Ex Parte Ovard et al

Board of Patent Appeals and Interferences

Jun 28, 2012

10081256 (B.P.A.I. Jun. 28, 2012)

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.
10/081,256 02/19/2002 David K. Ovard ROUND 3.0-161 CON 2878
27299 7590 06/28/2012
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
LE, LANA N
ART UNIT PAPER NUMBER
2614
MAIL DATE DELIVERY MODE
06/28/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DAVID K. OVARD and ROY GREEFF
_____________

Appeal 2009-012128
Application 10/081,256
Technology Center 2600
______________

Before, ALLEN R. MacDONALD, DAVID M. KOHUT, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1-22, 24-41, and 44-57.1 We have jurisdiction under 35
U.S.C. § 6(b).
We reverse the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a wireless communication method and
system for interrogating remote communication devices in multiple
communication ranges using one interrogator. Spec. 3-4. Claim 1 is
representative of the invention and is reproduced below:
1. A wireless communication system comprising:
at least one remote communication device configured to
communicate a return link wireless signal responsive to a
forward link wireless signal; and
an interrogator including:
a communication station configured to output the forward
link wireless signal, to receive the return link wireless signal
outputted from the remote communication device and to
generate a return link communication signal corresponding to
the return link wireless signal;
communication circuitry coupled with the communication
station and configured to communicate the return link
communication signal; and
a housing remotely located with respect to the
communication station and including circuitry configured to
receive the return link communication signal from the
communication circuitry and to process the return link
communication signal.

REFERENCES
Yamamoto US 5,361,395 Nov. 1, 1994

1 Claims 23, 42, and 43 were previously cancelled.
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Jandrell US 5,526,357 June 11, 1996

Reis US 5,640,151 June 17, 1997

MacLellan US 5,649,296 July 15, 1997

REJECTIONS AT ISSUE
Claims 1-3, 9, 24-26, 29, 30, 40, 41, 44, 45, 48, and 50-56 are rejected
under 35 U.S.C. § 102(b) as being anticipated by MacLellan. Ans. 4-10.
Claims 5, 6, and 28 rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of MacLellan and Jandrell. Ans. 10-11.
Claims 4 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of MacLellan and Yamamoto. Ans. 11-
13.
Claims 14, 15, 20, and 35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of MacLellan, Reis, and Jandrell.
Ans. 13-14.
Claims 13 and 34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of MacLellan, Reis, and Yamamoto.
Ans. 15-16.
Claims 8, 10-13, 16-19, 21, 22, 31-33, 36-39, 46, 47, 49, and 57 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of MacLellan and Reis. Ans. 16-27.
Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of MacLellan and Official Notice. Ans. 27.

Appeal 2009-012128
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ISSUES
Did the Examiner err in finding that MacLellan discloses a housing
remotely located with respect to the communication station?
Did the Examiner err in finding it obvious to combine MacLellan and
Reis?
Did the Examiner err in finding the combination of MacLellan and
Yamamoto teaches or suggests adjustment circuitry that outputs the return
link communication signal at a substantially constant level?
Did the Examiner err in finding the combination of MacLellan and
Official Notice teaches or suggests communication circuitry that includes a
coaxial RF cable?
Did the Examiner err in finding the combination of MacLellan and
Reis teaches or suggests communication circuitry that includes a plurality of
wireless transceivers individually coupled with one of the housing and
communication station?
Did the Examiner err in finding that MacLellan discloses a housing
that is configured to house the circuitry configured to receive and process
the return link communication signal?
Did the Examiner err in finding that MacLellan discloses that the
communication station and housing comprise respective different circuit
devices?
Did the Examiner err in finding that MacLellan discloses
communication circuitry configured to communicate the return link
communication signal comprising a wireless signal?
Did the Examiner err in finding that MacLellan discloses
communication circuitry that is configured to communicate the return link
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communication signal comprising a wireless signal having a frequency
outside of the frequency band of the wireless communications of the forward
and return link wireless signals?
Did the Examiner err in finding that MacLellan discloses a
communication station and housing located in different geographical
locations?

ANALYSIS
Rejections over MacLellan
Independent claim 1 requires a housing that is remotely located with
respect to the communication station. Independent claims 10, 18, 24, and 31
contain similar limitations. Claims 2-9, 11-17, 19-22, 25-30, 32-41, and 44-
57 are dependent upon one of the independent claims. The Examiner finds
that MacLellan discloses a band pass filter (310), a limiting amplifier (310a),
a subcarrier demodulator (312), and a processor (300), which, as taken alone
each may be considered a housing. Ans. 28. Additionally, the Examiner
finds that all of these components can be integrated into one block wherein
the block is considered a housing. Ans. 28. Appellants argue that this
interpretation is unreasonable since (1) a housing is not taught by MacLellan
and (2) these components are not remotely located from a communication
station. App. Br. 6-7 and 13-17; Reply Br. 4-7.
Regarding the first argument, while we disagree with the Examiner’s
reasoning, we find that MacLellan, although not specifically using the word
“housing,” discloses a housing for the interrogator, as shown by the box
around the components of the interrogator in Figure 3. As to the second
argument, while we agree with Appellants that MacLellan does not show
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components remotely located from a communication station, we note that
making elements of a device integral or separable is considered to be an
obvious design choice and does not render an invention patentable. See In re
Larson, 340 F.2d 965, 968 (CCPA 1965); In re Dulberg, 289 F.2d 522, 523
(CCPA 1961). Thus, combining the elements suggested by the Examiner
into a single housing that is remotely located from the communication
station represents nothing more than a combination of known devices, which
when combined yield the predictable result of receiving a return link
communication signal and processing the signal. KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent ‘simply arranges old
elements with each 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.”) (citation omitted). Given our
analysis above, claims 1-3, 9, 24-26, 29, 30, 40, 41, 44, 45, 48, 50, and 52
are unpatentable under 35 U.S.C. § 103(a) over MacLellan; claims 10-13,
18, 19, 21, 22, 31-33, 36, 37, 46, 47, and 49 are unpatentable under 35
U.S.C. § 103(a) over the combination of MacLellan and Reis. We designate
these as new grounds of rejection.
Combination of MacLellan and Reis
Appellants argue on pages 9-12 that it would not have been obvious to
combine MacLellan and Reis. Appellants argue that the Examiner has not
provided sufficient motivation, that it would be inappropriate to rely upon a
teaching of another reference when the primary reference already provides
that teaching, and there is no benefit or improvement from combining the
references. App. Br. 10-11. First, we note that the Examiner combined Reis
with MacLellan to teach that one interrogator can have multiple
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communication stations. Ans. 33. We disagree with Appellants that this
teaching is located in MacLellan. Second, the Examiner determines that the
combination would “enhance the function of broadcasting commands on a
one-to-many (point-to-multipoint) basis from one interrogator to a large
unknown numbers of tags simultaneously instead of on a one-to-one (point-
to-point) basis as in MacLellan which reduces the need to have another
interrogator communicate with other tags at the same time.” Ans. 33. We
agree with the Examiner’s finding. Lastly, we find that the combination of
Reis with MacLellan is simply a combination of familiar elements according
to known methods which produce nothing more than predictable results. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Thus, we agree
with the Examiner that it would have been obvious to combine Reis and
MacLellan.
Claims 4 and 27
Claims 4 and 27 are dependent upon independent claims 1 and 24. As
a result, the discussion above with respect to claims 1 and 24 also applies to
claims 4 and 27. Additionally, claims 4 and 27 require adjustment circuitry
that outputs the return link communication signal at a substantially constant
level. Appellants argue that MacLellan does not disclose this limitation.
App. Br. 17-18. In response, the Examiner entered a new ground of
rejection and added Yamamoto to teach this limitation. Ans. 39-41.
Appellants have not addressed the Examiner’s specific finding and merely
rely on the housing argument discussed above with respect to claim 1. As
such, we agree with the Examiner. Given the Examiner’s § 103 analysis and
our analysis above, claims 4 and 27 are unpatentable under 35 U.S.C. §
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103(a) over the combination of MacLellan and Yamamoto. We designate
these as new grounds of rejection.
Claim 7
Claim 7 is dependent upon independent claim 1. As a result, the
discussion above with respect to claim 1 also applies to claim 7.
Additionally, claim 7 requires the communication circuitry to include a
coaxial RF cable. Appellants argue that MacLellan does not disclose this
limitation. App. Br. 19-20. In response, the Examiner entered a new ground
of rejection and takes Official Notice that RF cables are known in the art and
can be substituted for the cable used in MacLellan. Ans. 43-44. We agree
with the Examiner’s finding. Additionally, Appellants have not addressed
the Examiner’s specific finding and merely rely on the housing argument
discussed above with respect to claim 1. Reply Br. 7. Given the Examiner’s
§ 103 analysis and our analysis above, claim 7 is unpatentable under
35 U.S.C. § 103(a) over the combination of MacLellan and Official Notice.
We designate these as new grounds of rejection.
Claims 13 and 34
Claims 13 and 34 are dependent upon independent claims 10 and 31,
respectively. As a result, the discussion above with respect to claims 10 and
31 also applies to claims 13 and 34. Additionally, claims 13 and 34 require
adjustment circuitry that outputs the return link communication signal at a
substantially constant level. Appellants argue that MacLellan and Reis do
not disclose this limitation. App. Br. 18-19. In response, the Examiner
entered a new ground of rejection and added Yamamoto to teach this
limitation. Ans. 39-41. Appellants have not addressed the Examiner’s
specific finding and merely rely on the housing argument discussed above
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with respect to claim 1. As such, we agree with the Examiner. Given the
Examiner’s § 103 analysis and our analysis above, claims 13 and 34 are
unpatentable under 35 U.S.C. § 103(a) over the combination of MacLellan,
Reis, and Yamamoto. We designate these as new grounds of rejection.
Claim 16
Claim 16 is dependent upon independent claim 10. As a result, the
discussion above with respect to claim 10 also applies to claim 16.
Additionally, claim 16 requires the communication circuitry to include a
coaxial RF cable. Appellants argue that MacLellan and Reis do not disclose
this limitation. App. Br. 20-21. In response, the Examiner entered a new
ground of rejection and takes Official Notice that RF cables are known in the
art and can be substituted for the cable used in MacLellan. Ans. 43-44. We
agree with the Examiner’s finding. Additionally, Appellants have not
addressed the Examiner’s specific finding and merely rely on the housing
argument discussed above with respect to claim 1. Reply Br. 7. Given the
Examiner’s § 103 analysis and our analysis above, claim 16 is unpatentable
under 35 U.S.C. § 103(a) over the combination of MacLellan, Reis, and
Official Notice. We designate these as new grounds of rejection.
Claims 8 and 17
Claims 8 and 17 are dependent upon independent claims 1 and 10. As
a result, the discussion above with respect to claims 1 and 10 also applies to
claims 8 and 17. Additionally, claims 8 and 17 require a wireless transceiver
to be coupled to both the housing and the communication station.
Appellants argue that neither MacLellan nor Reis teach or suggest this
limitation. App. Br. 21-22. We agree with Appellants. However, as
indicated above with respect to claim 1, the separation of the communication
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circuitry and the circuitry comprising the housing is nothing more than
design choice. Additionally, we find that Jandrell (a reference submitted by
the Examiner) indicates that it was well known in the art to have a
communication station (i.e., base station) located separately and in different
geographical locations from a housing (i.e., local network control center),
wherein the housing receives and processes a return link communication
signal (signal sent to find out the location of a taxi). See Figure 1a of
Jandrell. Also, communications between the housing and communication
station are contemplated to occur via microwave links (i.e., wirelessly). See
column 9, lines 61-63 and Figure 3 of Jandrell. Given our analysis above
with respect to claims 1 and 10 and our analysis here, we find claims 8 and
17 unpatentable under 35 U.S.C. § 103(a) over the combination of
MacLellan, Reis, and Jandrell. We designate these as a new grounds of
rejection.
Claim 51
Claim 51 is dependent upon independent claim 1 and requires the
housing to contain the circuitry that receives and processes the return link
communication signal and is separate from the communication station.
Appellants argue that MacLellan does not disclose this limitation for similar
reasons as discussed above with respect to claim 1. App. Br. 22-23. We
agree with Appellants. However, for the same reasons as our analysis above
with respect to claim 1, we find claim 51 is unpatentable under 35 U.S.C. §
103(a) over MacLellan. We designate this as a new ground of rejection.
Claim 53
Claim 53 is dependent upon independent claim 1 and requires the
communication station and housing to be separate circuit devices.
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Appellants argue that MacLellan does not disclose this limitation for similar
reasons as discussed above with respect to claim 1. App. Br. 23. We agree
with Appellants. However, for the same reasons as our analysis above with
respect to claim 1, we find claim 53 is unpatentable under 35 U.S.C. §
103(a) over MacLellan. We designate this as a new ground of rejection.
Claim 54
Claim 54 is dependent upon independent claim 1. As a result, the
discussion above with respect to claim 1 also applies to claim 54.
Additionally, claim 54 recites “wherein the communication circuitry is
configured to communicate the return link communication signal comprising
a wireless signal.” Appellants argue that neither the mixer nor amplifier of
MacLellan, i.e., the communication circuitry, communicate wirelessly. App.
Br. 23. While we agree with Appellants, we find that the argument is not
commensurate in scope with the claim. Claim 54 does not require the
communication circuitry to communicate wirelessly, claim 54 only requires
the communication signal to be a wireless signal which is taught by
MacLellan (a wireless signal is received via the receive antenna 306 as
shown in Figure 3.) Given our analysis above with respect to claim 1 and
our analysis here with respect to claim 54, we find claim 54 is unpatentable
under 35 U.S.C. § 103(a) over MacLellan. We designate this as a new
ground of rejection.
Claim 55
Claim 55 is dependent upon independent claim 1. As a result, the
discussion above with respect to claim 1 also applies to claim 55.
Additionally, claim 55 recites “wherein the communication circuitry is
configured to communicate the return link communication signal comprising
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a wireless signal having a frequency outside of a frequency band of the
wireless communications of the forward link wireless signal and the return
link wireless signal.” Appellants argue that MacLellan does not disclose this
limitation. App. Br. 24. In response, the Examiner provides a detailed
explanation of how MacLellan teaches this limitation. Ans. 49-51. We find
the Examiner’s explanation to be reasonable. Appellants have not addressed
the Examiner’s specific finding. Given the Examiner’s analysis and our
analysis above with respect to claim 1, claim 55 is unpatentable under
35 U.S.C. § 103(a) over MacLellan. We designate this as a new ground of
rejection.
Claim 56
Claim 56 is dependent upon claim 1. As a result, the discussion above
with respect to claim 1 also applies to claim 56. Additionally, claim 56
requires the communication station and the housing to be located in different
geographical locations. Appellants argue that MacLellan does not disclose
this limitation since it shows that the communication station and “housing”
(as interpreted by the Examiner) are located in the same interrogator device.
App. Br. 25. We agree with Appellants. However, as indicated above with
respect to claim 1, the separation of the communication circuitry and the
circuitry comprising the housing is nothing more than design choice.
Additionally, we find that Jandrell (a reference submitted by the Examiner)
indicates that it was well known in the art to have a communication station
(i.e., base station) located separately and in different geographical locations
from a housing (i.e., local network control center), wherein the housing
receives and processes a return link communication signal (signal sent to
find out the location of a taxi). See Figure 1a of Jandrell. Given our
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analysis above with respect to claim 1 and our analysis here, we find claim
56 is unpatentable under 35 U.S.C. § 103(a) over the combination of
MacLellan and Jandrell. We designate this as a new ground of rejection.
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 . . . .

CONCLUSION
The Examiner erred in finding that MacLellan discloses a housing
remotely located with respect to the communication station.
The Examiner did not err in finding it obvious to combine MacLellan
and Reis.
The Examiner did not err in finding the combination of MacLellan
and Yamamoto teaches or suggests adjustment circuitry that outputs the
return link communication signal at a substantially constant level.
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The Examiner did not err in finding the combination of MacLellan
and Official Notice teaches or suggests communication circuitry that
includes a coaxial RF cable.
The Examiner erred in finding the combination of MacLellan and Reis
teaches or suggests communication circuitry that includes a plurality of
wireless transceivers individually coupled with one of the housing and
communication station.
The Examiner erred in finding that MacLellan discloses a housing that
is configured to house the circuitry configured to receive and process the
return link communication signal.
The Examiner erred in finding that MacLellan discloses that the
communication station and housing comprise respective different circuit
devices.
The Examiner did not err in finding that MacLellan discloses
communication circuitry configured to communicate the return link
communication signal comprising a wireless signal.
The Examiner did not err in finding that MacLellan discloses
communication circuitry that is configured to communicate the return link
communication signal comprising a wireless signal having a frequency
outside of the frequency band of the wireless communications of the forward
and return link wireless signals.
The Examiner erred in finding that MacLellan discloses a
communication station and housing located in different geographical
locations.

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SUMMARY
The Examiner’s decision to reject claims 1-22, 24-41, and 44-57 is
reversed.
REVERSED
37 C.F.R. § 41.50(b)

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