Ex Parte Bhatt et al

Board of Patent Appeals and Interferences

Aug 27, 2008

10449019 (B.P.A.I. Aug. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ASHWINKUMAR BHATT, JAMES W. FULLER, JR.,
JAMES J. McNAMARA, JR., and WILLIAM WIKE
____________

Appeal 2008-0670
Application 10/449,019
Technology Center 2600
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Decided: August 27, 2008
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and
KARL D. EASTHOM, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 33, 34, and 39-44, which are all of the claims pending in
this application. Claims 1-32 and 35-38 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
Appeal 2008-0670
Application 10/449,019

We affirm.
Appellants’ invention relates to an electronic card which includes
within a thin body portion, inter alia, a semiconductor chip, a voice
recording assembly, externally drivable CD-ROM and floppy disk drives,
and an antenna. (Spec. 2-3).
Claim 33 is illustrative of the invention and reads as follows:
33. An electronic card comprising:
a body portion including first and second parts, said first and second
parts each including an external surface;
a semiconductor chip located substantially within said body portion;
a voice recording assembly located substantially within said body
portion,
said voice recording assembly including a printed circuit board and
speaker and a battery operatively connected to said voice recording
assembly for providing power thereto, said printed circuit board and
said speaker and said battery being positioned substantially between
said first and second parts of said body portion;
an externally drivable CD-ROM positioned within said body portion,
said first part of said body portion including an opening therein
through which said CD may be read;
an externally drivable floppy disk also positioned within said body
portion;
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a magnetic stripe positioned on said body portion;
a bar code located on said external surface of said first part of said
body portion adjacent said magnetic stripe; and
an antenna located on said body portion or substantially within said
body portion,
said electronic card being of credit card size.
The Examiner relies on the following prior art references to show
unpatentability:
Wiegand US 3,774,179 Nov. 30, 1973
Nagata US 4,677,657 Jun. 30, 1987
Hiramatsu US 5,180,901 Jan. 19, 1993
Goldberg US 5,434,398 Jul. 18, 1995
Smith US 5,612,845 Mar.18, 1997
Wilk US 5,878,285 Mar. 2, 1999
Fehrman US 6,193,163 B1 Feb. 27, 2001
Tseng US 6,616,052 B2 Sep. 9, 2003
(filed Dec. 3, 2001)

M. Tanaka, Y. Suzuki, K. Araki, and R. Suzuki (Tanaka), “Microstrip
antenna with solar cells for microsatellites,” 31 Electronics Letters no. 1, 5-
6 (1995).

S. Vaccaro, J. R. Mosig, and P. de Maagr (Vaccaro), “Linearly and
circularly polarized slot antennas integrating solar cells,” IEEE 478-85
(2001).

Claims 33, 34, 41, and 42 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nagata in view of Tseng, Smith, and Fehrman.
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Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagata in view of Tseng, Smith, and Fehrman and further
in view of Wilk.
Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagata in view of Tseng, Smith, Fehrman and Wilk and
further in view of Hiramatsu.
Claim 43 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagata in view of Tseng, Smith, and Fehrman and further
in view of either Tanaka or Vaccaro.
Claim 44 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagata in view of Tseng, Smith, and Fehrman and further
in view of either Wiegand or Goldberg.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
(see 37 C.F.R. § 41.37(c)(1)(vii)).

ISSUES
(i) Under 35 U.S.C. § 103(a), with respect to appealed claims 33,
34, 41, and 42, would one of ordinary skill in the art at the time
of the invention have found it obvious to combine Nagata,
Tseng, Smith, and Fehrman to render the claimed invention
unpatentable?
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(ii) Under 35 U.S.C. § 103(a), with respect to appealed claim 39,
would one of ordinary skill in the art at the time of the
invention have found it obvious to modify the combination of
Nagata, Tseng, Smith, and Fehrman by adding Wilk to render
the claimed invention unpatentable?
(iii) Under 35 U.S.C. § 103(a), with respect to appealed claim 40,
would one of ordinary skill in the art at the time of the
invention have found it obvious to modify the combination of
Nagata, Tseng, Smith, Fehrman, and Wilk by adding
Hiramatsu to render the claimed invention unpatentable?
(iv) Under 35 U.S.C. § 103(a), with respect to appealed claim 43,
would one of ordinary skill in the art at the time of the
invention have found it obvious to modify the combination of
Nagata, Tseng, Smith, and Fehrman by adding either Tanaka or
Vaccaro to render the claimed invention unpatentable?
(v) Under 35 U.S.C. § 103(a), with respect to appealed claim 44,
would one of ordinary skill in the art at the time of the
invention have found it obvious to modify the combination of
Nagata, Tseng, Smith, and Fehrman by adding either Wiegand
or Goldberg to render the claimed invention unpatentable?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
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Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
‘there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness’
. . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)(quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
With respect to the 35 U.S.C. § 103(a) rejection of independent claim
33 based on the combination of Nagata, Tseng, Smith, and Fehrman,
Appellants’ arguments in response assert a failure by the Examiner to
establish a prima facie case of obviousness since a proper basis for the
Examiner’s proposed combination of references has not been established.
According to Appellants (App. Br. 7-10; Reply Br. 1-2), the applied prior art
references all suggest, in contrast to the claimed invention which includes a
large plurality of components within a small credit card size structure, that
the inclusion of more than one or two elements in a small sized card is
impossible.
We do not find Appellants’ arguments to be persuasive in convincing
us of any error in the Examiner’s stated position. We agree with the
Examiner that, Appellants’ arguments to the contrary notwithstanding,
Nagata discloses that the inclusion of more than one or two elements in a
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credit card size structure is indeed possible. As pointed out by the Examiner
(Ans. 17), Nagata’s card structure includes, inter alia, a power source,
display, microphone, speaker, antenna, memory, CPU, and magnetic strip.
We further find to be without merit Appellants’ contention (App. Br.
8-10) that the Examiner’s proposed combination of prior art references must
fail since Nagata, as well as the secondary references to Tseng, Smith and
Fehrman, all disclose that the described components in each of the
references fill all the available physical space, thereby making the addition
of further elements impossible. We find, however, as pointed out by the
Examiner (Ans. 17, 21, and 22), that there is simply no support in the
disclosure of any of the prior art references for Appellants’ conclusion that
the cited structures of each of the references require the full utilization of
available physical space for implementation.
We further find Appellants’ argument to be unpersuasive since it is
apparent to us from the Examiner’s stated position (Ans. 8-9) that the
Examiner is not suggesting the bodily incorporation of the CD-ROM, floppy
disk, and bar code structures, respectively, of Tseng, Smith, and Fehrman
into the device of Nagata. Rather, it is the teaching of Tseng, Smith, and
Fehrman of the advantages of incorporating various types of storage
structures into a credit card sized electronic device that is relied on as a
rationale for the proposed combination. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference.... Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 414, 425 (CCPA 1981) and
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
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We further do not agree with Appellants’ contention that the
Examiner has used impermissible hindsight in combining the teachings of
Nagata, Tseng, Smith, and Fehrman. In our view, for all of the reasons
articulated by the Examiner (Ans. 8-9), the skilled artisan would have
recognized and appreciated that the card structure implementation of CD-
ROM, floppy disk, and bar code storage devices taught by Tseng, Smith, and
Fehrman would have served as an obvious enhancement to the credit card
sized electronic device of Nagata. It is our finding that the Examiner’s
proffered combination of Nagata, Tseng, Smith, and Fehrman reasonably
teaches and/or suggests Appellants’ claimed invention in terms of familiar
elements that would have been combined by an artisan having common
sense using known methods to achieve a predictable result. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Leapfrog
Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(quoting KSR, 127 S. Ct. at 1739-40 (2007)).
For the above reasons, since it is our opinion that the Examiner has
established a prima facie case of obviousness which has not been overcome
by any convincing arguments from Appellants, the Examiner’s 35 U.S.C.
§ 103(a) rejection of independent claim 33, as well as dependent claims 34
and 39-44 not separately argued by Appellants, is sustained.

CONCLUSION
In summary, we have sustained the Examiner’s 35 U.S.C. § 103(a)
rejections of all of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 33, 34, and 39-44 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED

GW

LAWRENCE R. FRALEY
HINMAN, HOWARD & KATTELL
700 SECURITY MUTUAL BUILDING
BINGHAMTON, NY 13901
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