Ex parte OHNO

Board of Patent Appeals and Interferences

Sep 19, 1997

08097904 (B.P.A.I. Sep. 19, 1997)

Application for patent filed July 28, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HISASHI OHNO
_____________
Appeal No. 95-4028
Application 08/097,9041
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS, and CARMICHAEL, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 2, 4
through 6, 8 through 10 and 13 through 18. In an Amendment After
Appeal No. 95-4028
Application 08/097,904
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Final (paper number 16), claims 2, 4 though 6, 13, 15, 17 and 18
were canceled, and claims 1, 8, 10, 14 and 16 were amended.
Accordingly, claims 1, 8 through 10, 14 and 16 remain before us
on appeal.
The disclosed invention relates to a non-contact IC card
that has a circuit board with an electronic circuit mounted on a
first surface, and an antenna coil disposed on a second surface.
The electronic circuit is covered by a resin package. A
plurality of testing wire conductors are located on the side of
the circuit board that holds the electronic circuit, and a first
end of each of the testing wire conductors is connected to the
electronic circuit. The second ends of the testing wire
conductors are exposed at the second surface of the circuit board
for testing the electronic circuit. The second ends of the
testing wire conductors are covered by an electrical insulator.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A non-contact IC card comprising:
a circuit board having opposed first and second surfaces and
an antenna coil disposed on the second surface of said circuit
board;
an electronic circuit mounted on the first surface of said
circuit board and having a plurality of functions;
Appeal No. 95-4028
Application 08/097,904
3
a resin package disposed on the first surface of said
circuit board covering said electronic circuit;
a plurality of testing wire conductors disposed on the first
surface of said circuit board, each testing wire conductor being
connected at a first end to said electronic circuit and exposed
at a second end at the second surface of said circuit board for
testing the respective functions of said electronic circuit
individually; and
insulating means for covering and electrically insulating
said second ends of said testing wire conductors.
No references were relied on by the examiner.
Claims 1, 8 through 10, 14 and 16 stand rejected under the
second paragraph of 35 U.S.C. § 112 as being indefinite for
failing to particularly point out and distinctly claim the
subject matter which appellant regards as the invention.
Reference is made to the briefs and the answer for the
respective positions of the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will sustain the indefiniteness rejection as to claims 1
and 16, and we will reverse it as to claims 8 through 10 and 14.
According to the examiner, the claims recite "that each
testing wire conductor is exposed for testing the respective
functions of said electronic circuit, and insulating means for
covering and electrically insulating these same testing wire
conductors" (Answer, page 3). It is the examiner's position that
Appeal No. 95-4028
Application 08/097,904
4
the claims are indefinite because "the testing wires could not be
tested if they were insulated" (Answer, page 5).
With respect to claim 1, appellant argues (Brief, pages 5
and 6) that:
There is no limitation in claim 1 as to when the
testing takes place nor as to when the insulating means
covers and electrically insulates the second ends of
the testing wire conductors. Moreover, there is no
requirement in claim 1 that the testing wire conductors
be exposed generally in the completed IC card. Rather,
claim 1 only requires that the testing wire conductors
be exposed at the second surface of the circuit board.
As plainly apparent from the embodiment of the
invention shown in Figure 3, even when the insulating
means, the sheet 17 in Figure 3, is in place, the
testing wire conductors are still exposed at the second
surface of the circuit board. Thus, no inconsistency
can be found in the language of independent claim 1.

Appellant additionally argues (Reply Brief, pages 3 and 4)
that:
It matters not whether insulating means or any other
object is present and covers the second surface of the
circuit board or the second ends of the testing wire
conductors because, in any event, those second ends of
the testing wire conductors are still present, i.e.,
exposed at, the second surface of the circuit board.
With respect to claim 14, appellant argues (Reply Brief, page 4)
that:
The Examiner's arguments make it appear that claim
14 also includes the "for testing" language of claim 1.
It does not. All that claim 14 requires is that each
testing wire conductor be exposed at an end of a resin
package, just as they are shown in Figures 9 and 11 of
the application. Testing using those conductors and
Appeal No. 95-4028
Application 08/097,904
Any analysis under § 112 should begin with a determination2
of whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and
particularity when read in light of the application disclosure as
they would be by one possessing ordinary skill in the art. See
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
5
the timing of testing, the entire focus of one-half of
the Examiner's arguments regarding claim 14, are
irrelevant to any language found in claim 14 or its
dependent claims.
Thus, just as in claim 1, in claim 14, which is
free of the language that confused the Examiner, a
definitive structural relationship between the end
surface of the resin package and each testing wire
conductor is described that exists whether insulating
means or another object covers or electrically
insulates those second ends of the testing wire
conductors. This structural relationship is so plain
and simple that the rejection of the claims as
indefinite is nearly incredible.
When claim 1 is read in light of the application
disclosure, we agree with the appellant that "even when the2
insulating means, the sheet 17 in Figure 3, is in place, the
testing wire conductors are still exposed at the second surface
of the circuit board" (Brief, page 6). On the other hand, the
testing wire conductors when covered by the insulating means are
not exposed "for testing the respective functions of said
electronic circuit individually" as required by claim 1. Thus,
we agree with the examiner's position that "the testing wires
could not be tested if they were insulated" (Answer, page 5).
Appeal No. 95-4028
Application 08/097,904
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The indefiniteness rejection of claim 1 is sustained. The
indefiniteness rejection of dependent claim 16 is likewise
sustained.
The principal reason for sustaining the indefiniteness
rejection of claim 1 is also the principal reason for reversing
the indefiniteness rejection of claim 14. Appellant's argument
(Reply Brief, page 4) that claim 14 does not include the noted
"for testing" language that appears in claim 1 is correct. Claim
14 merely requires that the testing wire conductors be exposed at
an end surface of the resin package, and that an insulating means
electrically insulate the ends of the testing wire conductors.
No testing of the electronic circuit is required in claim 14.
For this reason, claim 14 and the claims that depend therefrom
are definite. The indefiniteness rejection of claims 8 through
10 and 14 is reversed.
DECISION
The decision of the examiner rejecting claims 1, 8 through
10, 14 and 16 under the second paragraph of 35 U.S.C. § 112 is
sustained as to claims 1 and 16, and is reversed as to claims 8
through 10 and 14. In summary, the decision of the examiner is
affirmed-in-part.
Appeal No. 95-4028
Application 08/097,904
7
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 95-4028
Application 08/097,904
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