Sony Corporation et al.

Patent Trials and Appeals Board

Sep 11, 2020

2019003627 (P.T.A.B. Sep. 11, 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.
15/085,329 03/30/2016 Peter Ljung 1358-537TSCT/
PS11 1343US2
3572
54414 7590 09/11/2020
MYERS BIGEL, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
PREVIL, DANIEL
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
09/11/2020 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):
myersbigel_pair@firsttofile.com
uspto@myersbigel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER LJUNG and JOHAN WADMAN
Appeal 2019-003627
Application 15/085,329
Technology Center 2600
Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
IRVIN E. BRANCH, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 2, 5, 7–9, 11–14, 18–22, 24–29, and
31–38. See Final Act. 1. Claims 3, 4, 6, 10, 15–17, 23, and 30 are canceled.

1 We refer to the Specification, filed March 30, 2016 (“Spec.”); Final Office
Action, mailed June 27, 2018 (“Final Act.”); Appeal Brief, filed November
26, 2018 (“Appeal Br.”); Examiner’s Answer, mailed February 5, 2019
(“Ans.”); and the Reply Brief, filed April 4, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Sony Corporation.
Appeal Br. 1.
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Application 15/085,329
2
Appeal Br. 11–15 (Claims Appendix). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.
PRIOR APPEAL
This Application is a continuation of U.S. Patent Application
13/818,479 that was subject to prior appeal 2018-005425, decided on June 5,
2019 (our “prior Decision”), in which the Board affirmed in part the
Examiner’s rejections of the claims then pending in that parent application.
CLAIMED SUBJECT MATTER
The claims are directed to detecting a tag having a sensor associated
therewith and receiving sensor information therefrom. Spec., Title. Claim
1, reproduced below with a disputed limitation emphasized in italics, is
illustrative of the claimed subject matter:
1. A method of operating an electronic device, comprising:
detecting, using a tag reader circuit, a tag having a sensor
associated with the tag, the tag being configured to communicate
with the sensor to receive sensor information from the sensor and
being further configured to transmit information over a defined
distance using a short range wireless protocol via a
communication link;
receiving, via the tag reader circuit, the sensor information
transmitted by the tag over the communication link; and
sending the sensor information to an application server;
wherein the sensor information comprises authentication
information that identifies a person.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gray US 2005/0145187 A1 July 7, 2005
Brown US 2009/0121890 A1 May 14, 2009
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REJECTION
Claims 1, 2, 5, 7–9, 11–14, 18–22, 24–29, and 31–38 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Gray and
Brown. Final Act. 2–6.
STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
OPINION
Claim 1
Examiner’s Findings
The Examiner finds Gray’s livestock asset management system
teaches or suggests all limitations of claim 1 except for the disputed
limitation of the sensor information comprising authentication information
that identifies a person. Final Act. 2–3. The Examiner finds Brown’s
personal digital key (PDK) that provides information to authenticate a user
to a sensor (i.e., information for comparison with biometric information
collected by the sensor or individual biometric information obtained by a
sensor on the PDK (see Spec. 27, ll. 3–21)) teaches or suggests the disputed
limitation. Id. at 3, see also Appeal Br. 6 (summarizing Brown). The
Examiner reasons it would have been obvious to incorporate Brown’s
authentication information into the information collection methodology
taught by Gray’s livestock asset management system “in order to facilitate
rapid communications to control access to resources and to authenticate
individuals thereby increasing the reliability of the system.” Id.
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Appellant’s Contentions and Examiner’s Response
Appellant contends the combination of Gray and Brown is improper,
arguing “there is no objective reason why one would modify Gray’s
livestock management system to incorporate Brown’s biometric
authentication capability for humans.” Appeal Br. 8. According to
Appellant, the combination would result in “modifying Gray’s electronic ear
tag 14, which is shown in FIG 3 of Gray as attached to the ear of an animal,
to include the functionality of Brown’s sensor 108 that can receive biometric
information from a person to authenticate that person.” Id. Appellant
contends such a modification is not appropriate, arguing:
Modifying Gray’s electronic ear tag 14 to incorporate the input
of human biometric information, such as a fingerprint or palm
reader, retinal scan unit, photograph reader, voice analyzer, or
the like would appear to only increase the complexity and cost of
the electronic ear tag 14 with the benefit being the ability to
authenticate an individual who happens to be standing next to an
animal. Moreover, Gray’s livestock management system is
designed to address the management of livestock in the open
range where there is a lack of workers to monitor the livestock.
(Gray, paragraphs 4 and 5). Thus, Gray’s monitoring system is
not typically used where there is a person attending to the animal
directly, such as a veterinarian, rancher, or the like. The Final
Action does not provide any reasoning with respect to why a
livestock owner would be concerned with the identities of people
who are standing next to particular animals.
Id. (emphasis omitted).
The Examiner responds, explaining, although Gray is directed to
collecting information about individual animals using RFID tags attached to
livestock, Brown determines the location of an RFID tag attached to an
object carried by a person. Ans. 4. According the Examiner, the
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combination of Gray and Brown is proper for the reasons provided in the
Final Act. Id.
Appellant replies, again arguing the Examiner’s reasoning for
combining the teachings of Gray and Brown is inadequate to support the
rejection. According to Appellant because Gray’s system collects biometric
data on livestock “[t]he Examiner’s Answer’s alleged benefit of facilitating
rapid communication to control access to resources seems entirely unrelated
to modifying Gray’s livestock ear tags to authenticate a person next to an
animal.” Reply Br. 3. Appellant further questions “[h]ow . . . the reliability
of the system [is] improved by increasing the complexity of Gray’s ear tag
14 to incorporate Brown’s sensor 108 functionality to authenticate persons.”
Id.
Analysis
Appellant’s contentions are unpersuasive of reversible Examiner
error. Initially, as a matter of claim interpretation, the disputed limitation
requiring the sensor information comprise authentication information that
identifies a person merely specifies the content of the sensor information
that, for the reasons discussed below, constitutes non-functional descriptive
material that is not afforded patentable weight. Furthermore, Appellant’s
argument is unpersuasive as premised on the bodily incorporation of a
specific embodiment of one reference into another reference rather than
what the combination of references would have taught or suggested to one
skilled in the relevant art.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
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2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.”’) (citations omitted); see also Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information
being manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process.”); Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative), aff'd, 191 F. App'x 959 (Fed. Cir.
2006) (“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff'd, No.
2006-1003 (Fed. Cir. June 12, 2006) (Rule 36) (“Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious.”). Although we do not disregard any claim limitations and
assess the claimed invention as a whole, we follow the Federal Circuit’s
guidance from the Gulack decision and will “not give patentable weight to
printed matter absent a new and unobvious functional relationship between
the printed matter and the substrate.” In re Lowry, 32 F.3d 1579, 1582 (Fed.
Cir. 1994) (discussing Gulack). Here, we consider that the claimed “sensor
information [that] comprises authentication information that identifies a
person” is directed to nonfunctional descriptive material that should not be
given patentable weight.
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“The first step of the printed matter analysis is the determination that
the limitation in question is in fact directed toward printed matter.” In re
Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if
it is “claimed for what it communicates.” Id. at 850. The disputed limitation
of claim 1 (that the sensor information comprises authentication information
that identifies a person) pertains to the ability of the electronic device to
receive and transmit a signal with specific content.3 Therefore, the disputed
claim limitation is directed to printed matter. See id. at 848 (A claim
limitation is directed to printed matter “if it claims the content of
information.”).
If a claim in a patent application claims printed material, “one must
then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is ‘no’ is the printed
matter owed no patentable weight.” Distefano, 808 F.3d at 851. Here, the
claimed sensor information is not interrelated or explicitly used in the claim
such as by the electronic device using the received sensor information to
authenticate or identify a person.4 Rather, the sensor information is not
functionally distinct from any other information that is received or sent.
Therefore, we find the disputed claim limitation constitutes nonfunctional
descriptive material and is not entitled to patentable weight. This is
analogous to Curry, where the type of data was found to be nonfunctional
descriptive material when it “does not functionally change either the data

3 We note claim 1 does not require the tag from which the sensor
information is received to include a particular sensor that is particularly
configured to sense authentication information and, in any case, claim 1 is
directed to a method of operating the electronic device and not the tag.
4 See n. 3
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storage system or communication system used in the method of claim 81.”
Ex parte Curry, 84 USPQ2d at 1274.
As recognized in Curry, “if the prior art suggests storing a song on a
disk, merely choosing a particular song to store on the disk would be
presumed to be well within the level of ordinary skill in the art at the time
the invention was made.” Id. at 1275. Choosing the content of the sensor
information that the claimed electronic device is able to receive and transmit
is no different, in that the content of the communication does not alter the
structure or functionality of the claimed electronic device.
Because the content of the sensor information specified by the
disputed limitation constitutes nonfunctional descriptive material, the
particular type of information (i.e., sensor information comprising
authentication information that identifies a person) recited in claim 1 is not
entitled to patentable weight. Accordingly, Appellant’s argument is not
commensurate in scope with claim 1.
Furthermore, because Brown is relied upon only for teaching a claim
element that is not entitled to patentable weight, application of the Brown
reference is unnecessary to support the rejection. Instead, Gray standing
alone anticipates claim 1 by disclosing all limitations entitled to patentable
weight. Although “novelty under 35 U.S.C. § 102 and nonobviousness
under 35 U.S.C. § 103 are separate conditions for patentability,”
“anticipation is the ‘epitome of obviousness.’” Cohesive Techs., Inc. v.
Waters Corp., 543 F.3d 1351, 1363 (Fed. Cir. 2008) (quoting In re Kalm,
378 F.2d 959, 962 (CCPA 1967)); see also In re McDaniel, 293 F.3d 1379,
1385 (Fed. Cir. 2002); In re Baxter Travenol Laboratories, 952 F.2d 388,
391 (Fed. Cir. 1991); In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). The
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elimination of the need for Brown to support the rejection also eliminates the
requirement to provide a reason for making the combination. Accordingly,
Appellant’s contention that the combination of Gray and Brown is improper
(Appeal Br. 8) is immaterial and, accordingly, unpersuasive.
In any case, Appellant’s argument is substantively flawed because it
presumes modification of Gray’s livestock monitoring system by extending
the system using ear tags attached to livestock to additionally collect sensor
authentication information that identifies a person, such as an individual
positioned near the livestock. See, e.g., Appeal Br. 8 (“The Final Action
does not provide any reasoning with respect to why a livestock owner would
be concerned with the identities of people who are standing next to
particular animals.”). What Appellant argues, in effect, is that Gray’s
teachings are limited to Gray’s proposed use and would not be applicable to
a system used to provide information (i.e., authentication information) for a
person rather than livestock. For example, Appellant argues the
combination of Gray and Brown would result in an RFID ear tag attached
livestock rather than, as Brown teaches, an RFID tag attached to an object
carried by a person, e.g. Brown’s personal digital key. Thus, such argument
is unpersuasive because it relies on the wholesale incorporation/combination
of structures rather than what the combination of Gray and Brown fairly
teaches or suggests, including the substitution of Brown’s personal digital
key for use with people in place of Gray’s ear tag for monitoring livestock.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference;[5]nor is it that the claimed

5 We interpret the court’s holding to apply without regard to which reference
is characterized as a primary reference and which a secondary reference.
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invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). The 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). Furthermore, the
skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle” because the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420–21.
We are unpersuaded Gray’s system is limited to monitoring livestock
using ear tags. The Examiner applies Brown for teaching monitoring the
location of a personal digital key carried by a person such that the
combination of Gray and Brown teaches a tag (e.g., an RFID tag) carried by
a person. We find insufficient evidence to persuade us that one skilled in the
art would limit Gray’s teachings to use in monitoring livestock or would
only consider using RFID tags in the form of ear tags attached to livestock
and would not apply those teachings to other environments including people

The Federal Circuit has held that characterization of a reference as being a
“primary” or “secondary” reference in an obviousness rejection is not
controlling. See In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (“But
where the relevant factual inquiries underlying an obviousness determination
are otherwise clear, characterization by the examiner of prior art as
‘primary’ and ‘secondary’ is merely a matter of presentation with no legal
significance.”); see also In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“we
deem it to be of no significance, but merely a matter of exposition, that the
rejection is stated to be on A in view of B instead of on B in view of A, or to
term one reference primary and the other secondary”).
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as taught by Brown. Instead, “[a] reference may be read for all that it
teaches, including uses beyond its primary purpose.” See In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012). As our reviewing court has repeatedly
held, “[a] reference must be considered for everything that it teaches, not
simply the described invention or a preferred embodiment.” In re Applied
Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (citing EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985)). Thus, one of
ordinary skill in the art, viewing Gray and Brown, as well as the knowledge
of one of ordinary skill in the art of electronic tracking and monitoring,
would have found obvious the method of providing authentication
information identifying a person set forth in claim 1.
We are also unpersuaded by Appellant’s argument the Examiner has
failed to provide sufficient reasoning to combine Gray and Brown in support
of a conclusion of obviousness. As discussed above, the disputed limitation
requiring authentication information identifying a person constitutes
nonfunctional descriptive material that is not entitled to patentable weight.
In such case, there is no need to apply Brown’s teachings in rejecting the
claims. Even if otherwise, Appellant’s contention the combination is
improper is based on argument that the combination of Gray and Brown
results in RFID tags attached to livestock using ear tags. Instead, as
discussed above, applying Brown’s teaching, an RFID tag is attached to an
object carried by a person, such as Brown’s personal digital key. Thus, as
explained by the Examiner (Final Act. 3, Ans. 4), Brown’s authentication
would be enhanced by using Gray’s method of communications. See, e.g.,
Gray ¶ 8 (“An object of the present invention is to provide an effective
automated data collection and database management methodology . . .
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including effective communication and sharing of data.”). Conversely,
Brown discloses attaching tags to people to provide tracking “used to better
understand their behavior.” Brown ¶ 6. Accordingly, there is also reasoning
for modifying Gray to incorporate Brown’s tracking of a person using a tag
attached to an object carried by the person. In contrast, Appellant fails to
persuade us that combining Gray’s communication system with Brown’s
authentication information would not leverage Gray’s rapid communication
with Brown’s authentication to provide enhanced communication of sensor
information. Thus, we find the Examiner has articulated reasoning with
rational underpinnings sufficient to justify the legal conclusion of
obviousness. Final Act. 3, Ans. 4. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds . . . must [include] . . . some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”), cited with approval in KSR, 550 U.S. at 418.
For the reasons discussed above, Appellant’s contentions are
unpersuasive of Examiner error in connection with the rejection of
independent claim 1. Independent claims 19 and 26 are argued together with
claim 1. Appeal Br. 8. Accordingly, we sustain the rejection of independent
claims 1, 19, and 26 under 35 U.S.C. 103(a) together with the rejection of
dependent claims 2, 5, 7–9, 13, 14, 18, 20–24, 27–29, 31, and 33–37 that are
not argued separately with particularity.
Claim 11
Claim 11 depends from claim 5 that, in turn, depends from
independent claim 1. Thus, claim 11 further limits claim 1 by requiring, per
claim 5, a step of sending a message to the tag to and, in response to the tag
being placed in a bi-directional communication mode, per claim 11, change
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an operation of the sensor associated with the tag and/or a transmission
behavior of the tag. The Examiner finds the disputed limitation of changing
an operation of the sensor associated with the tag or a transmission behavior
of the tag is taught by the disclosure at paragraph 77 of Gray. Final Act. 4,
Ans. 5. Appellant disputes the Examiner’s finding, arguing “[p]aragraph 77
of Gray describes the architecture of the animal tag reader 14 without any
description of changing the operational behavior of a sensor and/or the
operational behavior of RFID tag 24 based on a message from the animal tag
reader 14 to the RFID tag 24.” Appeal Br. 9.
We agree with Appellant that the cited portion of Brown fails to
address either changing operation of the sensor or a transmission behavior in
response to being placed in a bi-directional communication mode.
Accordingly, Appellant’s argument is persuasive of reversible Examiner and
we do not sustain the rejection of claim 11.
Claim 12
Claim 12 depends from claim 5 that, in turn, depends from
independent claim 1. Thus, claim 12 further limits claim 1 by requiring, per
claim 5, a step of sending a message to the tag to, per claim 12, update
firmware associated with the tag. As in the rejection of claim 11, the
Examiner again cites paragraph 77 of Gray for teaching the limitations of
claim 12. Final Act. 4, Ans. 5. Similarly, Appellant contends paragraph 77
of Gray fails to teach the recited limitation. Appeal Br. 9. We again agree
with Appellant and, accordingly do not sustain the rejection of claim 12.
Claims 25 and 32
Claim 25 recites
25. The electronic device according to claim 19, wherein the
sensor information is information related to at least one of
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tracking of entrance through doors, on/off detection of kitchen
appliances, light detection and power meter monitoring.
The Examiner finds Gray’s disclosure that electronic module 44 is
supplied with operating power by an electrical power supply that can be
recharged during daylight by a solar power source teaches the light detection
and power meter monitoring recited by claim 25. Final Act. 5, Ans. 6.
Appellant argues “Gray does not provide any description of collecting
sensor information related to entrance through doors/on/off detection of
kitchen appliances, light detection, and power meter monitoring.” Appeal
Br. 10.
As discussed above in connection with claim 1, the content of the
sensor information provided by the tag, in context of the claimed electronic
device, constitutes nonfunctional descriptive material. Accordingly,
Appellant’s argument is not commensurate in scope with claim 25 and we
sustain the rejection of claim 25 together with the rejection of claim 32 that
is argued together with claim 25.
CONCLUSION
We reverse the Examiner’s rejection of claims 11 and 12 under 35
U.S.C. § 103(a).
We affirm the Examiner’s rejection of claims 1, 2, 5, 7–9, 13, 14, 18–
22, 24–29, and 31–38 under 35 U.S.C. § 103(a).

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DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5, 7–9,
11–14, 18–
22, 24–29,
31–38
103(a) Gray, Brown 1, 2, 5, 7–9,
13, 14, 18–
22, 24–29,
31–38
11, 12
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 IN PART