Ex Parte Reime

Patent Trial and Appeal Board

Feb 26, 2018

13061664 (P.T.A.B. Feb. 26, 2018)

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.
13/061,664 03/01/2011 Gerd Reime REP0077US 8033
23413 7590 02/28/2018
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street PHAM, QUANG
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
02/28/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERD REIME
Appeal 2017-007158
Application 13/061,6641
Technology Center 2600
Before MARC S. HOFF, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—11, 17, and 18.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 The Appeal Brief identifies the real party in interest as Appellant Gerd
Reime. App. Br. 2.
2 Claims 12—16 have been canceled. Remaining claim 19 is objected to as
being dependent upon a rejected base claim (i.e., claim 11), but would be
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims. Final Act. 17.
Appeal 2017-007158
Application 13/061,664
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to security authorization, and
specifically, regulating access to a secure area using wearable,
autonomously-powered optical transponders. Spec. 1—2. Claim 1, the sole
independent claim, is illustrative of the invention and the subject matter of
the appeal, and reads as follows:
1. An identification element having a transponder
incorporating a data sending transmitter unit for communication
with a device for at least one of detecting or controlling access
authorization to areas or objects, and a control circuit for the
transmitter unit,
wherein the transponder is an optical transponder and the
transmitter unit thereof is a light emitting transmitter unit which
automatically sends out optical signals continuously at least
periodically,
wherein an autonomous power supply is provided which
is not a battery, wherein the optical transponder and the
autonomous power supply are integrated into the identification
element, and
wherein the identification element is in the form of a name
tag or an identification element of comparable size which is
associated with or is to be carried on an object or a body,
wherein the transmitter unit of the optical transponder is
operated by the control circuit in such a manner that it sends out
optical pulses of less than or equal to 100 nanoseconds several
times per second, wherein the said optical pulses define at least
one data word and are generated without using a battery via a
clock pulse generator that receives power from the autonomous
power supply to continuously send out the optical signals at a
frequency above approximately 10 megahertz (MHz).
App. Br. 12 (Claims App.) (emphases added).
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Appeal 2017-007158
Application 13/061,664
The Rejections on Appeal
Claims 1,2, 4—7, and 17 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Stewart et al. (US 2007/0132592
Al; June 14, 2007) (“Stewart”), Ivtsenkov et al. (US 2007/0236384 Al; Oct.
11, 2007) (“Ivtsenkov”), Dunne (US 5,889,583; Mar. 30, 1999), Ressler (US
2003/0200227 Al; Oct. 23, 2003), and Sekiguchi et al. (US 2007/0110126
Al; May 17, 2007) (“Sekiguchi”). Final Act. 4—11.
Claim 3 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Stewart, Ivtsenkov, Dunne, Ressler, Sekiguchi, and Kwan
(US 7,893,816 Bl; Feb. 22,2011). Final Act. 12-13.
Claims 8—11 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Stewart, Ivtsenkov, Dunne, Ressler, Sekiguchi,
and Shipley (EP 1 229 672 Bl; May 19, 2004). Final Act. 13—17.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41,37(c)(l)(iv). On the record before us, we are unpersuaded the
Examiner has erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
Appellant does not dispute that the references cited in the Examiner’s
obviousness rejection of claim 1, when combined, teach or suggest all of the
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Appeal 2017-007158
Application 13/061,664
elements of the claim.3 Appellant, however, argues the Examiner erred in
finding a rationale or motivation for combining the references. App. Br. 6—
10. Specifically, Appellant argues the combination would require
“substantial modifications of the various systems described by the . . . cited
[prior] art references,” and would require improper hindsight. Id. at 6, 10.
We disagree.
Appellant first contends one of ordinary skill in the art would not
combine the “firing circuit” of Dunne with the “transmitter” of Stewart
because Dunne requires a “high-power battery” whereas Stewart teaches
alternative power sources other than a battery. App. Br. 7—8. Thus,
according to Appellant, the Examiner’s combination would “require an
unknown modification” of Dunne. Id. at 8. As the Examiner finds,
however, Stewart teaches there are a variety of ways to power tags (and the
circuits they contain) including “battery or other source [such as] magnetic
energy,” some of which are autonomous and some of which are not. Final
Act. 5—7; Stewart 13 (emphasis added). Combining Stewart with Dunne,
therefore, would not necessitate “an unknown modification” of Dunne as
Appellant argues.
Moreover, the Examiner cites Dunne for its teaching that a control
circuit may generate optical pulses of less than 100 nanoseconds. Ans. 5;
Dunne col. 2,11. 21—22 (describing “pulse signal of short duration,” i.e., “50
nanoseconds or less”). The Examiner finds the optical pulse generating
circuits of Stewart, Ivtsenkov, and Dunne were familiar elements to one of
3 Appellant argues all claims as a group, and we choose claim 1 as
representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/061,664
ordinary skill, and that substituting the pulse width of Dunne for that of
Stewart and Ivtsenkov would be a “simple substitution of one known,
equivalent element for another to obtain predictable results.” Ans. 5.
Appellant does not rebut these findings. Accordingly, we discern no error in
the Examiner’s combination of Dunne with the foregoing references. See
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.”).4 5
Appellant next contends the Examiner erred in combining Ivtsenkov
with Stewart, for reasons similar to those regarding Dunne, as discussed
above. App. Br. 8. For the same reasons as discussed above, however, we
are not persuaded of error. The Examiner does not rely on Ivtsenkov for its
power element (a lithium battery) but rather for its teaching that an optical
transponder may transmit optical pulses “equal to 100 nanoseconds.” Final
Act. 6. Combining this teaching (of a “known pulse width”) with Stewart’s
teaching of an electromagnetic tag with optical transponder, as known to one
of ordinary skill in the art, would “do[] no more than yield [the] predictable
result” of an optical transponder generating 100 nanosecond pulses. See
KSR, 550 U.S. at 416; Ans. 6-7.
Finally, Appellant contends the Examiner relied on impermissible
“hindsight” in combining the references. App. Br. 10. Appellant argues
4 The Examiner’s reliance on Dunne (i.e., teaching pulses “less than . . . 100
nanoseconds”) also is moot, because the pertinent claim limitation reads
“less than or equal to 100 nanoseconds.” App. Br. 12 (emphasis added). As
the Examiner finds, Ivtsenkov teaches optical pulses “equal to” 100
nanoseconds. Ivtsenkov 145; Final Act. 6.
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Application 13/061,664
“the unique combination of features recited in Appellant’s claims as a whole
are novel” and therefore “it would not have been obvious to one of ordinary
skill in the art” to “reach the combination of features” without hindsight. Id.
Appellant offers no further support for this argument, and points to no
evidence in the record that the Examiner relied on hindsight. Accordingly,
we are not persuaded by Appellant’s argument. Cf. In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“the Board reasonably interpreted Rule 41.37
to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art”).
The Examiner’s Final Action, Advisory Action, and Answer all
provided articulated reasoning, with rational underpinning, as to why one of
ordinary skill in the art would combine the teachings of Stewart (optical
transponder in an RF tag) with those of Ivtsenkov and/or Dunne (pulse
widths of optical transponders), Sekiguchi (clock pulse generator
frequency), and Ressler (alternative power source, which also is taught in
Stewart). Final Act. 7—9; Advisory Act. 2; Ans. 3—8; see also KSR, 550 U.S.
at 418 (holding obviousness rejections must be supported by “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”). Appellant has not demonstrated that combining any of the
relied-upon teachings would have been “uniquely challenging or difficult for
one of ordinary skill in the art,” Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007), nor that combining these familiar
elements would yield unpredictable results. See KSR Int’l Co., 550 U.S. at
416. Accordingly, on the record before us, we discern no error in the
Examiner’s combination of references.
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Application 13/061,664
For the foregoing reasons, we sustain the Examiner’s obviousness
rejections of claims 1—11, 17, and 18.
DECISION
We affirm the Examiner’s rejections of claims 1—11, 17, and 18.
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.
§ 41.50(f).
AFFIRMED
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