Ex Parte Caruana

Patent Trial and Appeal Board

Jul 29, 2016

12440849 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/440,849 04/08/2009
21839 7590 08/02/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Jean-Paul Caruana
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.
1032326-000488 7015
EXAMINER
HSIEH, PING Y
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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 JEAN-PAUL CARUANA
Appeal2015-002841
Application 12/440,849
Technology Center 2600
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner's
Final Rejection of claims 1--4, 6, and 8-16.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Gemalto SA. App. Br.
2.
2 The Examiner has stated that claims 5 and 7 would be allowable if
rewritten in independent form. Final Act. 15.
Appeal2015-002841
Application 12/440,849
Invention
The claims are directed to a system and method for reading RF
transponders by magnetically coupling transponder antennas using a passive
resonant circuit having a passive antenna. Abstract.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
1. A method for reading RF transponders disposed in one and
the same magnetic interrogation field, comprising:
magnetically coupling transponder antennas of the
transponders with a reader antenna of a reader by means of a
passive resonant circuit having a passive antenna that is separate
from the transponder antenna; and
associating the passive antenna of the passive resonant
circuit with at least one transponder antenna, and
\~1herein the passive resonant circuit is tuned in such a \~1ay
that the resonance frequency resulting from the association
corresponds to one of the frequencies of the emission side bands
of the transponder to be read.
Applied Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cole
Briggs
Liu et al.
Schilling et al.
Lowe et al.
Oliver
US 6, 172,608 B 1
US 6,567 ,050 B 1
US2005/0035924 Al
US 2007 /0290846 Al
US 7,782,209 B2
US 7,907,899 Bl
2
Jan.9,2001
May 20, 2003
Feb. 17,2005
Dec. 20, 2007
Aug.24,2010
Mar. 15, 2011
Appeal2015-002841
Application 12/440,849
REJECTIONS
The Examiner made the following rejections:
Claims 1--4 and 14--16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Oliver, Lowe, and Briggs. Final Act. 2-10.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oliver, Lowe, Briggs, and Schilling. Id. at 10-11.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oliver, Lowe, Briggs, and Cole. Id. at 11-12.
Claims 9-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oliver, Lowe, Briggs, and Liu. Id. at 13-14.
Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oliver, Lowe, Briggs, Liu, and Cole. Id. at 14--15.
ANALYSIS
We have reviewed the Examiner's rejections and the evidence of
record in light of Appellant's argument that the Examiner has erred. We
disagree with Appellant's arguments and conclusions. We adopt as our own
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken (Final Act. 2-15 (mailed Apr. 23, 2014)) and the
findings and the reasons set forth in the Examiner's Answer (Ans. 2--4
(mailed Nov. 21, 2014)). We concur with the conclusions reached by the
Examiner and further highlight specific findings and argument for emphasis
as follows.
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Appeal2015-002841
Application 12/440,849
Independent Claims 1 and 14-16
Appellant contends Oliver does not teach or suggest "magnetically
coupling transponder antennas of the transponders with a reader antenna of a
reader by means of a passive resonant circuit having a passive antenna that is
separate from the transponder antenna," as recited in independent claim 1
and similarly recited in independent claims 14--16. App. Br. 5-7; Reply Br.
2-5. Appellant argues "the two antennae in Oliver are not separate antenna"
(App. Br. 6 (emphasis in original)) because "the two antennae disclosed in
Oliver are both connected to the same circuit, and not to two distinct
components" (Reply Br. 3).
Appellant's arguments are not commensurate with the scope of the
claims. The claims do not recite, and do not require, that the passive antenna
is "separate" from the transponder antenna on the basis that the passive
antenna "is connected to a circuit that is distinct from the circuit to which the
transponder is connected" or that the passive antenna "performs a function
different from that of the transponder antenna," as argued by Appellant.
Reply Br. 3; App. Br. 6-7.
We agree with the Examiner that antennas 327 and 328 in Oliver are
separate; as shown in both Figures 3A and 3B, antennas 327 and 328 are
separate and distinct components. Indeed, Oliver teaches antennas 327 and
328 "can be independent" and are formed separately-in the embodiment of
Figure 3A, the antennas "are not formed as part of an IC on which the circuit
330 is formed," and in the embodiment of Figure 3B, "antenna 327
represents an off-chip antenna not formed as part of an IC on which the
circuit 330 is formed and antenna 328 represents an on-chip antenna that is
formed as part of the IC." Oliver 4:48-57.
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Appeal2015-002841
Application 12/440,849
Additionally, Appellant's argument that Oliver "discourages a person
having ordinary skill in the art from separating [Oliver's] two antennae"
(Reply Br. 5; App. Br. 6-7) is not responsive to the Examiner's finding that
Oliver teaches two separate antennas (Final Act. 3 (citing Oliver Fig. 3);
Ans. 3 (citing Oliver 4:49-51)). Moreover, Appellant's argument that an
ordinarily skilled artisan would not have been motivated to magnetically
couple one antenna to a reader antenna by means of an additional antenna
(App. Br. 6-7) is not persuasive in light of our findings.
Accordingly, we are not persuaded the Examiner erred in finding
Oliver teaches or suggests "magnetically coupling transponder antennas of
the transponders with a reader antenna of a reader by means of a passive
resonant circuit having a passive antenna that is separate from the
transponder antenna," within the meaning of independent claims 1 and 14--
16.
Remaining Claims 2-13
Appellant has not presented separate, substantive, persuasive
arguments with respect to claims 2-13. See App. Br. 7-9. For the reasons
set forth above, we sustain the Examiner's rejections of these claims. See 37
C.F.R. § 41.37(c)(l)(iv).
DECISION
We AFFIRM the Examiner's rejections of claims 1--4, 6, and 8-16.
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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