Chadra Laboratories LLC - [2022] APO 1

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Chadra Laboratories LLC [2022] APO 1
Patent Application: 2020201388

Title:Multi-interface transponder device

Patent Applicant: Chadra Laboratories LLC

Delegate:R Subbarayan

Decision Date: 04 January 2022

Hearing Date: Written submissions filed on 22 November 2021

Catchwords: PATENTS - examiner objections – whether claims lack inventive step – examiner’s objection cannot be sustained – additional highly relevant prior art found – application referred back to examination section for further search and examination

Representation: Patent attorney for the applicant: FPA Patent Attorneys Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2020201388

Title:Multi-interface transponder device

Patent Applicant: Chadra Laboratories LLC
Date of Decision: 04 January 2022
DECISION

The claimed invention does not lack an inventive step over D2. The examiner’s objection taken in the third report cannot be sustained.
It appears that there may be other highly relevant prior art that has not been cited. Application is therefore remitted back to the examination section for further search and examination.
Pursuant to sub-regulation 13.4(3), the final date to gain acceptance is set at four (4) months from the date of this decision.
REASONS FOR DECISION
BACKGROUND

Patent application AU 2020201388 in the name of Chadra Laboratories LLC (the “applicant”) was filed on 26 February 2020 and claims an earlier priority date of 26 February 2019. A request for examination accompanied the patent filing.
A first examination report issued on 26 August 2020 with objections under the grounds of novelty and inventive step based on prior art documents D1-D7.
The applicant responded on 17 November 2020 with a first statement of proposed amendments that included a new set of claims which the applicant submitted overcomes the objections raised in the examination report.
A second examination report issued on 7 December 2020 with objections under the ground of inventive step based on prior art documents D1-D6.
The applicant responded on 27 May 2021 with submissions rebutting the inventive step objection.
A third examination report issued on 11 June 2021 maintaining the inventive step objection based only on document D2.
The applicant responded on 20 August 2021 with submissions rebutting the inventive step objection.
The applicant was advised that there was insufficient time for the examiner to consider the response as the final date for acceptance was 26 August 2021.
On 24 August 2021, the applicant filed a request to be heard in relation to the outstanding examiner’s objection.
APPLICABLE LAW
The present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Thus, the standard of proof that applies in the present case is the balance of probabilities (subsection 49(1)). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
SPECIFICATION
The present invention relates to multi-interface transponder (MIT) devices, such as positional tags or tracking devices for locating the position of people or objects. These devices are typically attached to a person or object and communicate with a companion device such as a phone or computer to update its location and this can help with recovery if the person or object goes missing or is lost.
The specification notes that there are certain drawbacks with known tracking devices.
[0004] Traditional positional tags (or tracking devices) and corresponding systems typically suffer from one or more disadvantages. For example, communicating with a positional tag outside of near field communications requires, relative to the form factor, a considerable amount of power. Thus, battery life of positional tags is often limited. In addition, long-range communication for such a device is relatively expensive and often requires sophisticated circuitry for operating in connection with an associated electronic device (e.g., a mobile device). Additionally, low-power options for positional tags are often limited to communicating with nearby objects that may require a user associated with the tracking device(s) to be within a close proximity (e.g., near field) of the positional tags, limiting the usefulness of such devices.
The present invention seeks to overcome these drawbacks. Several embodiments of the invention are described. One of the embodiments that is relevant to the claimed invention is described with reference to figures 1 and 4 that are reproduced below.
Figure 4 shows a block diagram of a positional tag device (108). The device (108) comprises power supply (425), processor (402), memory (406, 450, 410), communication radio circuity (451) comprising first and second radio interfaces, antennae (457, 458) for communicating with a companion device and motion sensing circuitry (470) for detecting motion of the device. The device is configured to operate in two or more power modes, such as a low power mode, ultra-low power mode, high power mode and ultra-high power mode and can transition between these modes based on factors such as received signals, sensor data, timing data, environmental data, activity data, location data, etc. The radio interfaces can be a Bluetooth radio, an ultra-wide band radio or an ultra-low power radio.
The positional tag device is configured to communicate wirelessly with one or more neighbouring wireless devices and/or a companion device. The neighbouring wireless device may be a smart phone, a hand-held device, a laptop computer, a smart watch or a tablet. The companion device could be an Access Point (AP) (112), client stations (106) or wireless nodes (107). The wireless communication could use any of a variety of wireless communication techniques including WLAN, WiFi, Bluetooth and NFC. An example of such a wireless communication system is shown in figure 1.
In use, the tracking device will generally operate in a low or ultra-low power mode until a first triggering event such as a wake-up signal/beacon from a neighbouring or companion device is received through the first radio interface. On being triggered, the device will switch to a higher power mode and start transmitting beacons over the second radio interface. The beacon interval and number of beacons transmitted is chosen so as to conserve power or to increase the probability of discovery. At least one of the beacons may be received by a companion device which will then exchange communications with the tracking device and also update a location server with an updated location of the tracking device. The tracking device will return back to a low power mode once a second trigger condition such as establishing contact with the companion device, a successful location update operation or detecting an associated device in proximity has been satisfied.
The device may also determine that it is lost based on factors such as a duration of time since a last communication with a companion device or duration of time since a location update and enter a lost mode of operation in which it starts transmitting beacons to enable discovery. In the lost mode, the device may alter its transmission power and/or transmission rates to further conserve battery power and/or increase the probability of discovery.
The claims as proposed to be amended includes 19 claims of which the independent claims 1, 12 and 16 are as follows.
1. A multi-interface transponder (MIT) device, comprising:
a first radio comprising circuitry supporting a first radio access technology (RAT);
a second radio comprising circuitry supporting a second RAT; and
one or more processors coupled to the first radio and the second radio;
wherein the one or more processors are configured to cause the MIT device to:
enter a low power mode in which the second radio is disabled;
receive, while in the low power mode, a wake-up signal from a neighboring wireless device;
transmit, after transitioning to a higher power mode in response to receipt of the wake-up signal, beacons via the second radio, wherein the second radio is enabled in the higher power mode;
determine a first condition of the MIT device based, at least in part, on a duration of time since communication with a companion device; and
transition to a lost mode of operation based on the first condition.
12. An apparatus comprising:
a memory; and
at least one processor in communication with the memory; wherein the at least one processor is configured to:
operate in a low power mode in which an ultra-wide band (UWB) radio in communication with the at least one processor is disabled;
receive, while operating in the low power mode, a wake-up signal from a neighboring wireless device;
generate instructions to transition out of the low power mode and enable the UWB radio in response to receipt of the wake-up signal;
generate instructions to transmit, via the UWB radio, location beacons to the neighboring wireless device;
determine a first condition of the apparatus, at least in part, on a duration of time since communication with a companion device; and
transition to a lost mode of operation based on the first condition.
16. A non-transitory computer readable memory medium storing program instructions executable by processing circuitry of a multi-interface transponder (MIT) device to:
operate in a low power mode in which an ultra-wide band (UWB) radio of the MIT device is deactivated;
receive, while operating in the low power mode, a wake-up signal from a neighboring wireless device;
transmit, after transitioning to a higher power mode in response to receipt of the wake-up signal, location beacons via the UWB radio, wherein the UWB radio is activated as part of the transition to the higher power mode;
determine a first condition of the MIT device based, at least in part, on a duration of time since communication with a companion device; and
transition to a lost mode of operation based on the first condition.
INVENTIVE STEP
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.” (Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286)
Problem to be solved
As discussed earlier the specification at paragraph [0004] notes that known tracking devices have certain drawbacks such as high-power requirements for communicating with neighbouring devices, limited battery life as a consequence and expenses associated with sophisticated circuitry.
It is readily apparent from the power mode transitioning features of the claimed invention that it is directed to addressing these power management problems.
Although not explicitly stated as a problem in the specification, it is clear that the amended independent claims are also addressing a problem of how to automatically transition a tracking device into a lost mode so that it may then initiate a beacon so as to alert a companion device that the person or object carrying the tracking device is lost. It is also important to note that this problem is quite distinct from the power management problem that is discussed in the specification. Therefore, the claimed invention seeks to address two distinct problems.
(D2) EP 1441235
This is the only prior art document that the examiner has cited in the third report in support of the objection on the ground of inventive step.
D2 is titled “Location System” and relates to a locating system for determining the location of an object or person. It comprises a remote device 3 for attaching to an object for enabling the object to be detected using a mobile tracking device 5.
The most relevant disclosures in D2 pertaining to the claimed invention are as follows:
“[0010] Figure 1 shows an overview of the locating system according to the present invention. A device to be protected, for example a laptop computer 1, carries a remote device 3 for enabling the location of the computer 1 to be determined. The remote device 3 comprises two forms of location detecting circuitry.
[0011] First, the remote device 3 comprises cellular communication means for enabling the position of the computer 1 to be located to within a first area 4 using signals received by base stations 7 of a cellular communications network 9. For example, if triangulation techniques are used, the computer 1 can be located to within an area of approximately 200 square metres.
[0012] The remote device 3 also comprises a radio beacon. Thus, once the position of the computer 1 has been located to within the first area 4 using the cellular communication means, the position of the computer 1 within the first area 4 is then determined using the signal emitted by the radio beacon. The signal emitted by the
radio beacon of the remote device 3 is detected using a mobile tracking device 5”.
“[0015] As mentioned above, the remote device 3 comprises cellular communication means 21 for enabling the position of the remote device 3 to be determined within a first area 4. Preferably the cellular communication means 21 is a cellular transceiver, but it will be readily evident to a person skilled in the art that the invention only requires the use of a cellular transmitter in order to operate in its basic form, i.e. to enable the location information to be determined by the cellular communications network 9.
[0016] The remote device 3 also comprises a radio beacon 23. Once the operator of the mobile tracking device 5 is within the vicinity of the first area 4, the signal transmitted by the radio beacon 23 is used to detect the location of the remote device 3. Preferably the radio beacon 23 operates at a frequency which is different from the operating frequency of the cellular transmitter, thereby avoiding the need to transmit on the cellular frequency band”.
“[0019] Operation of the remote device 3 is controlled by a controller 27, for example a microprocessor. The remote device 3 is self-powered by an integral battery 28.
[0020] Preferably, the remote device 3 also comprises a paging unit 25 for allowing the remote device 3 to be activated or deactivated from a remote location. The paging unit 25 detects a specific signal in a transmission from the communications network 9. The paging unit 25 allows the invention to overcome problems associated
with the prior art, in which the detection circuitry must be permanently powered in case of a theft. The provision of a paging unit 25 enables the remote device 3 to remain in a "sleep mode" during normal use of the computer 1. However, when the computer 1 is stolen, the cellular communications network 9 can be used to send a paging signal to the paging unit 25, causing the remote device 3 to change from the sleep mode into an active mode. Once in the active mode, the controller 27 powers
the transmitter of the cellular transceiver 21, thereby enabling the location of the remote device 3 (and hence the computer 1) to be determined by the communications network 9.
[0021] As mentioned above, a paging signal can be sent from the communications network 9 to the paging unit 25 in response to an operator being informed of the theft. Alternatively, the transmitter of the cellular transceiver 21 can be powered automatically in response to the computer being stolen, for example in response to a trip switch being activated, or the computer being unplugged from its main power supply”.
“[0030] The cellular communication means 35 of the mobile tracking unit 5 can also be used to transfer information from the operator to the communications network 9. For example, the cellular communication means 35 can be used by the operator to inform the communications network 9 that the mobile tracking device 5 is within the vicinity of the first area 4. Using this information, the communications network 9 can be used to send a paging signal to the remote device 3, instructing the remote device 3 to activate its radio beacon. The operator is then able to use the mobile tracking device 5 to home in on the location of the remote device 3, and hence the computer 1.
[0031] It is noted that communication via the communications network 9 can be transparent to the extent that the location system appears to operate under the sole control of the operator of the mobile tracking device 5. Signals sent from the mobile tracking device 5 can therefore be used to control the remote device 3. This is made possible, for example, by offering the service as a special service on a Service Switching Point of the communications network 9”.
The Examiner’s Objection
The examiner has asserted in the third report that the claimed invention lacks an inventive step over D2 as the feature of transitioning to a ‘lost mode’ of operation based on a duration of time since communication with a companion device is well-known in the art and it would have been obvious to incorporate this feature in the disclosure of D2.
“As I have mentioned before, the missing feature would have been obvious to a personal (sic) skilled in the art. I consider it well-known in the art if not plain common sense that a device would be considered lost or stolen - if no communication is received from it with a certain period of time. I respectfully do not agree that it would require someone to be “inventive” to make that determination i.e. the device is lost or stolen in the absence of communication from it.
…………. Moreover, D2 also disclose (sic) an alternative in which the remote device automatically transitions to an active mode in response to a theft even such as its trip switch being activated or its main power supply being unplugged (para [0021] for example). While D2 does not mention all instances in which the remote device will be considered lost or stolen, however a PSA would realise that one of the instances of a device being lost is when there is no communication with the device in a certain period of time. It is considered obvious that the remote device will consider itself lost or stolen when it does not receive any communication from the mobile tracking device.
To differentiate the claimed invention from D2, the applicant further has submitted that “the solution of the claimed invention does not require a report of a theft to an operator of a cellular communications network or a trip switch being activated………… the solution of the claimed invention is internal to the MIT device”.
Regarding the above, I do not agree that D2 provides a different solution to the claimed invention. In fact, (one of) the solution(s) presented in D2 is also internal to the “remote device”. The device automatically transitions to active state in response to an event happening with the remote device and does not rely on paging or a trigger from a cellular network (in one of the alternatives)”.
Consideration

From my discussion of D2 above, it is clear that D2 also addresses issues relating to power management and battery power conservation. It would also appear from the applicant’s written submissions for the hearing that they do not dispute that D2 discloses an MIT device with the following features of the claimed invention.
·a first radio comprising circuitry supporting a first radio access technology (RAT);
·a second radio comprising circuitry supporting a second RAT;
·one or more processors coupled to the first radio and the second radio;
·wherein the one or more processors are configured to cause the MIT device to
oenter a low power mode in which the second radio is disabled;
oreceive, while in the low power mode, a wake-up signal from a device;
otransmit, after transitioning to a higher power mode in response to receipt of the wake-up signal, beacons via the second radio, wherein the second radio is enabled in the higher power mode.
The applicant has however argued that D2 fails to teach or suggest the following limitations of the claimed invention:
1. an MIT device that receives, while in the low power mode, a wake-up signal from a neighbouring wireless device,
2. determining a first condition of the MIT device based, at least in part, on a duration of time since communication with a companion device or
3. entering a lost mode in response to losing communication with the companion device for a given period of time.
In relation to the first limitation, while the examination reports appear to assert that this is disclosed in D2, the applicant has submitted otherwise.
“36. The first examination report alleged that paragraphs [0006], [0020], and [0022] of D2 taught the originally claimed invention which included item 1 above. The third exam report explicitly mapped the remote device 3 of D2 to the MIT device of the claimed invention and mapped the mobile tracking device 5 of D2 to the companion device of the claimed invention. However, none of the exam reports provided any explicit mapping in D2 for the neighboring wireless device of the claimed invention. As D2 does not teach any other wireless devices, the mobile tracking device 5 of D2 must also be equated to the neighboring wireless device of the claimed invention.
37. Based on the cited paragraphs and the above mapping, the Applicant submits that D2 fails to teach or suggest anything about the MIT device receiving a wake up signal from a neighbouring wireless device. Instead, as understood by the Applicant, the cited portions of D2 simply teach that the remote device 3 can be activated automatically (based on object tampering) or upon receiving paging signals from a cellular communication network. A cellular communication network cannot be equated to a neighboring wireless device of the claimed invention. As such it is submitted that D2 fails to teach or suggest the claim limitation recited in item 1 above”.
I do not find this argument persuasive. While it is true that D2 does disclose that the MIT device of D2 receives the wake-up signal from the cellular communication network, paragraphs [0030] and [0031] of D2, that I have reproduced above, also clearly disclose that “Signals sent from the mobile tracking device 5 can therefore be used to control the remote device 3”. The tracking device also uses wireless cellular communication means. It is therefore clear that limitation (1) is disclosed by D2 as asserted by the examiner.
In relation to the second and third limitations, the applicant has submitted that examiner’s reasoning is flawed and without proper basis.
“40. First, the Applicant submits that this statement is a bare assertion without any evidence. The exam report provides no evidence that the claimed features, i.e., “determining a first condition of the MIT device based, at least in part, on a duration of time since communication with a companion device; and transitioning to a lost mode of operation based on the first condition” is either known in the common general knowledge or taught or suggested in any of the 12 documents (D1-D12) that were cited during prosecution of this application. In fact, there is no mention in any of the cited references D1-D12 where the device enters a lost mode if the device determines that it has not been in communication with a companion device for a
duration of time. Accordingly, it appears that this bare assertion is made based on
impermissible hindsight gleaned from the claimed invention.
41. Accordingly, the Applicant submits that there is no evidence to show that is (sic) was well-known to configure an MIT device to determine that it is lost/stolen and automatically enter a lost mode upon determining that the last communication the MIT device had with a companion device was more than a predetermined time period ago as required by the claimed invention.
42. Second, the above-highlighted assertion mischaracterises the invention. In particular, the assertion is that it would have been well-known to consider a device stolen/lost if no communication is received from it. That is, the examiner appears to argue that an invention in which some other system (e.g., the communication network 9 or tracking device 5) determines that the remote device is stolen if communication is not received from the remote device within a certain time, would be obvious. However, this is not how the claimed invention works. Instead, in the claimed invention, the MIT device, itself, determines that it is supposed to enter a lost mode when it determines that it has lost communication with a companion device within a given duration. The examiner has failed to consider or provide any evidence of this manner of determining that an MIT device is lost or stolen being well-known in the state of the art before the priority date.
43. The third exam report further notes that D2 discloses “an alternative in which the remote device automatically transitions to an active mode in response to a theft event such as its trip switch being activated or its main power supply being unplugged (para [0021] for example)”. The third report further notes that although “D2 does not mention all instances in which the remote device will be considered lost or stolen”, “a PSA would realise that one of the instances of a device being lost is when there is no communication with the device in a certain period of time”. For this reason, the exam report proceeds to allege that it “is considered obvious that the remote device will consider itself lost or stolen when it does not receive any communication from the mobile tracking device”.
44. There are a number of issues with this argument as well. First, the Applicant submits that impermissible hindsight appears to have been applied in arriving at this conclusion. In particular, the Examiner appears to be postulating that a person skilled in the art would read “the transmitter of the cellular transceiver 21 can be powered automatically in response to the computer being stolen” and somehow understand this to mean that the remote device 3 can be activated in a lost mode when it does not receive any communication from the mobile tracking device 5 (which the examiner has equated to the companion device of the claimed invention).
45. This construction of D2 appears to be completely based on impermissible hindsight and counter to the teachings of D2 as a whole for at least three reasons.
46. First, the cited portions of D2 fail to teach or suggest anywhere that the remote device 3 (which the examiner equated to the MIT device of the claimed invention) receives communication from the mobile tracking device (which the Examiner equates to the companion device of the claimed invention). Instead, D2 describes that the remote device 3 receives paging signals from the cellular communication network 9 and the tracking device 5 tracks the remote device 3 based on beacon signals received from the remote device 3. Therefore, a person skilled in the art would not understand paragraph [0021] of D2 to teach that the remote device 3 can be activated in a lost mode upon detecting absence of any communication from the mobile tracking device. The remote device in D2 is never meant to receive any communication from the mobile tracking device in D2 in the first place. The main
purpose of the mobile tracking device 5 in D2 is to simply track the remote device once it has been stolen.
47. Second, in the claimed invention, the MIT device and companion device are usually collocated or nearby to each other. That is, the connection between the MIT device and the companion device maintains the MIT device in its normal mode. As described in paragraph [0113], when the companion device and MIT device are separated, the MIT device enters the lost mode. The MIT device detects this separation when it determines that it has lost communication with the companion device for a period of time. D2 fails to teach or suggest that during normal operation the mobile tracking device and remote device are co-located or nearby to each other. Instead, it teaches that an operator carries the mobile tracking device and this is only used once the remote device is already stolen. Further, Fig. 1 reproduced above shows the mobile tracking device 5 completely separate from the remote device 3.
Accordingly, upon reading D2 as a whole, a person skilled in the art would not understand paragraph [0021] of D2 to teach that the remote device can be activated in a lost mode when it does not receive any communication from the mobile tracking device – as the remote device and mobile tracking device are not described as having any kind of relationship during normal operation in D2.
48. Third, paragraph [0021] of D2, which teaches that the first radio of the remote device is automatically powered in response to theft, teaches that this happens based on some sort of tampering of the object (e.g., trip switch on the object, or unplugging of a laptop from a charger). Accordingly, at most, upon reading paragraph [0021] a person skilled in the art may consider other types of object tampering that are not described in this paragraph as ways for automatically activating the remote device. But, without any hindsight, a person skilled in the art would not be able to construe paragraph [0021] of D2 to teach that the remote device 3 can be activated in a lost mode when it does not receive any communication from the mobile tracking device.
49. Accordingly, for at least these three reasons, the Applicant submits that upon reading D2 at the priority date of the present application, a PSA would not as a matter of course arrive at the claimed invention of configuring an MIT device to determine that it is lost/stolen and automatically enter a lost mode upon determining that the last communication the MIT device had with a companion device was more than a predetermined time period ago.
50. Given all of the above, the Applicant submits that claims 1 and 12 and their dependent claims are inventive over D2”.
While the applicant has submitted that the examiner has not backed up his assertion of common general knowledge with some form of documentary evidence, I note that the Full Court’s decision in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 at [24] does allow the Commissioner who is equipped with technical expertise, to draw inferences on common general knowledge based on that expertise. Any such position taken by the Commissioner is, of course, subject to the requirements that (i) the position is prima facie reasonable and (ii) as noted by the Full Court, “subject … to the rights of other parties to call rebutting or supporting evidence”.
However, I do agree with the applicant that the examiner’s assertion of what was well-known in the art if not plain common sense, is not what is actually claimed. As noted by the applicant, the examiner’s assertion appears to be that it was well-known that a tracking device would be considered lost if communication is not received from it by a corresponding system or device for a certain period of time. However, what is required by the claimed invention is that the tracking device itself determines that it is lost on losing communication with a corresponding/companion device for a certain period of time and then transitions into a lost mode of operation. These are clearly not the same things.
Similarly, while the examiner has submitted that D2 discloses “an alternative in which the remote device automatically transitions to an active mode in response to a theft even such as its trip switch being activated or its main power supply being unplugged”, this teaching is clearly not the same as transitioning to an active or lost mode in response to the elapsing of a certain duration of time since communication with a companion device. There is no suggestion that this active mode may also be initiated based on losing communication with a companion device for a certain period of time.
Based on the teachings of D2 and what is asserted by the examiner as being well-known, I cannot be satisfied that the claimed invention is obvious. The examiner’s objection in the third report cannot therefore be sustained.
OTHER OBSERVATIONS
As discussed above, the only reason that I have found that the examiner’s inventive step objection cannot be sustained is because the examiner has not established or even asserted that the feature of the MIT device transitioning itself into a ‘lost mode’ of operation based on elapsed time since the last communication with a companion device was common general knowledge in the art. The examiner has also not identified any prior art document that discloses this feature in tracking devices, which could then have been combined with the disclosure of D2. It appears that this may have been as a result of the search carried out during examination not having focussed on this ‘lost mode’ aspect of the invention, which is quite understandable as the independent claims that were initially searched did not include this aspect of the presently claimed invention.
However, a quick search of “Google Patents” website, has revealed the following documents that disclose tracking devices that transition into a ‘lost mode’ based on elapsed time since last communication with a companion device.
US 7492251 B1 (KATZ) 17 February 2009 – see column 18, lines 4-38
US 2012/0235860 Al (GHAZARIAN) 20 September 2012 – see paragraph [0077]
It is my preliminary view that a person skilled in the art, faced with the problem of how to automatically transition a tracking device into a lost mode and communicate this to a companion device, would have been motivated to combine the disclosure of either of these two documents with D2 and by doing so would have arrived at the claimed invention through routine steps, thereby depriving the claimed invention of an inventive step.
It also appears that these two documents also disclose most of the claimed features relating to the use of low and high power modes to conserve battery power, which suggests that the claimed invention may even lack novelty in light of these documents.
In the circumstances, it is appropriate that I remit the application back to the examination section to reassess the original search strategy, conduct further searching as appropriate and if required issue another examination report.
CONCLUSION
The claimed invention does not lack an inventive step over D2 and the examiner’s objection taken in the third report cannot be sustained.
However, as it appears that there may be other highly relevant prior art that has not been cited, I remit the application back to the examination section for further search and examination.
In the circumstances, pursuant to sub-regulation 13.4(3), the final date to gain acceptance is set at four (4) months from the date of this decision.
R Subbarayan
Delegate of the Commissioner of Patents