Ex parte OHNO

Board of Patent Appeals and Interferences

Jul 24, 1997

07987552 (B.P.A.I. Jul. 24, 1997)

Application for patent filed December 8, 1992, entitled "Non-Contact IC Card Having Multiple1
Receivers With Different Signal Detection Thresholds For Minimizing Current Consumption," which is a
continuation of Application 07/463,310, filed January 10, 1990, now abandoned, which claims the
priority benefit of Japanese Application 1-247901, filed October 24, 1989.
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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journal and (2) is not binding precedent of the Board.
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Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte HISASHI OHNO

Appeal No. 95-0868
Application 07/987,5521

ON BRIEF

Before THOMAS, HAIRSTON, and BARRETT, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
Appeal No. 95-0868
Application 07/987,552
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DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
final rejection of claims 5 and 6, all the claims pending in
the application. Claims 1-4 and 7 have been cancelled.
The invention is directed to a non-contact IC card. Prior art non-contact IC cards have a receiver
with a single threshold level. The signal is detected by comparing the level of the received signal with the
threshold level. As illustrated in appellant's figure 4, if the receiver has an excessively high threshold value
V it cannot detect the data D and D , as shown by an output waveform S . If the receiver has anH 11 12 H
excessively low threshold value V there is the danger of detecting not only the true data D and D butL 11 12
also noise N and N , as shown by an output waveform S . Even if the threshold level is properly set,11 12 L
if the IC card is used in a different environment the threshold level may need to be reset. The invention
allows a threshold level to be easily set in correspondence with the strength of the received signal.
The invention uses at least three receivers each with different signal detection threshold levels as
shown in figure 2 (showing four receivers). Undisclosed structure determines which receivers accurately
detect the data. In figure 2, receivers 10 and 10 , which output the signals S and S , accurately detect2 3 2 3
the data. Since the current consumed by a receiver having a high threshold level is large, the CPU selects
from the receivers that have accurately detected the data the receiver having the lowest signal detection
threshold. This minimizes current consumption.
Appeal No. 95-0868
Application 07/987,552
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Claim 5 is reproduced below.
5. A non-contact IC card comprising:
an antenna for receiving an external analog signal containing digital data;
at least three receivers, coupled to the antenna, for receiving the analog signal and for
detecting the digital data wherein each of the at least three receivers has a different signal detection
threshold level for detecting the digital data;
a CPU for controlling the IC card and processing the digital data; and
selection means coupled to the at least three receivers and controlled by the CPU for
connecting a selected one of the at least three receivers to the CPU, the CPU controlling the
selection means by connecting to the CPU, from the receivers of the at least three receivers that
have accurately detected the digital data, the receiver having the lowest signal detection threshold
level.
The examiner relies on the following references:
Davis et al. (Davis) 4,766,295 August 23, 1988
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as being unpatentable over Davis. The
examiner finds that Davis teaches the subject matter recited in claim 5 except that Davis uses two receivers
instead of three receivers. The examiner concludes (Examiner's Answer, page 2):
It would have been obvious to a person of ordinary skill in the art at the time the invention was
made to have provided additional receivers in the Davis et al. system because providing additional
receivers would not have changed the overall structure or operation of the system, and it would
have provided for the system to utilize that particular receiver which was most power efficient
based upon the received signal strength as already taught by Davis et al. (col. 5 lines 1-31).
OPINION
Appeal No. 95-0868
Application 07/987,552
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We reverse but enter a new ground of rejection pursuant to our authority under 37 CFR §
1.196(b).
The examiner finds that the difference between the subject matter of claim 5 and Davis is that Davis
teaches only two receivers instead of the "at least three receivers" (Examiner's Answer, page 2). Appellant
argues two differences (Brief, page 9): "the absence of a selection means responsive to the strength of a
received signal for selecting a receiver and the absence of a third or even more receivers." It is not
necessary to address the question of the number of receivers because we conclude that the examiner has
erred in finding that Davis otherwise contains the structure as recited in claim 5.
Davis does not meet the limitations of claim 5 for at least the following reasons:
First, the high gain/low gain receiver in Davis is not the same as a high threshold level/low threshold
level receiver for detecting the digital data. "Threshold level" is the minimum signal level that can be
detected. "Gain" is the ratio of output to input, the amount of amplification of the input signal. Gain and
threshold level are different things. The examiner states that "Davis et al. teaches a selection means . . . for
connecting . . . that receiver having the lowest signal detection threshold level" (Examiner's Answer,
page 2), but errs in equating gain with threshold level. Therefore, the examiner has not shown that each
of the receivers in Davis "has a different signal detection threshold level for detecting the digital data" (claim
1).
Second, the claim limitation of "at least three receivers, coupled to the antenna, for receiving the
analog signal and for detecting the digital data wherein each of the . . . receivers has a different signal
Appeal No. 95-0868
Application 07/987,552
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detection threshold level for detecting the digital data" requires that all receivers detect the digital data at
the same time in order to meet the subsequent limitation of determining the "receivers that have accurately
detected the digital data." We agree that the two mode (high gain/low gain) receiver in Davis can be
broadly considered to be two receivers even though only one receiver can operate at a time due to the
receivers sharing common amplifier stages. However, since the receivers in Davis can operate only one
at a time they do not simultaneously receive and detect the digital data and the interpretation of a receiver
switchable between two modes as two receivers does not fit the claim language.
Third, Davis does not check which receivers (high gain or low gain or both) have accurately
detected data and therefore does not select from among the "receivers that have accurately detected the
digital data." The examiner states that "[a]s described in Davis et al. at col. 5, if the low gain mode will
receive the signal accurately, then the low gain mode is utilized, and if the low gain mode will not receive
the signal accurately, then the high gain mode will be tested to determine if the high gain mode will receive
the signal accurately" (Examiner's Answer, pages 2-3). As appellant correctly points out (Reply Brief,
page 2): "There is no testing as to whether a signal is accurately received in determining which gain mode
to employ." The selection of gain mode in the Davis receiver is based on time and whether the tags 18
sense emitted signals from transmitter heads 20, not the accuracy of the detected digital data. See Davis,
column 5, lines 21-28. Furthermore, since the receivers in Davis must operate one at a time there is no
way that Davis could determine the "receivers that have accurately detected the digital data" since this is
based on a comparison between the detected signals from the different receivers.
Appeal No. 95-0868
Application 07/987,552
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Fourth, since the receivers in Davis do not have different detection threshold levels for detecting
the digital data and since Davis does not check which receivers accurately detected data, Davis does not
select "from the receivers . . . that have accurately detected the digital data, the receiver having the lowest
signal detection threshold level." The selection of receivers in Davis is based on time, not accuracy of the
detected data and manifestly not accuracy and minimum threshold level.
For the reasons stated above, the obviousness rejection of claims 5 and 6 is reversed.
NEW GROUNDS OF REJECTION PURSUANT TO 37 CFR § 1.196(b)
Claims 5 and 6 are rejected under 35 U.S.C. § 112, first paragraph, as based on a lack of enabling
disclosure of how to make and use the claimed invention. Claim 5 passively requires structure for
determining which receivers "have accurately detected the digital data" so that the CPU can control the
selection means to connect to the CPU "the receiver having the lowest signal detection threshold level."
The specification does not provide an enabling disclosure of how to make and use structure for determining
which receivers "have accurately detected the digital data."
"The test of enablement is whether one reasonably skilled in the art could make or use the invention
from the disclosures in the patent coupled with information known in the art without undue
experimentation." United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed.
Cir. 1988), citing Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81,
94 (Fed. Cir. 1986). The specification need not disclose what is well known in the art. In re Buchner,
929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991).
Appeal No. 95-0868
Application 07/987,552
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Figure 2 shows that receivers 10 and 10 having threshold levels V and V , respectively,2 3 2 3
accurately detect the digital data. This is described in the specification at the paragraph bridging pages 5-6.
However, the specification does not describe any circuitry or programming that would permit one skilled
in the art to detect which receivers are accurately detecting the data. To the best of our knowledge, and
from a review of the prior art cited in the record, an element to accurately detect data from multiple
receivers each with a different threshold level is not conventional in the art. Since the element to accurately
detect data is integral to the practice of the invention and neither the application nor the prior art describe
its structure, we have reason to doubt that the claimed invention could be carried out based on the
disclosure. See Id. It is not enough that a person skilled in the art, by carrying on investigations along the
line indicated in the subject application, and by a great amount of work eventually might find out how to
make and use the instant invention. The statute requires the application itself to inform, not to direct others
to find out for themselves. Cf. In re Gardner, 427 F.2d 786, 789, 166 USPQ 138, 141 (CCPA 1970)
("the law requires that the disclosure in the application shall inform [those skilled in the art] how to use, not
how to find out how to use for themselves").
Appeal No. 95-0868
Application 07/987,552
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CONCLUSION
The rejection of claims 5 and 6 is reversed.
A new ground of rejection of claims 5 and 6 is entered pursuant to 37 CFR § 1.196(b).
Any request for reconsideration or modification of this decision by the Board of Patent Appeals
and Interferences based upon the same record must be filed within one month from the date of the decision.
37 CFR § 1.197. Should appellant elect to have further prosecution before the examiner in response to
the new rejection under 37 CFR § 1.196(b) by way of amendment or showing of facts, or both, not
previously of record, a shortened statutory period for making such response is hereby set to expire two
months from the date of this decision.
NOTE: This is not a final decision for the purpose of judicial review because it includes a new
ground of rejection pursuant to 37 CFR § 1.196(b) ("A new rejection shall not be considered final for the
purpose of judicial review.").
Appeal No. 95-0868
Application 07/987,552
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No time period for taking any subsequent action in connection with this appeal may be extended
under 37 CFR § 1.136(a).
REVERSED - § 1.196(b)
JAMES D. THOMAS )
AdministrativePatent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 95-0868
Application 07/987,552
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