Ex Parte CaruanaDownload PDFPatent Trial and Appeal BoardJul 29, 201612440849 (P.T.A.B. Jul. 29, 2016) Copy Citation 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. 3 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. 4 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 5 Copy with citationCopy as parenthetical citation