signal. Final Act. 3
(citing Nantz Fig. 2, col. 3, 1. 59---col. 4, 1. 9). The Examiner concludes
substituting the inductive transmission of Nantz for the radio-frequency
signal of Dimig would have been obvious to an artisan of ordinary skill
because "providing wireless power via a magnetic field is a common and
known alternative to the LF signal taught by Dimig." Final Act. 4; see also
Ans. 2-3.
Appellant contends the Examiner erred because Nantz merely teaches
"an inductive signal may be used to charge an RKE device." App. Br. 6.
Specifically, Appellant argues, "it is the inductive signal itself that enables
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activation of the vehicle feature" in the claimed invention, rather than "a
subsequent interaction with a key device after that device has been charged
by an inductive coupling." Id.; see also Reply Br. 2.
Appellant further argues "the active, low frequency[] signal generated
by the Dimig et al. RKE system has a range that extends well beyond the
vehicle body." App. Br. 7 (citing Dimig ,r 15 ("[A]n operator of the vehicle
... may use the RKE system to manually actuate certain components ...
prior to physically interacting with or touching the vehicle.")). Thus,
Appellant argues, Dimig "explicitly teaches away from the use of a passive,
very short range, inductive signal that would enable, for example, entry into
a vehicle." App. Br. 7; see also Reply Br. 2-3.
Analysis
Appellant's argument that the inductive field in Nantz is merely "used
to charge an RKE device" (App. Br. 6) is unpersuasive. As the Examiner
correctly finds, Dimig teaches the use of a charging signal (i.e., a signal
convertible to electrical energy that is at least partially stored) to initiate a
radio-frequency transmission as claimed. See Final Act. 3 (citing, e.g.,
Dimig ,r,r 4, 14). We agree with the Examiner because Dimig teaches
converting a received "RF signal to electrical energy" and storing "at least
some of the electrical energy converted from the RF signal." Dimig ,r 4.
That is, Dimig's RF signal is a charging signal. Further, Dimig teaches
responding to a received radio-frequency signal (specifically, a low-
frequency RF charging signal) by feeding electrical current to a
microprocessor, which responds by sending a command signal to an RKE
receiver to activate a vehicle feature. Dimig ,r 16. Thus, Dimig's radio-
frequency signal, like the claimed inductive signal, does not enable
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Application 14/699,013
activation of a vehicle feature. Instead, Dimig's radio-frequency signal
merely causes a device to send a radio-frequency signal to activate (i.e., to
enable activation of) a vehicle feature.
Appellant argues it would not have been obvious to substitute the
inductive signal of Nantz for Dimig's radio-frequency signal (i.e., as the
signal that causes the device of Dimig to send a feature-activating radio-
frequency signal) because an inductive signal "would not extend beyond the
vehicle body and thus would not permit activation of a vehicle feature prior
to physically interacting [with] or touching the vehicle." App. Br. 7-8.
However, Dimig is not limited to, nor does it require, passive entry as a
feature. Instead, Dimig teaches low-frequency "antennas 25 [that] are
components of a passive entry and/or passive start system in the vehicle 15."
Dimig ,r 14 (emphasis added). That is, use ofDimig's device for passive
entry is optional. Furthermore, an artisan of ordinary skill would have
recognized that vehicle users typically start vehicles from inside the vehicle,
not from outside the vehicle. Thus, even if the inductive signal of Nantz
could not reasonably be used to cause Dimig's device to send a radio-
frequency signal to start the vehicle from outside the vehicle, a user's typical
use of only starting the vehicle from inside the vehicle would not be
affected. Therefore, Dimig' s teachings fail to criticize, discredit, or
discourage substitution of the Nantz inductive field for Dimig's radio-
frequency signal.
Appellant also argues "it is unclear why one of ordinary skill would
add an inductive or passive signal to Dimig ... given that the active signal
already performs an identical function." App. Br. 6. However, the
Examiner correctly finds that "providing wireless power via a magnetic field
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is a common and known alternative to the [low-frequency] signal taught by
Dimig." Final Act. 4; see also Ans. 3. "[T]he simple substitution of one
known element for another" generally will be obvious unless the substitution
or the application of the known technique would have been beyond the level
of ordinary skill in the art, or the results of the substitution would not have
been predictable by one of ordinary skill in the art. KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 416-17 (2007). Based on the evidence before us, we
agree with the Examiner that the substitution of an inductive charging signal
for an RF charging signal would have represented a simple substitution
within the level of ordinary skill in the art. Therefore, contrary to
Appellant's arguments (App. Br. 6), we agree with the Examiner that it
would have been obvious to an artisan of ordinary skill to modify Dimig's
device, using the teachings and suggestions of Nantz, to respond to an
inductive signal by transmitting a radio frequency signal to activate a vehicle
feature (see Final Act. 3--4 (citing, e.g., Dimig Fig. 2, ,r 16; Nantz Fig. 2, col.
3, 1. 59-col. 4, 1. 9)).
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1, and claims 2-14, which are not argued separately.
OBVIOUSNESS-TYPE DOUBLE-PA TENTING
Findings and Contentions
In rejecting claim 1 on grounds of obviousness-type double-patenting,
the Examiner finds that claim 10 of Colburn '704 "does not specifically
disclose the limitations directed to the passive device receptive to a magnetic
field transmission for inducing current." Final Act. 8. Thus, based on the
findings and conclusions posited with respect to the 35 U.S.C. § 103(a)
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rejection of claim 1, the Examiner relies on Nantz to cure the acknowledged
deficiency. Id.; see also Ans. 4--5.
Appellant contends the Examiner erred because Nantz "does not
describe the use of an inductive signal to activate a vehicle feature." App.
Br. 8; see also Reply Br. 3.
Analysis
Appellant argues that Nantz alone fails to teach or suggest the features
of claim 1. See App. Br. 8. However, the Examiner merely relies on Nantz
to cure the acknowledged deficiencies of Colburn '704 claim 10. Final Act.
8. Because Appellant fails to show error in the Examiner's reliance on claim
10 of Colburn '704 in combination with Nantz, Appellant's arguments are
unpersuasive.
Accordingly, we sustain the Examiner's obviousness-type double-
patenting rejection of claim 1, and claims 2, 3, 5-8, and 10-13, which
Appellant does not argue separately.
DECISION
We affirm the Examiner's decision rejecting claims 1-14.
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.
§ 41.50(±).
AFFIRMED
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