Ex Parte Martinent et al

Patent Trial and Appeal Board

Sep 26, 2018

12601125 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/601, 125 04/14/2010
21839 7590 09/28/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Jean-Fran\'.ois Martinent
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.
1032326-000504 5141
EXAMINER
KELLY, RAFFERTY D
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-FRANCOIS MARTINENT, 1
Laurence Robles, and Frarn;ois Roussel
Appeal 2018-000781
Application 12/601,125
Technology Center 2800
Before MARK NAGUMO, CHRISTOPHER C. KENNEDY, and
MERRELL C. CAHION, JR., Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Jean-Frarn;ois Martinent, Laurence Robles, and Frarn;ois Roussel
("Martinent") timely appeal under 35 U.S.C. § 134(a) from the Final
Rejection2 of all pending claims 1 and 5-18. We have jurisdiction.
35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as Gemalto SA. (Appeal Brief,
filed 17 April 2017 ("Br."), 2.)
2 Office Action mailed 23 June 2016 ("Final Rejection"; cited as "FR").
Appeal 2018-000781
Application 12/601, 125
A. Introduction 3
OPINION
The subject matter on appeal relates to a light-weight radio frequency
transponder antenna (independent claim 10) suitable for, e.g., a contactless
chip card, and a method of making such an antenna (independent claim 1.)
The '125 Specification explains that a conventional method of making
such an antenna involves sewing or embroidering a wire antenna to a textile
or fibrous support. (Id. at 2, 11. 8-11.) At the ends of the wire forming the
antenna, a number of backing stitches are made to stabilize the structure, "by
several passages of the wires or needles at the same place." (Id. at 11. 14--
16.) This is said to lead to an additional thickness, as well as the presence of
an "idle" residual wire, both of which potentially affect adversely the
lamination or radio frequency characteristics of the antenna. (Id. at 11. 20-
25.) Moreover, the presence of auxiliary synthetic fibers with the
conductive wires is said to lead to deterioration of the soldering tool by
pollution from the nonconducting fibers. (Id. at 3, 11. 1-9.)
These problems are said to be overcome by arranging the back-
stitched end points of the beginning 154 and end 17 of the antenna path in a
3 Application 12/601,125, Method/or producing a device comprising a
radio frequency transponder antenna with two terminal sections provided on
a support and device thus obtained, filed 14 April 2010 as the national stage
under 35 U.S.C. § 371 of PCT/EP2008/056123, filed 19 May 2008, claiming
the benefit of an EP application filed 21 May 2007. We refer to the
"'125 Specification," which we cite as "Spec."
4 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
2
Appeal 2018-000781
Application 12/601, 125
region 31' of the insulating substrate 29. (Id. at 3, 1. 23--4, 1. 6; See Figure 6,
below left.) Region 31', including the back-stitched wire and any extra "idle
wire" 4 is then removed, forming a cavity. (Id. at 4, 11. 8-15; see Figure 7,
below right).
{Figure 6 (below left)
{Figure 6 shows ends 15 and 17 of
the antenna wire back-stitched in
region 31' of substrate 29}
Figure 7 (below right)}
{Figure 7 shows region 31'
removed, leaving a cavity in
substrate 29}
{Figure 8 shows an electrical component soldered (26) through contact
pads 19, 21 [not labeled] by thermo-compression probe 27 to
antenna ends 15, 17}
pads 19 and 21 is placed in cavity 31' and soldered to antenna wire ends 15
and 17 by, e.g., thermo-compression probe 27. (Id. at 12, 11. 22-26.)
3
Appeal 2018-000781
Application 12/601, 125
Probe 27 does not contact, and thus is not polluted by any nonconductive
fibers present. (Id. at 4, 11. 24--28.)
Claim 1 is representative of the process claims and reads:
A method for producing a device comprising a radio
frequency transponder antenna, said method comprising:
producing the antenna with two terminal sections on a
surface of an insulating substrate by means of a wiring
technique such that
the antenna is fixed to the surface of the insulating
substrate by the wiring technique;
producing an end point on an antenna wire at the end of
at least one of said terminal sections,
said end point being made in a zone of the insulating
substrate and including a conductive portion; and
removing said end point, including said conductive portion,
by removing the zone of the insulating substrate in which
the end point is made, thereby
forming a cavity in the surface of the insulating substrate.
(Br., Claims App. 1; some indentation, paragraphing, and emphasis added.)
Claim 10 is representative of the device claims and reads:
A device including a radio frequency transponder antenna,
said antenna comprising
an antenna wire having
two terminal sections and
being fixed to a surface of an insulating substrate by a wiring
technique,
said insulating substrate defining a cavity,
wherein at least one of said terminal sections terminates at the
edge of the cavity such that
an opening defined by the cavity does not face any portion of
the antenna wire.
(Br., Claims App. 2; some indentation, paragraphing, and emphasis added.)
4
Appeal 2018-000781
Application 12/601, 125
All other claims depend from claim 1 or from claim 10.
The Examiner maintains the following grounds of rejection 5, 6:
A. Claims 1 and 6-18 stand rejected under 35 U.S.C. § I03(a) in
view of the combined teachings of Finn, 7 Morinaga, 8 and
Kamogawa. 9
Al. Claim 5 stands rejected under 35 U.S.C. § I03(a) in view of
the combined teachings of Finn, Morinaga, Kamogawa, and
Deaett. 10
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
The basis of the rejections of both the process-of-making claim 1 and
the product claim 10 are essentially parallel, and the Examiner does not raise
distinct reasons for the unpatentability of the product claims. In the
5 Examiner's Answer mailed 31 August 2017 ("Ans.").
6 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
7 David Finn, Methods and apparatuses to produce inlays with
transponders, U.S. Patent Application Publication 2008/019404 Al (2008),
based on an application filed 10 March 2008.
8 Yuichi Morinaga et al., Method of manufacturing a carrier member for
electronic components, U.S. Patent Application Publication
2006/0283467 Al (2006).
9 Kenji Kamogawa and Tsuneo Tokumitsu, Heterogeneous multi-lamination
microstrip antenna, U.S. Patent No. 6,384,785 Bl (2002).
10 Michael A. Deaett and William H. Weedon III, Method for constructing
antennas from textile fabrics and components, U.S. Patent Application
Publication 2005/0235482 Al (2005).
5
Appeal 2018-000781
Application 12/601, 125
Examiner's words, "[r]egarding claims 10, 11, and 18, see the responses
above." (Ans. 8.) Accordingly, we focus our attention on claim 1.
Martinent urges the Examiner erred harmfully because there is, in
Martinent's view, no basis for combining features of the wire antenna
described by Finn, illustrated by Figure 11, below,
{Figure 11 shows HF antenna 1116 and chip module 1120 in recess 1126.}
with features of the slot antenna disclosed by Morinaga, illustrated in
Figure 4 (below left) and Figure 5 (below right).
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Figure 4 shows a plan view of a slot Figure 5 shows a cross section
antenna. along A-A.
6
Appeal 2018-000781
Application 12/601, 125
Martinent argues that Morinaga discloses a completely different type
of antenna, made in a completely different way, by removing copper from
sheet 4 to form slot 4a. Moreover, according to Martinent, removing an
antenna portion from the antenna of Finn, which the Examiner finds would
have been suggested by Morinaga, "is not possible because the end portions
in Finn terminate away from referenced part 1116a or 1116b." (Br. 5, 11. 2-
3.)
Review of Finn and Morinaga fully supports Martinent's arguments.
Finn describes making the connection between the loops in end
portions 1116a and 1116b of the antenna wire 1116 and contact terminal
areas 1122 and 1124, in the following words: "[t]he chip can be installed
between the loops, into the recess 1126. Then, the loops can be manipulated
(re-positioned, drawn in) downwards onto the chip terminals for bonding
thereto." (Finn 15 [0298].)
As Martinent urges, the Examiner has not shown that a step of
"removing said end point, including said conductive portion," as required by
claim 1, would serve any purpose disclosed by Finn.
Martinent urges further (Br. 5, 1st full para.) that the antenna
described by Kamogawa, on which the Examiner relies as evidence of the
obviousness of removing a portion of an antenna including a portion of a
substrate (FR 4, last two paras., to 5, 1st para.) is yet again a very different
type of antenna than the one described by Finn. Martinent explains that in
the embodiment illustrated in Figure 7 A (not reproduced here), on which the
Examiner relies, "portions of the lamination are removed so that the
electronic circuit 20 can be directly mounted to the embedded ground
7
Appeal 2018-000781
Application 12/601, 125
plane 11." (Br. 5, 1st full para.) "However," Martinent continues, "in
Finn's Fig. 11 embodiment relied on in the Official Action, the antenna end
portions are already directly mounted onto the chip, so it is not clear what
the Examiner means in asserting that it would have been obvious to apply
the teachings of Kamogawa to 'shorten the length of the wire and the
antenna thickness."' (Id.)
The weight of the evidence supports Martinent at every point. It may
be that the Examiner considers the claims to be far broader than the
embodiments described in the '125 Specification. While it is true that in
many cases very broad claims may be shown to be prima facie obvious over
art very different from examples disclosed in the supporting specification,
the teachings of prior art references must still be mutually compatible if the
combinations are to be technically sensible. Because the Examiner failed to
provide credible evidence and reasonable explanations of why the various
teachings would have been combined 11 by a person having ordinary skill in
the art, we are persuaded of harmful error in the appealed rejections, and we
reverse.
C. Order
It is ORDERED that the rejection of claims 1 and 5-18 is reversed.
REVERSED
11 The Examiner has not made any findings regarding the dependent claims,
including separately rejected claim 5, that cure the defects identified supra.
8