Ex Parte Scholtz et al

Patent Trial and Appeal Board

Sep 26, 2013

11183525 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/183,525 07/18/2005 Jan Scholtz 505FO001 8623
7590 09/27/2013
Karl D. Kovach
Emerson Network Power Connectivity Solutions, Inc.
Suite 308N
3000 Lakeside Drive
Bannockburn, IL 60015
EXAMINER
SYED, NABIL H
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
09/27/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAN SCHOLTZ and RICHARD C. E. DURRANT
____________

Appeal 2011-003346
Application 11/183,525
Technology Center 2600
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1-3, 5, 6, 8-10, 12, 13, 15, 20, 21, 23, and 24. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention uses radio-frequency identification to manage
components or bodies, such as connectors, by storing or updating
information related to events during the components’ operational life. See
generally Spec. ¶ 0001. Claim 1 is illustrative:
1. A method for imparting information in a transponder from an
authorized interrogator by a user, where the transponder is mechanically
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associated with a body, the authorized interrogator having an antenna, and a
transceiver, the transceiver electrically connected to the antenna so as to
form a reader/writer which is capable of activating and interrogating the
transponder when the transponder is sufficiently close to the antenna, and
where the authorized interrogator has preset levels of security corresponding
to predefined categories of information, respectively, the user has an
authorization level which corresponds to one level of security of the preset
levels of security so that the user can gain access to one category of
information of the predefined categories of information, the method
comprising the steps of:

inputting the authorization level of the user into the authorized
interrogator by the user;

comparing the authorization level of the user against the preset levels
of security stored in the authorized interrogator;

permitting the user to have access, by the authorized interrogator, to
the one category of information of the predefined categories of information
which corresponds to the authorization level of the user;

placing the body in sufficient proximity to the authorized interrogator
so that the antenna of the authorized interrogator is capable of activating and
interrogating the transponder; and

transferring information associated with the one category of
information from the authorized interrogator to the transponder so as to store
the information associated with the one category of information with the
transponder, and wherein the predefined categories of information includes
information related to a number of warranty rework instances of the body,
and wherein

the body is a fiber optic connector.

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THE REJECTIONS
The Examiner rejected claims 1, 8, and 151 under 35 U.S.C. § 103(a)
as unpatentable over Lane (US 7,221,258 B2; issued May 22, 2007; filed
Dec. 9, 2003), Stanescu (US 6,784,802 B1; issued Aug. 31, 2004), and
Isaacson (US 5,708,419; issued Jan. 13, 1998). Ans. 4-9.2
The Examiner rejected claims 2, 3, 9, 10, 20, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Lane, Stanescu, Isaacson, and Nakajima (US
6,908,233 B2; issued June 21, 2005). Ans. 9-10.
The Examiner rejected claims 5, 6, 12, 13, 23, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Lane, Stanescu, Isaacson, Nakajima, and
Rossi (US 7,210,855 B2; issued May 1, 2007; eff. filed Sept. 7, 2004). Ans.
10-11.

RELATED APPEALS
As Appellants and the Examiner indicate (Br. 4, 33; Ans. 2, 17), this
appeal is related to two other appeals that were decided by different panels
of this Board. Ex parte Durrant, No. 2008-2825 (BPAI Sept. 24, 2008)
(“Durrant I”) (affirming Examiner’s obviousness rejections); Ex parte

1 Although claims 3, 10, and 21 depend from claims 2, 9, and 20,
respectively, which were rejected over Lane, Stanescu, Isaacson, and
Nakajima (Ans. 9-10), Appellants do not dispute this inconsistency which
we deem harmless on this record. Nevertheless, we presume that the
Examiner intended to reject claims 3, 10, and 21 over Lane, Stanescu,
Isaacson, and Nakajima and present the correct claim listing here for clarity.
2 Throughout this opinion, we refer to the Appeal Brief filed June 14, 2010
(“Br.”) and the Examiner’s Answer mailed Aug. 31, 2010 (“Ans.”).
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Durrant, No. 2009-008014 (BPAI Mar. 31, 2011) (“Durrant II”) (affirming
Examiner’s obviousness rejection).3

THE OBVIOUSNESS REJECTION OVER LANE, STANESCU, AND
ISAACSON

The Examiner finds that Lane’s method of imparting information in a
transponder associated with a body from an authorized interrogator has
every recited element of claim 1 except for (1) predefined information
categories including information related to a number of body rework
instances, and (2) the body is a fiber optic connector—features that are said
to be taught by Stanescu. Ans. 4-6, 12-13. Although the Examiner
acknowledges that Lane and Stanescu do not teach warranty information, the
Examiner nonetheless finds that warranty information is known in the art as
shown by Isaacson. Ans. 7, 13-15. In view of these collective teachings, the
Examiner concludes that claim 1 would have been obvious. Ans. 7, 12-15.
Appellants argue that not only does Lane lack fiber optic cables and
patch panels, but the cited prior art also does not teach or suggest the
predefined information categories including information related to a number
of body rework instances. Br. 12-14. Appellants add that there is no
teaching, suggestion, or motivation to combine the references as proposed
apart from improper hindsight. Br. 14-16.

3 The Durrant I panel was Judges Saadat, Jeffery, and then-Judge Hahn, and
the Durrant II panel was Judges Saadat, Nappi, and then-Judge Hahn.
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ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Lane, Stanescu, and Isaacson collectively would have taught or
suggested (a) predefined information categories including information
related to a number of body warranty rework instances, and (b) the body is a
fiber optic connector?
(2) Is the Examiner’s combining the teachings of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
We begin by noting that the two earlier Board decisions affirmed the
Examiner’s obviousness rejections that were all based at least partly on
Stanescu—a reference that is likewise at issue in this appeal. We, therefore,
incorporate the Board’s earlier findings regarding Stanescu by reference.
Durrant I, at 6-7 (Findings of Fact 2-5); Durrant II, at 4 (adopting
Examiner’s findings).
On this record, we see no error in the Examiner’s rejection of
representative claim 1 for the reasons indicated by the Examiner that we
adopt as our own. Ans. 4-9, 12-17. A key aspect of this dispute turns on the
content of the recited information stored in the transponder, namely that the
information is related to a number of body warranty rework instances. But
as the Examiner correctly indicates (Ans. 16-17), this information—like the
other types of information stored in the transponder listed in Paragraph 43 of
the Specification—is non-functional descriptive material that does not
functionally distinguish over the relied-upon transponder information in the
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cited prior art. Accord Durrant II, at 4 (holding that the invention’s non-
functional descriptive aspects include information related to optical cable
length, connector industrial standards, optical fiber grades, purchase dates,
and warranties) (emphasis added); Durrant I, at 14, 16-18 (holding that
including various named characteristics in transponders did not limit the
claimed invention functionally or structurally because the characteristics
were non-functional descriptive material).
Nor do Appellants persuasively rebut the Examiner’s (1) findings
regarding Stanescu’s storing body rework instances in light of associated
changes (Ans. 6-7, 13-15); (2) relying on Isaacson for teaching warranty
information; and (3) combining the cited references as proposed. As the
Examiner indicates, the Durrant I panel held that including optical fiber
warranty information in Stanescu’s system for managing optical fiber
interconnections would have been within the level of ordinarily skilled
artisans. Ans. 14-15 (quoting Durrant I, at 17-18). We see no reason why
information related to a number of body warranty rework instances should
be treated any differently in this regard, particularly because this
informational content is likewise non-functional descriptive material as
noted above. Moreover, Appellants’ contention that Lane lacks fiber optic
cables and patch panels (Br. 12) is unavailing, for the Examiner cites
Stanescu—not Lane—for the recited fiber optic connector. Ans. 6.
Appellants’ combinability arguments (Br. 14-16) are likewise unavailing, for
the Examiner’s combining the teachings of the cited references is supported
by articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion. Ans. 6-7, 15-16.
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Therefore, we are not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 8 and 15 not separately argued with
particularity.

THE OTHER REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 2, 3,
5, 6, 9, 10, 12, 13, 20, 21, and 24. Ans. 4-11. Despite nominally arguing
these claims separately, Appellants reiterate similar arguments made in
connection with claim 1 and allege that the additional cited references fail to
cure those purported deficiencies. Br. 16-25. We are not persuaded by these
arguments, however, for the reasons previously discussed and those
indicated by the Examiner.

CONCLUSION
The Examiner did not err in rejecting claims 1-3, 5, 6, 8-10, 12, 13,
15, 20, 21, 23, and 24 under § 103.4

4 Should prosecution follow our opinion, the Examiner should consider
whether the information related to a number of rework instances in
dependent claims 3, 10, and 21 further limit their respective independent
claims reciting information related to a number of warranty rework
instances under 35 U.S.C. § 112, fourth paragraph. Although warranty
rework instances are apparently particular types of rework instances
(compare Spec. ¶ 0046 with ¶ 0047), claims 3, 10, and 21 merely recite
rework instances, yet respectively depend from independent claims 1, 8, and
15 reciting a narrower form of these instances, namely warranty rework
instances.
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ORDER
The Examiner’s decision rejecting claims 1-3, 5, 6, 8-10, 12, 13, 15,
20, 21, 23, and 24 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)(iv).

AFFIRMED

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