Ex Parte 6052062 et alDownload PDFPatent Trial and Appeal BoardMay 28, 201590012268 (P.T.A.B. May. 28, 2015) Copy Citation 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. 90/012,268 04/26/2012 6052062 012378/000005 4574 27299 7590 05/28/2015 GAZDZINSKI & ASSOCIATES, PC 16644 WEST BERNARDO DRIVE SUITE 201 SAN DIEGO, CA 92127 EXAMINER RUBIN, MARGARET R ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/28/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROUND ROCK RESEARCH, LLC Appellant ____________ Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 Technology Center 3900 ____________ Before JAMES T. MOORE, ERIC B. CHEN, and JENNIFER L. MCKEOWN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 2 This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final rejection of claims 1–49. Claims 6, 19, 31, and 39 were amended during the reexamination proceeding. We have jurisdiction under §§ 134(b) and 306. We affirm. STATEMENT OF THE CASE Reexamination Proceedings A request for ex parte reexamination of U.S. Patent No. 6,052,062 (the ’062 patent) was filed on April 26, 2012, and assigned Reexamination Control No. 90/012,268. The ’062 patent entitled “Cards, Communication Devices, and Methods of Forming and Encoding Visibly Perceptible Information on the Same,” issued April 18, 2000, to Mark E. Tuttle, based on Application No. 08/920,329, filed August 20, 1997. The ’062 patent is said to be assigned to Round Rock Research, LLC, the real party in interest. (App. Br. 1.) Appellant filed an Appeal Brief, dated December 9, 2013, appealing the final rejection of claims 1–49. The appeal was dismissed on August 27, 2014 because no Examiner’s Answer was entered. In the Examiner’s Answer, mailed September 10, 2014, the Examiner did not maintain the original rejections of claims 1–49, but instead, introduced a new ground of rejection (Ans. 4), which was approved by the Technology Center Director (Ans. 104). Appellant filed a Reply Brief, dated November 7, 2014, Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 3 reinstating the appeal pursuant to 37 C.F.R. § 41.41, in response to the new ground of rejection in the Examiner’s Answer. Appellant’s Invention Appellant’s invention relates a remote intelligent communication device having a card-thin housing. The card-thin housing includes an upper surface, a lower surface, and at least one side extending between the upper surface and the lower surface. The side has visibly perceptible information. The housing has communication circuitry configured to communicate and receive electronic signals. (Abstract.) The Claims Claims 1 and 19 are exemplary, with underlining and bracketing to indicate claim amendments and with disputed limitations in italics: 1. A remote intelligent communication device comprising: a card-thin housing including: an upper surface having plural dimensions; a lower surface having plural dimensions; and at least one side having a dimension extending between the upper surface and the lower surface forming the card-thin housing, the side having visibly perceptible information thereon and the dimension of the side being less than smallest dimensions of the upper and lower surfaces; and communication circuitry within the housing configured to at least one of communicate and receive electronic signals. Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 4 19. A communication device comprising: a substrate having a support surface; an antenna on the support surface; transponder circuitry coupled with the antenna; a battery in electrical connection with the transponder circuitry; a cured resin upon the support surface, the antenna, the transponder circuitry and the battery, the cured resin and substrate forming a housing having an upper surface and a lower surface interconnected by side surfaces, the side surfaces individually having a dimension less than smallest dimensions of the upper and lower surfaces; and identification [indica] indicia on at least one of the side surfaces of the housing The Rejections 1. Claims 1, 4–9, 12–18, and 23–26 stand rejected under 35 U.S.C. §103(a) as obvious over Data Sheet (Cotag International, Data Sheet—928 Cotag Card (July 1996)), EDN (Gary Legg, Smart RF Tags Enter Beta Test, EDN Access—The Design Information Source of the Electronics Industry (Aug. 1, 1996)), and JP ’752 (JP S58-197752; Nov. 17, 1983). 2. Claims 2, 3, 10, 11, 19–22, and 31–41 stand rejected under 35 U.S.C. §103(a) as obvious over Data Sheet, EDN, JP ’752, and Brady (US 5,682,143; Oct. 28, 1997). 3. Claims 27, 28, 42–44, 46, 47, and 49 stand rejected under 35 U.S.C. §103(a) as obvious over Brady, Corbett (US 5,985,377; Nov. 16, 1999), and JP ’752. Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 5 4. Claims 29, 30, 45, and 48 stand rejected under 35 U.S.C. §103(a) as obvious over Brady, Corbett, JP ’752, and Data Sheet. 5. Claims 1, 2, 4–17, 23–26, and 31–38 stand rejected under 35 U.S.C. §103(a) as obvious over Walton (US 4,782,342; Nov. 1, 1988) and Lebby (US 5,493,437; Feb. 20, 1996). 6. Claims 27–30 and 42–49 stand rejected under 35 U.S.C. §103(a) as obvious over Walton, Lebby, and Corbett. ANALYSIS §103 Rejection—Data Sheet, EDN, and JP ’752 We are unpersuaded by Appellant’s arguments (App. Br. 6–7) that the combination of Data Sheet, EDN, and JP ’752 would not have rendered obvious independent claim 1, which includes the limitation “the side having visibly perceptible information thereon.” The Examiner found the batch code and serial number for the Cotag Card of Data Sheet corresponds to the limitation “visibly perceptible information.” (Ans. 20.) The Examiner acknowledged that the batch code and serial number for the Cotag Card are located on the front face, and thus, relied upon Figure 2 of JP ’752, which illustrates marking the side surface of a semiconductor package, for teaching the limitation “the side having visibly perceptible information thereon.” (Id.) The Examiner concluded that it would have been obvious to combine JP ’752 with Data Sheet and EDN because: the combination of EDN and Data Sheet contain a base device (i.e., a card) upon which the claimed invention can be seen as Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 6 an “improvement” (the claimed invention improves upon the combination of EDN and Data Sheet by placing visibly perceptible information on the side rather than the front or back of the card . . . ) and that when “the other surfaces are already reserved for other functions such that the side is an attractive alternative since it is not already reserved for other functions.” (Ans. 22.) Data Sheet is a product specification guide for the 928 Cotag Card, “a small transponder the size of a credit card which operates in the induction communications band.” (P. 1.) In an unreferenced figure from Data Sheet (p. 1), reproduced below, a face of the Cotag Card is illustrated having a batch code and serial number (i.e., “YYWW P NNNNN”) (p. 2): Thus, Date Sheet teaches the limitation “visibly perceptible information.” Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 7 JP ’7521 relates to a semiconductor device package having an indication mark (e.g., package name ground terminal number (p. 1, “Detailed description of the invention”)) printed on a notch residing along an outside circumference of the package. (P. 1, “Claims.”) JP ’752 explains that conventionally, a first terminal position of the semiconductor device package is marked on an upper surface of the package. (P. 1, “Detailed description of the invention.”) However, JP ’752 explains that “when semiconductor elements are assembled to make a semiconductor device at almost the same position as the position marking the first terminal position of said package, display by performance needs to be added” and that “the symbol displayed on the base substance in advance may cause misconception of display by performance.” (Id.) Figure 2 of JP ’752, reproduced below, illustrates a partial perspective view of an improved semiconductor device package, in which indication mark (e.g., “1”) is printed in notch part 1 on a sided surface: 1 We refer to the certified English-language translation from Morningside Translations dated April 26, 2012, provided by the third party requester. Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 8 Accordingly, JP ’752 explains that “when there are a various types of packaging having different positions of ground terminals and the same package appearance, there is an advantage that mistaking the package to be used for assembly can be avoided.” (P. 3.) Thus, JP ’752 teaches the limitation “the side having visibly perceptible information thereon.” We agree that a person of ordinary skill in the art would have recognized that marking the side surface of a semiconductor device package (i.e., a card-shaped object), as taught by JP ’752, rather than marking the face of the Cotag Card of Data Sheet, would provide the ability to reserve the front and back faces of the Cotag Card for other functions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thus, we find no error in the Examiner’s conclusion (Ans. 22) that modifying the Cotag Card of Data Sheet to incorporate marking a side surface of a card-shaped shaped object, as taught by JP ’752, would have been obvious. Appellant argues that “neither Data Sheet nor EDN includes any features that are similar in structure or function to the notch utilized in the notch printing techniques described in JPN ‘752.” (App. Br. 6.) Similarly, Appellant argues “the housing of Data Sheet does not provide a location analogous to the direction-indicating notch of JPN ‘752.” (Id.) However, the Examiner cited JP ’752 for the general disclosure of placing markings on the side of a card-shaped object, rather than incorporating the notch part of JP ’752 into the Cotag Card of Data Sheet. (See Ans. 20.) Appellants also argues “for items of such extreme aspect ratio (e.g. paper, cardstock, credit cards, etc.), it is the accepted wisdom that one should print on the largest dimensions of the item” and “[i]n Data Sheet, Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 9 identification information is printed on the side of the card with the largest dimensions.” (App. Br. 6.) However, the Examiner cited to JP ’752, rather than Data Sheet, for teaching the limitation “the at least one side surface having visibly perceptible indicia.” (Ans. 20.) Furthermore, as discussed previously, the combination of Data Sheet, EDN, and JP ’752 is based on the improvement of a similar device in the same way as in the prior art. Appellant further argues that the “combination of the ‘notch’ of JPN ‘752 (the notch seemingly a requirement to prevent the printing being affected by the manufacturing process) with the other references would necessarily result in a direct and undesirable impact on the cosmetics of the card.” (App. Br. 7.) However, the Examiner cited JP ’752 for the general disclosure of placing markings on the side of a card-shaped object, rather than incorporating the notch part of JP ’752 into the Cotag Card of Data Sheet. (See Ans. 20.) Again, the combination of the combination of Data Sheet, EDN, and JP ’752 is based on the improvement of a similar device in the same way as in the prior art. Thus, we are unpersuaded of error in the Examiner’s conclusion that the combination of Data Sheet, EDN, and JP ’752 would have rendered obvious independent claim 1, which includes the limitation “the side having visibly perceptible information thereon.” We are unpersuaded by Appellant’s arguments (Reply Br. 1–5) that the various combinations of references which include JP ’752 are improper because JP ’752 is non-analogous art. Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 10 The Examiner found that JP ’752 is analogous art to the claimed invention. (Ans. 24.) In particular, the Examiner found that JP ’752 “teach[es] communication cards.” (Id.) As discussed previously, JP ’752 relates to a semiconductor device package having an indication mark (e.g., package name ground terminal number (p. 1, “Detailed description of the invention”)) printed on a notch residing along an outside circumference of the package. (P. 1, “Claims.”) Figure 2 of JP ’752, reproduced previously, illustrates a partial perspective view of the improved semiconductor device package, such that the device package is card-shaped. Also discussed previously, JP ’752 explains that conventionally, a first terminal position of the semiconductor device package is marked on an upper surface of the package, however, “semiconductor elements are assembled to make a semiconductor device at almost the same position as the position marking.” (P. 1, “Detailed description of the invention.”) The ’062 patent discloses the following: In many applications, providing of manufacturing or issuance information upon one of the faces of the cards is not cosmetically pleasing to the end user. However, this information is useful for various reasons. For example, the printed information is valuable to the end user for providing issuance information, security and/or tracking of an associated product in many applications. (Col. 1, ll. 21–27.) The ’062 patent further discloses that “[t]herefore, there is a need to provide alphanumeric and other information upon a card without impacting the cosmetic properties of the card, or utilizing space which may be necessary for magnetic stripes, signature lines, or other information.” Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 11 (Col. 1, ll. 28–32.) Thus, we see no error in the Examiner’s finding that JP ’752 is from the same field of endeavor as Appellant’s claimed invention because both JP ’752 and claimed invention relate to placing indicia on the side surface of a card-shaped object, rather than the faces. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Even assuming for the sake of argument that JP ’752 is not in the same field of endeavor, JP ’752 is reasonably pertinent to the particular problem disclosed in the ’062 patent for providing manufacturing or issuance information on the card in an alternate location other than the faces of the card. In particular, JP ’752 proposes printing the indication mark on the side surface of the semiconductor device package, because assembly of the semiconductor device can obscure an indication mark printed on the top surface of the semiconductor device package. (See p. 1, “Detailed description of the invention”; see also Fig. 2.) Thus, JP ’752 provides a solution to the problem of providing manufacturing or issuance information on the card in an alternate location other than the faces of the card. See Bigio, 381 F.3d at 1325. Appellant argues that “the semiconductor device of JP ‘752 is not from the same field of endeavor.” (Reply Br. 3.) In particular, Appellant argues that: the present invention of Claims 1 – 49 are directed towards “a remote intelligent communication device" (Claim 1); “a radio frequency identification device” (Claim 6); “a card” (Claim 13); “a communication device” (Claim 19); “a method of forming a card” (Claims 23 and 27); “a method of forming a communication device” (Claims 31 and 39); “a method of forming a remote intelligent communication device” (Claim Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 12 34); and “a method of encoding visibly perceptible information on a communication device” (Claims 42 and 46). (Id. (emphasis in original).) However, the appropriate field of endeavor is determined by “explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” Bigio, 381 F.3d at 1325. As discussed previously, the field of endeavor, as disclosed by the ’062 patent, is placing indicia on the side surface of a card-shaped object, rather than the faces. (See col. 1, ll. 21–32.) Appellant further argues: an inventor considering the problem of “a need to provide alphanumeric and other information upon a card without impacting the cosmetic properties of the card” . . . would not have been motivated to consider JP ‘752 when making his invention, particularly since JP ‘752 is directed towards avoiding mistaking these markings with markings used for semiconductor device assembly. (Reply Br. 5 (emphasis in original).) Contrary to Appellant’s arguments, as discussed previously, JP ’752 proposes printing the indication mark on the side surface of the semiconductor device package, because assembly of the semiconductor device can obscure an indication mark printed on the top surface of the semiconductor device package. (See p. 1, “Detailed description of the invention”; see also Fig. 2.) Therefore, we agree with the Examiner that JP ’752 is analogous art to the claimed invention. Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a). Claims 4 and 5 depend from claim 1, and Appellant has Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 13 not presented any substantive arguments with respect to these claims. Therefore, we sustain the rejection of claims 4 and 5 under 35 U.S.C. § 103(a), for the same reasons discussed with respect to independent claim 1. Independent claims 6, 13, and 23 recite limitations similar to those discussed with respect to independent claim 1, and Appellant has not presented any substantive arguments with respect to these claims. We sustain the rejection of claims 6, 13, and 23, as well as dependent claims 7– 9, 12, 14–18, and 24–26 for the same reasons discussed with respect to claim 6, 13, and 23. §103 Rejection— Data Sheet, EDN, JP ’752, and Brady Claims 2, 3, 10, and 11 Claims 2, 3, 10, and 11 depend from independent claims 1 and 6, and Appellant has not presented any additional substantive arguments with respect to these claims. (App. Br. 7.) We sustain the rejection of claims 2, 3, 10, and 11 for the same reasons discussed with respect to rejection of claims 1 and 6 under 35 U.S.C. § 103(a) as obvious over Data Sheet, EDN, and JP ’752. Claims 19–22 and 31–41 We are not persuaded by Appellants’ arguments (App. Br. 8–9) that the Examiner improperly combined Data Sheet, EDN, JP ’752, and Brady to reject claims 19–22 and 31–41 under 35 U.S.C. §103(a). Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 14 The Examiner found that the radio frequency tag of Brady, formed with an organic cover on a substrate, corresponds to the limitation “a cured resin upon the support surface, the antenna, the transponder circuitry and the battery.” (Ans. 29.) The Examiner concluded that “one of ordinary skill in the art could have predictably applied the known technique taught by Brady . . . in the same way to the ‘base’ device taught by the combination of Data Sheet or EDN” and that “one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success because Brady provides general teachings of covering a communication card with an encapsulant.” (Ans. 42.) Brady relates to “radio frequency (RF) tagging.” (Col. 1, ll. 5–6.) Figure 1 of Brady illustrates radio frequency tag 100 that includes substrate 141, semiconductor circuit 111, and antenna 133, in which all components are covered by organic cover 151 for environmental protection. (Col. 3, ll. 31–40.) We agree that the combination of Brady, Data Sheet, EDN, and JP ’752 is nothing more than incorporating the known organic cover of Brady for protecting a radio frequency identification tag with the known Cotag Card of Data Sheet and the known RFID card of EDN, as modified by JP ’752, to yield predictable results. See KSR, 550 U.S. at 416. Thus, we find no error in the Examiner’s conclusion (Ans. 42) that modifying the combination of Data Sheet, EDN, and JP ’752 with Brady would have been obvious. Appellant argues that “JPN ‘752 teaches away from the proposed combination with Brady.” (App. Br. 8.) In particular, Appellant argues that Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 15 “all surfaces of the card of Brady are at least covered in organic adhesive 161 for sealing” and accordingly, “JPN ‘752 would discourage printing on any surface of the card of Brady, because it would lead to probable ‘misconception’ (specifically, distortion of the printed symbols or characters).” (Id.) Appellant have provided insufficient evidence to support the argument that adhesive 161 of Brady, which secures substrate 141 to cover layer 151, would result in the “distortion of the printed symbols or characters.” Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139– 140 (Fed. Cir. 1996). Appellant also reiterate the argument that JP ’752 is non-analogous art. (Reply Br. 1–5.) However, we are not persuaded by this argument for the same reasons discussed previously to the rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over Data Sheet, EDN, and JP ’752. Accordingly, we sustain the rejection of claims 19–22 and 31–41 under 35 U.S.C. § 103(a). §103 Rejection—Brady, Corbett, and JP ’752 With respect to claims 27, 28, 42–44, 46, 47, and 49, Appellant merely reiterates arguments previously presented with respect to the improper combination of Brady and JP ’752. (App. Br. 9.) We sustain the rejection of claims 27, 28, 42–44, 46, 47, and 49 for the same reasons discussed with respect to rejection of claims 19–22 and 31–41 under 35 U.S.C. § 103(a) as obvious over Data Sheet, EDN, JP ’752, and Brady. Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 16 §103 Rejection—Brady, Corbett, JP ’752, and Data Sheet With respect to claims 29, 30, 45, and 48, Appellant merely reiterates arguments previously presented with respect to the improper combination of Brady and JP ’752. (App. Br. 9.) We sustain the rejection of claims 29, 30, 45, and 48 for the same reasons discussed with respect to rejection of claims 19–22 and 31–41 under 35 U.S.C. § 103(a) as obvious over Data Sheet, EDN, JP ’752, and Brady. §103 Rejection—Walton and Lebby We do not reach the additional rejections of claims 1, 2, 4–17, 23–26, and 31–38 under 35 U.S.C. § 103(a) as obvious over Walton and Lebby. Affirmance of the obviousness-based rejections discussed previously renders it unnecessary to reach the remaining obviousness rejections, as all of pending claims have been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). §103 Rejection—Walton, Lebby, and Corbett We do not reach the additional rejections of claims 27–30 and 42–49 under 35 U.S.C. § 103(a) as obvious over Walton, Lebby, and Corbett. Affirmance of the obviousness-based rejections discussed previously renders it unnecessary to reach the remaining obviousness rejections, as all of pending claims have been addressed and found unpatentable. Cf. Gleave, 560 F.3d at 1338. Appeal 2015-004273 Reexamination Control 90/012,268 Patent 6,052,062 17 DECISION The Examiner’s decision rejecting claims 1–49 is affirmed. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED cc: Patent Owner: GAZDZINSKI & ASSOCIATES, PC 16644 WEST BERNARDO DRIVE SUITE 201 SAN DIEGO, CA 92127 Third Party Requester: TUCKER ELLIS LLP 950 MAIN AVENUE SUITE 1100 CLEVELAND, OR 44113-7213 lb Copy with citationCopy as parenthetical citation