Ex Parte Batra

Patent Trial and Appeal Board

Mar 27, 2013

11619581 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte NARESH BATRA
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Appeal 2010-011489
Application 11/619,581
Technology Center 2600
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Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and IRVIN E.
BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011489
Application 11/619,581

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STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-24, all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

BACKGROUND
The invention relates to an RFID system having an electronic device
being powered by a battery; an RFID device in electrical communication
with the electronic device; and a mechanism for estimating a remaining
potential energy of the battery, wherein a flag is set on the RFID device
when an estimated remaining potential energy of the battery is below a
predefined threshold. Abs.
Claim 1 is illustrative of the issues on appeal and is reproduced below:

1. A Radio Frequency Identification (RFID) system,
comprising:
an electronic device being powered by a battery;
an RFID device in electrical communication with the
electronic device; and
a mechanism for estimating a remaining potential energy
of the battery,
wherein a flag is set on the RFID device when an
estimated remaining potential energy of the battery is below a
predefined threshold.

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Application 11/619,581

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THE REJECTIONS

Claims 1, 2, 4-9, and 11-13 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Nitzan (US 2006/0012464 A1, Jan. 19, 2006).
Claims 1, 2, 4-9, and 11-13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nitzan in view of Iwasaki (US 6,791,463 B2, Sep.
14, 2004).
Claims 7, 8, and 12-14 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Nitzan in view of Becker (US 6,726,099 B2, Apr.
27, 2004).
Claims 3, 10, and 15-24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nitzan and Iwasaki and further in view of Becker.
Ap. Br. 9.
ISSUES

1. Did the Examiner err in rejecting claims 1, 2, 4-9, and 11-13 under
35 U.S.C. § 102(e) by finding that Nitzan describes: (a) a flag being
set on the RFID device when an estimated remaining potential energy
of the battery is below a predefined threshold; (b) an electronic device
being powered by a battery and an RFID device in electrical
communication with the electronic device; and (c) an electronic
device having a visual display device?
2. Did the Examiner err in rejecting claims 1-24 under 35 U.S.C. §
103(a) because the proposed combination of the references does not
teach or suggest the claimed subject matter?

ANALYSIS
Appeal 2010-011489
Application 11/619,581

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We have reviewed the Reply Brief and the Examiner’s Answer in
light of Appellant’s arguments in the Appeal Brief presented in response to
the Final Office Action. We disagree with Appellant’s conclusions
regarding the limitations of claims 1-24, and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken; and (2) the reasons set forth by the Examiner in the Answer
in response to the Appeal Brief. We highlight and address specific findings
and arguments below for emphasis.
Issue 1 - 35 U.S.C. § 102(e) Rejection
Claim 1
In rejecting the claim 1 element, “wherein a flag is set on the RFID
device when an estimated remaining potential energy of the battery is below
a predefined threshold,” the Examiner references Figure 2 and paragraph
[0198] of Nitzan and states that “[i]t is inherent a ‘flag’ is set as there must
be some memory means to indicate the condition of the battery.” Final
Office Action, 2. With reference to this rejection, Appellant argues inter
alia it violates the rule requiring that the identical invention must be shown
in as complete detail as contained in the claim. See App. Br. 11-12. We are
not persuaded by Appellant’s argument.
Nitzan at paragraph [0198] states:
Energy saving module 70 can check the status of battery
60 using battery status indicator 72 and can forward this data to
control module 64. If indicator 72 senses that the battery has
insufficient power, for example by sensing that the battery
voltage drops below a predetermined threshold, module 70 can
switch on the energy conversion circuit. This feature enables
transponder 28 to continue operating as a passive backscatter
transponder, although typically with a reduced communication
range, long after battery 60 is exhausted.
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Inasmuch as Nitzan describes the control circuitry receiving an indication of
the battery’s status, Appellant’s argument that the raw status data must be
used to compute a flag or otherwise used for more than switching on an
energy conversion circuit (Reply Br. 3) would require importing limitations
into the claim that do not exist. Moreover, the data forwarded to the control
circuitry meets the claimed “flag” and the associated control circuitry that
receives the data meets the claimed memory in that it stores the data at least
long enough to receive it. Accordingly, the Examiner did not err.
With respect to the claimed electronic device being powered by a
battery and an RFID device in electrical communication with the electronic
device, Appellant also presents several arguments questioning the
Examiner’s interpretation of the structure of Nitzan’s device depicted in
Figure 2. The arguments, for example, challenge that Figure 2 and the
associated description can depict both an “electronic device being powered
by a battery” and an “RFID device in electrical communication with the
electronic device,” stating that Nitzan does not describe the electronic device
being “separate from the RFID device.” App. Br. 13-14, Reply Br. 3. We are
not persuaded by Appellant’s contentions.
Nitzan describes, for example, a display (paragraph [0148]), which,
while described as being part of the transponder 28, need not be interpreted
as part of the claimed RFID device. It would be reasonable, therefore, to
construe the claimed RFID device to include only elements from Figure 2
essential to meet the definition of the claimed RFID system, which
comprises and is in electrical communication with an electronic device. Any
one or more of the display, the energy saving module, the battery status
indicator, and other non-essential components could be interpreted as the
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Application 11/619,581

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claimed electronic device. In other words, absent importing meaning into the
claims that is not required, no recitation in the claims requires the RFID
device to be “separate” from the electronic device. Accordingly, the
Examiner did not err.
Claims 2, 8, and 11
Appellant also argues an alleged inconsistency between the rejection
of claim 8 and the rejection of claim 11:
Appellant also notes the following inconsistency. Particularly, claim 8
requires that the RFID device includes circuitry for monitoring usage
of the battery. In contrast, claim 11 requires that the electronic device
includes circuitry for monitoring usage of the battery. Thus, it appears
that the Examiner is asserting that the electronic device and the RFID
device in electrical communication with the electronic device are one
and the same. This cannot be. Moreover, the identical invention must
be shown in as complete detail as contained in the claim. Richardson
v. Suzuki Motor Co. 868 F.2d 1226, 1236, 9USPQ2d 1913, 1920 (Fed.
Cir. 1989). The elements must be arranged as required by the claim.
In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir.1990).

Reply Br. 8. Emphasis in original. We find no inconsistency. Claims 8 and
11 are different claims. Claim 8 states that the “RFID device includes
circuitry for monitoring usage of the battery.” Emphasis added. Claim 11
recites that the electronic device includes the battery monitoring circuitry.
Although they both depend from claim 7, there is no error in the Examiner
interpreting Nitzan’s energy saving module and/or battery status indicator to
be in one instance part of the claimed RFID device (claim 8) and in another
instance part of the electronic device (claim 11).
Claims 5 and 12
Appellant also argues that the rejections of claims 5 and 12 are
improper. App. Br. 15-16. Claims 5 and 12 recite that the electronic device
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includes a visual display device. Appellant argues that Nitzan’s display
device is not part of the electronic device but is part of the RFID device. Id.
As we have stated above, the elements depicted in Nitzan’s Figure 2 that are
not essential features of the claimed RFID device can be construed
reasonably to constitute the claimed electronics device. Accordingly, the
Examiner did not err.
Claims 7, 9, and 13
Appellant contends the patentability of these claims based on the same
arguments raised for claims 2, 8, and 11. App. Br. 16-17. For the same
reasons stated above, the Examiner did not err.

In accordance with our discussion above, we sustain the rejection of
claims 1, 2, 4-9, and 11-13 under 35 U.S.C. § 102(e) as being anticipated by
Nitzan.
Issue 2 - 35 U.S.C. § 103(a) Rejection
All pending claims stand rejected as obvious over Nitzan in view of
Iwasaki and/or Becker. The Appellant argues that Iwasaki is non-analogous
art, stating that it is outside Appellant’s field of endeavor and is not
reasonably pertinent to the particular problem with which the inventor was
concerned. App. Br. 18. The Examiner points out that “[o]ne could certainly
combine any reference that has a processor to show the setting of a flag.”
Ans. 11. We are not persuaded that the Examiner erred. Nitzan and Iwasaki
both describe digital circuitry (see, e.g., Nitzan, Fig. 2, element 64, “control
& logic” and Iwasaki, Fig. 1, element 13, “micro-computer”), which is
reasonably pertinent to the inventor’s field of endeavor.
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Appellant’s remaining arguments either rehash questions of missing
limitations, which we have addressed above, or challenge the propriety of
the rejections by attacking references individually. App. Br. 19-26, Reply
Br. 15-25. We are not persuaded. It is well settled that “[o]ne cannot show
non-obviousness by attacking references individually where . . . the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413, 426 (CCPA 1981). The test of obviousness is what the “combined
teachings of references would have suggested to those of ordinary skill in
the art.” Id. We accordingly are not persuaded of any error in the
Examiner’s 35 U.S.C. § 103(a) rejections of all pending claims.

Appeal 2010-011489
Application 11/619,581

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DECISION
We AFFIRM the rejection of claims 1, 2, 4-9, and 11-13 under 35
U.S.C. § 102(e) as anticipated by Nitzan.
We AFFIRM the rejection of claims 1, 2, 4-9, and 11-13 under 35
U.S.C. § 103(a) as unpatentable over Nitzan and Iwasaki.
We AFFIRM the rejection of claims 7, 8, and 12-14 under 35 U.S.C.
§ 103(a) as unpatentable over Nitzan and Becker.
We AFFIRM the rejection of claims 3, 10, and 15-24 under 35 U.S.C.
§ 103(a) as unpatentable over Nitzan, Iwasaki and Becker.

TIME PERIOD
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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