Ex Parte 7265674 et al

Patent Trial and Appeal Board

Oct 29, 2014

90012236 (P.T.A.B. Oct. 29, 2014)

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.
90/012,236 04/04/2012 7265674 12378/00003-674-2 9641
27299 7590 10/29/2014
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/29/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROUND ROCK RESEARCH, LLC
____________________

Appeal 2014-007851
Reexamination Control 90/012,236
Patent No. 7,265,674 B2
Technology Center 3900
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2014-007851
Reexamination Control 90/012,236
Patent No. 7,265,674 B2

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STATEMENT OF THE CASE1
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–77, 79–91, and 93–98. Claims
78 and 92 have been withdrawn (Final Rej. 8; see also App. Br. 1). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Illustrative Claims
Independent claim 1 and dependent claim 3, reproduced below, with
disputed limitations italicized, illustrate the invention:
1. A system, comprising:
an article to be tracked;
a flexible radio frequency identification (RFID) label
affixed to the article, the RFID label comprising a first thin
flexible sheet having a first surface, a dipole antenna disposed
on the first sheet, a single integrated circuit (IC) having stored
therein an identification code associated with the article, and a
second thin flexible sheet affixed to at least a portion of the first
surface;
visual information on the RFID label; and
an interrogation system including a first interrogator
configured to provide power to the IC by RF charging and to

1 We refer to Appellant’s issued patent United States Patent Number
7,265,674 B2 (“Tuttle”) issued September 4, 2007, Appeal Brief (“App.
Br.”) filed February 11, 2014, and Reply Brief (“Reply Br.”) filed June 18,
2014. We also refer to the Examiner’s Advisory Action (“Advisory Act.”)
mailed October 31, 2013, Answer (“Ans.”) mailed April 18, 2014, and Final
Rejection (“Final Rej.”) mailed September 11, 2013.
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communicate with the RFID label using a spread spectrum
signal to determine the identification code.
3. The system of claim 2, wherein the IC is disposed
between the first and second sheets.
Rejections on Appeal
(1) The Examiner rejects claims 1–10, 23, 26–36, 41–44, 54, 55, 59,
and 61–63 under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent
No. 4,897,662, issued Jan. 30, 1990 (“Lee”), U.S. Patent No. 4783,646,
issued Nov. 8, 1988 (“Matsuzaki”), and Appellant’s Admitted Prior Art
(“AAPA”) concerning spread spectrum signals/modes being well-known
found at column 7, lines 4–16 of Tuttle. Final Rej. 9–25; Ans. 3–7.
(2) The Examiner rejects claims 12–14, 16–21, 45, 46, 65–77, 81–84,
89, and 97 under 35 U.S.C. § 103(a) as being unpatentable over Lee,
Matsuzaki, and U.S. Patent No. 4,935,093 issued June 19, 1990 (“Reeb”).
Final Rej. 25–40; Ans. 8.
(3) The Examiner rejects claims 39, 40, 47–52, 85–88, 90, 91, 95, 96,
and 98 under 35 U.S.C. § 103(a) as being unpatentable over Lee and
Matsuzaki. Final Rej. 40–49; Ans. 8.
(4) The Examiner rejects claims 11, 15, 22, 24, 25, 56–58, and 60
under 35 U.S.C. § 103(a) as being unpatentable over Lee, Matsuzaki,
AAPA, and Reeb. Final Rej. 49–57; Ans. 9.
(5) The Examiner rejects claims 37, 38, and 64 under 35 U.S.C.
§ 103(a) as being unpatentable over Lee, Matsuzaki, AAPA, and U.S. Patent
No. 5,175,418 issued Dec. 29, 1992 (“Tanaka”). Final Rej. 57–58; Ans. 9.
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(6) The Examiner rejects claims 53, 93, and 94 under 35 U.S.C.
§ 103(a) as being unpatentable over Lee, Matsuzaki, and Tanaka. Final Rej.
59–60; Ans. 9.
(7) The Examiner rejects claims 79 and 80 under 35 U.S.C. § 103(a)
as being unpatentable over Lee, Matsuzaki, Reeb, and Tanaka. Final Rej.
60–61; Ans. 9.
Appellants’ Contentions2
(1) Appellant contends that the Examiner erred in rejecting claims 1,
2, 4–10, 23, 26–36, 41–44, 54, 55, and 61–63 rejected under 35 U.S.C.
§ 103(a) over Lee, Matsuzaki, and AAPA for numerous reasons, including:*

2 Appellant argues separate patentability for independent claims 1, 23, and
54 which each recite similar subject matter of a method and system for
tracking articles using an RFID label having an antenna and IC operating
using a spread spectrum signal (see App. Br. 4–7; Reply Br. 1–4). Appellant
primarily argues claim 1 (App. Br. 5–7), and relies on the arguments
presented for claim 1 as to the patentability of claims 2, 4–10, 23, 26–36,
41–44, 54, 55, and 61–63 (App. Br. 8). Appellant also presents separate
arguments for claims 3 and 59 which recite similar subject matter (App. Br.
8; Reply Br. 4–5).
With regard to claims 1, 2, 4–10, 23, 26–36, 41–44, 54, 55, and 61–63
rejected under 35 U.S.C. § 103(a) over Lee, Matsuzaki, and AAPA, we
consider (i) independent claim 1 to be representative of the group of claims
including 1, 2, 4–10, 23, 26–36, 41–44, 54, 55, and 61–63; and (ii)
dependent claim 3 to be representative of the group of claims including
claims 3 and 59.
*With regard to claims 13, 67, and 73 rejected under 35 U.S.C.
§ 103(a) over Lee, Matsuzaki, and Reeb, Appellant relies on the arguments
presented as to claim 3 and 59 (App. Br. 12). And, with regard to claim 37
rejected under 35 U.S.C. § 103(a) over Lee, Matsuzaki, AAPA, and Tanaka,
Appellant relies on the arguments presented as to claim 3 and 59 (App. Br.
15–16). Therefore, the outcome of the instant appeal with regard to claims

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(a) with regard to claim 1, the surface acoustic wave (SAW)
filter required by Lee causes the IC to be too thick and not to be
suitable with an RFID label or the flexible sheet processing methods
of Matsuzaki (App. Br. 5–7; Reply Br. 2–4);
(b) there is no motivation to combine Lee with Matsuzaki
because Lee’s circuitry already meets the desired performance
requirement of being small with a lightweight construction, and one of
ordinary skill would not spend the extra time, effort, or cost to
implement Lee’s circuitry in the tag sheet form factor disclosed by
Matsuzaki (App. Br. 7 citing Lee at col. 10, ll. 21–24); and

13, 37, 59, 67, and 73 will depend upon the outcome of the appeal with
regard to representative claim 3.
With regard to (i) claims 12, 14, 16–21, 45, 46, 65, 66, 68–72, 74–77,
81–84, 89, and 97 rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lee, Matsuzaki, and Reeb (see App. Br. 8–12); (ii) claims 39, 40, 47–
52, 85–88, 90, 91, 95, 96, and 98 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee and Matsuzaki (see App. Br. 12–15); (iii) claims 11,
15, 22, 24, 25, 56–58, and 60 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Matsuzaki, AAPA, and Reeb (see App. Br. 15); (iv)
claims 53, 93, and 94 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Matsuzaki, and Tanaka (see App. Br. 16); and (v)
claims 79 and 80 rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lee, Matsuzaki, Reeb, and Tanaka (see App. Br. 16–17), Appellant
presents the same arguments as presented for claim 1. With regard to claims
38 and 64 rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee,
Matsuzaki, AAPA, and Tanaka, Appellant relies on the arguments presented
as to claims 23 and 54 from which claims 38 and 64 respectively depend
(see App. Br. 15–16), which in turn rely upon the arguments presented as to
claim 1 rejected over Lee, Matsuzaki, and AAPA.
Accordingly, our analysis herein will only address representative
claims 1 and 3.
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(c) the Examiner has articulated no reason for combining Lee
with Matsuzaki as is required (App. Br. 7).
(2) Appellant contends that the Examiner erred in rejecting claims 3
and 59 rejected under 35 U.S.C. § 103(a) over Lee, Matsuzaki, and AAPA
for numerous reasons, including:
(a) Matsuzaki’s Figure 3B does not show first polyester film 34
affixed to a surface of second polyester film 42 because the surface of
polymer film 36 is in between them (App. Br. 8); and
(b) Matsuzaki’s IC 32 is not disposed between any of the
polymer films that could reasonably be construed as being affixed to one
another (App. Br. 8).
ISSUES
Based on our review of the administrative record, Appellant’s
contentions, the Examiner’s findings and conclusions as well as the
Examiner’s response to Appellant’s contentions in the Answer, the two
pivotal issues before us follow:
(1) Did the Examiner err in concluding that Lee, Matsuzaki, and
AAPA are properly combinable and the applied references collectively teach
or would have suggested a system including a flexible radio frequency
identification (RFID) label having an integrated circuit (IC), as recited in
representative claim 1?
(2) Did the Examiner err in concluding that Lee, Matsuzaki, and
AAPA are properly combinable and the applied references collectively teach
or would have suggested the IC disposed between first and second thin
flexible sheets, as recited in representative claim 3?
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ANALYSIS
Based on Appellant’s arguments (App. Br. 4–8; Reply Br. 1–4), we
select (i) independent claim 1 as representative of Appellant’s arguments
and groupings with respect to claims 1, 2, 4–10, 23, 26–36, 41–44, 54, 55,
and 61–63; and (ii) dependent claim 3 as representative of Appellant’s
arguments and groupings with respect to claims 3 and 59, as indicated
(supra note 2). 37 C.F.R. § 41.37(c)(1)(iv) (2011).
We have reviewed the Examiner’s rejections (Final Rej. 2–35) in light
of Appellant’s contentions in the Appeal Brief (App. Br. 5–13) that the
Examiner has erred, as well as the Examiner’s response to Appellant’s
arguments in the Brief (Ans. 3–12). We disagree with Appellant’s
conclusions. With regard to representative claims 1 and 3, we concur with
the findings and conclusions reached by the Examiner, and we adopt as our
own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Rej. 3–25), and (2) the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellant’s
Appeal Brief (Ans. 3–9). We highlight and amplify certain teachings and
suggestions of the references, as well as certain ones of Appellant’s
arguments as follows.
Matsuzaki discloses a printed tag sheet for an article (col. 1, ll. 30–32;
Figs. 1B, 3B, and 4). Matsuzaki’s chip 32 shown in Figure 3B is disposed
between first polyester film 34 (having a pattern 30 that includes receiving
and transmitting antennas – see col. 3, ll. 57–61) and second polyester film
42 (col. 3, l. 50 through col. 4, l. 19). Although the spacer and polyester film
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36 is disposed between films 34 and 42, films 34, 36, and 42 are bonded to
each other by adhesion (col. 4, ll. 6–17 and 38–45). Thus, the broadest
reasonable interpretation of the recitation in claim 1 that the second flexible
sheet is “affixed” to a portion of a surface of the first thin flexible sheet
encompasses Matsuzaki’s arrangement shown in Figure 3B where thin films
34 and 42 are bonded to each other by adhesion to spacer 36. Claim 1 reads
on the affixation being either direct or indirect (e.g., through adhesion to
spacer 36).
As to claim 3, Matsuzaki’s chip 32 is “disposed between” the first and
second films 34 and 42 as shown in Figure 3B. Furthermore, Lee discloses
application of the circuit having an antenna and transmitter “to a wide
variety of other types of integrated circuits, and to a wide variety of other
types of integrated circuit modules” (col. 47, ll. 27–30).
Because Lee, Matsuzaki, and AAPA are properly combinable and
collectively teach or would have suggested (i) a system including a flexible
radio frequency identification (RFID) label having an integrated circuit (IC),
as recited in representative claim 1, and (ii) an IC disposed between first and
second thin flexible sheets, as recited in representative claim 3, we sustain
the Examiner’s obviousness rejections of claims 1 and 3. For similar
reasons, we also sustain the obviousness rejections of remaining claims 2, 4–
77, 79–91, and 93–98. See supra note 2.

CONCLUSIONS
(1) The Examiner did not err in rejecting representative claim 1, and
claims 2–10, 23, 26–36, 41–44, 54, 55, and 61–63 grouped therewith, under
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35 U.S.C. § 103(a) as being unpatentable over the combination of Lee,
Matsuzaki, and AAPA.
(2) The Examiner did not err in rejecting representative claim 3, and
claim 59 grouped therewith, under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Lee, Matsuzaki, and AAPA.

DECISION
We affirm the Examiner’s obviousness rejections of claims 1–77, 79–
91, and 93–98.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

msc

Patent Owner:

GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127

Third Party Requester:

TUCKER ELLIS LLP
950 MAIN AVENUE
SUITE 1100
CLEVELAND, OH 44113-7213