Ex Parte von Bose et al

Patent Trial and Appeal Board

May 23, 2016

12844483 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/844,483 07/27/2010
22242 7590 05/24/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Samuel John von Bose
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8842-98203-US 8151
EXAMINER
HOLLOWAY III, EDWIN C
ART UNIT PAPER NUMBER
2683
MAILDATE DELIVERY MODE
05/24/2016 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 SAMUEL JOHN VON BOSE and
WENDELL LACHICA VALDEZ
Appeal2014-006833
Application 12/844,483 1
Technology Center 2600
Before LARRY J. HUME, JUSTIN BUSCH, and JOYCE CRAIG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-18, which are all the claims pending
in the application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Wal-Mart Stores, Inc.
App. Br. 3.
2 The Examiner states in the Final Rejection that claims 1-19 stand rejected.
Final Act. 2 ("Office Action Summary"). However, only claims 1-18 are
pending and on appeal.
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Application 12/844,483
STATEMENT OF THE CASE3
The Invention
Appellants' claimed invention relates to a method and apparatus for
reading of Radio Frequency Identification (RFID) tags. Spec. if 3.
Exemplary Claims
Claims 1 and 9, reproduced below, are representative of the subject
matter on appeal:
1. A method for use with modules of items, where at
least a plurality of the items each have a radio frequency
identification (RFID) tag, the method comprising:
at a control circuit:
accessing an identifier as corresponds to a
given one of the modules of items;
using the identifier to filter RFID tag
readings and thereby identify RFID tags for items
that are associated with the identifier.
9. An apparatus comprising:
a memory having stored therein an identifier as
corresponds to a given one of a plurality of modules of items,
where at least a plurality of the items each have a radio
frequency identification (RFID) tag;
a control circuit operably coupled to the memory and
configured to use the identifier to filter RFID tag readings and
3 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Dec. 30, 2013); Reply Brief ("Reply Br.," filed May 21, 2014); Examiner's
Answer ("Ans.," mailed Apr. 2, 2014); Final Office Action ("Final Act.,"
mailed Aug. 26, 2013); and the original Specification ("Spec.," filed
July 27, 2010). Appellants elected to waive oral hearing attendance in a
paper filed with the Patent Trial and Appeal Board on Apr. 15, 2016.
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Application 12/844,483
thereby identify RFID tags for items that are associated with the
identifier.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Muhme US 5,886,634
Mon US 6,354,493 B 1
Landt US 6,677,852 Bl
Mar. 23, 1999
Mar.12, 2002
Jan.13, 2004
Kim KR 10-2005-0028472 Mar. 23, 2005
Rejections on Appeal4
RI. Claims 1, 3, 4, and 6-8 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Mon and Muhme. Final Act. 2--4.
R2. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of l'vfon, l'viuhme, and Kim. Final Act. 4--5.
R3. Claims 2, 3, and 9--18 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Mon, Muhme, and Landt. Final
Act. 5-6.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 7-11), we decide the
appeal of obviousness Rejection RI of claims 1, 3, 4, and 6-8 on the basis of
4 We note claim 3 is dual-rejected under both Rejection RI and R3, and
claim 6 is dual-rejected under both Rejections RI and R2. However,
Appellants do not address the potential inconsistency in the Examiner's
findings and legal conclusions with respect to claims 3 and 6. Final
Act. 3---6. Arguments not made are waived. 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/844,483
representative claim 1; and we decide the appeal of obviousness Rejection
R3 of claims 2, 3, and 9-18 on the basis of representative claim 9.
Remaining claims 5 and 6 in rejection R2, not argued separately,
stand or fall with independent claim 1 from which they depend. 5
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-18,
and we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1
and 9 for emphases as follows.
1. Rejection RI of Claims 1, 3, 4, and 6-8
Issue 1
Appellants argue (App. Br. 7-10; Reply Br. 1---6) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
5 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
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Application 12/844,483
combination of Mon and Muhme is in error. These contentions present us
with the following issue:
Did the Examiner err in combining Mon and Muhme in the manner
suggested to render claim 1 obvious under § 103 because allegedly, as
argued by Appellants, a person with ordinary skill in the art would have no
reason to modify Mon's handheld RFID-tag reader to operate in accordance
with Muhme's teachings related to a base station installed at a point of
egress?
Analysis
Appellants contend, "[t]here is no fair reason of record to combine
Muhme with Mon." App. Br. 7 (emphasis omitted). Appellants further
argue "Mon is concerned with finding the proverbial needle in a haystack"
using feedback to help physically locate a tag or tags of specific interest
(App. Br. 8), while "Muhme is concerned about something altogether
different than Mon - automatically determining whether someone is trying
to leave a facility with an item regarding which they are unauthorized to
remove from that facility." Id. " [A] person of ordinary skill in the art who
reads all of Mon and Muhme will find no teaching in either reference that
there is any useful reason to seek 'security' with respect to reading RFID tags
anywhere in a facility other than at a point of egress." App. Br. 9.
Appellants further allege Mon's device potentially would "fail to
operate as desired with respect to its primary task in a timely manner" if
Muhme's teaching of "automatically confirming that certain tags are
authorized to be in proximity to other tags" was incorporated into Mon's
"needle-in-the-haystack process." Id.
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Appellants then summarily conclude a person with ordinary skill in
the art "would not find a reason to improve Mon's functionality by somehow
combining Muhme's teachings with Mon." App. Br. 10.
Appellants disagree (id.) with the Examiner's stated basis for the
motivation to combine Mon with Muhme, i.e.,
[I]t would have been obvious to one of ordinary skill in the art
... to have included in Mon the modules of items with tags as
disclosed in Muhme to identify RFID tags for items that are
associated with the identifier for security, suggested by the
inventorying, tracking and sorting items in commercial
environment in Mon."
Final Act. 3.
[T]he ordinarily-skilled person will have no reason to make the
combination being suggested by the Examiner by modifying
Mon's handheld RFID-tag reader to operate in accordance with
Muhme's teachings for a base station that is installed at a point
of egress. In particular, there is nothing in either of these
references to suggest any reason to provide a handheld RFID
reader with an ability to effect a security function at points of
egress, let alone at other locations within a facility when
seeking to locate a particular desired RFID tag. We respectfully
submit that one can only make the described combination
through inappropriate hindsight reliance upon our own
teachings.
App. Br. 10.
The Examiner finds Appellants' arguments are unpersuasive because
"Mon clearly discloses a fixed reader by which articles pass," such that
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"Mon is not the opposite of Muhme, but actually teaches [the use otl fixed
readers." Ans. 3. 6
Regarding Appellants' hindsight argument, we are cognizant that our
reviewing courts have not established a bright-line test for hindsight.
However, in KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the U.S.
Supreme Court guides that " [a] factfinder should be aware, of course, of the
distortion caused by hindsight bias and must be cautious of argument reliant
upon ex post reasoning." KSR, 550 U.S. at 421 (citing Graham v. John
Deere Co., 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court also
qualified the issue of hindsight by stating "[r]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it." Id. In this case, we find the
Examiner has relied upon common sense to find that combining the modules
of items with tags as disclosed by Muhme with Mon's teachings to identify
RFID tags for associated items would be consistent with improving security
of these items in inventorying, tracking and sorting operations in the
commercial environment of Mon. Final Act. 3.
Moreover, Appellants have not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
6 "The RFID reader is preferably a handheld RFID reader 2, but could be a
fixed reader by which articles 6 pass." Mon, col. 3, 11. 18-20 (referring to
Mon, Fig. 1 ).
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check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). (See also App. Br. 16,
"(9) Evidence Appendix ... None").
Further, the relevant inquiry is whether the Examiner has set forth
"some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir.
2006) (cited with approval in KSR, 550 U.S. at 418).
As quoted above, the Examiner's finds,
[I]t would have been obvious to one of ordinary skill in the art
... to have included in Mon the modules of items with tags as
disclosed in Muhme to identify RFID tags for items that are
associated with the identifier for security, suggested by the
inventorying, tracking and sorting items in commercial
environment in Mon.
Final Act. 3. We find this finding of motivation to combine the references
meets the articulated reasoning and rational underpinning requirements of
KSR, cited above.
The Examiner responds to Appellants' other related arguments
identified, supra, and we incorporate herein and adopt as our own these
findings and legal conclusions. Ans. 3-5.
We have reviewed Appellants' arguments in the Reply Brief (1---6), but
do not find them to be persuasive. For example, we find Appellants'
argument that Mon's teaching of a fixed location RFID reader is a
"miniscule and un-embodied casual reference [which] might serve were this
an anticipation rejection, [but] the Examiner instead seeks to combine two
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references to support an obviousness rejection," to be particularly
unpersuasive. 7 Reply Br. 3.
We further note Appellant's' assertions concerning how a person with
ordinary skill in the art would view the Examiner's suggested combination of
Mon with Muhme and their individual teachings and suggestions amount to
unsupported attorney argument, and therefore we give them little weight.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996). Therefore, we do not find
error in the Examiner's reliance on the combined teachings and suggestions
of Mon and Muhme.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
limitations of claim 1, nor do we find error in the Examiner's resulting legal
conclusion of obviousness. Therefore, we sustain the Examiner's
obviousness rejection of independent claim 1, and grouped claims 3, 4, and
6-8 which fall therewith. See Claim Grouping, supra.
2. Rejection R3 of Claims 2, 3, and 9--18
Appellants' arguments concerning the rejection of independent claim 9
are the same as those presented for claim 1, therefore also making Issue 1
dispositive with respect to Rejection R3 of claim 9. App. Br. 11. Appellants
make no arguments regarding the teachings of Landt, either alone or in
combination with Mon and Muhme, as set forth by the Examiner in
7 "[A]nticipation is the epitome of obviousness," Jones v. Hardy, 727
F.2d 1524, 1529 (Fed. Cir. 1984).
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Rejection R3. Therefore, we sustain the Examiner's obviousness rejection of
independent claim 9, and grouped claims 2, 3, and 10-18 which fall
therewith. See Claim Grouping, supra.
3. Rejection R2 of Claims 5 and 6
In view of the lack of any substantive or separate arguments directed
to obviousness rejection R2 of claims 5 and 6 under § 103 (see App. Br. 11 ),
we sustain the Examiner's rejection of these claims. Arguments not made
are waived.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1---6) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Briefthat were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
through R3 of claims 1-18 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
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).
AFFIRMED
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