Ex Parte Bremer

Patent Trial and Appeal Board

Jul 13, 2017

13901106 (P.T.A.B. Jul. 13, 2017)

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.
13/901,106 05/23/2013 Edward C. BREMER H0035621 5505
113760 7590 07/17/2017
HONFYWFT T /OT TFF PT C EXAMINER
115 Tabor Road BROWN, VERNAL U
P.O. Box 377
MORRIS PLAINS, NJ 07950 ART UNIT PAPER NUMBER
2686
NOTIFICATION DATE DELIVERY MODE
07/17/2017 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):
patentservices-us @ honey well, com
Office Action 113760 @ oliff. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD C. BREMER
Appeal 2017-004635
Application 13/901,1061
Technology Center 2600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
JESSICA C. KAISER, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
Final Rejection of claims 1—12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.2
1 According to Appellant, the real party in interest is Hand Held Products,
Inc. App. Br. 1.
2 Our Decision refers to Appellant’s Supplemental Appeal Brief filed August
23, 2016 (“App. Br.”); Appellant’s Reply Brief filed January 23, 2017
(“Reply Br.”); Examiner’s Answer mailed November 23, 2016 (“Ans.”); and
Final Office Action mailed November 17, 2015 (“Final Act.”).
Appeal 2017-004635
Application 13/901,106
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 6, and 12 are independent claims. Claim 1 is reproduced
1. A method of processing transponder signals received from
transponders to identify the transponders, the method
comprising:
receiving, from a reference transponder, a first signal
having a first signal strength;
determining a reference signal strength based on the first
signal strength;
receiving, from a first transponder, a second signal having
a second signal strength;
comparing the reference signal strength with the second
signal strength; and
determining that that [sic] the first transponder is within a
predefined area in response to the second signal strength being
greater than the reference signal strength.
Examiner’s Rejection
Claims 1—12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McKee and Wild. Final Act. 3—6.
We disagree with Appellant’s contentions and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
below:
McKee
Wild
References
US 6,915,135 B1 July 5, 2005
US 2009/0212921 A1 Aug. 27, 2009
ANALYSIS
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Application 13/901,106
which this appeal is taken; and (2) the reasons set forth by the Examiner in
the Answer in response to the Appeal Brief. With respect to the claims
argued by Appellant, we highlight and address specific findings and
arguments for emphasis as follows.
Claims 1, 2, 5—7, 10, and 12
Appellant contends the Examiner erred in finding the combination of
McKee and Wild teaches “comparing the reference signal strength with the
second signal strength; and determining that that the first transponder is
within a predefined area in response to the second signal strength being
greater than the reference signal strength,” as recited in claim 1 and similarly
recited in claims 6 and 12. App. Br. 8—12; Reply Br. 2—8. Specifically,
Appellant argues “there is no teaching in McKee of comparing the signal
strengths of two transponders.” App. Br. 10; Reply Br. 3^4. Appellant
further argues Wild does not teach a “comparison of the signal strength of
the asset tag 140B with the marker tag 120A.” App. Br. 12; Reply Br. 6—7.
Moreover, Appellant argues the Examiner’s “motivation is improper and
deficient.” App. Br. 13. Additionally, Appellant argues “it is difficult for
Appellant to know what parts of the cited prior art the Examiner asserts
correspond to claimed limitations.” App. Br. 9; Reply Br. 2.
We are not persuaded. Initially, we note the Examiner has set forth
detailed findings and reasoning (Final Act. 2—\\ Ans. 3—5); therefore,
Appellant’s assertion that the Examiner has not clearly detailed the teachings
for each limitation is not persuasive.
Specifically, the Examiner finds (Final Act. 2-4; Ans. 3), and we
agree, McKee teaches “comparing] a signal strength of a received beacon
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Application 13/901,106
signal to a reference signal strength ... in order to determine the presence
of a mobile transmitter 12 at a node 14” (McKee 3:66-4:3), i.e., McKee
receives a signal strength from a first transponder and compares that
received signal strength to a reference signal strength to determine whether
the transponder is in a certain area. The Examiner further finds, and we
agree, Wild teaches using “the signal strength measurement from the signal
of a marker tag ([i.e., a] reference transponder)” to determine the location of
another transponder. Final Act. 2 (citing Wild ^fl[ 25—26), 4; Ans. 4—5. The
Examiner modifies McKee, based on Wild’s teachings, such that McKee
“use[s] [a] transponder as the reference device” to determine McKee’s
reference signal strength. Ans. 4—5; Final Act. 2.
Appellant’s arguments that McKee does not “compar[e] the signal
strengths of two transponders” (App. Br. 10; Reply Br. 3 4) and that Wild
does not compare signal strengths (App. Br. 12; Reply Br. 6—7)
inappropriately attack McKee and Wild individually when the rejection is
based on a combination of McKee and Wild. In re Keller, 642 F.2d 413,
426 (CCPA 1981). As discussed above, McKee teaches the comparison of a
transponder’s signal strength to a reference signal strength (McKee 3:60—
4:3); the Examiner relies on McKee’s teaching in combination with Wild’s
teaching that a reference transponder can provide a reference signal strength
(Wild ^fl[ 25—26) such that the reference signal strength in McKee is
determined from a reference transponder (Ans. 4—6; Final Act. 2). Appellant
does not present persuasive evidence or argument addressing the combined
teachings of McKee and Wild.
Further, Appellant’s argument that “[providing an ‘alternate means’
is not a reason why one would combine one reference with another . . .
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because the references already have a framework and there is no motivation
to create an ‘alternate means’ of doing so” (App. Br. 13) is not persuasive
because the Examiner’s articulated reasoning is supported by rational
underpinning, i.e., “substitution of a known step for another to obtain a
predictable result” by using Wild’s reference transponders to “obtain the
reference signal strength” for McKee’s reference signal. Ans. 6; see Final
Act. 4. McKee discloses a reference signal strength, but McKee does not
explicitly disclose how it determines its reference signal strength;
nonetheless, we agree with the Examiner that it would have been obvious to
incorporate Wild’s reference transponder and corresponding reference signal
strength into McKee to provide a manner of determining a reference signal
strength. Appellant has not persuaded us of error in the Examiner’s
reasoning.
Accordingly, we are not persuaded the Examiner erred in concluding
the subject matter of independent claims 1 and 6 would have been obvious
over the combination of McKee and Wild. Therefore, we sustain the
rejection of claims 1 and 6 under 35 U.S.C. § 103(a). We likewise sustain
the rejection under 35 U.S.C. § 103(a) of claims 2, 5, 7, and 10, for which
Appellant offers no additional persuasive arguments for patentability. See
App. Br. 12-13.
Claims 3 and 12
Appellant contends the Examiner erred in finding the combination of
McKee and Wild teaches “receiving, from a second reference transponder, a
second signal having a second signal strength; determining a second position
of the second reference transponder . . . [and] receiving, from a first
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transponder, a third signal having a third signal strength,” as recited in claim
12 and similarly recited in claim 3. Reply Br. 8—9; see App. Br. 12—13.
Specifically, Appellant argues the “Examiner merely listed these as rejected
claims but nowhere in the Office Action are the limitations of these claims
discussed” (App. Br. 12) and the Examiner “has completely ignored [the]
features” of “two reference transponders and three signal strengths” (Reply
Br. 8-9).
We are not persuaded. As discussed supra, we agree with the
Examiner’s finding that Wild “teaches the use of the signal strength
measurement from the signal of a marker tag.” Final Act. 2. We further
agree with the Examiner’s finding, specifically identified in the rejection of
claims 3 and 12, that Wild “teaches multiple marker tag[s] (120)” and, thus,
teaches multiple reference transponders. Final Act. 3^4 (citing Wild ]ff[ 25—
26) (emphasis added), 5; Ans. 5; see Wild Fig. 1 (depicting three marker
tags — 120A, 120B, and 120C), 125 (marker tags 120). Because there are
multiple marker tags, there are multiple reference transponders with
respective signal strengths. As such, we determine an ordinarily skilled
artisan would understand Wild as teaching these limitations of claims 3
and 12.
Appellant further argues “the Examiner has still not addressed ‘the
determining the reference signal strength comprises one of the third signal
strength or the first signal strength,’ of claim 3.” Reply Br. 9. Claim 3
recites, in relevant part: “wherein the determining the reference signal
strength comprises one of the third signal strength or the first signal
strength.” This wherein clause of claim 3, therefore, appears to refer to
claim 1 ’s recitation of “determining a reference signal strength based on the
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first signal strength,” which the Examiner finds is taught by the combination
of McKee and Wild. Final Act. 3^4 (citing McKee, col. 3 line 66 — col. 4
line 1, col. 4 lines 62—65; Wild 25—26). Thus, we are not persuaded the
Examiner failed to address this limitation as to the alternatively recited “first
signal strength.”3
Accordingly, we are not persuaded the Examiner erred in concluding
the subject matter of claims 3 and 12 would have been obvious over the
combination of McKee and Wild. Therefore, we sustain the rejection of
claims 3 and 12 under 35 U.S.C. § 103(a).
Claim 4
Appellant contends the Examiner erred in finding the combination of
McKee and Wild teaches “the reference signal strength comprises the first
signal strength,” as recited in claim 4. Reply Br. 9—10; see App. Br. 12—13.
Specifically, Appellant argues the Examiner finds “the reference signal
strength is based on the first signal strength, but not that the reference signal
strength is the first signal strength.” Reply Br. 9—10.
We are not persuaded. The Examiner finds Wild “teaches the use of
the signal strength measurement from the signal of a marker tag (reference
transponder).” Final Act. 2 (citing Wild 25—26). Wild discloses that
“[a]n estimated parameter may include ... a signal strength of the
3 In the event of further prosecution, the Examiner may wish to consider
whether the phrase “wherein the determining the reference signal strength
comprises one of the third signal strength or the first signal strength”
satisfies the requirements of 35 U.S.C. § 112(b). In particular, the Examiner
may wish to determine whether it is sufficiently clear how a method step
(“determining”) may “comprise” a “signal strength.”
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modulated backscatter signal received from a marker tag 120.” Wild 126.
In the Examiner’s combination, McKee teaches a reference signal strength
(McKee 3:66-4:3), and Wild teaches that marker tags (i.e., the claimed
“reference transponders”) provide a reference signal strength (Wild Tflf 25—
26). Final Act. 2-4. Accordingly, we are not persuaded the Examiner erred
in concluding the subject matter of claim 4 would have been obvious over
the combination of McKee and Wild. Therefore, we sustain the rejection of
claim 4 under 35 U.S.C. § 103(a).
Furthermore, claim 4 recites that the reference signal strength
comprises the first signal strength, not that the reference signal strength is
the first signal strength. Appellant’s argument that the claim requires the
reference signal strength to be the first signal strength, is, therefore, not
commensurate with the scope of the claim.
Claims 8, 9, and 11
Appellant contends the Examiner erred in finding the combination of
McKee and Wild teaches the limitations recited in claims 8, 9, and 11. App.
Br. 12—13; Reply Br. 8, 10. Specifically, Appellant argues the “Examiner
merely listed these as rejected claims but nowhere in the Office Action are
the limitations of these claims discussed” and “it appears that the Examiner
has either overlooked or not properly addressed all of the limitations.” App.
Br. 12—13; Reply Br. 8, 10. We are not persuaded. We find the Examiner
has set forth detailed findings as to where the references teach the claim
limitations. Ans. 5—6. Appellant does not provide any elaboration
explaining why the Examiner’s citations do not adequately teach the claimed
limitations, and, accordingly, those arguments do not persuade us of
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Examiner error. Furthermore, claims 8 and 9 recite similar limitations to
claims 3 and 4, respectively, as to which we do not find error in the
Examiner’s rejection, as discussed supra. Accordingly, we are not
persuaded the Examiner erred in concluding the subject matter of claims 8,
9, and 11 would have been obvious over the combination of McKee and
Wild. Therefore, we sustain the rejection of claim 8, 9, and 11 under 35
U.S.C. § 103(a).
DECISION
We affirm the Examiner’s decision to reject claims 1—12 under 35
U.S.C. § 103(a) as being unpatentable over McKee and Wild.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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