Holger Elias

Patent Trials and Appeals Board

Dec 18, 2019

14350649 - (D) (P.T.A.B. Dec. 18, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/350,649 04/09/2014 Holger Elias 114033-971/PRAG 0041PA 3131
146446 7590 12/18/2019
Dinsmore & Shohl LLP
801 Pennsylvania Avenue, N.W.
Suite 610
Washington, DC 20004
EXAMINER
MCCORMACK, THOMAS S
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
12/18/2019 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):
Evette.Ginn@DINSMORE.COM
dcipdocket@dinsmore.com
kimberly.koen@dinsmore.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HOLGER ELIAS1
___________

Appeal 2018-002367
Application 14/350,649
Technology Center 2600

____________

Before CARL W. WHITEHEAD JR, MICHAEL J. STRAUSS
and SHARON FENICK, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 50–55, 58–78, 81–
89, and 91–98 under 35 U.S.C. § 134(a).2 Claims Appendix, filed June 28,
2017. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Nokia Solutions and Networks Oy, as the real
party in interest. Appeal Brief 1.
2 Appellant states, “Of the rejections, claims 56, 57, 79, 80, and 90–96 have
been canceled, thus leaving claims 50–55, 58–78, 81---89 and 97–98 under
appeal.” Appeal Brief 1. This is not a correct status of the claims; the
pending claims are 50–55, 58–78, 81–89, and 91–98. See Amendment dated
December 14, 2015.
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Application 14/350,649
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We affirm.

Introduction
According to Appellant, the invention is directed to a method for
providing metering information or metering equipment. Specification 2.

Representative Claim
50. A method for providing metering information of metering
equipment, which comprises the steps of:

detecting a communication request input at the metering equipment, the
communication request input being provided by a manually operable
switching device, a switch, or a push button of the metering equipment;

responsive to activating a communication interface of the metering
equipment the communication request input detected;

establishing a communication link via the activated communication
interface;

wherein after establishing the communication link the metering equipment
enters a status, in which it is ready for receiving instruction information via
the activated communication interface and the established communication
link;

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providing via the activated communication interface the metering
information responsive to the instruction information received; and

deactivating the activated communication interface at a latest after a time
period since the activating step is performed, the time period being sufficient
to complete said receiving and said providing under normal operating
conditions.
References
Name Reference Date
Kiser et al. US 6,954,144 B1 October 11, 2005
Phatak US 2010/0306533 A1 December 2, 2010
Forbes, Jr. et al. US 2011/0029655 Al February 03, 2011
Duncan et al. US 2011/0208371 A1 August 25, 2011
Casey et al. US 2011/0254697 A1 October 20, 2011

Rejections on Appeal
Claims 73–78, 81–89, and 91–98 stand rejected under 35 U.S.C. §112
(b), as failing to particularly point out and distinctly claim the subject matter
which the applicant regards as his invention. Answer 6–9.
Claims 91–96 stand rejected under 35 U.S.C. §112(d) as being of
improper dependent form for failing to further limit the subject matter of the
claim upon which it depends, or for failing to include all the limitations of
the claim upon which it depends.
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Claims 50, 51, 53, 55, 61–66, 73, 74, 76, 78, 84–89, 91–943 and 96–
98 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kiser
and Casey. Final Action 9–25.
Claims 52, 54, 58, 60, 75, 77, 81 and 83 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Kiser, Casey and Phatak. Final
Action 25–27.
Claims 59 and 82 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kiser and Duncan. Final Action 28–29.
Claims 67–72 and 95 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kiser, Casey and Forbes, Jr. Final Action 29–34.

ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Briefs (filed July 29, 2016; June 28, 2017), the Final
Action (mailed March 17, 2016) and the Answer (mailed October 25, 2017),
for the respective details.

35 U.S.C. §112 (b) Rejection
The Examiner finds:
Claims 73–98 use the word “means” or a generic
placeholder (in this case “device” and “interface”) as a substitute
for “means” and are preceded by the word(s) “activating device
for activating the interface responsive”, “establishing device for
establishing a link”, “authenticating device for activating the
interface responsive”, “providing device for providing
communication interface”, “deactivating device for shutting

3 While the heading of this portion of the Final Action does not list claims 92
and 93, rejections of these claims appear in the body of this rejection. Final
Action 14–15
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down the interface after time period”, “verifying device for
verifying key information”, and “authenticating device for
authenticating credentials.” It is unclear whether these words
convey function or structure.
Answer 6 (emphasis added).
Appellant contends, “[T]he term before the word means or device in
each of the relevant claims in the pending application does in fact recite a
functional limitation; i.e., detecting, displaying, storing, sending,
deactivating, activating, etc.” Appeal Brief 9–10. Appellant further
contends, “The claims in the pending application are additionally coupled
with true means plus function language; i.e. a detecting device for detecting
a communication request input at the metering equipment (claim 73).”
Appeal Brief 10. We find Appellant’s arguments persuasive; there is no
uncertainty as to whether the words in the claim convey function or
structure. We disagree with the Examiner’s findings. We reverse the 35
U.S.C. §112 (b) rejection of claims 73–78, 81–89, and 91–98.

35 U.S.C. §112(d) rejection
The Examiner finds, “Claims 91–96 do not refer to a preceding
claim.” Answer 9. Appellant contends, “Claims 91– 96 have been rewritten
as new claims 99-–104. Appellant believes the rejection has been overcome
and that there is no issue for review here.” Appeal Brief 11. The Examiner
finds that the Appeal Brief filed June 28, 2017 still includes claims 91–96 in
improper dependent form. Answer 35. We do not agree with the
Examiner’s determination because the claims have been amended to depend
upon independent claim 97. See Claim Appendix 12–14. It is noted that
claims were not rewritten as new claims 99–104 as Appellant states. See
Appeal Brief 11; Claim Appendix 12–14.
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35 U.S.C. §103 (a) Rejection
Appellant contends, “Claim 50 includes a step of: detecting a
communication request input at the metering equipment” and “Claims 73
and 97 each include: ‘a detecting device for detecting a communication
request input at the metering equipment.’” Appeal Brief 11. Appellant
argues, “The Examiner has not explicitly identified the alleged
communication request in Kiser et al. Appellant believes the Examiner is
alleging that the periodic activation signal from the controller 72 is a
communication request.” Appeal Brief 11. Appellant contends, “[Kiser’s]
activation signal from the controller 72 is a command that activates the
communication interface for a predetermined period in order to detect
whether a communication request is received from a remote unit 74 during
the predetermined period in which the communication interface is activated
(see column 6, lines 16-–22).” Appeal Brief 12.
The Examiner finds that Kiser states, “This invention relates to an
assembly attached to a water meter capable of receiving meter readings,
encoding them, and transmitting the encoded meter readings to a remote
mobile location.” Answer 35 (citing Kiser, column 1, lines 5–8) (emphasis
added). The Examiner further finds, that Kiser discloses, “transmit and
receive antennas, a circuit board transponder connected to the antennas to
transmit meter readings to a remote location and receive interrogation
signals.” Answer 35 (citing Kiser, column 1, lines 36–38) (emphasis added).
The Examiner finds that Kiser’s controller 72 activates the receiver to check
for RF signals from a remote unit. See Answer 11. The claimed
communication request reads upon Kiser’s RF signals. Accordingly, we do
not find Appellant’s argument that the Examiner is “alleging that the
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periodic activation signal from the controller 72 is a communication request”
persuasive. See Appeal Brief 11.
Appellant contends:
The established function of the activation signal issued by
the controller in Kiser et al. is to activate the communication
interface for a predetermined period of time in order to detect
whether a communication request is received from a remote unit
74 during the predetermined period of time in which the
communication interface is activated (see column 6, lines 16 –
22).

The established function of the switch in Casey et al. is to trigger
a remote utility monitoring device 110-aand/or base receiver
110-n to exchange public or private keys in order to carry out an
encryption process (see paragraph 87).
Appeal Brief 15–16.
Appellant concludes:
Kiser et al. require an automatic, cyclic, high-frequency (1.5s),
short-term (2ms) reactivation mechanism (see column 4, lines 31
– 40 of Kiser). The person of ordinary skill in the art would
simply never have been motivated to have used a pushbutton [as
taught by Casey] to perform the automatic, Cyclic, high-
frequency (1.5s), short-term (2ms) reactivation mechanism of
Kiser et al.
Appeal Brief 19.
We do not find Appellant’s arguments persuasive. The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. In re Keller, 642
F.2d 413, 425 (CCPA 1981). We agree with the Examiner’s determination
that, “One of ordinary skill in the art at the time the invention was made
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would have been motivated to modify Kiser’s method to include Casey’s
switch for secure data transmission (Casey, [0061]).” Answer 12. Doing so
would have suggested the disputed limitation to one of ordinary skill in the
art.
Appellant argues that claim 50 requires the following limitations:
“deactivating the activated communication interface at a latest
after a time period since the activating step is performed, the time
period being sufficient to complete said receiving and said
providing under normal operating conditions” (underlining
added).

Claims 73 and 97 include limitations corresponding to those of
claim 50.
Appeal Brief 19.
Appellant argues, “There is no teaching or suggestion that the 2 ms
time period of Kiser et al. would be sufficient to complete receiving the
instruction information and providing metering information.” Appeal Brief
20.
We do not find Appellant’s arguments persuasive. Kiser discloses,
“The controller 72 periodically activates the receive state to check for RF
signals from a remote unit. If no valid signal is received within a 2
millisecond period, the controller reverts to sleep mode.” Kiser, column 6,
lines 16–19; see Answer 38. Kiser’s 2 millisecond period is associated with
maintaining battery life of the device and is not associated with receiving
instruction information as Appellant contends. See Kiser, column 6, lines
10-12. We do not find Appellant’s arguments persuasive and agree with the
Examiner’s findings and determination. We sustain the Examiner’s
obviousness rejection of independent claims 50, 73 and 97 argued together.
See Appeal Brief 24.
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Claims 61 and 84
Claim 50 recites, “[T]he time period being sufficient to complete said
receiving and said providing under normal operating conditions.” Appellant
contends that, “Claims 61 and 84 specify that the time period [recited in
claims 50 and 73] is configurable” and that “[t]he Examiner has merely
referred to global statements on configurable hardware and software
components in Kiser et al.” Appeal Brief 24. Appellant further contends
that, “Those global statements on configurable hardware and software
components do not disclose nor suggest a configurable time period” and
“Casey et al. do not disclose or suggest a configurable time period either.
Thus, combing Kiser et al. and Casey et al. would not have suggested the
invention as defined by claims 61 and 84.” Appeal Brief 24–25.
We do not find Appellant’s arguments persuasive. Claims 61 and 84
merely require the time period to be configurable without any specificity as
to the configurability of the time period. Kiser discloses, “If a valid signal is
received, the controller processes any encoded message received from the
remote transmitter/receiver 74 via the circuit board transponder receiver 68.”
Kiser column 6, lines 19–22. (emphasis added). “As our precedents make
clear, however, the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Kiser will process any encoded message and does not impose a time
constraint for processing the encoded messages. Accordingly, we find both
claims 61 and 84 to be obvious in view of Kiser and Casey.
We also sustain the Examiner’s obviousness rejections of dependent
claims 51–55, 58–60, 62–72, 74–78, 81–83, 85–89, 91–96, and 98, not
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argued or argued with distinction. See Appeal Brief 25–26.

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
73–78, 81–
89, and 91–
98
112 (b) 73–78, 81–
89, 91–98
91–96 112 (d) 91–96
50, 51, 53,
55, 61–66,
73, 74, 76,
78, 84–89,
91–94, 96–
98
103 Kiser, Casey 50, 51,
53, 55,
61–66,
73, 74,
76, 78,
84–89,
91–94,
96–98

52, 54, 58,
60, 75, 77,
81, 83
103 Kiser, Casey,
Phatak
52, 54,
58, 60,
75, 77,
81, 83

59, 82 103 Kiser, Duncan 59, 82
67–72, 95 103 Kiser, Casey,
Forbes Jr.
67–72, 95
Overall
Outcome
50–55,
58–78,
81–89,
91–98

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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED