Ex Parte Dobyns et al

Patent Trial and Appeal Board

Dec 21, 2018

12189055 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/189,055 08/08/2008
20551 7590 12/26/2018
THORPE NORTH & WESTERN, LLP.
P.O. Box 1219
SANDY, UT 84091-1219
FIRST NAMED INVENTOR
Douglas Howard Dobyns
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2790-002.NP 6229
EXAMINER
DAVIS,ZACHARY A
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
patentdocket@tnw.com
warren.archibald@tnw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS HOW ARD DOBYNS,
HOW ARD BERNARD DOBYNS, JED ERICH WOODARD,
and ANTHONY JOSEPH SUTERA
Appeal2018-004014
Application 12/189,055 1
Technology Center 2400
Before CAROLYN D. THOMAS, JON M. JURGOV AN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's non-
final rejection of claims 1-11, 13-17, 19-37, and 39-58, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants' Brief ("App. Br.") identifies Freelinc Technologies, Inc. as the
real party in interest. App. Br. 3.
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Application 12/189,055
CLAIMED SUBJECT MATTER
The claims are directed to a near field communications ("NFC")
system having enhanced security. Spec., Title. More specifically, the
claims are directed to a NFC system which utilizes a masking signal to
prevent spurious electromagnetic emissions, which drop off in amplitude
more slowly than an NFC signal, from being detectable and/or decodable by
outside systems. Spec. 4, 1. 21-5, 1. 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A near field communication system having enhanced
security, the system comprising:
a near field generator configured to generate a near field
magnetic signal having information encoded therein, wherein the
near field magnetic signal is communicated using near field
magnetic induction to provide a fall off of approximately 60
decibels (dB) per decade of distance, and wherein incidental
electromagnetic radiation correlated to the information is
produced, with a fall off of approximately 20 dB per decade of
distance, when the near field magnetic signal is generated; and
a masking signal transmitter configured to radiate a
masking electromagnetic signal, with a fall off of approximately
20 dB per decade of distance, to mask the incidental
electromagnetic radiation wherein a signal strength of the
masking electromagnetic signal is selected to provide a selected
link distance for the near field generator relative to a detectability
of the incidental electromagnetic radiation.
App. Br. 22 (Claims Appendix).
REJECTIONS
Claims 1-11, 13-17, 19-37, and 39-58 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Final Act. 7-8.
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Application 12/189,055
Claims 1-11, 13-17, 19-37, and 39-58 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. Final Act. 8-9.
Claims 1-11, 13-17, 19-37, and 39-58 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Applicant admitted prior art (AAPA) in
view of Dunlavy (US 5,297,201, issued March 22, 1994) and Finkenzeller
(US 7,808,389 B2, issued Oct. 5, 2010). Final Act. 10-14.
ISSUES
Each of the issues presented relates to the limitation "wherein a signal
strength of the masking electromagnetic signal is selected to provide a
selected link distance for the near field generator relative to a detectability of
the incidental electromagnetic radiation," referred to hereafter as "the
disputed limitation." Appellants do not present arguments for claims other
than claim 1, which we will treat as representative of the remaining claims
which will stand or fall with claim 1. The arguments set forth in Appellants'
briefs raise the following issues for decision:
First Issue: Has the Examiner erred in finding the disputed limitation
lacks written description support in the Specification?
Second Issue: Has the Examiner erred in concluding the disputed
limitation is indefinite under 35 U.S.C. § 112, second paragraph.
Third Issue: Has the Examiner erred in finding the AAP A, along with
Dunlavy and Finkenzeller, teach or suggest the disputed limitation?
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ANALYSIS
First Issue-Indefiniteness
The Examiner rejects claim 1 as indefinite because "[i]t is not clear
what the phrase 'relative to detectability' is intended to modify. Final
Act. 9. The Examiner explains that "[ fJrom the placement of the phrase, it
appears that it may be intended to modify the 'selected link distance';
however, it is not clear how a distance and a 'detectability' could be
compared in a relative manner to each other." Id.
Appellants argue the limitation is not indefinite because it is clear that
"[a]s the signal strength of the masking electromagnetic signal increases, the
selected link distance decreases and the detectability of the incidental
electromagnetic radiation decreases." App. Br. 12. Thus, "[a] person of
ordinary skill in the art will understand that as 'a signal strength of the
masking electromagnetic signal is selected' there is an effect on the
'detectability of the incidental electromagnetic radiation."' Reply Br. 7.
We are not persuaded the Examiner has erred. "[W]e apply the
approach for assessing indefiniteness approved by the Federal Circuit in
Packard, i.e., '[a] claim is indefinite when it contains words or phrases
whose meaning is unclear."' Ex parte McAward, No. 2015-006416, 2017
WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (quoting In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). "Put differently,
'claims are required to be cast in clear-as opposed to ambiguous, vague,
indefinite-terms."' Id. (quoting Packard, 751 F.3d at 1313); see also
MPEP § 2173 .02(1 ). "At the same time, this requirement is not a demand
for unreasonable precision." Packard, 751 F.3d at 1313.
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Here, we agree with the Examiner that the phrase "relative to a
detectability of the incidental electromagnetic radiation" is unclear. The
claim recites that "a signal strength of the masking electromagnetic signal is
selected to provide a selected link distance for the near field generator." We
understand this portion of the claim to mean that the strength of the masking
signal is selected such that it allows the near field signal to be readable up to
a specific distance. However, the remainder of the claim is unclear because
it is not clear whether it is the selected "signal strength of the masking
electromagnetic signal" or the "selected link distance" that is "relative to a
detectability of the incidental electromagnetic radiation." Because a person
of ordinary skill in the art would not know whether it is the signal strength or
the selected link distance which is relative to detectability, we agree with the
Examiner that the scope of the claim is ambiguous in this respect. In re
Packard, 751 F.3d at 1311.
Moreover, the use of the phrase "relative to a detectability of the
incidental electromagnetic radiation" also is inconsistent with its
immediately preceding phrase because if the masking signal must be
selected to provide a specific link distance for the near field, then it is
unclear how the detectability of the incidental electromagnetic radiation
would relate to that selection. That is, if the link distance must be a specific
value, then it does not matter whether the incidental radiation is detectable or
not, as the system is required to select the appropriate signal strength for the
link distance irrespective of detectability.
Our reviewing court has held that "[ d]uring patent prosecution, when
claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed." See In re Zietz,
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893 F.2d 319,321 (Fed. Cir. 1989). Here, the claims are sufficiently
ambiguous to impose a requirement to clarify their scope and meaning.
Accordingly, we sustain the rejection of claim 1 as being indefinite under
35 U.S.C. § 112, second paragraph.
Second Issue-Written Description
Claim 1 is also rejected for lack of written description. The disputed
limitation is again at issue here, and in particular, the phrase "a selected link
distance for the near field generator relative to a detectability of the
incidental electromagnetic radiation." The Examiner finds this phrase lacks
written description because although the Specification describes reducing
detectability of incidental radiation, "there is nothing in [ the Specification]
that links the detectability of the incidental radiation to the selected link
distance or the selected signal strength, as recited in the claims." Final
Act. 7-8. The Examiner also finds that the passages relied upon by
Appellants for support of "detectability" provide no mention of detectability
of incidental radiation. Ans. 4.
Appellants argue the disputed limitation finds support in the
Specification because the "application shows that there is support that links
the detectability of the incidental radiation to the selected link distance."
App. Br. 10 ( citing Spec. 7, 1. 33-8, 1. 30). Appellants specifically point to
the statement in the Specification that "the masking signal may reduce the
achievable link distance of the near field system somewhat, when compared
to near field systems without the presence of the masking signal." Id.
(quoting Spec. 8, 11. 15-16). Appellants assert that this statement
demonstrates that "the masking signal can reduce the achievable link
distance." Id. Appellants further contend that because the Specification
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discloses a relationship between signal strength of the masking signal and
detectability of incidental radiation, and because it also discloses a
relationship between the strength of the masking signal and the link distance
of the near field generator, it necessarily follows that there is a relationship
between link distance of the near field and the detectability of the incidental
radiation. Reply Br. 4.
We are persuaded the Examiner has erred. Appellants argue that
selecting a signal strength for the masking signal to provide "a selected link
distance" always impacts detectability of the incidental radiation. That is,
whatever near field link distance is achieved by selection of the masking
signal strength, there necessarily will be an impact on detectability of the
incidental radiation. The logical implication of this position is that "relative
to a detectability of the incidental electromagnetic radiation" is inherent in
any system in which "a signal strength of the masking electromagnetic
signal is selected to provide a selected link distance for the near field
generator." By disclosing selecting a masking signal to achieve a specific
link distance (see Spec. 8, 11. 13-20), Appellants' Specification necessarily
discloses the disputed phrase. See MPEP § 2163.07(a) ("By disclosing in a
patent application a device that inherently performs a function or has a
property, operates according to a theory or has an advantage, a patent
application necessarily discloses that function, theory or advantage, even
though it says nothing explicit concerning it."). Accordingly, we do not
sustain the rejection under 35 U.S.C. § 112, first paragraph.
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Third Issue-Obviousness2
In rejecting claim 1, the Examiner relies primarily on Appellants'
admissions of prior art in the Specification, supplemented with the teachings
of Dunlavy and Finkenzeller. More specifically, the Examiner finds that the
Specification admits that the use of a near field generator to generate a near
field signal and incidental radiation having respective fall off of
approximately 60 and 20 decibels per decade was known. Final Act. 10.
The Examiner relies on Dunlavy as teaching the use of a masking signal to
radiate a masking electromagnetic signal which masks incidental radiation
and has a fall off which is the same as the incidental radiation. Id. ( citing
Dunlavy, col. 1, 11. 15---63; col. 3, 1. 56-col. 4, 1. 4; col. 5, 11. 33-57). The
Examiner finds that Appellants' admissions in combination with Dunlavy do
not teach "the signal strength of the masking signal is selected to provide a
selected link distance for the near field generator." Final Act. 11. The
Examiner turns to Finkenzeller, finding that it teaches that it was known to
specify the signal strength of a masking signal to provide a selected link
distance for a near field signal. Final Act. 11-12.
Appellants argue "[a] masking signal transmitter has not been used
before in a near field communication system." App Br. 16. Discussing the
teachings of Dunlavy, Appellants argue that "Dunlavy does not disclose any
interaction between the masking signal ... and any kind of a near field
2 Although we affirm the Examiner's indefiniteness rejection, for purposes
of evaluating the prior art rejection, we will construe the disputed limitation
as reading 'wherein a signal strength of the masking electromagnetic signal
is selected to provide a selected link distance for the near field generator'
without giving weight to the indefinite phrase 'relative to a detectability of
the incidental electromagnetic radiation.'
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signal," which according to Appellants is an inherent feature of claim 1.
App. Br. 18 ("This claim inherently discloses interference between the
masking electromagnetic signal and the near field generator .... ").
Appellants further argue Finkenzeller is deficient because it "does not
disclose an RF (far-field) generator that produces far-field radiation that may
interfere with the near-field signals and reduce the link distance."
Appellants further argue that "neither Dunlavy nor Finkenzeller, individually
or in combination, disclose [ s] a masking signal transmitter that can interfere
with a near field signal." App. Br. 19. Appellants further argue that because
"neither [reference] discloses a possible interference between a near field
signal and a masking signal[,] [ t ]here would be no reason to select a link
distance where there is no disclosed interaction between a masking signal
transmitter and a near field system." App. Br. 19.
We are not persuaded by Appellants' arguments. We agree with the
Examiner that Appellants' arguments seek to overcome the prior art with
limitations not recited in the claims. In particular, Appellants' arguments
assert the prior art does not describe interference of the near field signal by
the masking signal. However, we agree with the Examiner that the claims
do not include such a requirement, as the word "interference" is not recited
anywhere in the claim. Appellants argue this interference requirement is
inherent in the claim because the Specification describes that a strong
masking signal can cause a decrease in the link distance of the NFC field.
However, our reviewing court has made clear that "[i]n construing claims,
the analytical focus must begin and remain centered on the language of the
claims themselves, for it is that language that the patentee chose to use to
particularly point[] out and distinctly claim[] the subject matter which the
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patentee regards as his invention." Interactive Gift Express, Inc. v.
Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (alterations in
original) (internal quotations omitted). Here, Appellants have chosen not to
include a recitation of "interference," and instead ask us to infer this
limitation based on the embodiments disclosed in the Specification. We
decline to do so, as our reviewing court has made clear that it is improper to
import embodiments from the Specification into the claims. In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) ("We have cautioned
against reading limitations into a claim from the preferred embodiment
described in the specification, even if it is the only embodiment described,
absent clear disclaimer in the specification."). As such, the distinction
drawn by Appellants-that the prior art does not teach a masking signal that
interferes with the near field signal-is not a limitation recited in the claims
and cannot be relied upon for patentability. Accordingly, we sustain the
rejection under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claims 1-11, 13-17, 19-3 7,
and 39-58 under 35 U.S.C. § 112, second paragraph.
We reverse the Examiner's rejection of claims 1-11, 13-17, 19-3 7,
and 39-58 under 35 U.S.C. § 112, first paragraph.
We affirm the Examiner's rejection of claims 1-11, 13-17, 19-3 7,
and 39-58 under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner's decision to reject the claims.
37 C.F.R. § 4I.50(a)(l).
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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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