Ex Parte Benedict

Patent Trials and Appeals Board

Nov 24, 2014

12172316 - (D) (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT LEON BENEDICT
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Appeal 2012-007774
Application 12/172,316
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–29. (Br. 4.)1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 We refer to Appellant’s Specification (“Spec.”) filed July 14, 2008, and
Appeal Brief (“Br.”) filed November 21, 2011. We also refer to the
Examiner’s Answer (“Ans.”) mailed January 13, 2012.
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Appellant’s Invention
The invention at issue on appeal concerns a communication (reader)
system for a transponder attached to a vehicle wheel that transmits data
through an external receiver. The system includes a support pad, an antenna
located on the support pad, and a transmitter/receiver coupled to the antenna
to generate a signal (an electric field) to actuate the transponder and receive
data (a signal) in response to the actuation. (Spec. ¶¶ 1, 3–7; Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A reader system for a wheel-based, electric field-actuated
transponder device of the type having a transmitter for
transmitting data from a vehicle to an external receiver, the
reader system comprising:
a support pad for operatively supporting and positioning
the vehicle in at least one read location on an upper pad surface;
at least one antenna device on the support pad located to
operatively align with the vehicle wheel-mounted transponder
device with the vehicle on the support pad in the one read
location;
at least one transmitter device and receiver device
coupled to the antenna device for generating an upwardly
directed electric field to actuate the transponder device and
receive a responsive signal back from the transponder device.

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Rejections on Appeal
1. The Examiner rejects claims 1, 2, 4–6, and 9–21 under 35
U.S.C. § 102(b) as anticipated by U.S. Patent App. Pub. No. 2005/0110627
A1, published May 26, 2005 (“Sabet”)2.
2. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over Sabet and U.S. Patent App. Pub. No. 2002/0075145 A1,
published June 20, 2002 (“Hardman”).
3. The Examiner rejects claims 22 and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Sabet.
4. The Examiner rejects claims 7, 8, 23–27, and 29 under 35
U.S.C. § 103(a) as being unpatentable over Sabet and U.S. Patent App. Pub.
No. 2007/0018805 A1, published Jan. 25, 2007 (“Dixon”).

ISSUES
Based upon our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follow:
1. Does the Examiner err in finding that Sabet discloses “a support
pad for operatively supporting and positioning the vehicle,” “at least one
antenna device on the support pad located to operatively align with the
vehicle wheel-mounted transponder device,” and “at least one transmitter
device and receiver device coupled to the antenna device for generating an

2 The Examiner omits claims 20 and 21 from the ground of rejection (Ans.
4), but addresses the claims in the discussion of the merits of the rejection
(Ans. 7–8). Appellants address claims 20 and 21 with claims 23–27 (fourth
ground of rejection (above)) (see Br. 10). We deem this to be harmless
error.
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upwardly directed electric field to actuate the transponder device and receive
a responsive signal back from the transponder device” as recited in
Appellant’s claim 1?
2. Does the Examiner err in finding that Sabet discloses: (1) that
“the transponder device passes over the one antenna device” as recited in
Appellant’s claim 2; (2) that the “antenna is at least partially embedded
within the support pad” as recited in Appellant’s claim 5; (3) that the system
further includes “at least one secondary above-ground antenna device” as
recited in Appellant’s claim 9; (4) the antenna device has a layered structure
within the meaning of Appellant’s claim 11; and (5) “a reflective member
situated beneath the . . . antenna” as recited in claim 18?
3. Does the Examiner err in finding that the combination of Sabet
and Hardman collectively would have taught or suggested “the support pad
extends between vehicle entry and vehicle exit gates to operatively facilitate
a drive-over electric field actuation of the transponder device” as recited in
Appellant’s claim 3?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer, the Final Office
Action mailed June 24, 2011, and the Advisory Action mailed November 9,
2011, as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.

ANALYSIS
Based on Appellant’s arguments (Br. 6–13), we find Appellant makes
separate patentability arguments with respect to independent claim 1 (Br. 6–
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7) and dependent claims 2, 5, 9–11, 18, and 19 (Br. 7–8), claim 3 (Br. 8–9),
claims 7 and 8 (Br. 9–10), claims 20, 21, 23, and 24 (Br. 10–11), claims 25
and 26 (Br. 11), as well as claims 22 and 28 (Br. 11–13). Appellant does not
separately argue with particularity the patentability of dependent claims 4,
6–8, 12–17, 27, and 29. Accordingly, we select independent claim 1 and
dependent claims 2, 3, 5, 9, 11, 18, and 20–22 as representative of
Appellant’s arguments and groupings with respect to claims 1–29. 37
C.F.R. § 41.37(c)(1)(vii) (2004).
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Ans. 4–13), and (2)
the reasons set forth by the Examiner in the Examiner’s Answer (id. at 13–
17) in response to Appellant’s Appeal Brief, with the exceptions discussed
(infra). We concur with the findings and conclusions reached by the
Examiner, with the exceptions discussed (infra), and we provide the
following for emphasis.
The § 102 Rejection of Claims 1, 4, 6, and 17
Appellant contends that Sabet does not disclose the disputed features
of claim 1. (Br. 6–7.) Specifically, Appellant contends that Sabet does not
describe: a “support pad . . . which both supports and positions a vehicle on
an upper pad surface” (Br. 6), the “antenna device . . . on the vehicle
supporting pad” (id.), or the transmitter/receiver “generating an upwardly
directed electric field to actuate the transponder device” (id.), in that Sabet’s
antennas (Fig. 5, elements 102 and 104) “are not on a support pad . . .
namely a pad supporting the vehicle” because the antennas “are positioned
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laterally away from a pad supporting a vehicle and reside within a recess at
such laterally displaced locations” (Br. 6–7).
Appellant attempts to distinguish the present claimed invention from
Sabet based on features described in the Specification but not recited in
claim 1. Nothing in the claim requires a “durable antenna unit construction
specifically intended to withstand the stress from contact with a wheel unit
of a vehicle positioned in the read location” as asserted by Appellant (Br. 7).
Rather, the claim broadly recites “supporting and positioning the vehicle in
at least one read location on an upper pad surface” where the “antenna
device on the support pad [is] located to operatively align with the vehicle
wheel-mounted transponder device with the vehicle on the support pad in the
one read location” (claim 1). We broadly but reasonably construe these
limitations to require a pad supporting and positioning a vehicle in a “read
location” and an antenna capable of operatively aligning with the
transponder, i.e., receiving a signal directly from the transponder on the
wheel of the vehicle in the read location. We do not construe the claim to
require a particular pad structure or an antenna that is directly beneath
(under) or in “contact with a wheel unit of a vehicle positioned in the read
location” (Br. 7).
As explained by the Examiner (Ans. 4–5, 13), Sabet describes
antennas (Fig. 1, elements 102 and 104; Fig. 10, element 228) or drive-by
units (DBUs) including an antenna (Fig. 11a, elements 140 and 148) that
“interrogate” a radio frequency identification (RFID) sensor (transponder).
The antennas are positioned on or in a concrete roadway surface (Fig. 5,
element 110) that supports and positions a vehicle where the RFID
transponder may be read — i.e., where the transmitter/receiver/antenna may
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directly receive data signals from the transponder (see e.g., Sabet, ¶ 52; Fig.
10, describing positioning).
Appellant’s interpretation improperly imports limitations from the
Specification into claim 1. Although giving claims their broadest reasonable
interpretation must take into account any definitions given in the
Specification, see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), it is
improper to read into the claims limitations from examples given in the
Specification, see In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989). Our
reviewing court guides:
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citation omitted). We decline to import the examples from
Appellant’s Specification (¶¶ 37–39; Fig. 6) into claim 1. We find, as did
the Examiner, that Sabet describes a pad supporting and positioning a
vehicle in a location where transmitter/receiver/antenna directly receives a
signal from the transponder on the wheel of the vehicle (i.e., in the read
location).
Similarly, we do not construe the transmitter/receiver/antenna
“generating an upwardly directed electric field to actuate the transponder
device” to require that the electric field propagate in only a vertical (i.e.,
perpendicular) direction to the pad. Rather, we broadly but reasonable
construe “an upwardly directed electric field” as having an upward
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(vertical/perpendicular) component — as generally propagating in an
upward direction away from the transmitter/receiver/antenna. Nothing in the
claim describes structure for narrowing or focusing an electric field in a
particular direction. As explained by the Examiner (Ans. 5, 13–14), Sabet
describes antennas (Fig. 1, elements 102 and 104; Fig. 10, element 228, Fig.
11a, element 148) that “interrogate” a radio frequency identification (RFID)
sensor (transponder) – i.e., send signals to and receive signals from the RFID
transponder (see, e.g., Sabet, ¶ 30). We find, as did the Examiner, that Sabet
describes that the actuation signal propagates in a generally upward
direction. (See Fig. 5.)
Further, Appellant failed to file a Reply Brief rebutting the findings
and responsive arguments made by the Examiner in the Answer. Thus, for
all the reasons supra, Appellant does not persuade us of error in the
Examiner’s anticipation rejection of representative independent claim 1. For
these same reasons Appellant also does not persuade us of error in the
Examiner’s anticipation rejection of dependent claims 4, 6, and 17, not
separately argued by Appellant (supra).
The § 102 Rejection of Claim 2
Appellant contends that Sabet does not disclose the disputed features
of claim 2. (Br. 7.) Specifically, Appellant contends that Sabet does not
describe “a transponder device from a vehicle passing over the antenna 102,
104 which are positioned to the side of the Sabet vehicle supporting pad”
(Br. 7). We disagree.
Similar to claim 1 (discussed supra), nothing in claim 2 requires that
the transponder pass directly over the transmitter/receiver/antenna. Rather,
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we broadly but reasonably construe the claim to generally limit the passage
direction to above the antenna (as opposed to passing horizontally (next to)
or passing under (below) the sensor). As explained by the Examiner (Ans.
5, 14), Sabet describes the transponder passing over the antenna. (See Sabet,
Figs. 5 and 9.) Further, Appellant failed to file a Reply Brief rebutting the
findings and responsive arguments made by the Examiner in the Answer.
Thus, for all the reasons supra, Appellant does not persuade us of error in
the Examiner’s anticipation rejection of dependent claim 2.
The § 102 Rejection of Claim 5
Appellant contends that Sabet does not disclose the disputed features
of claim 5. (Br. 7.) Specifically, Appellant contends that “the antenna . . .
are not embedded at least partially by the underlying substrate in Sabet” (Br.
7). We disagree.
Appellant does not define “embedded.” As explained by the
Examiner (Ans. 5, 14), Sabet describes the antennas being “embedded” in
the roadway (Sabet, ¶¶ 38, 46; Fig. 5). Even if we were to interpret Sabet as
urged by Appellant (Br. 7), Sabet still describes antennas embedded in the
support structure of the DBUs (Ans. 14 (see Sabet, ¶ 54; Fig. 11a (elements
140, 146, 148))). Further, Appellant failed to file a Reply Brief rebutting the
findings and responsive arguments made by the Examiner in the Answer.
Thus, for all the reasons surpa, Appellant does not persuade us of error in
the Examiner’s anticipation rejection of dependent claim 5.
The § 102 Rejection of Claims 9 and 10
Appellant contends that Sabet does not disclose the disputed features
of claims 9 and 10. (Br. 7.) Specifically, Appellant contends that Sabet
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does not describe “an above ground secondary antenna device” (id.) that
subjects the transponder to a second (secondary) electric field. Although
Sabet describes multiple transmitters/receivers/antenna (Ans. 5–6, 14), we
agree with Appellant that the cited portions of Sabet do not expressly
describe subjecting a transponder to a first (primary) and a second
(secondary) electric field. Consequently, we are constrained by the record
before us to find that the Examiner erred in finding Sabet discloses the
recited features of Appellant’s claims 9 and 10.
The § 102 Rejection of Claim 11 and 12–16
Appellant contends that Sabet does not disclose the disputed features
of claim 11. (Br. 8.) Specifically, Appellant contends that Sabet does not
describe the antenna device (pad and antenna) as having a layered structure
— “the antenna device to include a base layer, a conductive antenna member
on the base layer, and a cover layer over the antenna member” (id.).
Although Sabet describes an antenna (antenna member) embedded in
support material (Ans. 6, 15), this is not a layered structure (structure having
distinct layers) as recited in the claim. Thus, we agree with Appellant that
the cited portions of Sabet do not expressly describe a layered structure
(base layer, conductive antenna member on the base layer, and cover layer
over the antenna member). Consequently, we are constrained by the record
before us to find that the Examiner erred in finding Sabet discloses the
recited features of Appellant’s claim 11. Claims 12–16 depend on and stand
with claim 11.

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The § 102 Rejection of Claims 18 and 19
Appellant contends that Sabet does not disclose the disputed features
of claims 18 and 19. (Br. 8.) Specifically, Appellant contends that Sabet
does not describe a “reflective member beneath a dipole antenna” (id.).
Although Sabet describes an antenna printed circuit with an antenna element
(30) and reflector elements (36, 38) (Ans. 7; Sabet, ¶ 32; Fig. 2), we agree
with Appellant that the cited portions of Sabet do not expressly describe the
integrated antenna (Sabet, Fig. 2, element 30) with a reflective element
beneath (under) the antenna on the pad (compare Spec. ¶ 42; Figs. 9–11with
Sabet, Figs. 5–13). Consequently, we are constrained by the record before
us to find that the Examiner erred in finding Sabet discloses the recited
features of Appellant’s claims 18 and 19.
The § 103 Rejection of Claim 3
Appellant contends that Sabet and Hardman do not teach the disputed
features of claim 3. (Br. 8–9.) Specifically, Appellant reiterates the
arguments made with respect to claims 1 and 2 (supra) and asserts that
“Hardman does not cure the deficiencies of Sabet” (Br. 9). Contrary to
Appellant’s arguments, we agree with the Examiner that Sabet teaches the
transponders passing over the antennas (supra) and Hardman teaches an
interrogator (26) includes gate readers (30A, 30B) and antennas (28A, 28B)
(Hardman, ¶ 107; Fig. 12 ). (Ans. 8, 12.) Further, Appellant failed to file a
Reply Brief rebutting the findings and responsive arguments made by the
Examiner in the Answer. Thus, for all the reasons supra, Appellant does not
persuade us of error in the Examiner’s obviousness rejection of dependent
claim 3.
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The § 103 Rejection of Claims 22 and 28
Appellant contends that Sabet do not teach the disputed features of
claim 22 (Br. 11–13) and claim 28 (Br. 12–13). Specifically, Appellant
contends that Sabet does not show a layered antenna device assembly (of a
certain thickness) (claim 22) (Br. 11–12). As with claim 11 (supra), we
agree with Appellant that the cited portions of Sabet do not teach an antenna
assembly (antenna and pad) with a layered structure. The Examiner does not
sufficiently explain why a layered assembly would have been utilized
(instead of embedding the antenna in the DBU support material). (Ans. 12–
13, 16–17.) Consequently, we are constrained by the record before us to
find that the Examiner erred in finding Sabet teaches the recited features of
Appellant’s claim 22. Claim 28 depends on and stands with claim 22.
The § 103 Rejection of Claims 7 and 8
Appellant contends that Sabet and Dixon do not teach the disputed
features of claims 7 and 8. (Br. 9–10.) Specifically, Appellant reiterates the
arguments made with respect to claims 1 and 2 (supra) with respect to Sabet
and also Dixon. (Br. 10.) Appellant argues the references individually,
instead of addressing the combination of Sabet and Dixon. (Br. 10.)
Specifically, the Examiner points to Sabet as teaching the interrogation
system (transmitter/receiver/antenna system) and Dixon as teaching the
linear array antenna (Ans. 9–10, 16 (citing Dixon, Fig. 1, elements 101–
108)). Appellant fails to appreciate the collective teachings of Sabet and
Dixon as a whole. One cannot show non-obviousness by attacking
references individually where the rejections are based on combinations of
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references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing
In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellant also contends that “the Dixon array and the Sabet antenna
are not positioned to have a spacing operative to subject the transponder
device to a sequence of electric fields as the transponder moves over the
linear array of antennae.” (Br. 10.) Appellant’s contention contradicts the
express disclosure of Dixon. (See Dixon, Fig. 1, elements 101–108 and
Figs. 5–7 and accompanying text.) Dixon shows a sequence of electric
fields (interrogation signals) in different time slots as the transponders pass
over the antennas (antenna array) (id.).
We agree with the Examiner that Dixon describes the recited linear
array and that one of ordinary skill could have combined these known
techniques. (Ans. 9–10, 16.) See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) (“[I]f a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill” (citations omitted)). We are not
persuaded that combining the respective familiar elements of the cited
references in the manner proffered by the Examiner would have been
“uniquely challenging or difficult for one of ordinary skill in the art” at the
time of Appellant’s invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Further, Appellant failed to file a Reply Brief rebutting the findings and
responsive arguments made by the Examiner in the Answer. Thus, for all
the reasons supra, Appellant does not persuade us of error in the Examiner’s
obviousness rejection of dependent claims 7 and 8.
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The § 102 Rejection of Claim 20
Appellant contends that Sabet, Hardman, and Dixon do not teach the
disputed features of claim 20. (Br. 10.) Specifically, Appellant contends
that “[n]one of the cited art teach an antenna drive-over device that is
positioned as claimed in claim 1 and which is substantially flat . . .” (Br. 10).
We note that the Examiner rejected claim 20 as anticipated by Sabet (see
footnote 2 (supra)). As previously discussed with respect to claim 1 (supra),
Sabet describes (discloses) the transmitter/receiver/antenna and vehicle
positioning. Sabet also describes (discloses) an antenna (Fig. 13) and an
antenna assembly/device (antenna and pad) (Figs. 5–8, 10) that are
“substantially flat” (Ans. 7; see Sabet, Figs. 5–8, 10, 13). Sabet’s figure 13
shows a flat antenna embedded in a DBU. Sabet’s figure 10 provides a
detailed view of an antenna in a concrete roadway (pad) with a cover (224),
which is substantially flat. Contrary to Appellant’s arguments, we agree
with the Examiner that Sabet teaches a substantially flat antenna device.
(Ans. 7.) Thus, for all the reasons supra, Appellant does not persuade us of
error in the Examiner’s anticipation rejection of dependent claim 20.
The § 102 Rejection of Claim 21
Appellant contends that Sabet, Hardman, and Dixon do not teach the
disputed features of claim 21. (Br. 10.) Specifically, Appellant contends
that “[n]one of the cited art teach” “an antenna device aligned to operatively
underlie the vehicle wheel-mounted transponder device with the vehicle on
the support pad in the one read location” (Br. 10). As with claim 20 (supra),
the Examiner rejected claim 21 as anticipated by Sabet (see footnote 2
(supra)). As previously discussed with respect to claim 2 (supra), Sabet
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describes (discloses) the transponder passing over the antenna. Therefore,
Sabet also describes (discloses) an antenna assembly/device (antenna and
pad) aligned to operatively underlie (that underlies) the transponder.
Contrary to Appellant’s arguments, we agree with the Examiner that Sabet
teaches an antenna device aligned to operatively underlie a transponder.
(Ans. 7–8.) Thus, for all the reasons supra, Appellant does not persuade us
of error in the Examiner’s anticipation rejection of dependent claim 21.
The § 103 Rejection of Claims 23–27 and 29
Appellant contends that Sabet and Dixon do not teach the disputed
features of claims 23–27 and 29. (Br. 10–11.) We find Appellant’s
arguments persuasive. As discussed with respect to claim 22 (supra), Sabet
does not teach an antenna device with a layered structure. Claims 23–27 and
29 depend on and stand with claim 22.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1, 2, 4–6, 17, 20, and 21 under 35 U.S.C. § 102(b).
Appellants have shown that the Examiner erred in rejecting claims 9–
16, 18, and 19 under 35 U.S.C. § 102(b).
Appellants have not shown that the Examiner erred in rejecting claims
3, 7, and 8 under 35 U.S.C. § 103(a).
Appellants have shown that the Examiner erred in rejecting claims
22–29 under 35 U.S.C. § 103(a).
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DECISION
We affirm the Examiner’s rejections of claims 1–8, 17, 20, and 21.
We reverse the Examiner’s rejections of claims 9–16, 18, 19, and 22–29.

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-IN-PART

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