Ex Parte ColburnDownload PDFPatent Trial and Appeal BoardJul 31, 201814699013 (P.T.A.B. Jul. 31, 2018) Copy Citation 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. Appeal 2017-011854 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. 2 Appeal 2017-011854 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 3 Appeal 2017-011854 Application 14/699,013 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 4 Appeal 2017-011854 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 5 Appeal 2017-011854 Application 14/699,013 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) 6 Appeal 2017-011854 Application 14/699,013 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 7 Copy with citationCopy as parenthetical citation