NXP B.V.

Patent Trials and Appeals BoardMar 18, 2021

2019006815 (P.T.A.B. Mar. 18, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/135,669 04/22/2016 Thomas Suwald 81670164US03 1091 65913 7590 03/18/2021 Intellectual Property and Licensing NXP B.V. 411 East Plumeria Drive, MS41 SAN JOSE, CA 95134 EXAMINER LIN, HANG ART UNIT PAPER NUMBER 2626 NOTIFICATION DATE DELIVERY MODE 03/18/2021 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): ip.department.us@nxp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS SUWALD Appeal 2019-006815 Application 15/135,669 Technology Center 2600 Before JAMES R. HUGHES, JOHNNY A. KUMAR, and MICHAEL T. CYGAN, Administrative Patent Judges. CYGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–7, 9–10, 13, and 15–28. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as NXP Semiconductors. Appeal Br. 2. Appeal 2019-006815 Application 15/135,669 2 CLAIMED SUBJECT MATTER The claimed subject matter relates to an electronic device comprising a non-conductive substrate and a touch-based user interface unit. Spec. 1:27–28. The touch-based user interface unit has a capacitive sensor structure with conductive wires embedded in the non-conductive substrate. . Id. at 1:29–30. The electronic device may be a smart card, for which “it is relatively difficult and expensive to integrate a touch-based user interface” because of “form factor and manufacturing constraints.” Id. at 1:10–23. Independent claim 1 is illustrative, with the limitations at issue emphasized in italics: 1. A smart card device comprising: a non-conductive substrate formed of a thermoplastic material; an antenna; and a touch-based user interface having a capacitive sensor, wherein the capacitive sensor comprises conductive wires including adjacent insulated portions and other electrode-connection portions that are not insulated, the antenna and conductive wires being embedded in the thermoplastic material of the non- conductive substrate. Appeal Br. 19 (Claims App.). Independent claims 15 and 18 recite methods of manufacturing a smart card having limitations substantially commensurate with claim 1. Dependent claims 2–7, 9, 10, 13, 16, 17, and 19–28 each incorporate the limitations of their respective independent claims. Id. at 19–26. REFERENCES Name Reference Date Hollenbeck et al. US 5,930,304 July 27, 1999 Appeal 2019-006815 Application 15/135,669 3 (“Hollenbeck”) Leighton US 6,036,099 Mar. 14, 2000 Wang et al. (“Wang”) US 2012/0305654 A1 Dec. 6, 2012 Bollesen et al. (“Bollesen”) US 2013/0169294 A1 July 4, 2013 Chang US 2014/0118633 A1 May 1, 2014 Yilmaz US 2014/0176819 A1 June 26, 2014 Suwald et al. (“Suwald”) EP 2,667,156 A1 Nov. 27, 2013 REJECTIONS Claims 21–24 are rejected under 35 U.S.C. §112(a) as lacking sufficient written description. Claims 15–17 are rejected under 35 U.S.C. §112(b) as being indefinite. Claims 1, 3–5, 9, 13, and 19–20 are rejected under 35 U.S.C. §103 as being obvious over the combined teachings and suggestions of Bollesen, Suwald, Chang, and Yilmaz. Claims 6, 21, and 23 are rejected under 35 U.S.C. §103 as being obvious over the combined teachings and suggestions of Bollesen, Suwald, Chang, Yilmaz, and Hollenbeck. Claims 7 and 24 are rejected under 35 U.S.C. §103 as being obvious over the combined teachings and suggestions of Bollesen, Suwald, Chang, Yilmaz, Hollenbeck, and Leighton. Claim 22 is rejected under 35 U.S.C. §103 as being obvious over the combined teachings and suggestions of Bollesen, Suwald, Chang, Yilmaz, and Wang. Appeal 2019-006815 Application 15/135,669 4 Claims 2, 10, 15–18, and 25–28 are rejected under 35 U.S.C. §103 as being obvious over the combined teachings and suggestions of Bollesen, Suwald, Chang, Yilmaz, and Leighton. OPINION 1. Written Description a) Claims 21, 23, and 24 The Examiner finds a lack of written description in the limitation of claim 21: further including conductive contacts configured and arranged for contacting external card readers having a power source, upon placement of the conductive contacts of the smart card device in contact with one of the external card readers; wherein the touch-based user interface unit is configured and arranged to sense touches via the capacitive sensor structure, utilizing power provided by the power source and coupled via the conductive contacts Final Act. 3.2 The Examiner finds a lack of written description because the Specification does not describe “a smart card read to supply power.” Id.; Ans. 16–17. The Examiner finds the Specification to describe only a power supply, and that “the first sub-module 902 may comprise a contact-interface terminal 904 for connection to a contact-interface, for example an interface based on the standard ISO-7816." Id. 2 We quote the claim language from the Claims Appendix (Appeal Br. 23) rather than the Final Action, because the Final Action mistakenly duplicates the “further . . . readers” clause of the claim. Appeal 2019-006815 Application 15/135,669 5 Appellant argues that the Specification provides adequate written description. Appeal Br. 16–17. Appellant argues that the Examiner has overlooked various embodiments involving utilizing power from card readers to power smart cards. Id. at 17. Appellant points specifically to Figure 9 and its accompanying discussion of a contact card having a contact interface terminal 904, connected to and powered by a reader interface based on the standard ISO-7816 in accordance with power specifications within. Id. We are persuaded by Appellant’s argument. Appellant’s cited portion of the Specification describes certain features of a smart card, including a power supply, wherein each feature may be implemented by hardware components. Spec. 7: 1–7. Hardware implementation may be by “a contact- interface terminal 904 for connection to a contact-interface.” Id. at 7:5–9. Thus, the Specification describes a power supply implemented by a contact- interface terminal that may connect to a separate contact to supply power to the described circuit. Id. at 7: 3–9, 25–28. Against this factual background, the Examiner has not explained why the claim lacks written description. The examiner has the initial burden of presenting by a preponderance of evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). Although the Examiner finds the disclosure to lack “a smart card read to supply power,” the claim does not require any act of reading of the smart card, or a smart card reader. Claim 21 requires the card to be “configured and arranged for contacting external card readers having a power source, upon placement of the conductive contacts of the smart card Appeal 2019-006815 Application 15/135,669 6 device in contact with one of the external card readers.” Appeal Br. 23 (Claims App.). The Examiner has not explained how the described power supply, implemented by contact-interface terminal 904 designed for connection to a contact-interface, fails to describe to one having ordinary skill in the art a configuration arranged for contact with contacting an external card reader. For example, the Examiner does not explain how the described contact-interface terminal would not function in the claimed manner, by contacting an external card reader when such a reader is brought into contact with the described contact-interface terminal. Further, although the Examiner acknowledges the portion of the Specification cited by Appellant, the Examiner does not provide any analysis of that cited portion with respect to claim 21. Ans. 16–17. Consequently, we are persuaded of error in the Examiner’s finding of lack of written description for claim 21. Because the rejections of claims 23 and 24 involve the same reasoning applied to the same (claim 23) or similar (claim 24) language, we are also persuaded of error in the rejection of those claims. Accordingly, we reverse the Examiner’s rejection of claims 21, 23, and 24 for lack of written description. b) Claim 22 The Examiner finds a lack of written description in the limitation of claim 22: further including a power supply configured and arranged to generate power using RF signals received via the antenna; and wherein the touch-based user interface unit is configured and arranged to communicate signals to an external reader, via the antenna in response to touches sensed via the capacitive sensor, using power provided by the power supply Appeal 2019-006815 Application 15/135,669 7 Final Act. 3.3 The Examiner finds that the Specification does not provide written description for “generate power using RF signals received via the antenna.” Id. at 3–4. The Examiner finds the Specification’s description of a power supply and sensor controller does not provide adequate description. Id. at 4. Appellant contests the Examiner’s finding, stating the Examiner acknowledges the disclosure of a power supply, in connection with embodiments in the specification involving a contactless smart card (i.e., utilizing an RF antenna). By definition, such approaches require the transfer of RF power for such a smart card to operate. Indeed, the power supplies noted by the Examiner may utilize RF power for operation. This is also consistent with the ISO-7816 standard, and related well- known operation of a smart card. Appeal Br. 17. We are not persuaded by Appellant’s argument. Although Appellant’s Specification discusses a contactless smart card having an antenna, Appellant has not pointed to any portion of the Specification that explicitly describes the use of RF power. To the extent that the Specification provides a generic disclosure of power supplied through an antenna, but does not specifically describe RF power or an RF antenna, description of a genus does not provide adequate description of a species within that genus. In re Smith, 458 F.2d 1389, 1395 (CCPA 1972). Although Appellant characterizes a smart card as utilizing an RF antenna “[b]y definition,” Appellant has not provided such a definition in the 3 We quote the claim language from the Claims Appendix (Appeal Br. 23) rather than the Final Action, because the Final Action mistakenly duplicates the “further . . . readers” clause of the claim. Appeal 2019-006815 Application 15/135,669 8 Specification, or as evidence to support Appellant’s argument. Where Appellant provides a factual assertion, as here, factual evidence must be provided to prove such an assertion. See 37 C.F.R. § 1.132 (“any evidence submitted to traverse the rejection . . . must be by way of an oath or declaration under this section”). Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602 (CCPA 1965). Accordingly, Appellant has not established that the Specification describes an RF antenna. Nor is Appellant’s reliance on the ISO-7816 standard, as identified in the Specification, sufficient to show adequate written description. Material necessary to support a written description of a claimed invention is defined as “essential material,” and may be relied upon only where it is properly incorporated by reference in a Specification. 37 C.F.R. § 1.57(d). Such incorporation of essential material is limited to references to U.S. patents, U.S. patent application publications. Id. The ISO-7816 standard is neither. Accordingly, the Specification’s reference to the ISO-7816 standard does not incorporate the material within that standard, and cannot provide adequate written description for an “RF” antenna not otherwise described by the Specification. For the above-mentioned reasons, we are not persuaded by Appellant’s arguments that the Specification provides written description of the claimed “RF antenna.”4 Consequently, we affirm the Examiner’s written description rejection of claim 22. 4 Note that we take no position on whether a smart card inherently requires RF signals, only that the RF signal limitation is a factual issue that has not Appeal 2019-006815 Application 15/135,669 9 2. Indefiniteness The Examiner rejects claims 15–17 as being indefinite. Final Act. 5. The Examiner points to the limitation in claim 15 of “connecting the communication and processing circuitry to certain of the portions of the insulated conductive wire.” Id. The Examiner states, “Examiner is unable to ascertain[] the exact meaning of the recitation.” Id. In particular, the Examiner points to the phrase “certain of the portions.” Ans. 18. Appellant submits that the meaning of the phrase is clear. Appeal Br. 17. Appellant argues, “the Examiner has not clearly explained why there seems to be lack of understanding of the cited language.” Id. In its Reply Brief, Appellant does not address this rejection further, because “the Examiner’s Answer does not provide a basis for overcoming/rebutting the issue.” Reply Br. 2. Indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir. 2010). Our reviewing court further addressed the Examiner’s burden in In re Packard, stating it is a reasonable implementation of the examination responsibility, as applied to § 112(b), for the USPTO, upon providing the applicant a well-grounded identification of clarity problems, to demand persuasive responses on pain of rejection. . . . The examiner here, having ample grounds, set forth a variety of ways in which he found the claims imprecise or been shown to be described in the Specification either explicitly or inherently. Appeal 2019-006815 Application 15/135,669 10 confusing, sometimes not even understandable, considering them in light of the written description. In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). The USPTO has reaffirmed the requirement for a clear explanation for indefiniteness during prosecution. Ex parte McAward, 5 (PTAB 2017) (precedential) (“the Office establishes a prima facie case of indefiniteness with a rejection explaining how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear”). Here the Examiner has not provided any explanation of why the phrase “certain of the portions” would not be understood, instead providing an unsupported, subjective conclusion of indefiniteness. The Examiner has provided notice of which claim phrase is considered unclear, but not “how” that phrase renders the metes and bounds of the claimed invention unclear. Moreover, the Examiner only states that the Examiner is unable to understand what is claimed by the phrase “certain of the portions.” Ans. 18. The Examiner, by addressing only the Examiner’s understanding, has not addressed the understanding of one skilled in the art, which is the proper standard for indefiniteness. Power-One, 599 F.3d at 1350. Further, the Examiner has not explained why “certain of the portions” would not be understood in light of the Specification, which is also a requirement of the indefiniteness determination. Packard, 751 F.3d at 1313. We note that Appellant has not provided reasons why the phrase “certain of the portions” is not indefinite, relying instead on the Examiner’s lack of an explanation as to why that phrase is considered indefinite. Appeal Br. 17; Reply Br. 2. We, however, agree with Appellant that the Examiner has not presented “a well-grounded identification of clarity problems” that would require an appellant to persuasively show error in the Examiner’s Appeal 2019-006815 Application 15/135,669 11 grounds for the rejection. Packard, 751 F.3d at 1313. Accordingly, we are persuaded that the Examiner has not shown claims 15–17 to be indefinite, and reverse the Examiner’s indefiniteness rejection. 3. Obviousness Appellant contests the Examiner’s obviousness rejections of claims 1– 7, 9, 10, 13, and 15–28. Appeal Br. 6. Appellant argues that the rejections fail to teach each and every limitation of the claims, and moreover, fail to provide adequate motivation to combine the references to arrive at the claimed smart card device having the claimed features. Id. at 6–16. We find the latter argument dispositive, and begin with that argument as applied to the rejection of claim 1. The Examiner applies the combination of Bollesen, Suwald, Chang, and Yilmaz to teach or suggest the limitations of claim 1. Final Act. 6. The Examiner relies solely on Suwald for teaching the “smart card” limitation of claim 1. Final Act. 8–9 (stating, “Bollesen does not teach (i) the electronic device is a smart card device”). The Examiner finds Suwald to teach that the electronic device of Bollesen is a smart card device. Final Act. 9 (quoting Suwald ¶ 46). The Examiner states that such modification would be obvious “so as to offer an additional use for the device of Bollesen in order to enhance the functionality of the device.” Id. at 9–10; Ans. 15. Appellant argues that the rejection fails to provide proper motivation for modifying the Bollesen’s laptop computers/mobile telephone for use as a smart card. Appeal Br. 14. Appellant argues, inter alia, that the Examiner’s motivation of “enhancing functionality” is generic, and the Examiner does not explain how it applies to the specific references used in the combination. Id. at 15. Appellant argues that “enhancing functionality” is merely Appeal 2019-006815 Application 15/135,669 12 conclusory, and does not comply with the requirement that “such rationales . . . must be explained and shown to apply to the facts at hand.” Id. at 16. The Federal Circuit has identified “conclusory statements” as insufficient articulations of motivation to combine. In re Nuvasive, 842 F.3d 1376, 1383 (Fed. Cir. 2016). Nor can an examiner rely solely on common knowledge, common sense, or the level of skill in the art as a “wholesale substitute for reasoned analysis and evidentiary support.” Id. Although an examiner (or the Board) may rely on common sense to provide motivation “without any specific hint or suggestion in a particular reference,” such common sense must be supported by a “reasoned explanation that avoids conclusory generalizations.” Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355, 1362, 1366 (Fed. Cir. 2016) (internal citations omitted). The Federal Circuit has further explained, “[a]bsent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious,’” which would be inadequate. In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (finding error in the Board’s affirmance of an obviousness rejection having a rationale that it would be “intuitive” to combine the references). Here, the Examiner finds that integrating a smart card into the electronic device of Bollesen would “enhance the functionality of the device for which its benefit is evident.” Ans. 15. However, the Examiner does not explain what those “evident” benefits are, and why they would be obvious to one having ordinary skill in the art. The Examiner’s reliance on the general knowledge in the art lacks a specific benefit, such as “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, [or] more efficient.” See Appeal 2019-006815 Application 15/135,669 13 DyStar Textilfarben Gmbh & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). Providing a specific rationale permits Appellant to specifically traverse that rationale, and if traversed, permits the Examiner to provide evidence supporting the reliance on that specific knowledge in the art. The Examiner’s stated rationale of enhancing functionality, without explaining what functionality is being enhanced and what benefit is provided, is no different than stating the combination would have been obvious, and thus, inadequate. Because the Examiner has not provided a sufficient explanation of the motivation to combine Bollesen and Suwald, we are persuaded of error in the Examiner’s obviousness rejection of claim 1. Having found error in the rejection, we need not address Appellant’s additional assertions of error. Each of the remaining claims 2–7, 9, 10, 13, and 15–28 contains the “smart card” limitation, and the Examiner’s rejections of these claims rely on the same insufficient motivation. Final Act. 20–22 and 24–27. Consequently, we also are persuaded of error in those rejections, and we reverse the Examiner’s obviousness rejections of claims 1–7, 9, 10, 13, and 15–28. CONCLUSION For the above-described reasons, we reverse the Examiner’s rejection of claims 15–17 as being indefinite under 35 U.S.C. §112(b), reverse the Examiner’s rejection of claims 21, 23, and 24 as lacking written description under 35 U.S.C. §112(a), affirm the Examiner’s rejection of claim 22 as lacking written description under 35 U.S.C. §112(a), and reverse the Examiner’s rejections of claims 1–7, 9–10, 13, 15–21 and 24–28 as being Appeal 2019-006815 Application 15/135,669 14 obvious over the applied references under 35 U.S.C. §103, as detailed below. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21–24 112(a) Written Description 22 21, 23, 24 15–17 112(b) Indefiniteness 15–17 1, 3–5, 9, 13,19–20 103 Bollesen, Suwald, Chang, Yilmaz 1, 3–5, 9, 13, 19–20 6, 21, 23 103 Bollesen, Suwald, Chang, Yilmaz, Hollenbeck 6, 21, 23 7, 24 103 Bollesen, Suwald, Chang, Yilmaz, Hollenbeck, Leighton 7, 24 22 103 Bollesen, Suwald, Chang, Yilmaz, Wang 22 2, 10, 15– 18, 25–28 Bollesen, Suwald, Chang, Yilmaz, Hollenbeck, Leighton 2, 10, 15– 18, 25–28 Overall Outcome 22 1–7, 9, 10, 13, 15–21, 23–28 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART