Ex Parte Uehara

Patent Trial and Appeal Board

Feb 13, 2014

11662427 (P.T.A.B. Feb. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TSUYOSHI UEHARA
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Appeal 2011-009171
Application 11/662,427
Technology Center 2600
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Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009171
Application 11/662,427
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Illustrative Claim
Appellant’s invention relates to tire condition detection. Abstract
Claim 1, reproduced below with the disputed limitations italicized, is
illustrative of the claimed subject matter:
1. A tire condition detection device in which a tire condition
detection signal detected on a tire side of a vehicle is received
by a receiving antenna and entered into a receiver on a vehicle
body side of the vehicle, the device having a waveguide
comprising a metal part of the vehicle, wherein the receiving
antenna is mounted upon the vehicle and is electrically
connected to the metal part, the receiving antenna and the
receiver being electrically connected to each other via the metal
part, the tire condition detection signal received by the
receiving antenna being transmitted to the receiver via the metal
part.

Rejections
The Examiner rejected:
Claims 1–6 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement (Ans. 3–4);
Claims 1, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over Lee
(U.S. Patent Application Serial No. 60/481,654) (Ans. 4–6);
Claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over Lee and
Iwasaki (JP 10-309914) (Ans. 6–7); and
Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Lee, Iwasaki,
and Achterholt (US 2001/0050611 A1) (Ans. 7).
Appeal 2011-009171
Application 11/662,427
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ISSUES
Appellant’s arguments raise the following issues:
1) Whether the Examiner erred in rejecting claims 1–6 under 35
U.S.C. § 112, first paragraph; and
2) Whether Lee teaches or suggests “a waveguide comprising a
metal part of the vehicle, wherein the receiving antenna is mounted upon the
vehicle and is electrically connected to the metal part” as recited in claim 1.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (“App. Br.” filed Feb. 28, 2011) and Reply
Brief (“Reply Br.” filed May 9, 2011). We refer to the Briefs and the
Answer (“Ans.” mailed Mar. 9, 2011) for the respective positions of
Appellant and the Examiner.

35 U.S.C. § 112 Rejection of Claims 1–6
The Examiner rejects claims 1–6 under 35 U.S.C. § 112, first
paragraph, because
the claimed “waveguide” (e.g., corresponding to the metal part
of fig. 1) is connected to the vehicle, and the vehicle is
connected to the ground. Therefore, the claimed “waveguide”
appears to be grounded through the vehicle. Since the
“waveguide” appears to be grounded, the “waveguide” would
not work to transmit signals.
Ans. 4.
Appellant argues the Examiner erred because the vehicle is in contact
with the ground via tires, which isolate the vehicle from the ground. App.
Br. 10–11.
Appeal 2011-009171
Application 11/662,427
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We agree with Appellant for the reasons stated by Appellant that the
Examiner has erred. Accordingly, we do not sustain the Examiner’s 35
U.S.C. § 112 rejection of claims 1–6.

35 U.S.C. § 103 Rejection of Claim 1 over Lee
Appellant argues Lee does not teach or suggest “a waveguide
comprising a metal part of the vehicle, wherein the receiving antenna is
mounted upon the vehicle and is electrically connected to the metal part.”
App. Br. 13–14; see also Reply Br. 7–9. Appellant concedes Lee teaches
“the car body acts as an antenna” (App. Br. 13 (referring to Lee ¶¶ 15 and
17)) but argues “[t]here is no disclosure or suggestion in [Lee] of using a
metal part, such as the chassis frame, as a waveguide to make an electrical
connection between the receiving antenna and the receiver.” Id. Appellant
asserts the invention as claimed “allows the wiring distance from the
receiving antenna to the receiver to be shortened, . . .” a benefit not realized
by the prior art. Id. at 14. Appellant further argues that, in Lee, “there is no
separate antenna from the car body” and no “antenna mounted upon the
vehicle [that] is electrically connected to the metal part,” as in claim 1. Id.
The Examiner cites Lee, paragraph 21, as teaching “Machine Body
Antenna with multiple feed points between the transceiver and the Machine
body, creating multiple virtual Machine Body Antennae, and a virtual
phased array.” Ans. 9. Appellant’s arguments do not persuade us that the
Examiner has interpreted the claimed waveguide and/or the claimed
receiving antenna unreasonably broadly. Nor have Appellant’s arguments
persuaded us that the Examiner erred in finding that Lee’s description of
“multiple virtual Machine Body Antennae” meets “a waveguide comprising
a metal part of the vehicle, wherein the receiving antenna is mounted upon
Appeal 2011-009171
Application 11/662,427
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the vehicle and is electrically connected to the metal part” as interpreted by
the Examiner. Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellant does not separately argue claims 5 and 6. Appellant’s
arguments as to claims 2, 3, and 4 are based on secondary references not
remedying the deficiencies Appellant argues for claim 1, which deficiencies
we do not find. App. Br. 15. Accordingly, we sustain the Examiner’s
rejections of claims 2–6.

CONCLUSIONS
On the record before us, we conclude:
The Examiner erred in rejecting claims 1–6 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement;
The Examiner did not err in rejecting claims 1, 5, and 6 under
35 U.S.C. § 103(a) as unpatentable over Lee;
The Examiner did not err in rejecting claims 2 and 3 under 35 U.S.C.
§ 103(a) as unpatentable over Lee and Iwasaki; and
The Examiner did not err in rejecting claim 4 under 35 U.S.C.
§ 103(a) as unpatentable over Lee, Iwasaki, and Achterholt.

DECISION
For the above reasons, the Examiner’s rejection of claims 1–6 is
affirmed.
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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