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Patent Trials and Appeals Board

Jan 19, 2022

2022000267 (P.T.A.B. Jan. 19, 2022)

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. 16/097,519 10/29/2018 Dominic BERGES 5029-1878PUS/441959 7132 27799 7590 01/19/2022 COZEN O''CONNOR 3WTC, 175 Greenwich Street 55th Floor NEW YORK, NY 10007 EXAMINER BROWN, VERNAL U ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 01/19/2022 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): patentdocket@cozen.com patentsecretary@cozen.com patentsorter@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DOMINIC BERGES, SOENKE CHRISTOPH WILHELM APPEL, and ANDREAS ZIROFF Appeal 2022-000267 Application 16/097,519 Technology Center 2600 Before JOSEPH L. DIXON, JAMES R. HUGHES, and JOHNNY A. KUMAR, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 14, 21-28, 33, 35, 37, and 38 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act. 1-2; Appeal Br. 10-14.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Siemens AG. Appeal Br. 2. 2 We refer to Appellant’s Specification (“Spec.”), filed Oct. 29, 2018 (claiming benefit of German Application DE 10 2016 207 424.5, filed Apr. 29, 2016); Appeal Brief (“Appeal Br.”), filed June 1, 2021; and Reply Brief Appeal 2022-000267 Application 16/097,519 2 CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, generally “relates to a transponder, in particular an RFID transponder, [and] also relates to a method for operating a transponder, in particular an RFID transponder.” Spec. 1:1-7. More specifically, Appellant’s claims are directed to a transponder (independent claim 14) and method for operating a transponder (independent claim 28). The transponder of a tag (i.e., transponder) includes interconnected backscatter antennas that “scatter a signal back in the backscatter manner via a formed radiation characteristic and such that a physical orientation of the transponder relative to a reader is determinable by the reader based on the back scattered signal” “with the same phase offset with a controllable modulation frequency with respect to one another” and “with the same modulation frequency with a controlled phase offset with respect to one another to successively illuminate different spatial regions via said controlled phase offset,” “wherein controlling said phase offset between the antennas regulates an angle of directivity” and “the physical orientation of the tag is determined based on the angle of directivity. Claim 1 (Appeal Br. 10 (Claims App.)); see Spec. 1-8; Abstr. Claim 14, reproduced below, is illustrative of the claimed subject matter: 14. A transponder of a tag, said transponder being configured to form at least one first line of at least two antennas, the transponder comprising: antennas configured and operated in a backscatter manner, said antennas being functionally interconnected to one another such that, upon receiving a signal, said antennas scatter a signal (“Reply Br.”), filed Oct. 22, 2021. We also refer to the Examiner’s Final Office Action (“Final Act.”), mailed Nov. 23, 2020; and Answer (“Ans.”) mailed Aug. 23, 2021. Appeal 2022-000267 Application 16/097,519 3 back in the backscatter manner via a formed radiation characteristic and such that a physical orientation of the transponder relative to a reader is determinable by the reader based on the back scattered signal; wherein each of the antennas, configured and operated in the backscatter manner, scatter the signal back with the same phase offset with a controllable modulation frequency with respect to one another; wherein the functional connection is configured such that individual ones of the antennas are at least one of (i) activated and (ii) deactivated; wherein the antennas, configured and operated in the backscatter manner, each scatter the signal back with the same modulation frequency with a controlled phase offset with respect to one another to successively illuminate different spatial regions via said controlled phase offset; wherein controlling said phase offset between the antennas regulates an angle of directivity; and wherein the physical orientation of the tag is determined based on the angle of directivity. Appeal Br. 10 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Mats et al. (“Mats”) US 9,430,732 B2 Aug. 30, 2016 (filed May 8, 2015) Taki et al. (“Taki”) US 2007/0080787 A1 Apr. 12, 2007 Tuttle US 2008/0238685 A1 Oct. 2, 2008 Gollakota et al. (“Gollakota”) US 2017/0180178 A1 June 22, 2017 (filed Feb. 11, 2015) Appeal 2022-000267 Application 16/097,519 4 REJECTION3 The Examiner rejects claims 14, 21-28, 33, 35, 37, and 38 under 35 U.S.C. § 103 as being unpatentable over Mats, Tuttle, and Gollakota (as well as Taki).4 See Final Act. 2-7. ANALYSIS Appellant argues independent claim 14, independent claim 28, and dependent claims 21-27, 33, 35, 37, and 38 together as a group. See Appeal Br. 9. We select independent claim 14 as representative of Appellant’s arguments with respect to claims 14, 21-28, 33, 35, 37, and 38. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Obviousness Rejection of Claims 14, 21-28, 33, 35, 37, and 38 The Examiner rejects independent claim 14 (as well as independent claim 28 and dependent claims 21-27, 33, 35, 37, and 38) as obvious in view of Mats, Tuttle, Gollakota, and Taki. See Final Act. 3-4; Ans. 3-5. Specifically, the Examiner finds that each of the references teach backscatter signals, antennas used in radio frequency communications, or radio frequency identification (RFID) tags. See Final Act. 3-4; Ans. 4-5. The Examiner relies on Mats to teach backscatter RFID antennas, as well as connecting and disconnecting individual antennas. See Final Act. 3; Ans. 4- 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application has an effective filing after the AIA’s effective date (March 16, 2013), this decision refers to 35 U.S.C. § 103. 4 The Examiner does not list Taki (US 2007/0080787 A1) in the statement of the rejection (see Final Act. 3), but discusses Taki in the substantive rejection (see Final Act. 3-4). We modify the Examiner’s statement of the rejection for clarity and conformity of the record. Appeal 2022-000267 Application 16/097,519 5 5 (citing Mats col. 11, ll. 53-56; col. 14, ll. 4-10; col. 45, ll. 18-25). The Examiner relies on Tuttle for “determining the physical orientation of the transponder by the reader based on the backscatter signal from the transponder.” Final Act. 3 (citing Tuttle ¶¶ 36, 41, 45, 55); see Ans. 5. The Examiner further relies on Gollakota to teach “a transponder with multiple antennas,” each antenna “backscattering [a] signal with a phase offset with respect to one another and the phase offset” being “controllable to successive illuminate different spatial regions via the controlled phase offset.” Final Act. 3 (citing Gollakota ¶¶ 6, 34, 35, 42, 45, 64); see Ans. 5. The Examiner relies on Taki for the additional teachings of “controlling the directivity of the antennas of a RFID tag,” “using the phase offset between antenna to control the directivity,” and “the physical orientation (position) of the tag [being] determined based on the angle of directivity.” Final Act. 3 (citing Gollakota ¶¶ 37, 45, 46, 62, 133); see Ans. 5. The Examiner also provides a rationale for combining Mats, Tuttle, Gollakota, and Taki: that the combination improves functionality of the RFID system-specifically, “increases the functionality of the RFID system by determining the physical orientation of the transponder and [improves] the detection of the backscattered signal by the interrogator.” Final Act. 4. In the Answer, the Examiner explains that backscattering of signals was well-known, and that “the backscattering of signals with the same phase offset represent an obvious variation” in that “the phases of the backscattered signal” must be either the same or be different and may only be chosen from a finite number of possibilities which “represents . . . a finite number of predictable solutions with a reasonable expectation of success.” Ans. 3-4. Appeal 2022-000267 Application 16/097,519 6 Appellant contends that Mats, Tuttle, Gollakota, and Taki do not render claim 14 (or the other pending claims) obvious. See Appeal Br. 4-9; Reply Br. 1-5. Specifically, Appellant contends “claim 14 recites . . . the limitation ‘wherein each of the antennas, configured and operated in the backscatter manner, scatter the signal back with the same phase offset with a controllable modulation frequency with respect to one another’” (Appeal Br. 4-5) and “Matts, Tuttle and Gollakota in combination with Taki fail to teach or suggest at least the above limitation of independent claim 14” (Appeal Br. 6). See Reply Br. 1-2. Appellant also contends that the Examiner’s rationale for combining the references “is merely conclusory” and the “Examiner has provided no reason why the skilled person would seek to modify the teachings” of the references. Appeal Br. 7; see Appeal Br. 7-9; Reply Br. 2-5. Appellant’s arguments do not persuade us that the Examiner erred. We disagree with Appellant’s arguments, find the Examiner has provided a rationale for combining the references, and we provide the following analysis for emphasis. Initially, we note that Appellant does not provide persuasive evidence or argument why the combination of references does not teach or suggest the disputed limitation of claim 14. Appellant does not explicitly dispute the Examiner’s fact-finding with respect to the references or contend that the features the Examiner found in the prior art are not in- fact disclosed therein. Appellant merely contends that the proffered combination does not teach the disputed features-“that the antennas scatter the signal back with the same phase offset via a controlled modulation frequency” and “with the same modulation frequency with a controllable Appeal 2022-000267 Application 16/097,519 7 phase offset with respect to one another” (Reply Br. 1-2). See Appeal Br. 4-6. Appellant’s arguments instead focus on the Examiner’s rationale for combining (or modifying) the references. See Appeal Br. 7-9; Reply Br. 2- 5. Appellant contends that the references themselves do not include a teaching or suggestion to combine the references and that the Examiner relies on hindsight reconstruction for the motivation to modify the references. See Appeal Br. 5, 7-9; Reply Br. 2-5. But the Supreme Court has rejected such a narrow inquiry in determining obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.”). Rather, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claims, for a court can take account of the interferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. It is well settled that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). As to Appellant’s arguments to the sufficiency of the Examiner’s rationale for the combination, a rejection based on obviousness need only be supported by “some articulated reasoning with some rational underpinning” Appeal 2022-000267 Application 16/097,519 8 to combine known elements in the manner required by the claim. KSR, 550 U.S. at 418. Here, the Examiner found that each of the cited references (Mats, Tuttle, Gollakota, and Taki) describe antennas and backscattering. See Final Act. 3-4; Ans. 3-5. Appellant does not dispute the Examiner’s findings that Mats teaches interconnected antennas backscattering a signal, and that Gollakota, Tuttle, and Taki teach additional aspects of the backscattered signal. See Final Act. 3-4; Ans. 3-5. The Examiner determined that such backscattering techniques are well-known and implementing such techniques would have represented a predictable solution with a reasonable expectation of success. See Ans. 3-4. We agree with the Examiner that it would have been within the skill of one of ordinary skill in the art to combine Mats’ RFID system (with interconnected antennas that backscatter a signal) with known backscattering techniques (backscattering a signal with a particular phase offset using a controlled modulation frequency), as taught by Tuttle, Gollakota, and Taki. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Appellant has not presented evidence sufficient to persuade us that combining the respective familiar elements of the cited references in the manner proffered by the Examiner would have been “uniquely challenging or difficult for one of ordinary skill in the art” at the time of Appellant’s invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Appeal 2022-000267 Application 16/097,519 9 Thus, we are not persuaded that the Examiner erred in combining the cited teachings of Mats with those of Tuttle, Gollakota, and Taki. The Examiner provided “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appellant has not identified any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill in the art at the time of invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Nor has Appellant provided objective evidence of secondary considerations, which “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Accordingly, we sustain the Examiner’s obviousness rejection of independent claim 14, independent claim 28 and dependent claims 21-27, 33, 35, 37, and 38 not separately argued with particularity. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION Appellant has not shown that the Examiner erred in rejecting claims 14, 21-28, 33, 35, 37, and 38 under 35 U.S.C. § 103 as obvious in view of Mats, Tuttle, Gollakota, and Taki. We, therefore, affirm the Examiner’s rejection of claims 14, 21-28, 33, 35, 37, and 38. Appeal 2022-000267 Application 16/097,519 10 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14, 21-28, 33, 35, 37, 38 103 Mats, Tuttle, Gollakota, Taki 14, 21-28, 33, 35, 37, 38 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED