Ex Parte Kramer et al

Patent Trial and Appeal Board

Jun 11, 2013

11345479 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MANFRED MICHALK
____________

Appeal 2012-003418
Application 11/870,969
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and LINDA M.
GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-16.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
“The present invention relates to a contactless transponder embedded in a
flexible multi-layer support, and more particularly, to the way such a transponder
is mounted in a flexible multi-layer laminate support.” (Spec.3 1:8-10.) “Inlays for
contactless smart cards or for any other laminated structures in which the

1 Final Office Action mailed Mar. 3, 2011.
2 Appeal Brief filed Sep. 2, 2011 (“Br.”).
3 Specification filed Oct. 11, 2007.
Appeal 2012-003418
Application 11/870,969

2
transponder has to be embedded are one of the particular embodiments of the
invention.” (Id. at 12-14.)
Contactless IC cards are produced, for example, by arranging an IC chip and
antenna coil between two plastic foils followed by hot lamination. (Id. at 1:37-
2:1.) At the time of the invention, it was known in the art to use plastics such as
polyurethane as the foils to provide thinner and more flexible transponders, but at
the cost of weakening the stress resistance and mechanical solidity of the
transponders. (Id. at 2:5-7.) A known solution to this problem was “to insert one
or several non-woven material foil(s), for example made of paper, in the laminated
structure.” (Id. at 2:13-16 (citing, e.g., Morinaka infra p. 6).) However, according
to the Specification, the prior art failed to recognize the benefit of using thin non-
woven foils with high porosity, namely, that such foils allowed the plastic material
of the laminate cover layer to penetrate into the non-woven structure and achieve
better adhesion between the layers. (Id. at ll. 27-31.)
Appellant is said to have discovered that characteristics and qualities of a
multilayer support can be drastically improved by using at least one “thin and
porous (almost evanescent) non-woven foil.” (See id. at 3:21-27.) “It is made of
non-woven long fibers put together in the form of a sheet and bonded . . .
mechanically, by thermal bonding, by chemical bonding (binder, adhesive), by
hydroentanglement, by needle felt, etc.” (Id. at 6:20-23.) The Specification
defines the nonwoven foil as “differ[ing] from paper essentially in the length of the
fibers, as paper is generally made of much shorter, cellulose fibers.” (Id. at 25-26.)
The Specification further states “the real difference” in the inventive non-woven
foil and paper is that the fibers of the foil have self-adhesive characteristics and
lack the hydrogen bonding in paper. (Id. at 26-30.) Because of the lack of
hydrogen bonding, the material is waterproof, the “kind of material [] typically
Appeal
Applica

used to
(Id. at 7
gramma
O
connect

Applica
the elem
at 5:33-

In
chip mo
14), i.e.
module
6:15), e
shown p
underne
A
with Ap

2012-0034
tion 11/87
manufactu
:1-4.) Acc
ge of less
ne embod
ion with A
tion Figur
ents of th
34.)
the Figur
dule 5 to w
, the active
5 and ante
.g. polyure
laced on t
ath the an
nother em
plication F
18
0,969
re tea bag
ording to
than 25 g/
iment of A
pplication
e 1, above
e transpon
e 1 embod
hich an a
elements
nna 4 are
thane laye
op of the a
tenna 4 an
bodiment
igure 4, w
s, filters, o
the Specif
m2.” (Id.
ppellant’s
Figure 1,
, shows a f
der accord
iment, the
ntenna 4 i
of the tran
positioned
rs (id. at 7
ntenna 4 a
d chip mod
of the inve
hich is rep
3
r cleaning
ication, th
at 6:32.)
invention
which is r
irst embod
ing to the
multi-lay
s connecte
sponder (s
between t
:16-17). L
nd modul
ule 5. (Id
ntion is sh
roduced b
paper for
e non-wov
is shown
eproduced
iment of a
invention
er laminate
d by conta
ee id. at 1
wo thermo
ayer 3, a
e 5, but it
.at 6:16-1
own and d
elow:
lenses for
en foil pre
and descri
below:
stack arra
before lam
support 1
ct ends 4'
:30-32). T
plastic lay
non-woven
can also be
8.)
escribed i
example.”
ferably ha
bed in
ngement
ination. (
comprise
(id. at 6:13
he chip
ers 2 (id.
foil, is
positione
n connect

s “a
of
Id.
s a
-
at
d
ion
Appeal
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the elem
(Spec. 6
In
(see Br.
combin
directly
when jo
one non
of the th
thin, les
2012-0034
tion 11/87
tion Figur
ents of th
:3-4.)
the Figur
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ed to form
on both si
ined toget
-woven fo
ermoplast
s than 100
18
0,969
e 4, above
e transpon
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non-wove
an embed
des of the
her after la
il 3 or, as
ic layer 2.
micromet
, shows a f
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ding patch
chip 5 to f
mination.
illustrated
(Id. at 19
ers. (Id. a
4
ourth emb
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ntified as
d the soft
10” (Spec
orm a first
(Id. at 21
, two non-w
-21.) The
t 23-24.)
odiment o
invention
the subject
thermopla
. 8:18-19)
embeddin
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oven foil
patches 10
f a stack a
before lam
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. Patches
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s 3 placed
are prefe
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ise
ide

Appeal 2012-003418
Application 11/870,969

5
The Examiner maintains the following grounds of rejection under 35 U.S.C.
§103(a) as follows (Ans.4 5-14):
1. claims 1-5, 7, 9, 10, 12, and 16 are rejected as unpatentable
over Uchihiro (US 2003/0205399 A1, published Nov. 6, 2003) in view of Kuhns
(US 2004/0119593 A1, published Jun. 24, 2004);
2. claim 6 is rejected as unpatentable over Uchihiro in view of Kuhns,
further in view of Morinaka (JP 2000-251042, published Sep. 14, 2000 (machine
translation of record)); and
3. claims 8, 11 and 13-l5 are rejected as unpatentable over Uchihiro in
view of Kuhns, further in view of Brady (US 6,100,804, issued Aug. 8, 2000).
In addition to arguing the patentability of claim 1, the sole independent
claim on appeal, Appellant also presents separate arguments in support of
patentability of dependent claims 2, 3, 6, 9, 10, and 12. (See generally, Br. 5-17.)5
The remaining appealed claims stand or fall with the argued claim from which they
depend. 37 C.F.R. § 41.37(c)(1)(vii).
We have thoroughly considered the arguments advanced by Appellant in
support of patentability, but are not convinced of error in the Examiner’s
conclusion of obviousness. Accordingly, we sustain the Examiner's rejections

4 Examiner’s Answer mailed Oct. 3, 2011
5We do not treat Appellant’s statements with respect to the remaining appealed
claims as arguments for separate patentability. See 37 C.F.R. § 41.37(c)(1)(vii)
(“A statement which merely points out what a claim recites will not be considered
an argument for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art. Because Lovin did not provide such
arguments, the Board did not err in refusing to separately address claims 2–15, 17–
24, and 31–34.”).

Appeal 2012-003418
Application 11/870,969

6
based on the findings of fact, conclusions of law, and rebuttals to arguments
expressed in the Answer.
We add the following to more fully address the issues which turn on claim
interpretation and the Examiner’s findings with respect to the knowledge and skill
level of the ordinary artisan at the time of the invention. For reference, appealed
claims 1, 9, and 10 are reproduced below from the Claims Appendix to the Appeal
Brief (emphasis added):
1. Transponder with an electronic unit comprising an antenna coil
connected to a chip module embedded in a multi-layer laminate support
comprising at least a thermoplastic layer disposed on both sides of the electronic
unit and at least one porous non-woven foil made essentially of non-woven fibers
with a grammage of less than 25 g/m2 disposed in proximity to at least one of the
thermoplastic layers.
9. Transponder according to claim 1, further comprising a first and
second embedding patch respectively disposed on both sides of the said electronic
unit, said first and second patch being made by one of said thermoplastic layers
and said at least one non-woven foils.
10. Transponder according to claim 9, wherein each embedding patch is
made by one of said thermoplastic layer disposed between two of said at least one
non-woven foils.
The Examiner and Appellant disagree over the scope and meaning of the
claim term “non-woven foil.” Appellant states the Specification “expressly
define[s] non-woven foil as excluding paper.” (Br. 7.) The Examiner advances a
broader interpretation wherein the term “non-woven foil” does not exclude all
paper materials, but excludes materials having a certain fiber length and bonding.
(Ans. 17.)
Based on our review of the Specification, including the disclosure cited by
Appellant in support of his claim interpretation (see citations from Spec. 6 supra
pp. 3, cited in Br. 6-7), we are in agreement with the Examiner that the broadest
reasonable interpretation of “non-woven foil” does not exclude all paper materials.
Appeal
Applica

(See, e.g
“kind of
paper fo
wherein
hydroge
materia
convent
T
as the p
below:

Uchihir
an IC m
U
id. at [0
at [0045
the seco
at [0051
“The th
2012-0034
tion 11/87
., Spec. 7
material
r lenses fo
the fibers
n bond. (
ls in which
ionally us
urning now
rimary ref
o Figure 2
odule. (Se
chihiro’s
002].) Th
], [0051].)
nd sheet m
].) Uretha
ickness of
18
0,969
:1-4 (indic
[] typically
r example
do not hav
See id. at 6
the fiber
ed to make
to the m
erence in r
, above, sh
e Uchihir
laminated
e IC modu
IC modu
aterial 2 a
ne polym
the adhesi
ating mate
used to m
”).) Rathe
e self-adh
:26-30.) T
length is lo
paper. (S
erits of the
ejecting th
ows a cro
o [0034].)
structure m
le 3 includ
le 3 is arra
nd pasted
er may be
ve agent la
7
rials suitab
anufactur
r, this term
esive qual
he term “
nger than
ee id. at 2
rejections
e claims.
ss section
ay be use
es an ante
nged betw
through a
used as the
yer includ
le for the
e tea bags,
excludes
ities and a
non-wove
the length
5-26.)
, the Exam
Uchihiro F
of a lamin
d as an ide
nna 3a1 an
een the fi
dhesive ag
adhesive
ing the el
non-wove
filters, or
paper ma
re held tog
n foil” is a
of the cel
iner relie
igure 2 is
ated struct
ntification
d an IC ch
rst sheet m
ent layers
agent. (Id
ectronics e
n foil are t
cleaning
terials
ether by
lso limited
lulose fibe
s on Uchih
reproduce
ure contain
card. (Se
ip 3a2. (I
aterial 1 a
6 and 7. (
. at [0089
lements is
he
to
rs
iro
d
ing
e
d.
nd
Id.
].)

Appeal 2012-003418
Application 11/870,969

8
preferably from 100 µm to 600 µm.” (Id. at [0090].) Exemplary sheet materials
include “paper such as high quality paper, thin paper, glassine paper and sulfate
paper; and metal foil.” (Id. at [0104].) The sheet materials “may be used as a
single layer or a laminated layer constituted by two or more layers thereof.” (Id.)
The Examiner finds Uchihiro discloses the invention as claimed in appealed
claim 1 with the exception that Uchihiro does not explicitly teach the use of a
“porous non-woven foil made essentially of non-woven fibers with a grammage of
less than 25 g/m2” (claim 1). (Ans. 7.)
The Examiner finds “Kuhns teaches a substantially similar identification
label comprising a radio frequency identification antenna and an outer substrate
layer . . . preferably made of paper and compressible fibrous materials, which are
in the form of nonwovens,” and “can include membranes or porous materials.”
(Ans. 7 (citing Kuhns [0028] and [0030]).) Kuhns discloses, more specifically,
“[p]aper is one preferred substrate 14 and a variety of papers are suitable,
including, but not limited to . . . filter paper . . . [and] specialty papers.” (Kuhns
[0029].) Kuhns further discloses suitable forms of the outer substrate 14 include
“dry-lay and wet-lay nonwovens, nonwovens made by melt-blown fiber, spun
bond or spun lace processes.” (Id. at [0028].)
The Examiner determines (Ans. 7):
[i]t would have been obvious to one of ordinary skill in the
identification label art at the time the invention was made to form the
identification label of Uchihiro, wherein the outer nonwoven layers
comprise a porous paper nonwoven material, as taught by Kuhns,
motivated by the desire of forming a conventional identification label
having compressible outer layers, and it is within the level of ordinary
skill to determine suitable porous paper materials based on the finite
number of identified, predictable solutions, with a reasonable
expectation of success.
Appeal 2012-003418
Application 11/870,969

9
The Examiner finds one of ordinary skill in the art would have expected that
thinner materials would be lighter and provide greater flexibility to the final
structure, and that “it is within the level of ordinary skill to determine a suitable
weight for the non-woven materials, based on the desired thickness, weight and
flexibility, suitable for the intended application.” (Id. at 7-8.) The Examiner thus
further determines it would have been obvious to one of ordinary skill in the art at
the time of the invention to have adjusted the thickness and weight of the
nonwoven material used in Uchihiro’s laminate to a grammage of “less than 25
g/m2” as recited in appealed claim 1. (Id. at 8.)
Appellant argues the Examiner’s proposed combination would not have
resulted in a “porous non-woven foil made essentially of non-woven fibers” (claim
1 (emphasis added)) because “[b]oth Uchihiro and Kuhns teach the utilization of
paper which includes woven as well as non-woven fibers.” (Br. 7.)
Having interpreted the term “non-woven foil” as excluding only certain
paper materials, we are not persuaded claim 1 patentably distinguishes over
Uchihiro’s structure wherein the sheet material is a porous paper nonwoven
material such as Kuhns’ “filter paper” (see Kuhns [0029] supra p. 9), since
Appellants’ own Specification indicates that filters are typically made of materials
suitable for use in the claimed non-woven foil. (See Spec. 7:3-4 supra p. 3.)
Further, Kuhns suggests the use of nonwovens made by melt-blown fiber, spun
bond or spun lace processes which would reasonably appear to fall within the
scope of the term “non-woven foil” as we have interpreted this term. See In re
Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (quoting In re Spada, 911 F.2d 705,
708 n.3 (Fed. Cir. 1990) (“[W]hen the prior art evidence reasonably allows the
PTO to conclude that a claimed feature is present in the prior art, the evidence
Appeal 2012-003418
Application 11/870,969

10
‘compels such a conclusion if the applicant produces no evidence or argument to
rebut it.’”)).
It is unclear to us, as it is to the Examiner (see Ans. 16), why Appellant
believes the Examiner’s proposed combination would necessarily result in a foil
which includes both woven and non-woven fibers. However, we agree with the
Examiner that even if this were the case, the burden is on Appellant to explain how
the presence of woven fibers would affect the basic and novel characteristics of the
invention. (See Ans. 15.) See In re De Lajarte, 337 F.2d 870, 873-74 (CCPA
1964) (explaining that in assessing a broadest reasonable claim construction
wherein a potentially exclusionary “consisting essentially of” transitional phrase is
involved, it is appropriate that Appellant bears the burden of: (1) showing the
basic and novel characteristics of their claimed invention, and (2) establishing how
those characteristics would be materially changed by any allegedly excluded
component of an applied reference.).6 Appellant has not provided such
explanation, e.g., by argument or evidence demonstrating that the resultant foil
material would contain fibers that must be held together by hydrogen bond and/or
have a length which is not longer than the cellulose fibers conventionally used to
make paper.
Appellant argues the evidence is insufficient to support the Examiner’s
finding that one of ordinary skill in the art would have reasonably assumed that

6Claim 1 uses the phrase “made essentially of.” Non-conventional transitional
phrases (i.e., other than “comprising,” “consisting essentially of,” and
“consisting”) are interpreted in light of the specification to determine whether open
or closed claim language is intended. See AFG Industries, Inc. v. Cardinal IG
Company, Inc., 239 F.3d 1239, 1245 (Fed. Cir. 2001) (interpreting “composed of”
in same manner as “consisting essentially of” based on specification and other
evidence). Both Appellant and the Examiner agree the phrase “made essentially
of” should be interpreted in the same manner as “consisting essentially of.”
Appeal 2012-003418
Application 11/870,969

11
thinner, lighter non-woven materials would have been more desirable in certain
applications. (Br. 8.) Appellant also contends there is no suggestion in Uchihiro to
select a grammage of “less than 25 g/m2” (claim 1) and that grammage is not
always linearly related to material thickness. (Id.)
We are not persuaded by Appellant’s argument. As explained by our
reviewing Court in Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added),
an implicit motivation to combine exists not only when a suggestion
may be gleaned from the prior art as a whole, but when the
“improvement” is technology-independent and the combination of
references results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or process
is universal-and even common-sensical-we have held that there exists
in these situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves. In such
situations, the proper question is whether the ordinary artisan
possesses knowledge and skills rendering him capable of combining
the prior art references.
While a thinner, lighter non-woven foil might not have been desirable in all
applications, Appellant has not specifically explained why, and, therefore, has not
persuaded us that the Examiner erred finding such properties would have been
desirable in the non-woven foils used in Uchihiro’s identification card. With
respect the claim limitations requiring a grammage of “less than 25 g/m2” (claim 1)
and “less than 10 g/m2” (claim 2), Appellant has not refuted the Examiner’s finding
(see Ans. 18) that it would have been within the level of skill of the ordinary
artisan to determine a suitable weight for the non-woven foil based on the intended
application. Cf. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) and In re
Aller, 220 F.2d 454, 456 (CCPA 1955) (noting that when patentability is
Appeal 2012-003418
Application 11/870,969

12
predicated upon a change in a condition of a prior art composition, the burden is on
Appellant to establish with objective evidence that the change is critical, i.e. it
leads to a new unexpected result). In this regard, we note that on this record, there
is no evidence of criticality in the recited grammages in claims 1 and 2. See, e.g.,
Spec. 6:32-36 (“Preferably, the non-woven foil 3 is a foil with a grammage of less
than 25 g/m2. This limit corresponds to that for silk paper definition. Preferably
one uses a non-woven foil with a grammage of less than 20 g/m2 and more
preferably with less than 10 g/m2. Of course, these are illustrative values that
should not be considered as a limitation in the scope of the present invention.”).
With respect to claim 10, Appellant argues Uchihiro lists at least 38 different
materials suitable for use as the sheet material and that too much picking and
choosing would be required to achieve the claimed invention. (Br. 12-13.)
Appellant contends the Examiner’s findings are insufficient to establish one of
ordinary skill in the art would have found it obvious to try the claimed combination
of layers. (See id. at 13 (citing Rolls-Royce, PLC v. United Technologies Corp.
603 F.3d 1325, 1339 (Fed. Cir. 2010)).)
Appellant’s argument is unpersuasive because it fails to explain why the
Examiner erred in finding Kuhns provides direction to select a porous non-woven
material as claimed (see Ans. 7; Kuhns [0028-0030] supra p. 9). (See Br. 13
(“There is no discussion in Kuhns that would overcome the shortcomings of
Uchihiro.”).)
Appellant’s remaining arguments in support of patentability of the claims
are likewise unpersuasive because they suffer from the same deficiencies noted
above, e.g., Appellant presents arguments against the references individually
instead of the Examiner’s proposed combination (see, e.g., id. at14-15) and fails to
Appeal 2012-003418
Application 11/870,969

13
show error in the Examiner’s findings with respect to the knowledge and skill level
of the ordinary artisan (see, e.g., id. at 9-10).
In sum, for the reasons expressed in the Answer and above, we find a
preponderance of the evidence favors the Examiner’s conclusion of obviousness as
to appealed claims 1-16.
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).
AFFIRMED

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