Fraunhofer-Gesellschaft zur Forderung der angewandten Forschung e.V.

Patent Trials and Appeals Board

Jul 24, 2020

2019002527 (P.T.A.B. Jul. 24, 2020)

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.
14/381,398 08/27/2014 Stephan Otto OTTO3002/JS-JEC 6278
23364 7590 07/24/2020
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
KHAN, OMER S
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
07/24/2020 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):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHAN OTTO, THORSTEN NOWAK,
and IKER MAYORDOMO

Appeal 2019-002527
Application 14/381,398
Technology Center 2600
BEFORE ERIC S. FRAHM, JOHNNY A. KUMAR, and
MICHAEL T. CYGAN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 26–29 and 32–43. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Fraunhofer-Gesellschaft Sur Forderung der Angewandten Forschung E.V.
Appeal Br. 2.
Appeal 2019-002527
Application 14/381,398

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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to powering RFID-tags used, for
example, in inventory management or facility management of devices
mounted “for example, onto a crane, a truck, a carriage, a robot used to carry
goods inside the tracking area, a flying device such as a drone or a remotely
controlled helicopter, a service or utility robot or any other kind of utility
machine.” Spec. 10–12.
Representative Claim
Representative claim 26 under appeal reads as follows:
26. A mobile energizer node comprising a transmitter
operable to transmit an energizing electromagnetic signal for a
transceiver tag, the mobile energizer node comprising:
a mobility adaptor for mounting the mobile energizer
node on a movable device, and
a beam former operable to direct a maximum of a
directivity pattern of the energizing electro-magnetic signal to a
desired solid angle, wherein the beam former is configured to
rotate a direction of the maximum of the directivity pattern
relative to the movable device with a constant or with a variable
angular velocity.
Appeal Br. 15 (Claims Appendix).
REFERENCES AND REJECTIONS
Claims 26–29 and 32–34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Vennelakanti (US 2009/0195358 A1, published
Aug. 6, 2009), in view of Beniyama (US 2009/0021351 A1, published
Jan. 22, 2009), and further in view of Price (US 3,687,556, issued Aug. 29,
1972). Final Act. 5–11.
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Application 14/381,398

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Claims 35–43 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beniyama, in view of Vennelakanti, and further in view of
Price. Final Act. 11–21.
ANALYSIS
Issue on Appeal: Did the Examiner err in combining Vennelakanti,
Beniyama, and Price to teach or suggest all the limitations of independent
claim 26 (and similarly recited in claim 35) because the references are not
properly combinable?2
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. The Examiner has provided a comprehensive response,
supported by sufficient evidence, to each of the contentions raised by
Appellant. We adopt as our own (1) the findings and reasons set forth by the
Examiner in the Final Action from which this appeal is taken (see Final
Act. 2–21) and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief (see Ans. 3–8). However,
we highlight and address specific findings and arguments for emphasis as
follows.
Appellant contends:
[M]odification of Vennelakanti by Beniyama (or by any other
reference) to incorporate rotation of a beam former as claimed
is contrary to the well-settled principle of In re Ratti – such a
modification would “would change the principle of operation”
of the modified prior art. The X-Y coordinate system of
Vennelakanti is different from, and not compatible with, a

2 Claims 27–29, 32–34, and 36–43 are not argued separately from claims 26
and 35, respectively in either of Appellant’s briefs, and will not be
separately addressed.
Appeal 2019-002527
Application 14/381,398

4
variable angle beam former. Vennelakanti is simply not
concerned with direction of the RFID reader, but only its X-Y
coordinate position.
Appeal Br. 13.
Appellant also contends:
Vennelakanti also cannot be modified by the rotating
beacon of Price, for the same reasons. The X-Y coordinate
system of Vennelakanti is different from, and not compatible
with, a variable angle (or polar coordinate) system.
Vennelakanti is simply not concerned with direction of the
RFID reader, but only its X-Y coordinate position. And, Price
does not disclose or suggest a beam former operable to direct a
maximum of a directivity pattern of the energizing electro-
magnetic signal to a desired solid angle – Price discloses a
laser beam (not an energizing electro-magnetic signal) that is
continuously rotated, but never rotated to a desired solid angle.
Id.
As to Appellant’s above contentions, we are not persuaded the
Examiner erred. Appellant’s arguments are premised on a “physical” or
“bodily” incorporation of limitations of one reference into the other. This is
not the standard of obviousness. See In re Sneed, 710 F.2d 1544, 1550 (Fed.
Cir. 1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”); In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The 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.”). Moreover, “[a] reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect.” EWP Corp.
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v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis
omitted).
Furthermore, an ordinarily skilled artisan is not compelled to blindly
follow the teaching of one prior art reference over the other without the
exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984). “[T]he 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.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Nor has Appellant provided any objective
evidence of secondary considerations, which, as our reviewing court
explains, “operate[] as a beneficial check on hindsight.” Cheese Sys., Inc. v.
Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir.
2013).
In particular, the Examiner finds, and we agree:
[T]he disclosure of Beniyama and Price would allow
Vennelakanti to be able to rotate his reader 106 and read tags on
both side of the rail and therefore maximizing the effectiveness
the reader for keeping track of the inventory. Furthermore, it
would have been obvious to one of ordinary skilled in the art at
the time of invention to modify the invention of Vennelakanti
and have a receiver that can collect the data on behalf of a
management server; therefore, keeping track of the inventory
and allow the user a conveniently operate a robot, that can
rotate in different directions, attached with an RFID reader and
a beam former to read the RFID tags attached to items in the
warehouse thus allowing the end-user to keeping track of the
inventory.
Final Act. 4.
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The Examiner also finds, and we agree:
[I]t would have been obvious to one of ordinary skilled in the
art at the time of invention to modify the invention of
Vennelakanti and have a receiver that can collect the data on
behalf of a management server; therefore, keeping track of the
inventory and allow the user a conveniently operate a robot,
that can rotate in different directions, attached with an RFID
reader and a beam former to read the RFID tags attached to
items in the warehouse thus allowing the end-user to keeping
track of the inventory. It would behoove Vennelakanti and
Beniyama to incorporate the teachings of Price and include a
rotation device to rotate the beam at a constant angular speed in
a desired direction so the Vennelakanti and Beniyama’s tag
reader can emits radio waves from a directional antenna in the
direction of the tags detected by the beam 25 suggested by
Price; therefore, conserving energy and reducing
electromagnetic noise and collision.
Ans. 5.
Thus, the Examiner has set forth why an ordinarily skilled artisan
would have been motivated to combine the teachings of Vennelakanti,
Beniyama, and Price to arrive at the claimed invention. Id. Appellant has
not presented any persuasive evidence or argument why the ordinarily
skilled artisan would not have possessed the knowledge and skills to know
how to combine the prior art references. As such, one of ordinary skill in the
art would have recognized how to adjust Vennelakanti to accommodate the
teachings from Beniyama and Price.
We have considered Appellant’s arguments in the Reply Brief, but
find them unpersuasive to rebut the Examiner’s responses.

Appeal 2019-002527
Application 14/381,398

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CONCLUSION
We affirm the Examiner’s decision to reject claims 26–29 and 32–43
under 35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
26–29, 32–
34
103 Vennelakanti,
Beniyama, Price
26–29, 32–
34

35–43 103 Beniyama,
Vennelakanti,
Price
35–43
Overall
Outcome
26–29, 32–
43

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED