Ex Parte Eisenberg et al

Board of Patent Appeals and Interferences

Apr 23, 2010

09974321 (B.P.A.I. Apr. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER M. EISENBERG,
MITCHELL B. GRUNES,
GERALD L. KAREL, and
JOHN M. KRUSE
____________

Appeal 2009-004928
Application 09/974,321
Technology Center 3600
____________

Decided: April 23, 2010
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent
Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004928
Application 09/974,321

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STATEMENT OF THE CASE
Peter M. Eisenberg, et al. (Appellants) seek our review under
35 U.S.C. § 134 (2002) of the final rejection of claims 1-3, 6-11, 13-15, 17,
19-43, and 49-52. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).1

THE INVENTION
The invention “relates to an improved method of recording time, and
specifically of recording time for a person whose services are billed based
on a period of time.” Specification 1:7-9.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1 . A method of recording time associated with a project, the method
comprising:
providing at least one file that is associated with the project, the
file including a radio frequency identification (RFID) tag that can
provide identification information for the project associated with the
file when interrogated by an RFID reader; and
interrogating the RFID tag using the RFID reader to track an
amount of time for which a service is rendered for the project
associated with the file.

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Jun. 10, 2008) and the Examiner’s Answer (“Answer,” mailed Aug. 20,
2008).
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Wynn
Cannon, Jr.
US 5,459,657
US 5,689,238
Oct. 17, 1995
Nov. 18, 1997
The following rejection is before us for review:
1. Claims 1-3, 6-11, 13-15, 17, 19-43, and 49-52 are rejected under 35
U.S.C. §103(a) as being unpatentable over Wynn and Cannon, Jr..

ISSUE
The main issue is whether the cited prior art combination would have
led one of ordinary skill in the art to interrogate an RFID tag included in a
file using an RFID reader to track an amount of time for which a service is
rendered for a project associated with the file.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim 1 is directed to a method of recording time associated with a
project.
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2. To accomplish that task, the claimed method uses three things: (a) a
file associated with the project; (b) a radio frequency identification tag
(RFID); and (c) an RFID reader.
3. The process as claimed comprises two steps: (1) “providing at least
one file that is associated with the project, the file including [an
RFID] tag that can provide identification information for the project
associated with the file when interrogated by an RFID reader”, and (2)
“interrogating the RFID tag using the RFID reader to track an amount
of time for which a service is rendered for the project associated with
the file.” Claim 1.
4. Regarding the claim term “file,” the Specification states that “the term
“file” as used in regard to the present invention means both paper and
electronic information files that relate to a project on which at least
one person is expected to work.” Specification p 4: ll. 27-29.
5. Regarding the claim term “project,” the Specification gives it no
express definition. Nor does the Specification use the term in a
context that would lead one of ordinary skill in the art to understand it
to have any particular meaning.
6. The definition of “project” is “a proposal of something to be done;
plan; scheme.” (See Webster’s New World Dictionary 1075 (3rd Ed.
1988.)(Entry 1 for “project”).
7. The RFID tag of the claimed method is one “that can provide
identification information for the project associated with the file when
interrogated by an RFID reader” (see step (1) of claim 1).
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8. The definition of “can” is “knows how to” or “am, are, or is able to.”
(See Webster’s New World Dictionary 202 (3rd Ed. 1988.)(Entries 1
and 2, respectively, for “can”).
9. Accordingly, the RFID tag used in the claimed method is one which is
constructed in such a way that it knows how or is able to “provide
identification information for the project associated with the file when
interrogated by [the] RFID reader” (claim 1).
10. Regarding the “identification information” provided by the RFID tag,
the Specification describes it this way:
The RFID tag may be a passive tag (which does not have
a battery) or an active tag (which does have a battery) and, in
either case, normally includes an antenna connected to an
integrated circuit, or IC. The integrated circuit includes
memory, which may be read-write or read-only memory. For
example, the IC may be programmed at the factory or
subsequently with certain fixed information that is not intended
to be altered, such as serial or other identification number. The
IC may also include user-programmable information, so that the
RFID tag includes customized information such as information
describing a particular object to which the RFID tag is attached,
or project to which it relates. The IC may even have memory
that can be overwritten with new information so that, for
example, information can be updated and thus remain current,
or the tags can be reused for another file or project.
Specification 2:7-17.
11. In light of the Specification, the claim phrase “identification
information for the project associated with the file” is descriptive of
the information that the RFID provides the RFID reader when
interrogated; that is, it is of a type that that identifies the project
associated with the file when interrogated by an RFID reader.
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12. According to the Specification, “[i]nformation related to an RFID tag
and the object with which it is associated is typically maintained in a
database in memory associated with a computer.” Specification p 3:
ll. 7-8.
13. According to the Specification, “[i]nformation to be stored on the
RFID tag may also be obtained from an existing database and
modified, if appropriate, and then stored on the tag using, for
example, a file or data management program.” Specification pp 21-
23.
14. Accordingly, the first claim step covers providing a paper, for
instance, associated with a project that includes an RFID tag
constructed in such a way that it knows how or is able to provide
information of a type that identifies the project associated with the
paper when interrogated by an RFID reader.
15. “RFID tags of the general type described above [see FF 10] are
currently available ... and have been described in numerous patents
and other publications.” Specification 2:18.
16. According to the Specification, it is well known to include RFID tags
on documents or files. Specification 3:25.
17. RFID readers are also well known (Specification p 2: ll. 21-26) and
are known to possess the function to “interrogate” RFID tags
(Specification 3:30-32).
18. The Specification does not provide an express definition for
“interrogation”.
19. The definition of “interrogate” is “to ask questions.” (See Webster’s
New World Dictionary 706 (3rd Ed. 1988.)(Entry for “interrogate.”)
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20. RFID readers “interrogate” RFIF tags by known methods.
Specification p 2: ll. 23-27.
21. According to the Specification, with respect to well-known RFID
readers, “they read information from an RFID tag, though they may
also be capable of writing information to a tag.” Specification p 2: ll.
23-24.
22. According to the Specification, well-known RFID readers “are able to
transmit signals to RFID tags, and then obtain information from the
RFID tags based on well-known principles.” Specification p 2: ll. 26-
27.
23. The RFID reader of the claimed method “interrogates” the RFID tag
“to track an amount of time for which a service is rendered for the
project associated with the file” (claim 1).
24. The definition of “to” is “producing, causing, or resulting in.” (See
Webster’s New World Dictionary 1404 (3rd Ed. 1988.)(Entry 8 for
“to”).
25. Claim 1 does not explain how the RFID reader of the claimed method
“interrogates” the RFID tag so as “to track an amount of time for
which a service is rendered for the project associated with the file”
(claim 1).
26. Accordingly, the second claim step covers an RFID reader asking
questions of an RFID tag such that it results in tracking an amount of
time for which a service is rendered for the project associated with the
paper.
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27. Tracking time per se is well known, as is tracking time for a service.
Specification p 1: ll. 12-13 (“For example, attorneys often bill clients
by the hour, as do accountant and other.”)
28. Associating a paper with a project for which time is tracked is also
well known. Specification p 1: ll. 14-16 (“Most people either use a
notepad to record the amount of time spent on a matter, or a software
program that enables the user to select or enter client, the matter, and
the amount of time spent on the project.”)
The scope and content of the cited prior art
29. Wynn describes a time-tracking system.
30. “[T]he present invention is concerned with a system for permitting
employees to clock in and out of work on remotely located card
reading time clocks.” Wynn, col. 1, ll. 22-24.
31. Wynn uses a time clock.
32. “The time clock 101 also contains a card slot or swipe scanner 130
configured to read the identification badges or ID cards 170 (FIG. 3a
and 3b) assigned to each of the employees.” Wynn, Col. 8, ll. 25-28.
33. Accordingly, Wynn’s system also involves the use of an ID badge.
See element 170 in Fig. 3b.
34. “The ID badge 170 [is] preferably plastic laminated card type badges
similar in size and construction to well known identification cards or
badges, e.g., driver’s licenses.” Wynn, col. 10, ll. 31-32.
35. Wynn’s ID badge includes a bar code “which is individualized for
each of the employees.” Wynn, Col. 10, ll. 53-54. See element 186 in
Fig. 3b.
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36. “When the bar code 186 is scanned by the slot scanner 130, the time
clock 101 receives a signal indicative of the ID number corresponding
to the employee whose ID card 170 has just been scanned. The time
clock 101 then transmits this information to the computer 104 which
stores in memory the clock in or out time for this employee.” Wynn,
col. 10, l. 63 - col. 11, l. 2.
37. Wynn explains the operation of the time-tracking system, referring to
buttons on the time clock (see Figs. 1 and 2a):
buttons will now be described. In the presently preferred
embodiment, a supervisor (not shown) first enables or
"opens" the time clock 101 by scanning or swiping his ID
card 170 through the slot scanner 130. Subsequently, if
an employee (not shown) is beginning work, the
employee or the supervisor depresses an IN button 140
[signaling] that the employee is clocking in. The
employee then clocks in by scanning his ID card 170
(FIGS. 3a and 3b) through the slot scanner 130 (FIG. 2).
If the employee is clocking out of work, the employee or
the supervisor, after the supervisor has opened the time
clock 101, depresses an OUT button 142 and scans his ID
card 170 in the slot scanner 130 to clock out.
Wynn Col. 8, ll. 47-59.
38. Wynn also explains that the time-tracking system can be used to track
time for a project, referring a “Special Event “button on the time clock
(see Figs. 1 and 2a).
When an hourly employee is working for a specific
special event, or project, such as a promotional sale
requiring extended hours of operation, for which the
employer desires a specific accounting record, the
employee's time can be recorded in the memory of the
computer 104 (FIG. 1) as attributed to the special event.
This is accomplished by the supervisor depressing a
SPECIAL EVENT button 154 and typing an
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identification number for the special event after opening
the clock 101 and the employee depressing the IN button
140 or the OUT button 142.
Wynn, Col. 9, ll. 59 - col. 10, l. 1.
39. Cannon describes tracking the location of an object using electronic
tags and readers.
Any differences between the claimed subject matter and the prior art
40. The prior art does not expressly describe interrogating an RFID tag
included in a file using an RFID reader to track an amount of time for
which a service is rendered for a project associated with the file.
The level of skill in the art
41. Neither the Examiner nor the Appellants have addressed the level of
ordinary skill in the pertinent art of programming RFID tags. We will
therefore consider the cited prior art as representative of the level of
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level
of skill in the art does not give rise to reversible error ‘where the prior
art itself reflects an appropriate level and a need for testimony is not
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp.,
755 F.2d 158, 163 (Fed. Cir. 1985)).

Secondary considerations
42. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

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PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004). “[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation. As
this court has discussed, this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
Further, as applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee. Am. Acad., 367 F.3d at 1364.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Limitations appearing in the
specification but not recited in the claim are not read into the claim. E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).

Obviousness
Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
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in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The Appellants separated claims 1-3, 6-11, 13-15, 17, 19-43, and 49-
52 into eleven groups: (1) claims 1-3, 7-10, 17, 19-22, 24, 27-29, and 34-43;
(2) claim 6; (3) claim 11; (4) claim 13; (5) claim 14; (6) claims 15 and 52;
(7) claim 23; (8) claim 25; (9) claim 26 and 30-33; and, (10) claims 49 and
50; (11) claim 51. (Br. 7-8).

Claims 1-3, 7-10, 17, 19-22, 24, 27-29, and 34-43
The Appellants argued claims 1-3, 7-10, 17, 19-22, 24, 27-29, and 34-
43 as a group (Br. 8-11). We select claim 1 as the representative claim for
this group, and the remaining claims 2, 3, 7-10, 17, 19-22, 24, 27-29, and
34-43 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Claim 1 is reproduced above.
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
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specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In that
regard, claim 1 reasonably broadly covers a method of recording time
associated with a project by (1) providing a paper, for instance, associated
with the project that includes an RFID tag constructed in such a way that it
knows how or is able to provide information to an RFID reader of a type that
identifies the project (FF 14) and (2) uses the RFID reader to ask the RFID
tag questions so that the amount of time for which a service is rendered for
the project is tracked (FF 26).
The Examiner takes the position that Wynn discloses a method of
recording of time associated with a project by providing an employee with
an ID tag which, when interrogated by an ID reader, provides identification
information “to begin measurement of a period of time for which service is
rendered for the project.” Answer 3-4. The Examiner indicates that the
difference between Wynn and the claimed subject matter is that Wynn does
not disclose “the ID tag ... to be an RFID tag that is attached to a file
associated with the project”. Answer 4. To meet that claim limitation, the
Examiner cites Cannon which the Examiner characterizes as disclosing a
method for locating files whereby an RFID tag is attached to a file and
interrogated by an RFID reader to gather information about the file. Answer
4. The Examiner concluded that
It would have been obvious to one of ordinary skill in the art at
the time of the invention was made to modify the method of Wynn so
that the ID tag is an RFID tag that is attached to a file associated with
the project, as taught by Cannon, to provide a means for monitoring
the location and usage of particular files for timekeeping and billing
purposes.
Answer 4.
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The issue is whether the Examiner has established a prima facie case
of obviousness in light of the Appellants’ arguments to the contrary. In that
regard, we have carefully reviewed the Appellants’ arguments but do not
find the prima facie case of obviousness has been overcome.
The Appellants’ arguments focus almost entirely on Wynn. Cannon’s
relevance is argued only to the extent that, in Appellants’ view, it “fails to
cure the deficiencies of Wynn [as argued in the Brief].” Br. 11. Those
argued-over deficiencies (discussed in more detail below) relate to “tracking
an amount of time for which a service is rendered for a project associated
with the file [i.e., a file including an RFID tag].” Br. 11; see also the last
step of claim 1. The Appellants dispute that the combination of Wynn and
Cannon results in a method as claimed; that is, a method that “track[s] an
amount of time for which a service is rendered for the project associated
with the file.”
Wynn in view of Cannon would result in a system that tracks an
amount of time a file is located at a particular location. Modifying
Wynn in view of Cannon does not result in all the requirements of
Applicant’s claim 1, such as tracking an amount of time for which a
service is provided to a project associated with the file.
Br. 11.
Turning to Wynn, Wynn describes an employee time-tracking system
involving an ID tag and a reader that reads information from the ID tag. FF
29-30 and 36. The Appellants correctly point out that the “Wynn system
tracks the amount of time that an employee is at work.” Br. 9. However, the
Appellants argue that while “Wynn is directed to tracking the number of
hours by an employee based on interrogation of an ID card and associated
with the employee[,] Appellant’s claimed invention, on the other hand,
tracks the amount of time for which a service is rendered for a project
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associated with the file based on an interrogation of an RFID tag that is
associated with the file.” Br. 9 (emphasis original).
There are two difficulties with this argument. First, Wynn expressly
discloses that its system applies to tracking the time an employee spends on
a project. See FF 38. Accordingly, we do not see that Wynn differs from
the claimed method in failing to track time spent on a project. Second, the
employee time that is tracked is implemented via the ID badge. It is the ID
badge that the time clock scans. While Wynn’s ID badge is connected to a
particular employee by identification, the clocked time is in actuality
associated with the ID badge that was scanned. Though disclosing that its
system tracks the time an employee spends on a project, Wynn’s system
does so by tracking the time on the project via the ID badge. Given that the
claim term “file” is reasonably broadly construed to cover a paper file (FF
4), this would encompass the substrate forming Wynn’s ID badges (FF 33-
35). Accordingly, we also do not see that Wynn differs from the claimed
method in failing to track time spent on a project associated with a file.
Furthermore, the Appellants construe the claim unduly narrowly.
Underlying the Appellants’ arguments is a construction of the claim that
limits its scope so as to exclude tracking employee time on the job as a way
of tracking project time. “As is clear from the Appellant’s specification, an
amount of time for which a service is rendered for a project associated with
a file is distinct from the amount of time an employee works in day.” Br. 9-
10.
However, as we have reasonably broadly construed claim 1 (see
supra), claim 1 is not limited so as to exclude determining an amount of time
for which a service is rendered for a project associated with a file based on
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the amount of time an employee works in day. Claim 1 only requires that an
RFID reader interrogate an RFID tag so as “to track an amount of time for
which a service is rendered for the project associated with the file” (claim 1).
The steps between the interrogation and the determination of the amount of
time for which a service is rendered for the project associated with the file
are not recited in the claim. FF 25. Accordingly, the claimed method does
not exclude interrogation so as to track the time an employee is on a job and
using that information “to track an amount of time for which a service is
rendered for the project associated with the file” (claim 1).
For the foregoing reasons, the prima facie case of obviousness of the
subject matter of claim 1 has not been overcome. We reach the same
conclusion as to claims 2, 3, 7-10, 17, 19-22, 24, 27-29, and 34-43 which
stand or fall with claim 1.

Claim 6
6. The method of claim 2, further comprising:
interrogating the RFID tag a first time to begin counting the
amount of time for which the service is rendered;
receiving a command entered by a user via a user interface
associated with a computer;
and
stopping the counting of the amount of time in response to the
command from the user.
The Appellants argue that the Examiner mischaracterizes Wynn as
disclosing the subject matter of claim 6. The Examiner cited col. 4, line 1+
and Fig. 9. Answer 4. The Appellants argue that the disclosure the
Examiner cited does not “disclos[e] ending the time measurement in
response to a command entered into an interface by a user.” Br. 11.
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The Appellants do not make a persuasive argument. The claimed
method does not require ending the time measurement in response to a
command entered into an interface by a user. While the claimed method
includes a step of “receiving a command entered by a user via a user
interface associated with a computer”, the step is not limited so as to require
the entered command to cause time measurement to end.
While it is true that claim 6 lists the receiving step before the stopping
step and that the stopping step is recited to be “in response to the command
from the user”, the method as claimed does not limit the stopping step to the
direct and exclusive control of the command entered by the user. As the
Appellants point out, Wynn discloses a supervisor inputting a time clock to
enable an employee to use it to clock in or out of work. Br. 11. Without the
supervisor’s input, time measurement cannot be ended. Accordingly, Wynn
discloses the stopping step “in response to the command from the user.”
For the foregoing reasons we sustain the rejection of claim 6.

Claim 11
11. The method of claim 1, further comprising:
interrogating the RFID tag a first time to begin counting the
amount of time for which the service is rendered;
stopping the counting of the amount of time after a
predetermined amount of time.
The Examiner stated that the limitations in claim 11 “would be
matters of design choice that are not critical features of the invention.”
Answer 5. The Appellants argue that the Examiner has misapplied the
“design choice” rationale.
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The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413,
425, (CCPA 1981). In that regard, "[a]ll words in a claim must be
considered in judging the patentability of that claim against the prior art." In
re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). We agree that resorting to
“design choice” is, without more explanation, insufficient as a rationale for
establishing a prima facie case of obviousness for the claimed subject matter
with all its limitations. But we think the Examiner here needed do no more
than direct the Appellants to the disclosure in Wynn of tracking the time
spent on a project. FF 38.
Wynn describes starting and stopping the time for a project. Since it
is known to set a time for completing a project, Wynn necessarily describes
“begin[ning] counting the amount of time for which the service is rendered
[and] stopping the counting of the amount of time after a predetermined
amount of time.” In evaluating references it is proper to take into account
not only the specific teachings of the references but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968).
For the foregoing reasons we will sustain the rejection of claim 6.

Claim 13
13. The method of claim 1, further comprising providing a signal to a
user when a certain condition related to the amount of time the service
rendered to the project is met.
The Examiner stated that the limitations in claim 13 “would be
matters of design choice that are not critical features of the invention.”
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Answer 5. The Appellants argue that the Examiner has misapplied the
“design choice” rationale.
We agree with the Appellants that, with respect to claim 13, the
Examiner has not made out a prima facie case of obviousness. Resorting to
“design choice” is, without more explanation, a conclusory statement that is
insufficient as a rationale for establishing a prima facie case of obviousness
for the claimed subject matter with all its limitations. “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR., 550 US
at 417-418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Because no articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness has been presented, we will not
sustain the rejection of claim 13.

Claims 14, 15, and 52
Claims 14, 15 and 52 dependent from claim 13, whose rejection we
have reversed above. For the same reason, we will not sustain the rejection
of claims 14, 15 and 52 over the cited prior art. Cf. In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.").

Claim 23
23. The method of claim 22, wherein the RFID tag of the file
comprises a first RFID tag, and further wherein receiving the
additional information comprises interrogating a second RFID tag
associated with the task.
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With regard to claim 23, the Examiner stated that “[f]urther scanning
of additional ID tags would be mere repetition of previous steps and would
be an obvious matter of design choice.” Answer 5.
The Appellants argue that the Examiner has misapplied the “design
choice” rationale. Br. 15. However, the Examiner’s rationale would have a
sound basis in reason if the addition of a second RFID tag as claimed merely
duplicated the function provided by the first RFID tag and as described in
Cannon. Cf. In re Harza, 274 F.2d 669, 774 (CCPA 1960) ("It is well
settled that the mere duplication of parts has no patentable significance
unless a new and unexpected result is produced.") In that regard, the
Appellants do not show that the addition of a second RFID tag produces an
unexpected result. In fact, the Appellants state that in doing so “additional
information related to the project” is received. Br. 15. Obtaining additional
information would be an expected result from adding another RFID tag.
Accordingly, we do not find the Appellants have overcome the prima
facie case of obviousness for the subject matter of claim 23.

Claim 25
25. The method of claim 24, , wherein the RFID tag of the file
comprises a first RFID tag, and further wherein receiving the
additional information comprises interrogating a second RFID tag
associated with the person
The Examiner’s position as to claim 25 is the same as for claim 23.
Answer 5. And the Appellants’ argument challenging the rejection of claim
25 is the same as that challenging the rejection of claim 23. Br. 16.
Since we did not find the Appellants’ arguments overcame the prima
facie case of obviousness for the subject matter of claim 23, we reach the
same conclusion with respect to the rejection of claim 25.
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Claims 26 and 30-33
The Appellants argued claims 26 and 30-33 as a group (Br. 8-11).We
select claim 26 as the representative claim for this group, and the remaining
claims 30-33 stand or fall with claim 26. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
26. The method of one of claims 1 through 25, wherein the tracked
amount of time is used in connection with billing a client for that
period of time.
We will sustain the rejection of claim 26.
The Appellants challenge the rejection of claim 26 for the same
reason used to challenge the rejection of claim 1. Br. 16. Since we did not
find the Appellants’ arguments challenging the rejection of claim 1
persuasive, we find the same for that argument challenging the rejection of
claim 25.
The Appellants also argue that the cited prior art does not show
tracking the amount of time to generate a bill for a client. Br. 17. The
argument is not commensurate in scope with what is claimed. Claim 26
does not require tracking the amount of time to generate a bill. The claims
require only that the amount of time is tracked in connection with billing a
client for that period of time. Given that projects are commonly performed
for clients and for which they will be billed, tracking an amount of time
spent on a project, as Wynn describes, in connection with billing a client for
that period of time spent on the project would be predictable. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416. “[W]hen a patent “simply arranges old elements with each
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performing the same function it had been known to perform” and yields no
more than one would expect from such an arrangement, the combination is
obvious.” KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S.
273, 282 (1976). In that regard, the Appellants have not come forward with
evidence of unpredictable results for combining the tracking of an amount of
time spent on a project, as Wynn describes, with the common knowledge
that projects are billed to clients.
Accordingly, we sustain the rejection of claim 26 and claims 30-33
that stand or fall with claim 26.

Claims 49-51
We will not sustain the rejection of claims 49-51. Independent claim
49 is drawn to a system comprising two files associated with two respective
projects and including two respective RFID tags and “a time tracker that
tracks an amount of time for which services are rendered for each of the
projects associated with the first and second files, wherein the time tracker
begins tracking the amount of time for which services are rendered to the
first project upon interrogating the first RFID tag of the first file, stops
tracking the amount of time for which services are rendered to the first
project upon interrogating the second RFID tag of the second file and
concurrently begins tracking the amount if time for which services are
rendered to the second project upon interrogating the second RFID tag.”
The Examiner argued, in its entirety, that “regarding claim 49, the
nature of the time period (services rendered) and additional scanning of
additional ID tags, which would be mere repetition of previous steps, would
be an obvious matter of design choice.” Answer 6.
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As the Appellants have pointed out (Br. 17-20), claim 49 requires
more than merely repeating the function of an RFID tag in tracking time of a
project. The system as claimed requires “the time tracker [to] begin tracking
the amount of time for which services are rendered to the first project upon
interrogating the first RFID tag of the first file, stops tracking the amount of
time for which services are rendered to the first project upon interrogating
the second RFID tag of the second file and concurrently begins tracking the
amount if time for which services are rendered to the second project upon
interrogating the second RFID tag.”
The Examiner does not point to anything in the cited references which
discloses a time tracker functioning in the manner claimed. Resorting to
“design choice” is, without more explanation, a conclusory statement that is
insufficient as a rationale for establishing a prima facie case of obviousness
for the claimed subject matter with all its limitations. “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR, 550 US
at 417-418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
We will also not sustain the rejection of claims 50 and 51 because
they depend on claim 49. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) ("[D]ependent claims are nonobvious if the independent claims from
which they depend are nonobvious.").

NEW GROUND
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
of claims 34-39 under 35 U.S.C. §101.
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Claims 34-39 are rejected under 35 U.S.C. §101 as being directed to
nonstatutory subject matter. We take the independent claim 34 as
representative. It is reproduced below.
34 A computer software program, wherein the software is adapted to
receive a signal from an radio frequency identification (RFID) reader,
wherein the signal includes an RFID tag identifier corresponding with
an RFID tag, associate the RFID tag identifier with a project, and
begins to measure a period of time for which a service is rendered for
the project associated with the RFID tag when the signal is received.
According to current Office policy, computer programs per se are not
considered patentable subject matter under §101, as they are in themselves
purely non-functional descriptive constructs. See U.S. Patent & Trademark
Office, Interim Examination Instructions for Evaluating Subject Matter
Eligibility Under 35 U.S.C. § 101, Aug. 2009, at 2, available at
http://www.uspto.gov/patents/law/comments/2009-08-
25_interim_101_instructions.pdf. Also see MPEP § 2106.01 (I), citing
In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994),

CONCLUSIONS
We conclude that the Appellants’ arguments do not overcome the
rejection of claims 1-3, 6-11, 17, and 19-43 under 35 U.S.C. §103(a) as
being unpatentable over Wynn and Cannon, Jr.
We conclude that the Appellants’ arguments do overcome the
rejection of claims 13-15 and 49-52 under 35 U.S.C. §103(a) as being
unpatentable over Wynn and Cannon, Jr.
We enter a new ground of rejection of claims 34-39 under 35 U.S.C.
§101.
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DECISION
The decision of the Examiner to reject claims 1-3, 6-11, 13-15, 17, 19-
43, and 49-52 is affirmed-in-part.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R.
§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner . . . .

• (2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the
same record . . . .
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) (2007).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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