DETAILED ACTION
Claim Objections
Claim 17 is objected to because of the following informalities:
It’s unclear when the preamble ends and the body of the claim starts.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Nagano (US 11,509,061) in view of Tanaka (JP2008-111218).
Regarding claim 17, Nagano teaches a system for blocking electromagnetic waves to be equipped on a traffic lane (col. 9, lns. 21-25: “…near automobile road…”) on which an electronic toll collection system (col. 1, lns. 27-40: “…a highway electronic toll collection system (ETC)…”) is formed, wherein the system includes an electromagnetic-waves block structure (Fig. 1), wherein the electromagnetic-wave blocking structure comprises:
a first portion (A in Fig. 1) comprised of a first material consisting of an electric conductor (col. 10, lns. 5-19: “… aluminum foil…”); and
a second portion (C in Fig. 1) comprised of a second material (col. 10, lns. 5-19: “… vinyl chloride resin and titanium oxide…”) having an electrical conductivity smaller than the same of the first material and a corrosion-resistance higher than the first material (vinyl chloride resin and titanium oxide have lower conductivity and higher corrosion-resistance than aluminum foil), the second portion covering therewith at least a part of a surface of the first portion (C cover A as shown in Fig. 1).
Nagano does not explicitly teach wherein the electromagnetic-wave blocking structure formed between the traffic lane and a second traffic lane neighboring the traffic lane, the electromagnetic-wave blocking structure prevents electric waves transmitted from an on-road antenna located above the second traffic lane and reflected from a vehicle driving on the second traffic lane, from reaching an on-road antenna located in the traffic lane; and wherein the electromagnetic-wave blocking structure is in the form of a wall having a height higher than the on-road antenna transmitting electric waves to a vehicle driving on the traffic lane. However, Tanaka teaches a system for blocking electromagnetic waves to be equipped on a traffic lane on which an electronic toll collection system (Fig. 13) is formed, wherein the system includes an electromagnetic-wave blocking structure (25A) formed between the traffic lane and a second traffic lane neighboring the traffic lane (see left lane for V1, V2 and right lane for V3, V4), the electromagnetic-wave blocking structure (25A) prevents electric waves (see waves from both 16G) transmitted from an on-road antenna (antenna on 16G where waves are emitting downward as shown in Fig. 13) located above the second traffic lane and reflected from a vehicle driving on the second traffic lane, from reaching an on-road antenna located in the traffic lane (25A blocks those waves); wherein the electromagnetic-wave blocking structure is in the form of a wall (25A is a wall) having a height higher than the on-road antenna transmitting electric waves to a vehicle driving on the traffic lane (25A clearly higher than 16G as shown in Fig. 13). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the electromagnetic-wave blocking structure formed between the traffic lane and a second traffic lane neighboring the traffic lane, the electromagnetic-wave blocking structure prevents electric waves transmitted from an on-road antenna located above the second traffic lane and reflected from a vehicle driving on the second traffic lane, from reaching an on-road antenna located in the traffic lane; wherein the electromagnetic-wave blocking structure is in the form of a wall having a height higher than the on-road antenna transmitting electric waves to a vehicle driving on the traffic lane in Nagano, as taught by Tanaka, in order to utilize the electromagnetic-wave blocking structure to prevent cross talk between neighboring ETC lanes.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Nagano in view of Tanaka, and further in view of Tsuda (JP2003-123111).
Regarding claim 18, Nagano in view of Tanaka teaches the system as set forth in claim 17. The modified Nagano above does not teach wherein the electromagnetic-wave blocking structure has a length equal to or greater than a length of a large-size vehicle. However, Tsuda teaches an electromagnetic wave blocking structure (11, 13, 14, 15, 16) has a length equal to or greater than a length of a large-size vehicle (11, 13, 14, 15 and 16 all shown to have greater length than the length of vehicles 3a, 3b in Figs. 1, 4, 7, 8 and 10). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the electromagnetic-wave blocking structure has a length equal to or greater than a length of a large-size vehicle in Nagano in view of Tanaka, as taught by Tsuda, in order to prevent waves from the on-road antenna to leak to vehicle in the adjacent lane.
Response to Arguments
Applicant's arguments with respect to claims 17-18 have been considered but are moot in view of the new ground(s) of rejection. Applicant made the following argument:
Applicant alleges, regarding Tanaka, that Tanaka does not disclose nor suggest a wall having a height higher than the on-road antenna. Amended claim 17 explicitly requires: "the electromagnetic-wave blocking structure is in the form of a wall having a height higher than the on-road antenna transmitting electric waves to a vehicle driving on the traffic lane." Tanaka is completely silent about the height of walls 15, 25A, or 30 relative to any antenna. Tanaka does not identify any antenna height, nor does it describe any design requirement that the wall must exceed the antenna height. In the Office Action, the Examiner relies solely on FIG. 13. However, FIG. 13 is a schematic illustration, not a scale drawing, and Tanaka does not characterize wall 25A as being higher than antenna 16G. The Federal Circuit has held that drawings cannot be relied upon to establish specific dimensional relationships when the specification is silent. Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). Thus, Applicant respectfully asserts that Tanaka provides no disclosure or suggestion of the height limitation recited in claim 17 (Response at pg. 10).
Examiner directs Applicant’s attention to cropped Fig. 13 of Tanaka below.
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The height of 25A clearly show to be at or near the ceiling of toll gate, which is higher than 16G. Note even the on-road antenna is clearly shown to be below the top most part of 16G. Note that Applicant did not explain that on-road antenna cannot be “higher” than the wall 25A in Tanaka. Note that drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). One of ordinary skill in the art would not misinterpret the height difference shown in Tanaka’s Fig. 13. Thus, examiner respectfully disagree with Applicant’s argument.
Applicant alleges, regarding Tanaka, that Tanaka's Figures (FIG. 8, FIG. 13, FIG. 14) confirm that none of the disclosed walls (15, 25A, 30) are described as exceeding the height of any on-road antenna. Furthermore, Tanaka's figures confirm that none of the disclosed walls (15, 25A, 30) are described as having a height exceeding any on-road antenna. In FIG. 8 of Tanaka, wall 15 is expressly characterized as a transparent wall, and Tanaka provides no disclosure suggesting that wall 15 is higher than any antenna (Tanaka does not even assign a reference number to an antenna in FIG. 8). In FIG. 13, Tanaka describes the system as being characterized by an electric wave absorber 20 obliquely extending from roof TG. Wall 25A merely supports absorber 20 and is never defined to be higher than an on-road antenna. In FIG. 14, wall 30 is described as a structure in which a plurality of electric wave absorbers 26 horizontally extend between posts 31. Again, Tanaka provides no disclosure that wall 30 exceeds the height of any antenna. Critically, Tanaka never addresses the ETC malfunction caused by electric waves transmitted from the second on-road antenna (210A), reflected from a vehicle (252) in the second lane (202), and then reaching the first on-road antenna (210) in the first lane (201). Because Tanaka does not recognize this cross-lane interference problem, Tanaka has no reason to define or require any wall height relative to an antenna. Accordingly, Tanaka cannot provide any teaching, suggestion, or motivation to modify any of its walls (15, 25A, 30) so that they would be higher than an on-road antenna, as required by amended claim 17 (response at pg. 11).
Examiner did not use embodiment in Fig. 8 and Fig. 14, so the argument is moot. Examiner directs Applicant’s attention to Tanka’s specification regarding Fig. 13, which specifically recites that “As shown in FIG. 13, two ETC gates 16G are installed next to each other at the toll gate TG on the highway. The electromagnetic wave / sound absorbing structure 25A according to the second modification of the fourth embodiment is installed between the two ETC gates 16G and functions to prevent radio wave crosstalk”. Tanaka explicitly teaches about preventing cross talk as the motivation, which one of ordinary skill in the art would also recognize that the larger/higher the structure 25A is, the more cross talk can be confidently prevented between the two lanes. Thus, examiner respectfully disagrees with Applicant’s argument.
Applicant also alleges that Tanaka addresses a fundamentally different technical problem and therefore cannot provide a motivation to modify Nagano.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Tanaka clearly teaches how to prevent cross talk between two traffic lanes, thus, there is motivation to modify Nagano.
Applicant further alleges that Tanaka teaches away from the claimed invention. Claim 17 requires a blocking wall formed of:
. a conductive first portion (110),
. a corrosion-resistant second portion (120),
. optionally grounded via wire (130).
In contrast, Tanaka's walls (15, 25A, 30) are:
. supports for absorbers,
. not conductive,
. not corrosion-resistant layered structures,
. not grounded,
. not designed to block waves.
Therefore, Tanaka's absorptive system teaches away from using a conductive blocking wall. Teaching away precludes obviousness. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (Response at pg. 12).
In response to applicant's argument that Tanaka’s absorptive system teaches away from using a conductive blocking wall, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed 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. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Examiner did not bodily incorporate the material of Tanaka. Examiner merely use layout placement of Tanaka in order to prevent cross talk between two traffic lanes. Thus, Examiner respectfully disagrees with Applicant’s argument.
Applicant further alleges that Nagano's structure cannot reasonably be scaled or repurposed into the claimed wall. Nagano discloses nothing more than a small-scale shielding laminate, an aluminum foil layer combined with a resin layer, intended for use in electronic devices. Its teaching is confined to compact electromagnetic-shielding materials and contains no suggestion that such a laminate could be adapted into a large, free-standing wall structure. Nothing in Nagano indicates that its shielding laminate could be enlarged to the dimensions required for a traffic-lane wall, nor does Nagano address any relationship between the shielding material and the height of an on-road antenna. Likewise, Nagano is completely silent about the specific ETC cross-lane interference problem addressed by claim 17, and Nagano provides no teaching of a conductive first portion combined with a corrosion-resistant second portion configured as a layered wall. In addition, the Examiner has not articulated any reason why a person of ordinary skill in the art would consider transforming Nagano's compact laminate into a large wall positioned between traffic lanes. Such a person would have no rational motivation to discard Tanaka's absorbers, redesign Tanaka's wall so that it exceeds the height of an on-road antenna, and then apply Nagano's laminate, originally intended for electronic devices, to a traffic-lane wall. The Examiner's proposed modification requires a sequence of redesign steps that are unsupported by any teaching in the cited references and would not naturally occur to a skilled artisan. The resulting construction is therefore a product of hindsight reconstruction rather than a combination grounded in the teachings of the prior art (response at pg. 13).
Examiner direct Applicant’s attention to Nagano col. 9, lns. 2-25, which clearly states that “Specific examples that may be mentioned include articles and structures near automobile roads, such as median strips, tunnel walls, sound insulation walls, noise control walls, road signs, guard rails, road reflection mirrors, telephone poles, traffic lights, traffic signs, roadside trees and road lighting poles.” Nagano clearly disclose large scale usage of the invention to roads and walls, and nowhere in the specification limits Nagano’s invention to only be used in small electronic devices, thus, examiner respectfully disagrees.
Lastly, applicant alleges that Tsuda does not cure the deficiencies of Nagano or Tanaka (Response at pg. 13).
As mentioned in above response, Nagano in view of Tanaka does teach all the limitation in claim 17. Thus, examiner respectfully disagrees with Applicant’s argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES WU whose telephone number is (571)270-7974. The examiner can normally be reached Monday - Friday, 9:00AM - 5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allen Parker can be reached at (303)297-4722. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES WU/Primary Examiner, Art Unit 2841
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