Ex Parte KUBE et al

Patent Trial and Appeal Board

Mar 23, 2016

13217044 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/217,044 08/24/2011
27799 7590 03/25/2016
Cozen O'Connor
277 Park A venue, 20th floor
NEW YORK, NY 10172
FIRST NAMED INVENTOR
Roland KUBE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5029-852-309889 5279
EXAMINER
MIKELS, MATTHEW
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
patentsecretary@cozen.com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLAND KUBE and ST ADELMANN BERND
Appeal2014-006914
Application 13/217,044
Technology Center 2800
Before ST. JOHN COURTENAY III, LINZY McCARTNEY, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Claim 1, reproduced below with emphasis added to the disputed
limitation, is illustrative of the claimed subject matter:
1. A radio frequency identification (RFID) transponder for an
RFID arrangement having inductive coupling, comprising:
a transmitting and receiving coil; and
a ferrite component for guiding a magnetic flux, the ferrite
component for guiding the magnetic flux interacting with the
transmitting and receiving coil and comprising a composite
Appeal2014-006914
Application 13/217,044
material comprised of a plastic and ferrite powder, and the
plastic including the ferrite powder being a laser-activateable
plastic;
wherein the transmitting and receiving coil is formed by at
least one conductor track metalized and precontoured by laser
processing in or on a surface of the component.
REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Reddy
Uozumi
Fabian
Petropoulos
Zimmerman
US 6,509,217 Bl
US 2003/0057279 Al
US 2003/0066537 Al
US 2008/0284656 Al
US 2009/0295036 Al
Jan. 21, 2003
Mar. 27, 2003
Apr. 10, 2003
Nov. 20, 2008
Dec. 3, 2009
Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uozumi, Petropoulos, and Fabian.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uozumi, Petropoulos, Fabian, and Zimmerman.
Claims 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uozumi, Reddy, and Fabian.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uozumi, Reddy, Fabian, and Zimmerman.
ANALYSIS
The Examiner finds Uozumi teaches the claimed RFID transponder
recited in claim 1, including a magnetic material 44a that is a compound
material formed of magnetic metal powder, ferrite powder, and plastic.
Final Act. 2-3 citing Uozumi, Fig. 5, i-fi-1145, 151. The Examiner finds
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Petropoulos teaches the claimed "laser-activateable plastic" (Petropoulos if
43) and Fabian teaches "plastic including the ferrite powder" (Fabian if 42)
and concludes it would have been obvious to one of ordinary skill in the art
to combine the teachings ofUozumi, Petropoulos, and Fabian. Id. at 3.
With regard to the "method for producing an ... (RFID) transponder"
recited in claim 5, the Examiner relies on Uozumi and Fabian in
substantially similar fashion, and cites Reddy in place of Petropoulos to
teach "using a laser to form metallic circuit tracks." Id. at 4--5.
Appellants concede Fabian teaches a "ferromagnetic element 36 [that]
is preferably a molded composite composed of a hard ferromagnetic powder
... and a plastic." App. Br. 4 citing Fabian if 42 (emphasis added).
However, Appellants contend "the combination ofUozumi, Petropoulus
Reddy and/or Fabian" is improper. Id. at 3.
In particular, Appellants argue (i.) Fabian's device "is merely a
passive device that detects metal objects based on electromagnetic fields"
unlike Uozumi, Petropoulos and Reddy which "each describe RFIDs that are
active devices (i.e., they include electrical components)." Id. at 4.
Appellants further argue (ii.) "[t]he teachings of Fabian are not directed to a
similar problem as appellants' claimed invention" because Fabian teachings
relate to "prevent[ing] surgeons from leaving surgical instruments in
patients." Id. at 5. Finally, Appellants argue (iii.) there is "no motivation or
substantial reason to modify the teachings of Uozumi, Petropoulus and/or
Reddy to incorporate the teaching of Fabian so as to attain appellants'
claimed invention, absent impermissible hindsight." Id. at 4.
With regard to argument (i.), our reviewing court has set forth a two-
prong test for determining whether a prior art reference is analogous: (1)
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whether the reference is from the same field of endeavor as the claimed
invention, and (2) if the reference is not within the same field of endeavor,
whether the reference is reasonably pertinent to the particular problem with
which the inventor is involved. In re Klein, 647 F.3d 1343 (Fed. Cir. 2011).
The Examiner finds the teachings of each ofUozumi, Petropoulus,
Reddy, and Fabian identify objects through wireless interrogation. Ans. 7.
The Examiner further finds Fabian is directed to a problem similar to that
addressed by the other references, because Fabian teaches "a wireless
transponder with ferrite powder" (see Ans. 7), and describes selecting a
concentration of powder to plastic that obtains optimum magnetomechanical
coupling (see Final Act. 7). Appellants do not persuasively rebut the
Examiner's findings. We find, even if Fabian is not within the same field of
endeavor as Appellants' claimed invention, the reference is reasonably
pertinent to the particular problem with which the inventor is involved,
because Fabian teaches the use of a "ferromagnetic element 36 [that] is
preferably a molded composite composed of a hard ferromagnetic powder,
such as barium ferrite, and a plastic such as nylon or delrin" in paragraph 42.
Thus, at least the second prong of the test is satisfied, and we are not
persuaded by Appellants' argument (i.). See Klein, 647 F.3d at 1343.
Contrary to Appellants' argument (ii.), and even assuming, arguendo,
that Fabian uses plastic including ferrite powder for a different purpose or
problem from that of Appellants' claimed invention, such argument is not
persuasive to show nonobviousness. See e.g., In re Lintner, 458 F.2d 1013,
1016 (CCPA 1972) (noting "[t]he fact that appellant uses [a chemical] for a
different purpose does not alter the conclusion that its use in a prior art
composition [would have been] prima facie obvious from the purpose
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Application 13/217,044
disclosed in the references"); see also KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007) ("[N]either the particular motivation nor the avowed
purpose of the [Appellants] controls" in an obviousness analysis.).
With regard to argument (iii.), the court rejected the requirement for
an explicit teaching, suggestion, or motivation to combine known elements
in order to show obviousness. KSR Int'! Co., 550 U.S. at 415. "'[R]ejections
on obviousness cannot be sustained by mere conclusory statements; instead,
there must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.'" Id. at 418. As reasoning for
combining the references, the Examiner concludes it would have been
obvious to one of ordinary skill in the art to add ferrite powder to plastic
"because it can be tuned to a particular resonant frequency, increasing its
usefulness in identification." Final Act. 3 citing Fabian i-f 42. Appellants'
argument (iii.) neither addresses the legal conclusion of obviousness, nor
persuades us of an insufficiency or lack of rational underpinning regarding
the Examiner's proffered motivation.
Although we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful the Supreme Court has clearly stated the
"combination of familiar elements according to known methods is likely to
be obvious when it does no more than yield predictable results." KSR Int 'l
Co., 550 U.S. at 416. Moreover, "[i]n determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls." Id. at 419.
Here, Appellants have not provided objective evidence of secondary
considerations, which our reviewing court guides, "operates as a beneficial
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check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Nor have Appellants
persuaded us the Examiner's proffered combination would have been
"uniquely challenging or difficult for one of ordinary skill in the art." See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int'! Co., 550 U.S. at 418). Therefore, we are not
persuaded the Examiner relied on impermissible hindsight, contrary to
Appellants' argument. See App. Br. 4.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination ofUozumi, Petropoulos, and Fabian teaches or
suggests the disputed limitation as recited in claim 1. We are further not
persuaded the Examiner erred in finding the combination ofUozumi, Reddy,
and Fabian teaches or suggests the limitation of claim 5 that is
commensurate to the disputed limitation of claim 1.
Claims 2--4 and 6-8 stand rejected over various combinations of
Uozumi, Petropoulos, Fabian, Zimmerman, and Reddy. As these claims are
not separately argued, we reach the same decision with respect to these
claims as reached with respect claims 1 and 5, from which claims 2--4 and
6-8 depend, for substantially similar reasons.
Therefore, we sustain the 35 U.S.C. § 103(a) rejection of claims 1-8.
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DECISION
We affirm the Examiner's decision rejecting claims 1-8 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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