Ex Parte Immonen et al

Patent Trial and Appeal BoardNov 29, 2018

12936267 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/936,267 12/27/2010 Mikko Immonen 26694 7590 12/03/2018 VENABLELLP P.O. BOX 34385 WASHINGTON, DC 20043-9998 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. 43289-291036 1318 EXAMINER SMITH, GRAHAM P ART UNIT PAPER NUMBER 2845 NOTIFICATION DATE DELIVERY MODE 12/03/2018 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): PTOMail@Venable.com khauser@venable.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIKKO IMMONEN and SAMUL! STROMBERG Appeal2018-001438 Application 12/936,267 Technology Center 2800 Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and JANEE. INGLESE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants ("Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Primary Examiner's final decision to reject claims 8-14. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The Appellants identify the real party in interest as "SMAR TRAC IP B.V." (Appeal Brief filed October 24, 2014 ("Appeal Br.") at 2). 2 Appeal Br. 7-15; Reply Brief filed April 27, 2015 ("Reply Br.") at 5-11; Final Office Action entered May 28, 2014 ("Final Act.") at 2-8; Examiner's Answer entered March 16, 2015 ("Ans.") 2-12. Appeal2018-001438 Application 12/936,267 I. BACKGROUND The subject matter on appeal relates to a transponder comprising a first antenna with an electrically-connected integrated circuit on a chip and a second (booster) antenna (Specification filed October 4, 2010 ("Spec.") at 1, 11. 1-34). According to the Specification, the transponder is "especially useful in connection with shoes, garments and related accessories, such as belts or bags" (id. at 2, 11. 6-7). Figure 2a is reproduced from the Drawings filed October 4, 2010 as follows: 14 .. Â· 1 fi Q ..... Â·Â·Â·Â·Â·Â·.Â·.Â·Â·Â·Â· ... Â· ...... Â·~1Â°2 ..... Â·Â·Â·Â·Â· Â·1 Â·1 Fig" 2a Figure 2a above depicts a transponder tag in accordance with the invention, wherein the tag comprises, inter alia, a substrate 8 that is separated in two parts 15 and 16 by a perforated line 12 such that the parts are separable- e.g., the first part 15 may be removed and used as a receipt including all 2 Appeal2018-001438 Application 12/936,267 information pertaining to a purchased product (id. at 7, 11. 14--16, 25-28). The first part 15 is described as comprising a first antenna 9 and an integrated circuit on a chip 10 attached to the first antenna 9 (id. at 7, 11. 19- 20). The second part 16 is described as comprising a second antenna 11 that enhances the functioning ("reading range") of the first antenna 9 (id. at 7, 11. 20-23). Representative claim 8 is reproduced from the Claims Appendix to the Appeal Brief as follows: 8. A radio-frequency transponder, comprising: a first substrate; a first antenna on the first substrate; an integrated circuit on a chip galvanically connected to the first antenna; and a second antenna that is physically separated at a distance from the first antenna, the second antenna being in physical proximity to the first antenna on the first substrate or on a second substrate and in non-galvanic capacitive or inductive connection with the first antenna such that the second antenna can couple with the first antenna to boost a radio-frequency communication distance of the transponder, and one of the first antenna and the second antenna of the transponder is arranged to be transferable with respect to the another of the first antenna and the second antenna to increase a physical distance between the first antenna and the second antenna such that non-galvanic coupling coupling [sic] between the first antenna and the second antenna can be intentionally prevented to reduce a communication distance of the transponder entity. (Appeal Brief 16; emphases added.) 3 Appeal2018-001438 Application 12/936,267 II. REJECTIONS ON APPEAL On appeal, the Examiner maintains several rejections as follows: A. Claims 8-10 under pre-AIA 35 U.S.C. Â§ I02(a) as anticipated by Hori et al. 3 (referred to as "Fusao" by the Appellants and the Examiner); B. Claim 11 under 35 U.S.C. Â§ I03(a) as unpatentable over Fusao and Afzali-Ardakani et al. 4 ("Afzali-Ardakani"); C. Claim 12 under 35 U.S.C. Â§ I03(a) as unpatentable over Fusao, Matsushita et al. 5 ("Matsushita"), Haj-Y ousef, 6 and Van Heerden et al. 7 ("Van Heerden"); and D. Claims 13 and 14 under 35 U.S.C. Â§ I03(a) as unpatentable over Fusao, Matsushita, and Haj-Y ousef. (Ans. 2-12; Final Act. 2-8.) III. DISCUSSION Rejection A. The Appellants argue claims 8-10 together (Appeal Br. 7-10). Therefore, we confine our discussion to claim 8, which we select as representative pursuant to 37 C.F.R. Â§ 4I.37(c)(l)(iv). As provided by this rule, claims 9 and 10 stand or fall with claim 8. 3 JP 2008-72437 A, published March 27, 2008. We cite to the English language translation of record. 4 US 5,767,789, issued June 16, 1998. 5 US 2002/0057221 Al, published May 16, 2002. 6 US 6,359,597 B2, issued March 19, 2002. 7 US 2003/0160732 Al, published August 28, 2003. 4 Appeal2018-001438 Application 12/936,267 The Examiner finds that Fusao describes a radio frequency transponder that includes every structural limitation recited in claim 8 (Final Act. 2-3). The Examiner finds that, because Fusao's Figure 7 "shows that the reflection coefficient at a frequency, and hence the amount of power radiated at that frequency, is adjusted by the presence of the second antenna" and Fusao' s transponder as shown in Figure 1 includes a perforation 20 that allows removal of antenna 12 from antenna 11, the prior art transponder would inherently or necessarily possess the functional characteristics recited and highlighted in reproduced claim 8 above (id.; see also Ans. 5-7). The Appellants contend that Fusao' s second antenna is disconnected from the first antenna (Appeal Br. 7). The Appellants acknowledge that Fusao discloses the resonance frequency may be changed by separating the second antenna from the first antenna but argue that "Fusao ... does not disclose reducing or increasing the operating range of the first antenna by removing the second antenna" (id. at 8). The Appellants urge that claim 8, by contrast, requires first and second antennas that are capacitively or inductively coupled and that the distance between the parts of the transponder can be lengthened to reduce the operating distance of the parts (id. at 9). The Appellants' arguments fail to identify any reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). 5 Appeal2018-001438 Application 12/936,267 Fusao's Figure 1 is reproduced as follows: l l?-Â·Â·/ Fusao' s Figure 1 above depicts a wireless radio tag including base materials 13 and 14 divided by a perforation 20 that allows base material 13 to be separated from base material 14, a first antenna 11 connected to an integrated circuit (IC) chip 10, and a second antenna 12 that is not connected to antenna 11 (Fusao ,r,r 1, 10, 12). When the wireless radio tag as shown in Fusao 's Figure 1 is rotated 90Â° clockwise, it is structurally similar to the Appellants' transponder tag as shown in Figure 2a. Although the shapes of the antennas shown in Fusao 's Figure 1 are not identical to the shapes shown in the Appellants' Figure 2a, the current Specification does not indicate that the particular antenna shapes are critical to achieving the functions recited in claim 8 (Spec. 7, 11. 14--28). In any event, the structural similarity between Fusao' s wireless radio tag and the Appellants' transponder tag forms a sufficient factual basis upon which to find a prima facie case of anticipation, thus shifting the burden of proof to the Appellants to provide objective evidence that the functional limitations recited in claim 8 would not inherently or necessarily be present in Fusao 's wireless radio tag. The Appellants fail to direct us to such objective evidence. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). 6 Appeal2018-001438 Application 12/936,267 Moreover, consistent with the Examiner's position (Final Act. 2-3; Ans. 7), the undisputed finding that Fusao' s second antenna 12 may be positioned to affect resonance frequency (see Fusao Fig. 7, showing frequency versus return loss (dB) graphs; ,r,r 6-7, 9-10, 23) undercuts the Appellants' unsubstantiated allegation that the operating range of the first antenna would not be increased or reduced by removing the second antenna (Appeal Br. 8). Indeed, Fusao discloses "short communication distance" as a problem in the prior art to be addressed by Fusao 's wireless radio tag (Fusao ,r,r 3-7). Additionally, the Appellants offer no objective evidence or technical explanation to refute the Examiner's reasonable finding that when Fusao 's antenna 12 is removed entirely, the RF communication distance would be reduced at a given frequency (Final Act. 3). Under these circumstances, we discern no reversible error in the Examiner's position that the burden of proof was properly shifted to the Appellants to show that Fusao 's wireless radio tag would not inherently or necessarily satisfy the functional limitations recited in claim 8. The Appellants' argument that Fusao' s second antenna 12 is disconnected from first antenna 11 is without persuasive merit. Fusao' s first and second antennas 11 and 12, respectively, are no more "disconnected" than the Appellants' first and second antennas 9 and 11, respectively, which are not described as being in wired connection, as shown in Figure 2a. To the extent that the Appellants' argument is directed to the "in non-galvanic capacitive or inductive connection" limitation recited in claim 8, we find no reversible error in the Examiner's finding that Fusao's antennas would be "in non-galvanic capacitive or inductive connection" because Fusao's 7 Appeal2018-001438 Application 12/936,267 second antenna 12 is described as affecting the RF wireless characteristics of the wireless radio tag (Fusao ,r,r 7, 9--10, 23, 27-28; Fig. 7). Lastly, the Appellants' argument that adding the second antenna to impart a positive effect "is a random result that is achieved accidentally under certain circumstances" (Reply Br. 8-9) highlights the Appellants' flawed and unsupported position, which is inconsistent with their own disclosure. Nothing in the Specification indicates that the functional limitations are based on a random result that is achieved accidentally. Even if we assume that that such a description were present, the Appellants fail to direct us to any description in the current Specification that would sufficiently support such "a random result" so as to enable one skilled in the relevant art to make and/or use the invention, as broadly recited in claim 8, without the need to resort to undue experimentation. For these reasons, and those well-stated by the Examiner, we uphold the Examiner's rejection as maintained against claim 8. Rejections B-D. For Rejections B through D, the Appellants rely on the same arguments offered in support of claim 8, adding only that the additional references do not cure the alleged deficiencies in the Examiner's rejection as maintained against claim 8 (Appeal Br. 10-15). Because the Examiner's rejection as to claim 8 is not deficient, we uphold Rejections B through D for the same reasons discussed above for Rejection A. IV. SUMMARY Rejections A through Dare sustained. Therefore, the Examiner's final decision to reject claims 8-14 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). 8 Appeal2018-001438 Application 12/936,267 AFFIRMED 9