Ex Parte Atherton

Patent Trial and Appeal Board

Mar 31, 2016

10586738 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/586,738 07/18/2008
21839 7590 04/04/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Peter Samuel Atherton
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1034413-000015 1661
EXAMINER
PHAM, QUANG
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER SAMUEL ATHERTON
Appeal2014-002806
Application 10/586,738
Technology Center 2600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
STACY B. MARGOLIES, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-002806
Application 10/586,738
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
4, 6-8, 12-14, and 16-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claimed invention is directed to a radio frequency (RF) antenna
portion and a radio frequency identification (RFID) electronics portion of an
RFID tag being produced separately and assembled on the item to be tagged.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, comprising:
providing an RF antenna on an item;
providing an RFID electronics module, the module
electrically coupling the RFID electronics module to the RF
antenna on the item after the RF antenna is provided on the
item, the RFID electronics module being a chip mounted on a
substrate and the coupling being a noncontact electrical
coupling;
providing the RF antenna with a first set of electrically
conductive pads;
providing the RFID electronics module with a second
set of electrically conductive pads,
wherein the first and second sets of electrically
conductive pads are configured to allow a range of
misalignment of the RF antenna and the RFID electronics
module; and
aligning, within the range of misalignment, the first and
second set of electrically conductive pads in a predetermined
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Application 10/586,738
manner relative to each other when attaching the RFID
electronics module to the item;
thereby providing an RFID capability for the item,
wherein an adhesive is provided on the RFID
electronics module, and the RFID electronics module is
attached to the item by the adhesive.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gustafson
Eberhardt et al.
Beigel
Diprizio et al.
Halope et al.
Pennaz et al.
Forster et al.
us 6,050,622
us 6, 107 ,920
US 6,181,287 Bl
US 6,384,727 Bl
US 6,770,509 B2
US 2004/0212544 Al
US 7 ,298,343 B2
REJECTIONS
The Examiner made the following rejections:
Apr. 18, 2000
Aug. 22, 2000
Jan.30,2001
May 7, 2002
Aug.3,2004
Oct. 28, 2004
Nov. 20, 2007
Claims 1, 4, 7, 8, 12-14, 18, and 19 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Eberhardt in view of Diprizio, Beigel,
and Pennaz.
Claims 6 and 16 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Eberhardt in view of Diprizio, Beigel, Pennaz, and
Hal ope.
Claim 17 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Eberhardt in view of Diprizio, Beigel, Pennaz, and
Gustafson.
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Appeal2014-002806
Application 10/586,738
Claims 20 and 21 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Eberhardt in view of Diprizio, Beigel, and Pennaz, and
further in view of Forster.
ISSUE
The pivotal issue is whether the Examiner erred in finding that
Eberhardt in view of Diprizio, Beigel, and Pennaz teaches the limitation of
"wherein the first and second sets of electrically conductive pads are
configured to allow a range of misalignment of the RF antenna and the RFID
electronics module" as recited in claim 1 and similarly recited in claim 14.
ANALYSIS
We adopt the Examiner's findings in the Answer and the Final Action
and we add the following primarily for emphasis.
Appellant argues, with respect to claim 1, that the Examiner erred in
finding that it would have been obvious to modify Eberhardt such that the
coupling between the antenna and the RFID circuit is non-contact because
the Examiner did not explain what would happen with Eberhardt's
conductive adhesive 34 with such a modification (App. Br. 5). Appellant
raises a similar argument with respect to the adhesive used in Pennaz (App.
Br. 7). Appellant further asserts that Pennaz's disclosure in the context of a
capacitive connection, does not disclose anything concerning configuring
first and second sets of conductive pads to allow a range of misalignment of
an RF antenna and an RFID electronics module (App. Br. 7).
Appellant further argues that at best, Diprizio' s Figure 2 illustrates a
circuit printed on a substrate which is attached to an antenna (App. Br. 6).
Appellant asserts that an ordinarily skilled artisan, at most, would have
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Application 10/586,738
found it obvious in light of Diprizio to substitute, for Eberhardt's chip
attached to an antenna, a circuit printed on a substrate attached to an
antenna, but not a chip mounted on a substrate attached to an antenna (App.
Br. 6).
We do not agree with Appellant's arguments. "[O]ne cannot show
non-obviousness by attacking references individually where ... the
rejections are based on combinations of references." In re Keller, 642 F.2d
413, 426 (CCPA 1981).
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what
the combined teachings of the references would have suggested
to those of ordinary skill in the art.
Id. at 425. Furthermore, "[c]ommon sense teaches, ... that familiar items
may have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle." KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 420 (2007); see also id. at 421 ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton.").
The Examiner finds, and we agree, that Eberhardt teaches an RFID
circuit chip (i.e., Fig. 2, element 12), an RFID antenna (i.e., Fig. 1, element
22; Fig. 2, elements 24 and 26), a first set conductive pads (i.e., Fig. 2,
elements 28, 30), a second set conductive pads (i.e., Fig. 2, elements 38, 40),
and adhesive (i.e., Fig. 2, element 34) (Final Act. 4--5).
The Examiner relies on Diprizio for teaching a circuit of the radio
frequency identification device (i.e., Fig. 1, element 18) having a substrate
(i.e., Fig. 2, element 20) wherein the circuit is electrically coupled to the first
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electrode and the second electrode by use of adhesive, conductive vias,
capacitive coupling, or other suitable means of providing electrical
connections between the circuit and the first and second electrode (Final
Act. 6; Diprizio, col. 4, 11. 44--51; Fig. 2). The Examiner also cites Beigel
for capacitive non-contact coupling (Final Act. 6; Beigel, col. 2, 1. 29---col. 3,
1. 2). The Examiner further finds, and we agree, that Pennaz teaches that a
larger area of interposer pads reduces the accuracy required for placement of
an IC while providing effective electrical connections (Final Act. 6-7;
Pennaz, para. 19).
The Examiner, concludes, and we agree, that it would have been
obvious to one skilled in the art at the time of the invention to modify
Eberhardt with Diprizio and Beigel by introducing capacitative coupling to
reduce the need of electrical connection (see Beigel, col. 2, 1. 63---col. 3, 1. 2)
and the teaching of Pennaz for placing the IC chip to an antenna with greater
placement tolerances and to allow for a range of misalignment of the RF
antenna and the RFID electronics module (Final Act. 7).
Accordingly, we affirm the Examiner's rejection of claim 1. Because
Appellant raises the same arguments for independent claim 14 that
Appellant raises for claim 1 (see App. Br. 8-11), we affirm the Examiner's
rejection of claim 14 for the reasons explained above. We also affirm the
rejection of dependent claims 6, 12, 13, 16, 17, 20, and 21, which are not
argued separately. See App. Br. 11-12. With respect to dependent claims 4,
7, 8, 18, and 19, we agree with the Examiner's findings set forth in the
Answer and Final Office Action, and therefore sustain the rejection of those
claims.
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CONCLUSION
The Examiner did not err in finding that Eberhardt in view of
Diprizio, Beigel, and Pennaz teaches the limitation of "wherein the first and
second sets of electrically conductive pads are configured to allow a range of
misalignment of the RF antenna and the RFID electronics module" as recited
in claim 1 and similarly recited in claim 14.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 4, 6-8,
12-14, and 16-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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