Ex Parte Chipchase et al

Patent Trials and Appeals Board

Nov 26, 2014

10518871 - (D) (P.T.A.B. Nov. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAN CHIPCHASE, TIMO O. ERIKSSON,
HIDEKI OHHASHI, KIYOTAKA TAKAHASHI,
EIGO MORI, and MAKOTO SUGANO
____________________

Appeal 2012-008593
Application 10/518,871
Technology Center 2600
____________________

Before BRUCE R. WINSOR, KIMBERLY J. McGRAW, and
WILLIAM M. FINK, Administrative Patent Judges.

FINK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 42, 44–51, 53–56, 59, and 61–81. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the real party in interest as Nokia Corporation. (App.
Br. 1.)
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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to radio frequency (RF) tag technology.
(Abstract.)2
Claims on Appeal
Claims 42, 55, 62, and 81 are the independent claims on appeal.
Claim 42 is illustrative of Appellants’ invention and is reproduced below:
42. An apparatus, comprising:

a memory configured to store a plurality of codes, each
code being associated with an operation;

a radio frequency tag reader configured to read a code
from the radio frequency tag;

a radio interface configured to transmit and receive data
in a network; and

a controller configured to determine whether the read
code corresponds with any of the plurality of codes stored in the
memory, and when the read code corresponds with any of the
plurality of codes stored in the memory, to perform an
operation associated with the corresponding stored code and
when the read code does not correspond with any of the
plurality of codes stored in the memory, to control the radio
interface to transmit a message to a remote destination via the
network, wherein determination of the remote destination is
based at least on the read code and the message comprises an
action code field comprising at least the read code and wherein

2 Our decision refers to Appellants’ Appeal Brief filed December 19, 2011
(“App. Br.”); the Examiner’s Answer mailed March 2, 2012 (“Ans.”);
Appellants’ Reply Brief filed May 2, 2012; the Final Office Action mailed
June 15, 2011 (“Final Act.”); and the original Specification filed December
21, 2004 (“Spec.”).
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the message is configured to initialize an action at the remote
destination.

Evidence Considered
Wischerop US 5,955,951 Sept. 21, 1999
Walter US 6,275,141 B1 Aug. 14, 2001
Rankin US 2002/0039909 A1 Apr. 4, 2002
Katagishi US 2003/0120745 A1 June 26, 2003
Hartmann US 2003/0145036 A1 July 31, 2003
Rodriguez US 6,650,761 B1 Nov. 18, 2003
Gallagher US 6,963,270 B1 Nov. 8, 2005
Lin WO 2001/050224 A3 July 12, 2001

Examiner’s Rejections
Claims 42, 44, 45, 48–51, 55, 62–66, 68–71, 73, 74, and 77–80 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Lin, Rankin,
Rodriguez, and Hartmann. (Ans. 5–13.)
Claims 46, 47, 75, 76, and 81 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lin, Rankin, Rodriguez, Hartmann, and
Wischerop. (Ans. 13–14.)
Claims 53 and 54 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lin, Rankin, Rodriguez, Hartmann, Wischerop, and
Gallagher. (Ans. 14–15.)
Claims 56, 59, and 61 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lin, Rankin, Rodriguez, Hartmann, and Walter.
(Ans. 15–17.)
Claims 67 and 72 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lin, Rankin, Rodriguez, Hartmann, and Katagishi. (Ans.
17–18.)

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Issues on Appeal
Based on Appellants’ arguments, the issues on appeal are:
I. Whether the combination of Lin, Rankin, Rodriguez, and
Hartmann teaches or suggests:
a controller configured to determine whether the read code
corresponds with any of the plurality of codes stored in the
memory, and when the read code corresponds with any of
the plurality of codes stored in the memory, to perform an
operation associated with the corresponding stored code and
when the read code does not correspond with any of the
plurality of codes stored in the memory, to control the radio
interface to transmit a message to a remote destination via
the network, wherein determination of the remote
destination is based at least on the read code and the
message comprises an action code field comprising at least
the read code and wherein the message is configured to
initialize an action at the remote destination

(hereinafter, “the determining limitation”) as required by
claim 42 and similar limitations of claims 55, 62, and 81
(App. Br. 7–17), and whether Lin, Rankin, Rodriguez, and
Hartmann are properly combined (id. at 17–19); and
II. Whether Lin, Rankin, Rodriguez, Hartmann, and Wischerop are
properly combined (id. at 53–55.)

ANALYSIS
I.
In rejecting independent claims 42, 55, 62, the Examiner relies on the
combination of Lin, Rankin, Rodriguez, and Hartmann. (Ans. 5–13.)
Appellants dispute the Examiner’s findings and conclusions on
several bases. First, Appellants argue that neither Lin nor Rankin teach
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transmitting a message to a remote destination if no matching code is found
locally, as claim 42 requires. (App. Br. 8–14.)
We are not persuaded by this argument because it focuses on alleged
deficiencies of individual references instead of the proposed combination.
Where a rejection is based on a combination of references, “one cannot show
non-obviousness by attacking references individually . . . .” In re Keller,
642 F.2d 413, 426 (CCPA 1981). Instead, the test is what the combination
“would have suggested to one of ordinary skill in the art.” Id. at 425.
Here, the Examiner finds Lin discloses a computer apparatus with RF
(radio frequency) ID reader and local look-up table with stored codes, and
based on a read ID tag’s code, perform a specific operation. (Ans. 6 (citing
Lin, 11:29–32, 13:25–32).) The Examiner finds Rankin teaches that such
look-up tables can be stored on a remote server. (Ans. 7–8 (citing Rankin ¶¶
44–48).) We agree with these findings and note that Appellants appear to
agree also. (See App. Br. 9, 14.) However, for the disputed limitation,
which requires “when the read code does not correspond with any of the
plurality of codes stored in the memory, to control the radio interface to
transmit a message to a remote destination . . . ,” the Examiner relies on Lin
and Rankin as modified by Rodriguez’s teachings (Ans. 9–10), which we
address infra. However, Appellants’ arguments alleging deficiencies in Lin
and Rankin alone are not persuasive as to what the combination “would have
suggested to one of ordinary skill in the art.” Keller, 642 F.2d at 425.
Second, Appellants contend Rodriguez teaches that “when a not
known code is received,” it is transmitted to a remote server that is a
“predefined (destination) server.” (App. Br. 15.) Accordingly, Appellants
argue, Rodriguez fails to teach the required “transmit[ting] a message to a
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remote destination . . . , wherein determination of the remote destination is
based at least on the read code . . . .” (Id.)
The Examiner responds to this argument by pointing out that, while
Rodriguez does disclose that the remote server is a “mater [sic: master]
server computer 42,” it further discloses the transmitted data includes a
CLASS ID, and when the master server examines the CLASS ID, it
forwards the data to a corresponding CLASS server, which the Examiner
finds is a “remote destination” as claimed. (Ans. 19–20 (citing Rodriguez,
7:63–8:6, 8:56–67).) Thus, the remote destination is dependent on the read
code, albeit with an intervening “master server.” (Id. at 20.)
In reply, Appellants do not disagree that Rodriguez discloses that “the
code is always transmitted to master server 42, which then may resolve the
correct destination” (Reply Br. 8); however, Appellants argue the disputed
limitation requires the claimed apparatus, not an intervening server, must
select the remote destination based on the read code. (Id. at 9 (“[T]here is
clearly a selection of the remote destination by the controller of the
appearatus . . . .”).)
We are not persuaded by this argument. As an initial matter, we give
claims their broadest reasonable interpretation consistent with the
Specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed.
Cir. 2004). Here, the disputed limitation requires transmission to a remote
destination, “wherein determination of the remote destination is based at
least on the read code . . . .” (App. Br., Cls. App’x ii.) There is nothing in
the disputed language requiring transmission directly to a remote
destination, nor requiring, as Appellants argue, the controller of the claimed
apparatus to select the remote destination. Moreover, we note that
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Appellants’ Specification contemplates a pre-defined, intervening server
between the invention and the remote destination:
In the embodiment shown, the action_request message is
based on the message identifier field 102 automatically directed
to the iBead broker server 80. . . .
. . . In the case where the instruction or operation
associated with the code is relatively simple and/or relate to a
standard system operation, then the instructions 120 for the
macro may be returned to the mobile phone 50 directly by the
broker server and carried out as shown by the diagram in Figure
5(a). In the case where the instruction or operation associated
with the code is more complicated or relates to a non-standard
operation, the broker server 80 delegates responsibility to a
relevant action server, let's say in this case action server 85a
. . . .

(Spec. 11:4–21 (emphasis added); see also id. Fig. 3.) In other words,
similar to the master server of Rodriguez, the broker server serves as an
intervening server between the claimed invention and the remote destination.
Accordingly, the Examiner’s interpretation of the claim as permitting an
intervening server before the remote destination, as Rodriguez teaches, is
reasonable and consistent with Appellants’ Specification.
Third, Appellants argue there is no suggestion to combine the
references as the Examiner has done. However, aside from repeating
arguments directed at alleged shortcomings of the individual references,
which we have addressed supra, Appellants do not explain why. (App. Br.
17.) As such, we are not persuaded. To support a conclusion of obviousness
relying on multiple references, there must be “some rationale, articulation, or
reasoned basis to explain why the conclusion of obviousness is correct.” In
re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Here, the Examiner finds it
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would have been obvious to modify Lin and Rankin with the teachings of
Rodriguez to:
include the step of matching the code data locally in the device
first in order to expedite the process, because if the data is
matched locally it would take less time to process and perform
the associated action, and then if data is not matched transmit a
message to a remote computer so the remote computer can
instruct the originating device how to respond appropriately.

(Ans. 10 (citation omitted).) We agree the evidence of record supports the
Examiner’s rationale. In the absence of sufficient rebuttal, we find the
Examiner has articulated a reasoned basis to support the conclusion of
obviousness over the cited combination.
To the extent Appellants allege other bases in support of their
arguments against the rejection of claim 42, we agree with the Examiner’s
findings and conclusions. Accordingly, because we are not persuaded that
the teachings of Lin, Rankin, Rodriguez, and Hartmann do not fall within the
scope of the claims, or are not properly combined, we sustain the
Examiner’s rejection of claim 42. With respect to independent claims 55
and 62, addressed separately in Appellants’ Brief, these claims also stand
rejected under Lin, Rankin, Rodriguez, and Hartmann, recite a limitation
similar to the determining limitation in claim 42, and were argued on
substantially the same bases as claim 42. (See App. Br. 19–42.) Therefore,
for the reasons discussed supra, we sustain the Examiner’s rejection of
claims 55 and 62, as well. With respect to dependent claims 44, 45, 48–51,
63–66, 68–71, 73, 74, and 77–80, rejected under the same combination, and
claims 46, 47, 53, 54, 56, 59, 61, 67, 72, 75, and 76, rejected separately as
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indicated supra, Appellants make no separate patentability arguments.
Therefore, we sustain the rejections of these claims as well.

II.
In rejecting independent claim 81, the Examiner relies on the
combination of Lin, Rankin, Rodriguez, Hartmann, and Wischerop. (Ans.
13–14.) With respect to the determining limitation of claim 81, the
Examiner relies on the same findings and conclusions as the similar
limitation of claim 42. (Id. at 13.) The Examiner relies on Wischerop’s
disclosure of an RF ID reader comprising a “nesting area 84,” as the
“docking port” required by claim 81. (Id.)
Appellants dispute the Examiner’s findings and conclusions. As to
the determining limitation, Appellants repeat substantially the same
arguments as those discussed for claim 42. (See App. Br. 42–52.) For the
reasons discussed supra with respect to claim 42, we are not persuaded.
Appellants also argue there is no suggestion to combine the references
as the Examiner has done. (Id. at 53.) According to Appellants, “Wischerop
relates to security in commerce . . . . It would not be obvious to isolate [the
security tag removal] feature from Wischerop and introduce it into a
teaching that does not involve point of sale security such as Lin.” (Id.)
We are not persuaded. To the extent Appellants argument is that
Wischerop is non-analogous art, because Wischerop involves “security in
commerce” and “point of sale security” such that it would be
“incomprehensible” for a person of ordinary skill to consider Wischerop
(id.), we disagree.
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“Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.”
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis added) (quoting
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
Here, the Examiner finds it would have been obvious to modify Lin,
Rankin, Rodriguez, and Hartmann to include a “docking port on the
apparatus as taught by Wischerop in order to eliminate any problem of
interference from other tags that may be present at the vicinity of the
reader.” (Ans. 14 (citing Wischerop, 7:62–65).) We agree. For example,
the cited portion of Wischerop specifically states:
The antenna 94 is positioned and the receive/transmit circuitry
96 arranged so that the effective range of the unit 26 for reading
or writing RFID data is limited to cover only a tag which is in
the nesting area 84. This substantially eliminates any problem
of interference from other tags that may be present at the
checkout counter.

(Wischerop, 7:59–65.) This solution to the problem of interference from
nearby tags in Wischerop is “reasonably pertinent to the particular problem,”
Klein, 647 F.3d at 1348, described in Appellants’ Specification as the reason
for adding the claimed docking port, which is “to avoid the possibility of an
accidental request of an operation associated with the code on an RF tag.”
(Spec. 3:15–21.) Accordingly, we are not persuaded a person of ordinary
skill in the art would not have looked to Wischerop’s teachings to modify
Lin, Rankin, and Rodriguez. Therefore, we find the Examiner’s articulated
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rationale for combining Wischerop to be reasonable and supported by the
evidence. Kahn, 441 F.3d at 987.
Because we are not persuaded that the teachings of Lin, Rankin,
Rodriguez, Hartmann, and Wischerop do not fall within the scope of the
claims, or are not properly combined, we sustain the Examiner’s rejection of
claim 81.

DECISION
We affirm the Examiner’s final rejection of claims 42, 44–51, 53–56,
59, and 61–81.
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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