Ex Parte Hammad et al

Patent Trial and Appeal Board

Dec 13, 2016

12332990 (P.T.A.B. Dec. 13, 2016)

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.
12/332,990 12/11/2008 Ay man Hammad 80083-761481(022220US) 5541
66945 7590 12/15/2016
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
FAN, HONGMIN
ART UNIT PAPER NUMBER
2686
NOTIFICATION DATE DELIVERY MODE
12/15/2016 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):
ipefiling@kilpatricktownsend.com
jlhice@kilpatrick.foundationip.com
EDurrell @ kilpatrickto wnsend .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AYMAN HAMMAD and PHIL DIXON
Appeal 2015-003626
Application 12/332,990
Technology Center 2600
Before JOSEPH L. DIXON, MELISSA A. HAAPALA, and
SCOTT B. HOWARD, Administrative Patent Judges.
HAAPALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 34, 35, 37, 38, 40, 50-52, 57, 60—62, and 64—70, which
constitute all of the claims currently pending in the application. See Final
Act. 1; Advisory Act. 1 (entering the amendment to cancel claim 63). We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2015-003626
Application 12/332,990
INVENTION
Appellants’ invention is directed to radio frequency shielding for
portable electronic devices, such as contactless smartcards. Spec. 11.
Claim 34 is exemplary of the subject matter on appeal:
34. An apparatus comprising:
a cellular phone comprising a first antenna, an electrical
filter coupled to the first antenna, and a radio frequency
identification (RFID) device coupled to the first antenna via the
electrical filter, wherein the first antenna is configured to
communicate with an authorized reader in a frequency range, and
the electrical filter is configured to filter frequencies outside the
frequency range; and
an RF shield comprising an electrically conductive, non­
ferromagnetic material, wherein the RF shield is configured to
prevent unauthorized transfer of data between a second antenna
external to the cellular phone and the first antenna, and wherein
the RF shield is further configured to attenuate only signals
inside the frequency range passing from the second antenna to
the first antenna so that signals passing through the RF shield
within the frequency range are attenuated below an activation
threshold for the RFID device.
REJECTIONS ON APPEAF
Claims 34, 35, 37, 38, 40, 50-52, 57, 60-62, and 64—70 stand rejected
under 35U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 3^4.
Claims 34, 37, 38, 40, 57, 62, 64, and 65 stand rejected under 35
U.S.C. § 103(a) as being obvious over the combination of Bason (US
7,243,840 B2; issued July 17, 2007), Fabrou (US 7,784,684 B2; issued Aug.
31, 2010), Shafir (US 2005/0073415 Al; published Apr. 7, 2005), and
Moskowitz (US 2006/0044206 Al; published Mar. 2, 2006). Final Act. 4—7
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Appeal 2015-003626
Application 12/332,990
Claims 35, 50-52, 60, 61, and 66—70 stand rejected as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Bason,
Labrou, Shafir, Moskowitz, and various additional references. Final Act. 7—
12.
ISSUES
Appellants’ contentions present us with the following issues:
A) Did the Examiner err in rejecting all pending claims under 35
U.S.C. § 112, first paragraph?
B) Did the Examiner establish the combination of Bason, Labrou,
Shafir, and Moskowitz teaches or suggests wherein the RF shield is further
configured to attenuate only signals inside the frequency range passing from
the second antenna to the first antenna so that signals passing through the
RF shield within the frequency range are attenuated below an activation
threshold for the RFID device (“RF shield wherein” limitation), as recited in
independent claims 34 and 65?
ANALYSIS
We have reviewed the Examiner’s rejections, Appellants’ contentions,
and the evidence of record. Appellants have persuaded us the Examiner has
failed to establish that the claims do not comply with the written description
requirement or are unpatentable over the cited prior art.
Issue A: 35 U.S.C. § 112, First Paragraph Rejection
The Examiner finds the pending claims do not do not comply with the
written description requirement because the Specification does not disclose
“the RF shield is configured to attenuate only signals inside the frequency
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Appeal 2015-003626
Application 12/332,990
range,” as recited in both independent claims 34 and 65.1 In particular, the
Examiner finds the Specification’s disclosure is broader than the claimed
limitation because it only discloses the RF shield is capable of attenuating
the RF signals within the range of operation of the device, but does not say
anything about the effect outside the RF range of the operation. See Ans. 3.
Section 112, first paragraph, of 35 U.S.C. requires the specification to
reasonably convey to those skilled in the art that the inventor had possession
of the claimed subject matter as of the filing date. Ariad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The claim language at
issue is a negative limitation that sets forth the RF shield is configured to
attenuate only signals inside the frequency range (i.e., does not attenuate
signals outside the frequency range). Negative claim limitations are
adequately supported when the specification describes a reason to exclude
the relevant limitation. Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344,
1351 (Fed. Cir. 2012).
Appellants contend the Specification provides support for the disputed
limitation in paragraphs 28 and 29. App. Br. 7—8; Reply Br. 3. The cited
portion of the Specification describes “the RF shield 100 may be designed to
act as a signal attenuator within the range of that frequency range of
operation [for the device].” Spec. 129. The Specification further describes
1 The Examiner further finds the Specification does not disclose an
additional limitation recited in the independent claims (“RF shield does not
attenuate only signals outside the frequency range”). Final Act. 2.
However; we agree with Appellants that limitation is not recited in the
claims and, therefore, is not a proper basis for a § 112 11 rejection. See
App. Br. 7; Reply Br. 2. Accordingly, as the Examiner does not explicitly
withdraw the rejection over this limitation (see Ans. 2), we do not sustain the
§ 112 11 rejection for this limitation, to the extent it is still pending.
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Appeal 2015-003626
Application 12/332,990
“the RF shield 100 acts as a mismatched antenna or an RF signal absorber to
attenuate those frequencies used for the operation of the contactless portable
consumer device 102.” We agree with Appellants that these sections would
reasonably convey to one of ordinary skill a reason to exclude frequencies
outside the frequency range from the signals for which the RF shield is
configured to attenuate. Accordingly, we do not sustain the 35 U.S.C. § 112,
first paragraph rejection.
Issue B: 35 U.S.C. § 103(a) Rejections
Appellants contend that obviousness of the claims has not been
established because the Examiner fails to point out which reference(s) are
interpreted as teaching or suggesting the “RF shield wherein” limitation
recited in independent claims 34 and 65. See App. Br. 9—10, 12; Reply Br.
3. We agree.
The Examiner bears the initial burden of presenting a prima facie case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In
rejecting claims under 35 U.S.C. § 103(a), 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). We
determine the Examiner has not met this burden.
In the obviousness rejection of independent claims 34 and 65, the
Examiner does not make any findings addressing the “RF shield wherein”
limitation. See Final Act. 4—6, 7. For example, the Examiner does not make
any findings explaining how the combination of cited references teaches or
suggests the RF shield is configured to attenuate only signals inside the
frequency range or so that signals passing through the RF shield. . . are
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Application 12/332,990
attenuated, as set forth in the “RF shield wherein” limitation. See id. Nor
does the Examiner address this limitation in the Answer. See Ans. 4.
Therefore, the Examiner does not provide adequate factual basis to establish
that claims 34 and 65 would have been obvious over the combination of
Bason, Labrou, Shafir, and Moskowitz.
For the foregoing reasons, Appellants persuade us of error in the
rejection of independent claims 34 and 65. The Examiner did not find that
any of the additional references of record teach or suggest the “RF shield
wherein” limitation. Accordingly, we reverse the 35 U.S.C. § 103(a)
rejections of independent claims 34 and 65, and the remaining claims, which
depend from claim 34 or 65.
DECISION
We reverse the Examiner’s decision to reject claims 34, 35, 37, 38,
40, 50-52, 57, 60-62, and 6A-70.
REVERSED
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