Ex Parte Obrea et al

Board of Patent Appeals and Interferences

Aug 23, 2010

10430922 (B.P.A.I. Aug. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREI OBREA, BRIAN M. ROMANSKY, THOMAS J. FOTH,
JEFFREY D. PIERCE, and ANAND V. CHHATPAR
_____________

Appeal 2009-007206
Application 10/430,922
Technology Center 2800
____________

Before ROBERT E. NAPPI, KENNETH W. HAIRSTON, and
MAHSHID D. SAADAT, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 to 12, 14, and 17 to 25. Claims 13, 15, and 16 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention is concerned with a method for switching
connections in a circuit by programming radio frequency identification
devices (RFIDs) to perform switching functions (Abs.; Title; original claims
1 and 25). Appellants disclose and claim a method for switching
connections including the steps of performing photocopying to obtain a
duplicate of a circuit and altering switching contacts on a material or a copy
of a material by drawings lines (see claim 1, steps B and C). The lines
drawn on the material or copy of the material may be made by pencil, ball
point pen, or fused toner (claim 1, step C; Spec. ¶¶ [0009], [0010], [0041]-
[0045]).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method for switching connections in a circuit, which comprises the
steps of:
A) exposing on a material switching contacts; and
B) photocopying the material to obtain one or more duplicates of the
circuit;
C) altering on the material and/or the copies of the material the
switching contacts by applying drawn lines using a pencil, ball point
pen or fused toner in a manner that alters the connections to be
switched, and
D) inserting the material into a microcontroller in a manner that the
switching contacts will complete a circuit.
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The Examiner relies upon the following as evidence of
unpatentability:
Samreus nee Maymarev US 4,087,679 May 2, 1978
[hereinafter Samreus]
Yamamoto US 4,174,170 Nov. 13, 1979
Schilling US 6,003,770 Dec. 21, 1999
Lastinger US 6,104,311 Aug. 15, 2000
Jang US 6,320,752 B1 Nov. 20, 2001
Berg US 2003/0177639 A1 Sep. 25, 2003
(filed May 6, 2002)
Marappan US 2003/0205615 A1 Nov. 6, 2003
(filed May 2, 2002)
Bensimon US 6,809,628 B1 Oct. 26, 2004
(filed Mar. 29, 2000)
Lem US 6,893,489 B2 May 17, 2005
(filed Dec. 20, 2001)
The following obviousness rejections are before us for review:
(i) Claims 1 to 5, 10, and 14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Samreus, Berg, Yamamoto, and Jang.
(ii) Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Samreus, Berg, Yamamoto, and Jang, and further in view of Lem.
(iii) Claims 7 to 9, 12, and 25 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Samreus, Berg, Yamamoto, and Jang, and further in
view of Lastinger.
(iv) Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Samreus, Berg, Yamamoto, and Jang, and further in view
of Bensimon.
(v) Claims 17, 18, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Samreus, Berg, Yamamoto, and Jang, and further in view
of Marappan.
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(vi) Claims 19 to 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Samreus, Berg, Yamamoto, Jang, and Marappan, and
further in view of Schilling.
(vii) Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Samreus, Berg, Yamamoto, Jang, and Marappan, and
further in view of Lastinger.
With regard to all of the obviousness rejections listed supra, the
Examiner relies upon Samreus, Berg, and Yamamoto as describing the
recited features of independent claim 1, steps B and C (see claim 1; Ans. 3,
9-15). The Examiner determines (Ans. 3, 9-10) that Samreus discloses
altering switching contacts on a material using a pencil (see col. 3, ll. 1-4,
36-42, 51-54). The Examiner relies upon Berg as disclosing the recited
feature of obtaining duplicates of a circuit on a substrate using a conductive
toner, and Yamamoto as disclosing a photocopying process using a
conductive toner (Ans. 10). The Examiner concludes that it would have
been obvious to combine the teachings of Samreus, Berg, and Yamamoto by
using Berg’s conductive toner with Yamamoto’s circuit photocopying
process “in order to enhance the conductivity of the circuit and reduce error
due to inadvertent plating outside of the imaged or masked pattern areas”
(Ans. 4) as taught by Berg (Ans. 11-12).
With regard to all of the obviousness rejections listed supra, the
Examiner relies upon Jang as describing the recited feature of independent
claim 1, step D, of inserting a material with altered contacts into a
microcontroller (see claim 1; Ans. 4).

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ISSUE
With regard to independent claim 1 and claims 2 to 12, 14, and 17 to
25 which depend therefrom, Appellants contend inter alia (Br. 15-26) that
Samreus does not alter the material and/or the copies of the material (Br.
16), and that Samreus, Berg, Yamamoto, and Jang taken in combination do
not disclose steps B and C of claim 1 (Br. 18, 25). Arguments not made by
Appellants in the Brief are considered waived. See 37 C.F.R. §
41.37(c)(1)(vii).
Based on Appellants’ arguments, the issue is: Do Samreus, Berg,
Yamamoto, and Jang taken in combination disclose or suggest the recited
invention including steps B and C as set forth in claim 1?

FINDINGS OF FACT
1. Samreus describes a method for changing circuit connections using
a material such as paper (col. 2, ll. 50-52) having exposed
electrical contacts 15a (col. 1, ll. 37-48; col. 2, ll. 36-37, 54-57, 62-
65). Samreus provides connections that can be drawn with a pencil
(col. 3, l. 38) and perform the function of a wire (col. 3, ll. 1-4). A
connection drawn with the pencil can be erased to modify the
connection (col. 3, ll. 36-57).
2. Berg describes a conductive toner or ink which is used to print a
circuit board (¶ [0096]).
3. Yamamoto describes a conductive toner that is used for printing in
a photocopying machine (see Fig. 4; col. 1, ll. 5-14; Title; Abs.).
4. Lem describes inks that can be chosen based on electrical
properties (col. 3, ll. 21-26), and which can be put on a label that
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can be read by a scanner (col. 2, ll. 32-35). Lem’s ink is
appropriate for being applied to plastics (col. 3, l. 44) and may also
be an “[e]rasable ink” (col. 3, l. 47).
5. Lastinger describes an information storage and identification tag
(see, e.g., Figs. 1A-C, 2-4) such as an RFID tag (col. 2, ll. 29-30)
having a substrate on which a circuit is printed. Lastinger’s RFID
tag can be selectively coded to output one of a large number of
possible output signals (col. 2, ll. 15-21).
6. Lastinger also discloses that various printed circuit techniques may
be used, such as “using conductive inks printed by ink pens, ink jet
printers, plotters, etc. on substrates such as paper, plastic,
ceramics, glass, metal or other suitable materials” (col. 6, ll. 12-15
(emphases added)).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, 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). The
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). Appellants must, on appeal to the
Board, demonstrate reversible error in the Examiner’s position or rejection.
See id. at 985-86.
The test for obviousness is what the combined teachings of the
references would have suggested to the artisan. Accordingly, one can not
show nonobviousness by attacking references individually where the
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rejection is based on a combination of references. In re Keller, 642 F.2d
413, 426 (CCPA 1981).

ANALYSIS
The Examiner has established a factual basis, as well as provided
articulated reasoning that possesses a rational underpinning, to support the
legal conclusion of obviousness (Ans. 3-9). Kahn, 441 F.3d at 988; Fine,
837 F.2d at 1073. We agree with the Examiner’s findings of fact and
conclusions of obviousness and adopt them as our own (see FF 1-6).
Because Appellants have not persuaded us of error in the Examiner’s
rejections, and for the reasons that follow, we will sustain all of the
obviousness rejections before us on appeal. See Kahn, 441 F.3d at 985-86.
Appellants have not persuasively rebutted the Examiner’s conclusion
that it would have been obvious to combine the teachings of Samreus, Berg,
and Yamamoto by using Berg’s conductive toner with Yamamoto’s circuit
photocopying process “in order to enhance the conductivity of the circuit
and reduce error due to inadvertent plating outside of the imaged or masked
pattern areas” (Ans. 4) as taught by Berg (Ans. 11-12). Appellants’ main
line of argument throughout the Brief is to assert that the basic combination
of four references used in all of the rejections (Samreus, Berg, Yamamoto,
and Jang) do not disclose or suggest steps B and C found in claim 1 on
appeal (Br. 18, 25).
This line of argument is not convincing since Berg describes using
conductive toner for printing a circuit board (FF 2) and Yamamoto describes
a conductive toner that is used for printing in a photocopying machine (FF
3). Thus, the combined teachings of Berg and Yamamoto disclose or
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suggest photocopying a material to obtain duplicates of a circuit.
Accordingly, step B of claim 1 is encompassed at least by the teachings of
Samreus, Berg, and Yamamoto.
Furthermore, step C is encompassed at least by Samreus’s marking
and erasing on a paper substrate using a pencil to change connections in a
circuit (FF 1). Appellants’ argument (Br. 16) that Samreus does not alter the
material and/or the copies of the material is not persuasive since (i) Samreus
marks and erases pencil marks on a material such as paper (FF 1), and (ii)
the claims are in the alternative, and recite altering “the material and/or the
copies of the material” (see claim 1). Thus, Samreus’s marking and erasing
on a material such as paper meets the alternative language of claim 1.
Samreus, Berg, Yamamoto, and Jang, taken in combination, disclose
or suggest the recited invention including steps B and C as set forth in claim
1. Accordingly we will sustain the Examiner’s rejection of claim 1, and
claims 2 to 5, 10, and 14 which depend therefrom.
As to claim 6 (rejection (ii) listed supra applying Lem), Appellants
assert (Br. 19-21) that the references fail to disclose using an ink that
performs the function of a wire. However, Samreus was relied on as
teaching a drawn connection that performs the function of a wire (FF 1),
Berg and Yamamoto were relied on as teaching the use of ink or toner (FF 2,
3), and Lem was relied on as teaching erasable ink (FF 4). The Examiner
has provided articulated reasoning for using Lem’s erasable ink with the
device of Samreus as modified by Berg and Yamamoto: to choose and
control the ink based on its electrical properties (Ans. 5-6). Appellants have
not rebutted this rationale, and only argue that the art applied fails to
disclose that ink can be applied with a ball point pen and perform the
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function of wires. Again, we note that the claims recite drawing lines in the
alternative, “using a pencil, ball point pen or fused toner” (see claim 1).
Appellants cannot show non-obviousness by attacking references
individually where rejections are based on a combination of references (i.e.,
Samreus, Berg, Yamamoto, Jang, and Lem), and Appellants have not
persuaded us that the Examiner erred in finding that the combination of
Samreus, Berg, Yamamoto, Jang, and Lem would not have been obvious to
the ordinarily skilled artisan. Keller, 642 F.2d at 426. Furthermore, one of
ordinary skill in the art would understand that a pencil eraser or an ink eraser
could erase the drawn connection despite whether the connection was drawn
with Lem’s erasable ink or with Samreus’s pencil.
As to claims 23 and 24 (rejection (vii) listed supra applying
Lastinger), Appellants’ argument (Br. 25-26) that the applied references do
not disclose a material being cellulose or plastic is unpersuasive since we
find Lastinger discloses “substrates such as paper, plastic, ceramics, glass,
metal or other suitable materials” at column 6, lines 14 to 15 (see FF 6). In
addition, Appellants have not rebutted the Examiner’s determination (Ans.
14-15) that cellulose products can contain plastic.
As to claims 7 to 9, 12, and 25 (rejection (iii) listed supra applying
Lastinger), Appellants’ contention (Br. 21-22) that the references fail to
disclose altering a switching connection that controls a number generation
portion of an RFID device by applying drawn lines using a pencil, ball point
pen, or fused toner is unconvincing for similar reasons as given above with
regard to claim 6. Namely, Appellants have not persuaded us that the
combination of Samreus, Berg, Yamamoto, Jang, and Lastinger would not
have been obvious to the ordinarily skilled artisan by attacking references
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individually where rejections are based on a combination of references.
Keller, 642 F.2d at 426. In this case, Lastinger discloses or suggests printing
a printed circuit on a substrate such as plastic or other suitable materials with
an ink jet printer (FF 5, 6), in addition to providing connections that control
a number generation portion (i.e., selective coding) of an RFID circuit (FF
5). The Examiner relied on Samreus as disclosing the feature of altering
switching connections.
In view of the foregoing, we will sustain the Examiner’s rejections of
independent claim 1, and dependent claims 6 to 9, 12, and 23 to 25 which
fall with independent claim 1. Because Appellants have not disputed the
merits of the obviousness rejection of claims 11 and 17 to 22 other than to
contend (Br. 22-25) that these claims are not obvious in view of the four
base references to Samreus, Berg, Yamamoto, and Jang for the same reasons
as claim 1 (that the four base references fail to disclose or suggest steps B
and C of claim 1), we will sustain the obviousness rejections of claims 11
and 17 to 22 for similar reasons provided supra with regard to the rejection
of claim 1.

CONCLUSION OF LAW
Samreus, Berg, Yamamoto, and Jang taken in combination disclose or
suggest the recited invention including steps B and C as set forth in claim 1.
For the foregoing reasons, we find that the Examiner did not err in
rejecting (i) claims 1 to 5, 10, and 14 under § 103(a) as being obvious in
view of the teachings of Samreus, Berg, Yamamoto, and Jang, and (ii)
claims 6 to 9, 11, 12, and 17 to 25 under § 103(a) as being obvious in view
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of the teachings of Samreus, Berg, Yamamoto, and Jang combined with the
various teachings of Lem, Bensimon, Schilling, Marappan, and Lastinger.

ORDER
We affirm the Examiner’s obviousness rejections of claims 1 to 12,
14, and 17 to 25 under § 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)(1)(iv).

AFFIRMED

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