Ex Parte Elbinger et al

Patent Trial and Appeal Board

Jul 12, 2017

12867347 (P.T.A.B. Jul. 12, 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.
12/867,347 11/19/2010 Gerd Elbinger 5029-700PUS\307311 9387
27799 7590
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
EXAMINER
PATEL, AMAL A
ART UNIT PAPER NUMBER
2845
NOTIFICATION DATE DELIVERY MODE
07/14/2017 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):
patentsecretary @ cozen. com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERD ELBINGER, KLAUS MULLER,
and GERHARD ROTTER
Appeal 2016-004648
Application 12/867,3471
Technology Center 2800
Before LINDA M. GAUDETTE, JULIA HEANEY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
13—21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Siemens AG as the real party in interest. Appeal Br. 2.
2 In our Opinion, we refer to the Specification filed August 12, 2010
(Spec.”); the Final Action electronically mailed on March 23, 2015 (“Final
Act.”); the Advisory Action electronically mailed on May 29, 2015 (“Advis.
Act.”); the Appeal Br. filed September 9, 2015 (“Appeal Br.”); the
Examiner’s Answer electronically mailed on February 3, 2016 (“Ans.”); and
the Reply Brief filed April 1, 2016 (“Reply Br.”).
Appeal 2016-004648
Application 12/867,347
The claims are directed to a device for identification of an object
having an at least partially metallic surface. Claim 13, reproduced below
with the disputed limitation emphasized, is illustrative of the claimed subject
matter:
13. A device for identification of an object having an at least
partially metallic surface, comprising:
an identification device; and
an antenna at least indirectly mounted on the at least
partially metallic surface and extending above and away from
the at least partially metallic surface, the antenna being a
helical monopole; and
one of (i) a flat electrical contact and (ii) close capacitive
coupling produced between the metallic surface and the antenna
by a contact pressure on the metallic surface;
wherein a polarization axis of the antenna is one of
directed away from the at least partially metallic surface and
disposed at right angles to the at least partially metallic surface.
Appeal Br. 6 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims:
Savage et al.
(“Savage”)
US 2003/0156033 Al Aug. 21,2003
Yonezawa et al.
(“Yonezawa”)
US 6,812,707 B2 Nov. 2, 2004
Sakama et al.
(“Sakama”)
US 2006/0022056 Al Feb. 2, 2006
Covannon et al.
(“Covannon”)
US 2007/0008112 Al Jan. 11,2007
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Appeal 2016-004648
Application 12/867,347
REJECTIONS
Claims 13—21 stand rejected under 35 U.S.C § 103(a) as follows: (1)
claims 13 and 18—21 over Sakama as evidenced by Yonezawa or
alternatively Covannon; and (2) claims 14—17 over Sakama in view of
Savage. Final Act. 2, 4.
OPINION
Appellants argue the claims as a group. Appeal Br. 4—5. We select
claim 13, the sole independent claim, as representative of the group. Claims
14—21 will stand or fall with claim 13. 37 C.F.R. § 41.37(c)(l)(iv).
With respect to claim 13, the Examiner finds that Sakama teaches all
limitations of the claim, except that Sakama does not explicitly teach the
monopole antenna may be helical. Final Act. 2—3. The Examiner finds that
forming antennas in a helical formation is old and well-known in the art,
citing Yonezawa and Covannon. Id. at 3. Appellants do not dispute the
Examiner’s finding regarding helical antennas. See Appeal Br. generally.
The primary issue on appeal is the interpretation of the claim language
requiring an antenna “extending above and away from the at least partially
metallic surface,” particularly the meaning of “the at least partially metallic
surface.”
To assist in our discussion of the issue, annotated versions of the
Figure of the Application and Sakama’s Figure 5 are provided below:
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Appeal 2016-004648
Application 12/867,347
The Figure of the Application is an illustration of a schematic block
diagram of the device in accordance with an embodiment of the invention.
Spec. 3. The Figure shows object 1 with an at least partially metallic
surface. Id. An antenna 3 is mounted at least indirectly on the metallic
surface. Id.
Figure 5 of Sakama shows a radio frequency IC tag mounted in a
structure according to an embodiment of Sakama’s invention. Sakama 114.
Element 21 is a bolt, element 21 a is a hole in the bolt, and element 24
(including 24a, 24b, and 24c) is an antenna. Id. 131.
The Examiner finds that the bottom surface of hole 21a of Sakama is
“an at least partially metallic surface” as recited in claim 13. Advis. Act. 2.3
3 The Examiner concludes that “at least” suggests a minimum of partially
metallic surfaces, i.e., that many such surfaces may be present. Ans. 2. We
do not agree with the Examiner’s reasoning. Instead, we agree with
Appellants that “the at least partially metallic surface” requires the surface to
be partially or entirely metallic. See Reply Br. 2 (arguing that “at least”
speaks to the property of the metallic surface as opposed to the quantity of
such surface). However, claim 13 does not limit the object of the claimed
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Appeal 2016-004648
Application 12/867,347
Consequently, the Examiner finds that the antenna extends above and away
from the at least partially metallic surface (the bottom surface of hole 21a),
as required by claim 13. Id. The Examiner finds that the metallic sides of
hole 21a of Sakama are not part of “the at least partially metallic surface.”
Ans. 2.
Appellants argue that the Examiner “has overlooked the notion that
the sides of the hole 21 a are also metallic and, thus, violate the requirement
for the antenna to extend above and away from the metallic surface.”
Appeal Br. 3-A (arguing that in the Sakama Figure 5 embodiment, Sakama’s
antenna is arranged and extends parallel to the metallic sides of the bolt); see
also Reply Br. 2. Appellants then argue that the bottom surface and sides of
hole 21 a in Sakama form one continuous surface, and, as the metallic sides
are part of the continuous inner surface of the bolt and the antenna extends
parallel to the sides, the antenna does not meet claim 13’s requirements.
Reply Br. 2-A.
Appellants’ argument is not persuasive because it is based on an
overly narrow interpretation of claim 13 that is not supported by the
language of the claim itself or the Specification.
“During examination, ‘claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. ’” See In re Am. Acad, of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910
F.2d 831, 833 (Fed. Cir. 1990)). Although a specification may describe very
device to having only one partially metallic surface. This conclusion does
not alter the outcome in this case.
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Appeal 2016-004648
Application 12/867,347
specific embodiments of an invention, our reviewing court has repeatedly
warned against confining the claims to those embodiments. See In re Bigio,
381 F.3d 1320, 1325-26 (Fed. Cir. 2004).
Appellants’ argument is based on an interpretation of claim 13 as
requiring that the antenna extend above an entire upper surface of an object,
as illustrated in the Figure. Claim 13, however, does not require that the
antenna extend above all partially metallic surfaces. Nor does the
Specification support such a narrow interpretation of claim 13.
The Specification states:
[I]t will be understood that various omissions and substitutions
and changes in the form and details of the devices illustrated,
and in their operation, may be made by those skilled in the art
without departing from the spirit of the invention. For example,
it is expressly intended that all combinations of those elements
which perform substantially the same function in substantially
the same way to achieve the same results are within the scope
of the invention. Moreover, it should be recognized that
structures and/or elements shown and/or described in
connection with any disclosed form or embodiment of the
invention may be incorporated in any other disclosed or
described or suggested form or embodiment as a general matter
of design choice.
Spec. 4—5. Thus, the Specification does not support a construction of claim
13 that is limited to the illustrated embodiment.
We are not persuaded that the ordinarily-skilled artisan would view
the bottom surface of hole 21a in Sakama as being part of a single
continuous surface that includes the side wall. See Reply Br. 2—\. Although
Sakama does not discuss the bottom surface of hole 21a, the reference refers
to the “bottom portion” of the outer casing to distinguish it from the sides of
the outer casing. See Sakama Tflf 19,21. Thus, it was reasonable for the
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Application 12/867,347
Examiner to determine that the bottom surface of hole 21a meets the claim
13 limitation of “an at least partially metallic surface” and, therefore, that the
antenna of Sakama extends “above and away” from the bottom surface of
hole 21a, meeting the requirement of claim 13. See Appeal Br. 6 (Claims
App’x).
Because Appellants have not identified reversible error in the
Examiner’s obviousness rejection, we sustain the rejection of claim 13. We
also sustain the Examiner’s rejections of claims 14—21, which fall with claim
13.
DECISION
For the above reasons, the Examiner’s rejection of claims 13—21 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2013).
AFFIRMED
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