Ex Parte Lahoui et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201712521499 (P.T.A.B. Feb. 27, 2017) Copy Citation 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. 12/521,499 04/16/2010 Nizar Lahoui 1032326-000493 8170 21839 7590 03/01/2017 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER AKINYEMI, AJIBOLA A ART UNIT PAPER NUMBER 2649 NOTIFICATION DATE DELIVERY MODE 03/01/2017 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): ADIPDOCl@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NIZAR LAHOUI, FREDERICK SEBAN, JEAN- CHRISTOPHE FID ALGO, and JEAN-LUC MERIDIANO Appeal 2016-006912 Application 12/521,4991 Technology Center 2600 Before ROBERT E. NAPPI, JAMES R. HUGHES, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 8, 9, and 11.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is Gemalto SA. App. Br. 2. 2 The Examiner has indicated claims 1-6 and 10 are allowed. Final Act. 4. Appeal 2016-006912 Application 12/521,499 STATEMENT OF THE CASE Introduction Appellants’ application relates to radiofrequency antennas for contactless or hybrid cards. Spec. 1:4-14. Claim 8 is illustrative of the appealed subject matter and reads as follows: 8. A device having a support and a switched off antenna circuit having turns with two connection ends for a connection to an electronic component, said turns being positioned on the support with a regular inter-tum spacing, wherein the antenna includes a portion of a turn over 10mm in length and positioned at a distance of at least 10mm away from the other turns and from the two connection ends for the connection to the electronic component. The Examiner’s Rejection Claims 8, 9, and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bayley et al. (US 2011/0095890 Al; Apr. 28, 2011) and Bashan et al. (US 2007/0267506 Al; Nov. 22, 2007). Final Act. 2^1. ANALYSIS We have reviewed the Examiner’s rejections in consideration of Appellants’ contentions and the evidence of record. Appellants persuade us the Examiner fails to establish the claims are unpatentable over the cited prior art. The Examiner finds Bashan teaches “turns being positioned on the support with a regular inter-tum spacing, wherein the antenna includes a portion of a turn over 10mm in length and positioned at a distance of at least 10mm away from the other turns and from the two connection ends for the 2 Appeal 2016-006912 Application 12/521,499 connection of the electronic component,” as recited in claim 8. Final Act. 3. In particular, the Examiner finds Bashan teaches that it is well known that the sensitivity of an antenna is a function of the antenna coil’s dimensions, including the number of turns and the inter-tum spacing. Id. (citing Bashan, Fig. 3, | 15). The Examiner states Bashan does not explicitly teach or suggest the claimed turn length and positioning, but finds the dimensions would have been an obvious design choice. Ans. 5-6. Appellants argue the Examiner erred in finding Bashan teaches the claimed turn spacing because Bashan does not identity any particular dimensions or distances. App. Br. 5. Appellants argue the Examiner has failed to establish that an ordinarily skilled artisan would have modified Bashan’s antennas to yield the cited dimensions and distances to achieve a certain level of sensitivity. App. Br. 6, Reply Br. 2. Appellants argue the Examiner’s rejection is, therefore, unsupported by the evidence of record. Reply Br. 2-3. Appellants have persuaded us the Examiner erred in rejecting claim 8. In appropriate circumstances, a modification of prior art teachings may be a matter of design choice. E.g., ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016) (where the prior art consistently located two sensors in shredder’s feed, skilled artisan faced two design choices of placing the thickness sensor above or below the presence sensor and each design choice was an obvious combination of prior art elements). However, merely asserting that the change is an obvious design choice is insufficient. See Cutsforth, Inc. v. MotivePower, Inc., 636 Fed. Appx. 575, 578 (Fed. Cir. 2016) (unpublished) (stating that a particular placement of an element is a design choice does not make it obvious; a 3 Appeal 2016-006912 Application 12/521,499 reason must be offered as to why a skilled artisan would have made the specific design choice). Here, the Examiner finds the claimed 10mm turn length and inter-tum spacing would have been obvious design choices because antenna sensitivity is a function of the antenna coil’s dimensions. Ans. 5-6. Although the Examiner has identified a reason why an ordinarily skilled artisan may modify the dimensions of an antenna coil, the Examiner has not explained how or why an ordinarily skilled artisan would have arrived at the specifically claimed dimensions in this case. See, e.g., RexnordIndus., LLC v. Kappos, 705 F.3d 1347, 1356 (Fed. Cir. 2013) (where the prior art taught that conveyor belt elements are spaced to avoid pinching fingers, the claimed 10mm dimension was a design choice that takes into account the size of fingers and small objects). Accordingly, on this record, Appellants have persuaded us the Examiner has failed to establish the claimed inter-tum spacing and turn lengths would have been an obvious matter of design choice. We, therefore, do not sustain the rejection of claim 8. We also do not sustain the rejections of claims 9 and 11, which depend therefrom. DECISION We reverse the decision of the Examiner to reject claims 8, 9, and 11. REVERSED 4 Copy with citationCopy as parenthetical citation