Ex Parte Eray et al

Patent Trial and Appeal Board

May 14, 2014

11994879 (P.T.A.B. May. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YVES ERAY and GUY ENOUF
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Appeal 2012-004818
Application 11/994,879
Technology Center 2800
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Before MARK NAGUMO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-20 under 35 U.S.C. § 103(a) as unpatentable
over the combined prior art of Sickert1 and Bombay.2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).

1 Sickert et al., WO 2005/045754 A1, published May 19, 2005.
Appeal 2012-004818
Application 11/994,879

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We AFFIRM.

Claim 1 is representative of the claimed subject matter (emphasis
added):
1. A folding document comprising:
a support (10) having at least first and second portions (12 and 14)
adapted to pivot relative to each other about a fold line (16) along edges (18,
20) of said portions; and
a contactless electronic device (1) mounted in the first portion (12) of
the support and including an electronic microcircuit (3) and an antenna (2)
electrically connected to said electronic microcircuit and adapted to be
(electro)magnetically coupled to an external reading station (5), said
electronic microcircuit (3) being adapted to exchange information with the
external environment,
wherein most of the antenna (2) extends over a region corresponding
to only a half of the first portion (12) and delimited by the fold line (16), and
the second portion (14) is provided with means (7) for disturbing the
electromagnetic coupling, disposed substantially in line with the antenna (2)
upon the first portion (12) and the second portion (14) being substantially
superposed one on the other, and adapted to render inoperative or operative
the exchange of information with the external environment as a function of
the angular offset between the first and second portions (12 and 14).

The only other independent claims on appeal, claims 17 and 18, each
recite the same limitation that is in dispute as italicized above in claim 1
(Claims App’x).

ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we determine that a preponderance of the evidence
supports the Examiner’s determination that the claimed subject matter of

2 Bombay et al., US 2007/0205953 A1, published Sept. 6, 2007.
Appeal 2012-004818
Application 11/994,879

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representative claim 1 is unpatentable within the meaning of § 103 in view
of the applied prior art. Accordingly, we will sustain the Examiner’s
rejection, and we add the following primarily for emphasis.
It is axiomatic that “the PTO must give claims their broadest
reasonable construction consistent with the specification . . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) . “[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id.
The main limitation in dispute is whether the claimed “most of the
antenna (2) extends over a region corresponding to only a half of the first
portion (12) and delimited by the fold line (16)” as recited in claim 1 is
obvious in view of Bombay’s Fig. 2, which depicts an antenna [4] located in
the middle of the relevant side [12] of Bombay’s folded document [1]
(Reply Br. 3, Ans. 6, 7, 13; Bombay Fig. 2).
Appellants have not disputed the Examiner’s reasonable interpretation
that “most of the antenna” (emphasis added) extending over this region
encompasses only “just more than 50%” of the antenna (Ans. 13), such as,
e.g., 51% of the antenna (see, e.g., Reply Br. 3 (“even following the
Examiner’s interpretation . . .”)). Notably, Appellants have not directed our
attention to any persuasive reasoning or credible evidence to establish that
the Examiner’s interpretation is unreasonable, nor to any portion of the
Specification that limits the definition of “most” to exclude “just more than
50%” of the antenna as pointed out by the Examiner.
Appeal 2012-004818
Application 11/994,879

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While Appellants urge that Bombay’s Fig. 2 corresponds to no more
than half of the antenna in the left-hand half of the relevant page (Reply Br.
3), it is well established that a prima facie case of obviousness exists where
the prior art and claimed ranges overlap, as well as in those cases where the
claimed range and the prior art range, though not overlapping, are
sufficiently close that one skilled in the art would have expected them to
have the same properties. Cf. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990); Titanium Metals Corp. v. Banner, 778
F.2d 775, 783 (Fed. Cir. 1985).
On this record, the claimed range of “most,” that is, just over 50%, is
so close to 50% of the antenna (as admittedly shown by Bombay) that one
skilled in the art would have expected such antenna configurations to have
the same properties. No criticality has been established for having 51% of
the antenna located in the claimed region versus having 50% of the antenna
located in the claimed region.
Accordingly, we affirm the Examiner’s § 103 rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

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