Ex Parte Stewart et al

Board of Patent Appeals and Interferences

May 30, 2012

11186494 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROGER GREEN STEWART and WILLIAM R. BEMISS
____________

Appeal 2010-002966
Application 11/186,494
Technology Center 2600
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Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-13, 15-33, 35-51, 53, and 54. (App. Br. 5.) Claims 14, 34, and 52
were cancelled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary claim 1 follows:
1. A method for communicating with a plurality of
radio frequency (RF) devices, comprising:

transmitting a first signal at a first power level;

interrogating RF devices responding to the first signal;

instructing the responding RF devices to change state;
and

transmitting a second signal at a second power level, the
first power level or the second power level being selected by a
backend system, and the second power level being higher than
the first power level,

wherein one or more of the RF devices responding to the
first signal do not respond to the second signal upon changing
state.

The Rejections
The Examiner rejected claims 8, 12, 21, 24, 29, 32, 37-39, 43, and 52-
54 under 35 U.S.C. § 112, second paragraph, as being indefinite. (Ans. 3-4.)
The Examiner rejected claims 16-21, 23, 26, 44, 49, and 50 under 35
U.S.C. § 102(b) as being anticipated by Turner EP (EP 0 944 015 A2).
(Ans. 4-8.)
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The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over Turner EP. (Ans. 8.)
The Examiner rejected claims 1, 3, 5-11, 13, 15, 25-31, 33, 35-43, 45,
47, and 51-54 under 35 U.S.C. § 103(a) as being unpatentable over Turner
EP and Zai (US 2005/0088284 A1). (Ans. 9-17.)
The Examiner rejected claims 2 and 4 under 35 U.S.C. § 103(a) as
being unpatentable over Turner EP, Zai, and Dykema (US 5,854,593). (Ans.
17-18.)
The Examiner rejected claims 46 and 48 under 35 U.S.C. § 103(a) as
being unpatentable over Turner EP, Zai, and Turner (US 7,019,664 B2).
(Ans. 19.)
The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Turner EP and Weaver (US 6,628,957 B1). (Ans. 19-20.)
The Examiner rejected claims 12 and 32 under 35 U.S.C. § 103(a) as
being unpatentable over Turner EP, Zai, and Weaver. (Ans. 20-21.)

ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Are claims 8, 12, 21, 24, 29, 32, 37-39, 43, and 52-54 indefinite
under 35 U.S.C. § 112, second paragraph?
2. Does the Examiner err in finding that Turner EP anticipates
independent claims 16 and 44 and renders obvious dependent claim 22?
3. Does the Examiner err in finding that claims 1, 3, 5-11, 13, 15,
25-31, 33, 35-43, 45, 47, and 51-54 are rendered obvious by the combination
of Turner EP and Zai?
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ANALYSIS
Issue 1
The Examiner rejected claims 8, 12, 21, 24, 29, 32, 38, and 39 as well
as claims 37, 38, 39, 43, and 52-54 as indefinite based on the reasoning that
it was unclear whether the limitations following the terms “about” and “such
that” “are part of the claimed invention, and therefore, not limiting to the
claimed subject matter.” (Ans. 22.) Appellants argue that the claim
language following the term “about” is indeed limiting because it is
permissible to use that term to introduce “flexibility into an area, rate, range,
etc.” (App. Br. 11.) We agree. For example, the portion of claim 8 that
follows the term “about” is limiting because it requires a first signal’s
transmission time period to be about or approximately the same as the
second signal’s transmission time period. (Claim 8.) In other words, a
method having a transmission time period for a first signal that is much
greater or less than a second signal’s transmission time period does not fall
within the scope of claim 8.
Appellants also argue that the claim language following the term
“such that” is limiting because it describes a degree or quality of an action
that proceeds that term. (App. Br. 12.) We agree. For example, the portion
of claim 37 that follows the term “such that” is limiting because it indicates
the degree to which the first tags are to become nonresponsive. (Id.)
Accordingly, we do not sustain the Examiner’s indefiniteness
rejections of claims 8, 12, 21, 24, 29, 32, 37-39, 43, and 52-54.

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Issue 2
Appellants argue that Turner EP does not anticipate claim 16 because
Turner EP does not disclose “a continuous analog ramp of any power level.”
(App. Br. 13.) Appellants’ argument, however, is not commensurate with
the scope of claim 16 because claim 16 does not recite a continuous analog
ramp. Instead, claim 16 recites “continuously increasing the signal to a
second power level.” (Claim 16.) And Turner EP meets this claim
limitation because it discloses that “the power may be varied continuously
. . .” (Ans. 5; Turner EP, ¶ [0029].) Accordingly, we sustain the Examiner’s
anticipation rejection of claim 16 as well as claims 17-21, 23, and 26
dependent therefrom because Appellants did not set forth any separately
patentability arguments for those dependent claims. (See App. Br. 13-14.)
Appellants argue that dependent claim 22 is not obvious because
“Turner EP fails to disclose or provide a motivation or reason to establish
obviousness.” (App. Br. 15.) As explained by the Examiner, however,
varying the speed of increasing a power level is a mere design choice. (Ans.
24-25.) Moreover, the combination of increasing the power of a signal until
it is received as taught by Turner EP with the design choice of varying the
speed at which the power is increased would have been obvious because it is
a combination of familiar elements that yields predictable results. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, we sustain the
Examiner’s obviousness rejection of claim 22.
Appellants also argue that Turner EP does not anticipate claim 44
because Turner EP does not disclose that “‘if no signal is present, sending a
query and interrogating RF devices responding to the query.’” (App. Br.
14.) Contrary to Appellants’ argument, however, Turner EP discloses that
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an interrogator will send a signal at a higher power level if it does not
receive any signal in response to sending the signal at a lower power level.
(Ans. 5; Turner EP, ¶¶ [0026-0029].) Accordingly, we sustain the
Examiner’s anticipation rejection of claim 44 as well as claims 49 and 50
dependent therefrom because Appellants did not set forth any separate
patentability arguments for those dependent claims. (See App. Br. 14.)

Issue 3
Appellants assert that claims 1, 3, 5-11, 13, 15, 25-31, 33, 35-43, 45,
47, and 51-54 are not rendered obvious by the combination of Turner EP and
Zai. (App. Br. 15-31.) To support their assertion, Appellants argue that
“Zai is nonanalogous art.” (Id. at 18.) But Zai is analogous art because both
Zai and Appellants’ invention are in the same field of reading data from
RFIDs. (See Ans. 26.) Appellants also argue that “Zai teaches away from
the claimed invention by using several readers with fixed power levels at
determined spacing to cover large areas, rather than one reader using varying
power levels.” (App. Br. 17.) But a prior art reference that discloses a
different solution does not teach away from the claimed invention unless it
also criticizes, discredits, or otherwise discourages the claimed solution. See
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). And Zai does not state
that its readers may not have varying power levels. (See Ans. 26.)
Appellants also argue that “there is no motivation, either or express or
implied, to combine Turner EP and Zai.” (App. Br. 18.) But Zai itself
provides the motivation to combine by explaining that its features can
improve the reliability and throughput of a system for reading RFIDs. (Zai
¶¶ [0006-0007].)
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Appellants also argue that neither Turner EP nor Zai teaches or
suggests the limitation that is recited in claim 1 and similarly recited in claim
27 of “transmitting a second signal at a second power level, the first power
level or the second power level being selected by a backend system.” (App.
Br. 16.) But as discussed supra, Turner EP teaches the transmission of
signals from a RFID reader at different power levels. Moreover, Zai teaches
the control of RFID readers from a back-end computer server. (Zai,
¶[0029].) Accordingly, it would have been obvious to one of ordinary skill
at the time of Appellants’ invention, to transmit signals at different power
levels as taught by Turner EP from RFID readers that are controlled from a
back-end server as taught by Zai. Accordingly, we sustain the Examiner’s
obviousness rejections of claims 1 and 27.
Appellants’ contentions with respect to the other claims on appeal (1)
are similar to their contentions regarding the rejections of claims 1 and 27
and/or (2) fail to identify error in the Examiner’s specific fact-finding in
support of the rejections (see App. Br. 19-36). For example, Appellants
repeat their non-analogous art, teaching away, and motivation to combine
arguments for many claims. (See App. Br. 19-36.) Appellants also contend
that Zai does not teach certain limitations of claim 37 (App. Br. 23-24), but
fail to address the Examiner’s findings showing that the combination of
Turner EP and Zai teaches or suggests the disputed limitation (see Ans. 14-
15). In other words, Appellants’ additional arguments do not address and
identify an error with specificity in the Examiners’ fact finding.
Accordingly, for the reasons expressed supra and by the Examiner (Ans. 9-
21, and 25-31), we also sustain the Examiner’s § 103(a) rejections based on
Turner EP and Zai of the remaining claims on appeal.
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DECISION
We affirm the Examiner’s anticipation and obviousness rejections of
all the claims on appeal. We reverse the Examiner’s decisions rejecting
claims 8, 12, 21, 24, 29, 32, 37-39, 43, and 52-54 as indefinite under 35
U.S.C. § 112, second paragraph.
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).

AFFIRMED

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