Ex Parte Phipps et al

Board of Patent Appeals and Interferences

Aug 13, 2012

11012480 (B.P.A.I. Aug. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM PHIPPS, SCOTT JONATHAN BELL, ALBERTO
RODRIGUEZ, HEIKO ROMMELMANN, and RONALD P. BOUCHER
____________

Appeal 2010-000477
Application 11/012,480
Technology Center 2600
____________

Before JOHN A. JEFFERY, ERIC B. CHEN,
and BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 5, 8-13, 15, and 16, which constitute all the claims pending in
this application.1 Claims 3, 4, 6, 7, and 14 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Although the Examiner objected to the Specification (Adv. Act. 2), that
objection is not before us on appeal (App. Br. 14; Ans. 8; Reply Br. 1-2).
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STATEMENT OF THE CASE
“[Appellants’ described] invention is related to radio frequency
identification [(RFID)] devices, and more specifically relates to radio
frequency identification coupler devices and methods for interrogating radio
frequency identification transponders.” (Spec. ¶ [0001]).2 Claim 8, which is
illustrative of the invention, reads as follows:
8. A method of selectively interrogating a plurality of
radio frequency identification transponders in an image forming
device, the method comprising:
providing a plurality of radio frequency
identification transponders;
providing a plurality of sensing antennas, at least
one of the sensing antennas being in close proximity to each
radio frequency identification transponder;
providing a radio frequency identification device
having a first serial bus controller, a radio frequency receiver, a
radio frequency transmitter, and a plurality of digital output
ports enabling one of the plurality of sensing antennas;
providing a host computer having a second serial
bus controller that provides serial data communication with the
first serial bus controller of the radio frequency identification
device;
providing antenna select control logic in electrical
communication with the radio frequency identification device
and in electrical communication with and controlled by the
plurality of radio frequencies with identification sensing
antenna, the radio frequency identification device operatively
connected to the plurality of sensing antennas through the
external device selection logic;

2 For consistency, throughout this opinion references to the Specification
(“Spec.”) are to the Specification filed December 16, 2004, rather than to
Published Patent Application US 2006/013227 A1, published June 22, 2006.
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transmitting antenna selection data in serial form
from the host computer to the radio frequency identification
device;
decoding the serially received antenna selection
data;
configuring three digital output ports to enable one
of eight radio frequency identification sensing antennas; and
enabling one of the plurality of sensing antennas to
communicate with a radio frequency identification transponder.
The Examiner relies on the following prior art3 in rejecting the claims:
Nerlikar US 5,629,981 May 13, 1997
Lanzl US 6,353,406 B1 Mar. 5, 2002
Moore US 6,714,121 B1 Mar. 30, 2004
Messlem US 6,972,663 B1 Dec. 6, 2005
Saito US 7,164,380 B2 Jan. 16, 2007
Claims 8-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Moore, Lanzl, Nerlikar, and Saito. (Ans. 3-6).
Claims 1, 2, 5, 12, 13, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Moore, Lanzl, Nerlikar, Saito, and Messlem.
(Ans. 6-8).
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed April 20, 2009; “Reply Br.” filed Aug. 26, 2009) and the Answer
(“Ans.” mailed June 26, 2009) for the respective positions of Appellants and
the Examiner. It is unclear whether Appellants intended to maintain the
contentions presented in the Request for Reconsideration after Final
Rejection (“RFR” filed Jan. 15, 2009). These contentions were not
presented in the “Arguments” portion of the Appeal Brief, as required by
37 C.F.R. § 41.37(c)(1)(vii) (2010), but were, instead, attached to the Appeal

3 The availability of the cited references as prior art is not disputed.
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Brief in the Evidence Appendix (App. Br. 56-61).4 In the interest of judicial
and administrative efficiency, we have considered those contentions in light
of the Examiner’s comments in the Advisory Action (“Adv. Act.” mailed
Jan. 15, 2009), also attached to the Appeal Brief in the Evidence Appendix
(App. Br. 67, 63-66).5 Subject to the foregoing, only those arguments
actually made by Appellants have been considered in this decision.
Arguments that Appellants did not make in the Briefs (including the
Evidence Appendix) have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The pivotal issues raised by Appellants contentions are as follows:
Did the Examiner err in combining Moore with Lanzl? (See App. Br.
14-17; Reply Br. 2-6).
Did the Examiner err in combining Moore and Lanzl with Nerlikar?
(See RFR 2-3).
Did the Examiner err in combining Moore, Lanzl, and Nerlikar with
Saito? (See RFR 3-5).

PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of

4 We will refer to the Request for Reconsideration after Final Rejection by
its original page numbers (i.e., RFR 1-6).
5 We will refer to the Advisory Action by its original page numbers (i.e.,
Adv. Act. 1-5).
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ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. “[T]he [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
[T]he problem motivating the patentee may be only one of
many addressed by the patent's subject matter. The question is
not whether the combination was obvious to the patentee but
whether the combination was obvious to a person with ordinary
skill in the art. Under the correct analysis, any need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
Id. at 420.
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
Where a rejection is based on a combination of references, the order
in which prior art references are cited to the Applicant is of no significance,
but merely a matter of exposition. In re Bush, 296 F.2d 491, 496 (CCPA
1961) (cited in In re Mouttet, ___F.3d.___, 103 USPQ2d 1219, 1226 (Fed.
Cir. 2012)).
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ANALYSIS
THE REJECTION OF CLAIMS 8-11
Appellants address the claims, of which claim 8 is exemplary,
together in a single argument. Accordingly, we will discuss Appellants’
arguments by reference to exemplary claim 8.
Combining Moore with Lanzl
“Appellants submit that the modification of Moore using Lanzl
renders Moore unsatisfactory for its intended purpose.” (App. Br. 15).
More specifically, Appellants contend as follows:
Moore discloses that an interrogator can communicate with a
plurality of sensing antenna circuits on a nesting station. . . . .
Moore discloses that the interrogators can communicate with
the nesting stations that are placed on shelf arrangements in a
warehouse. . . . . Moore thus discloses the ability for a single
interrogator to communicate with a group of RFID tags
spanning an upward, downward, and horizontal direction. . . . .
Lanzl, on the other hand, is limited to using cell
controllers that have a good downward and horizontal gain, but
a poor upward gain. . . . . Accordingly, Lanzl would require
multiple cell controllers to cover a single shelf arrangement in
Moore in order to compensate for the poor upward gain.
A very purpose of Moore is to eliminate the use of
multiple controllers to communicate with a single set of RFID
tags. . . . . As such, the modification of detecting multiple
RFID tags in Moore with the multiple cell controllers of Lanzl
renders Moore unsatisfactory for its intended purpose, and there
is no suggestion or motivation to make such a modification.
(See MPEP §2143.01(V). Accordingly, the combination of
Moore with Lanzl would be improper because modifying
Moore based on Lanzl would render Moore unsatisfactory for
its intended purpose.
(App. Br. 16-17; see also Reply Br. 2-6).
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Appellants’ arguments do not persuade us that the Examiner erred in
combining Moore with Lanzl. First of all, the Examiner has relied on Lanzl
for its teaching of an RFID interrogator that has an analog transmitter that
would be obvious to combine with Moore’s analogous RFID interrogator
that does not have an analog transmitter (Ans. 4-5). Appellants do not
persuasively explain how the combination actually made by the Examiner,
i.e., incorporating Lanzl’s transmitter into Moore’s RFID interrogator,
would render Moore unsuitable for Moore’s intended purpose. Therefore,
Appellants’ contentions are not commensurate with the grounds of rejection.
Secondly, “[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”
Keller, 642 F.2d at 425. Appellants’ contentions are based on an argued
direct insertion of features of Lanzl not relied on by the Examiner into
Moore without regard to what would be suggested to the person of ordinary
skill in the art and without “tak[ing] account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418.
Combining Moore and Lanzl with Nerlikar
The Examiner cites Nerlikar for the use of RFID tags for various
components in an image forming device and for the proposition that there
may be plural such components. (Ans. 5). The Examiner finds “it would
have been obvious to one of ordinary skill in the art at the time the invention
was made to have included in the combination applied above an imaging
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apparatus as disclosed in Nerlikar monitoring tags to prevent use of
unauthorized or counterfeit components.” (Id.).
Appellants contend “[u]sing the monitoring tags in Nerlikar to prevent
use of unauthorized or counterfeit components is a problem the instant
specification neither addresses nor attempts to solve.” (RFR 2). “Rather,
the instant device addresses problems related to having superfluous coupler
devices, support circuitry, and connectors to select RFID sensing antennas in
host-to-peripheral RFID communication systems.” (RFR 3).
We are unpersuaded of Examiner’s error. It is not required that the
rationale articulated by the Examiner address the same problem as addressed
by the Appellants’ Specification. Any problem known in the field of
endeavor at the time of the invention and addressed by the claimed invention
can provide a reason for combining the elements. KSR, 550 U.S. at 420.
We note, for emphasis, that Appellants point out (App. Br. 17; Reply
Br. 3) that Moore discloses addressing the problem of reducing the number
and cost of components needed when there are plural RFID sensing
locations to be monitored (see Moore col. 3, ll. 2-21; see also col. 17, l. 60-
col. 18, l. 4). When faced with the use of plural RFID tags in Nerlikar, it
would have been obvious to one of ordinary skill in the art to adopt Moore’s
system that uses a common RFID interrogator with multiple antennas. It is
merely a matter of exposition, and of no significance, which reference is
discussed as the “primary” or “base” reference, and which one is discussed
as the “secondary” reference. Bush, 296 F.2d at 496.
Combining Moore, Lanzl, and Nerlikar with Saito
The Examiner relies on Saito for specifically disclosing a 3 binary line
input, 8 antenna output, antenna selector switch, a combination which
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Examiner states is suggested by Moore’s 3 line selector input (Moore Fig. 7)
and 4 to 8 antenna interrogator outputs (Moore Fig. 3). (Ans. 6). Appellants
contend that “the Office Action is implying that it would be obvious to solve
a problem that only exists after combining Moore, Lanzl, and Nerlikar.
Applicants respectfully submit that asserting that a solution to a non-existent
problem is obvious is further evidence that the rejection amounts to
hindsight.” (RFR 4 (emphasis added)).
The Examiner responds, inter alia, as follows:
The rejection does not correct a problem that only exists after
the combination of Moore and Lanzl. Moore and Lanzl [each]
disclose selecting from a number antennas such [as] 4, 8 or 16
antennas. The number of lines used to select the antennas are
not expressly discussed in [Moore and Lanzl], but selecting 8
antennas by a digital processor of Moore and Lanzl would
involve uses of 3 digital bits that may be sent serially on a
single line or in parallel on three lines. An example of an
antenna selector to select 8 antennas is described in Saito and
would have been obvious for use in analogous art RFID
systems to provide the intended function of selecting antennas.
(Adv. Act. 3). We agree with the Examiner. The fact that, as a matter of
exposition, the Examiner described the combination of Saito as being a
combination with Moore, Lanzl, and Nerlikar, is of no significance, see
Bush, 296 F.2d at 496. We conclude that the combination made by the
Examiner would have been the same had the Examiner expressed it as a
combination with Moore alone. For emphasis, we note that in binary digital
devices it is axiomatic that three bits of selection data enable the selection of
up to eight alternatives, such as antennas, corresponding to binary 000 (zero)
through binary 111 (seven). We are unpersuaded that the Examiner erred in
combining Saito with Moore, Lanzl, and Nerlikar.
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Summary
The invention described in claim 8 is merely a “combination of
familiar elements according to known methods . . . [that] does no more than
yield predictable results,” KSR, 550 U.S. at 416, that can be implemented by
a person of ordinary skill in the art, see id. at 417 and would have, therefore,
been obvious under 35 U.S.C. § 103(a). For further emphasis, we note that
the combination made by the Examiner can also be generally described as
follows:
 Nerlikar (Figs. 5A, 5B; col. 4, ll. 7-21; col. 7, l. 47-col. 8, l. 21)
teaches an image forming device having a plurality of RFID
transponders to be selectively interrogated using a plurality of
antennas, as does Appellants’ admitted prior art (Spec. ¶¶ [0002]-
[0003]; see RFR 8).
 Moore (Figs. 3, 7; col. 9, ll. 29-44, col. 9, l. 64-col. 10, l. 20) teaches
selectively interrogating a plurality of RFID devices by using a single
interrogator with an analog receiver connecting a host computer to a
plurality of antennas, and utilizing a switch to select between the
antennas. Moore (col. 3, ll. 7-21; see also col. 17, l. 60-col. 18, l. 4)
also teaches that using a single RFID interrogator for plural antennas
reduces the number of required components and cost.
 Lanzl (Figs. 6, 10, 14, 21; col. 4, ll. 7-21; col. 7, l. 48-col. 8, l. 20)
teaches that an analog transmitter can be incorporated in an
interrogator with switched antennas if it is desired to transmit to, as
well as receive from, the RFID transponders.
 Saito (Fig. 11) teaches an RFID antenna switch that uses three bits to
select between eight antennas (see also Moore Figs. 3, 7).
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See Bush, 296 F.2d at 496.
Appellants have not persuaded us that the Examiner erred in
combining Moore, Lanzl, Nerlikar, and Saito in rejecting claim 8.
Accordingly, we will sustain the rejection of claim 8 and of dependent
claims 9-11, the patentability of which was not separately argued with
particularity (App. Br. 18; RFR 4).

THE REJECTION OF CLAIMS 1, 2, 5, 12, 13, 15, AND 16
The patentability of claims 1, 2, 5, 12, 13, 15, and 16, was not
separately argued with particularly, relying on the arguments discussed
supra with regard to claims 8-11 (App. Br. 18; RFR 5). Appellants further
contend that Messlem does not cure the asserted deficiencies of the
combination of Moore, Lanzl, Nerlikar, and Saito. (RFR 5). For the reasons
discussed for claims 8-11, we will sustain the rejections of claims 1, 2, 5, 12,
13, 15, and 16.

ORDER
The decision of the Examiner to reject claims 1, 2, 5, 8-13, 15, and 16,
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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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