Ex Parte Smith et al

Patent Trial and Appeal Board

Mar 8, 2016

11681121 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/681,121 03/01/2007 LeeJ. Smith
13143 7590 03/10/2016
Law Office of Kevin Jackson
6315 E. Cactus Wren Rd
Paradise Valley, AZ 85253
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.
AMKOR-136A 6535
EXAMINER
MIKELS, MATTHEW
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
03/10/2016 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):
kevinj acksonlaw@gmail.com
kjacksonlaw@cox.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE J. SMITH, JEFFREY A. MIKS, CURTIS M. ZWENGER,
and BARRY M. MILES 1
Appeal2014-002778
Application 11/681,121
Technology Center 2800
Before CHUNG K. PAK, MARK NAGUMO, and JULIA HEANEY,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. 2 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Amkor Technology, Inc. as the real party in interest.
Appeal Brief filed July 21, 2013 ("App. Br.") at 1.
2 Final Action entered February 26, 2013 ("Final Act.") at 2-9.
Appeal2014-002778
Application 11/681, 121
APPEALED SUBJECT MATTER
The subject matter on appeal is directed to a memory card device with
increased memory storage capacity. Spec. 1 i-f 3. Figures 1 and lB illustrate
one embodiment of such memory card device as shown below:
(100
f !1 .. ;rn
l
:' . i
m ' ' FIG. 18
Figures 1 and lB disclose a folded memory card device 100 having
flexible substrate 110 with electronic components (memory, controller, and
passive devices 124, 126, and 130) mounted thereon, wherein flexible
substrate 110 is folded along fold lines F 1 and F2 such that electronic
components 124, 126, and 130 are disposed between juxtaposed portions of
flexible substrate 110. Spec. i-fi-132-34 and 36. Body 136 is formed between
the juxtaposed portions of flexible substrate 110 to cover electronic
components 124, 126, and 130, but body 136 does not cover contacts 120,
which are formed directly on flexible substrate 110 and positioned to be
exposed. Spec. i-f 37. Body 136 is formed of a layer of encapsulant material
which is hardened. Spec. i-f 37.
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Application 11/681, 121
Figure 6 illustrates another embodiment of such memory device as
shown below:
FIG.6
Figure 6 discloses a stacked memory card device 600 having rigid
substrate 610 with electronic components (memory, controller, and passive
devices 624, 626, and 630) wherein rigid substrate 610 is attached to flexible
substrate 608. Spec. i-fi-165----67. Memory devices 624 are arranged in a
stacked arrangement. Spec. i166. Body 636 is formed to cover electronic
components 624, 626, and 630, but body 636 does not cover contacts 620
which are formed directly on flexible substrate 608 and positioned to be
exposed. Spec. i-fi-167 and 70. Body 636 is formed of a layer of encapsulant
material which is hardened. Spec. i1 70.
Details of the appealed subject matter are recited in representative
claims 1, 12, and 20, 3 which are reproduced below (bracketed references to
components in Figures 1, lB, and 6 added) from the Claims Appendix to the
Appeal Brief:
1. A memory card [ 100] comprising:
a flexible substrate [110] having a conductive pattern and
a plurality of contacts [120] which are each formed directly
3 Independent claims 1, 12, and 20 are the broadest claims on this appeal.
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Appeal2014-002778
Application 11/681, 121
thereon, the contacts [120J being electrically connected to the
conductive pattern;
a plurality of electronic components [124, 126, and 130J
mounted to the substrate [1 lOJ and electrically connected to the
conductive pattern on the substrate [11 OJ, the substrate [11 OJ
being configured in a manner wherein the electronic
components [124, 126, and 130J are disposed between
juxtaposed portions of the substrate [ 110 J; and
a body [136Jformed between the juxtaposed portions of
the substrate [1 lOJ and covering each of the electronic
components [124, 126, and 130J;
wherein the contacts [120J are not covered by the body
[136J and are positioned on the substrate [1 lOJ so as to be
exposed in the memory card [ 100 J.
12. A memory card [ 1 00 J comprising:
a continuous, flexible substrate [1 lOJ defining a partially
enclosed interior cavity and including a plurality of contacts
[120J which are formed directly thereon;
a plurality of electronic components [124, 126, and 130J
disposed within the interior cavity and electrically connected to
the contacts [120]; and
a body [136J at least partially filling the interior cavity
and covering each of the electronic components [124, 126, and
130J disposed therein;
wherein the contacts [120J are not disposed within the interior
cavity so as to be exposed in the memory card [100].
20. A memory card [600J comprising:
a rigid substrate [610J having a peripheral edge and a
conductive pattern which is formed directly thereon;
a flexible substrate [608J having a peripheral edge and a
plurality of contacts [620J which are formed directly thereon,
portions of the peripheral edges of the flexible substrate [608J
and the rigid substrate [610J being attached to each other such
that the contacts [620J are electrically connected to the
conductive pattern;
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Appeal2014-002778
Application 11/681, 121
a plurality of electronic components [624, 626, and 630]
mounted to the rigid substrate [ 61 OJ and electrically connected
to the conductive pattern; and
a body [636] partially covering the rigid and flexible
substrates [610 and 608] such that each of the electronic
components [624, 626, 630] are encapsulated by the body [636]
and the contacts [620] are exposed in the memory card [600].
App. Br. 30, 32, and 33 (emphasis added).
REJECTIONS
Appellants seek review of the following grounds of rejection
maintained in the Examiner's Answer entered October 24, 2013 ("Ans."):
1. Claims 1-3, 7-14, and 17-20 under 35 U.S.C. § 103(a) as
unpatentable over US 2002/0043400 Al published in the name of Shinohara
on April 18, 2002 ("Shinohara") in view of US 6,241,153 Bl issued to
Tiffany, III on June 5, 2001 ("Tiffany") and US 2005/0085133 Al published
in the name of Wang et al. on April 21, 2005 ("Wang"); and
2. Claims 4--6, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable
over Shinohara in view of Tiffany, Wang, and US 2006/0077644 Al
published in the name of Nickerson et al. on April 13, 2006 ("Nickerson").
App. Br. 7.
DISCUSSION
Upon review of the entire record, including the respective positions
advanced by Examiner and Appellants, we concur with Appellants that the
Examiner has not carried the burden of establishing a prima facie case of
obviousness regarding the subject matter recited in claims 1-20 within the
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Application 11/681, 121
meaning of 35 U.S.C. § 103(a) for the reasons set forth in the Appeal Brief.
We add the following for emphasis and completeness.
As evidence of obviousness of the claimed subject matter, the
Examiner relies upon the combined disclosures of Shinohara, Tiffany, and
Wang or the combined disclosures of Shinohara, Tiffany, Wang, and
Nickerson. Final Act. 2-9; Ans. 2-9. The Examiner finds that Shinohara, in
Figure 4 and accompanying text, discloses a memory card device comprising
flexible substrate 4 (corresponding to the recited flexible substrate), thin
small outline packages 10 and thin quad flat package 11 (corresponding to
the recited electronic components) mounted onto flexible substrate 4 and
electrically connected to a conductive pattern (copper wirings), and socket 7
(corresponding to the recited contacts) connected to the conductive pattern.
Compare Final Act. 2--4 with claims 1, 12, and 20; see also Shinohara i-fi-f 13
and 35-36. The Examiner also finds that Shinohara discloses, in reference
to Figures 11 and 12, that flexible substrate 4 can be folded in a manner such
that thin small outline packages 10 and thin quad flat package 11 (electronic
components) are disposed between juxtaposed portions of flexible substrate
4 (i.e., inside a partially enclosed interior cavity defined by folded flexible
substrate 4) while exposing socket 7 (contacts) by not covering socket 7 with
folded flexible substrate 4. Compare Final Act. 2-3 with claims 1 and 12;
see also Shinohara i-fi-156-58.
However, the Examiner acknowledges, inter alia, that Shinohara does
not teach forming a body between juxtaposed portions of flexible substrate 4
(i.e., inside a partially enclosed interior cavity defined by folded flexible
substrate 4) to cover thin small outline packages 10 and thin quad flat
package 11 (electronic components), as recited in claims 1 and 12, and a
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Application 11/681, 121
body partially covering flexible substrate 4 and a rigid substrate such that
thin small outline packages 10 and thin quad flat package 11 (electronic
components) are encapsulated by the body, as recited in claim 20. Final Act.
3--4; Ans. 2--4.
To remedy these deficiencies, the Examiner finds that Tiffany teaches
"a body formed between juxtaposed portions of a substrate and covering
each of the electronic components," as recited in claim 1, "a body at least
partially filling the interior cavity and covering each of the electronic
components disposed therein," as recited in claim 12, and "a body partially
covering the rigid and flexible substrates such that each of the electronic
components are encapsulated by the body," as recited in claim 20. 4 Final
Act. 3-5; Ans. 3 and 5. Specifically, the Examiner relies on Tiffany's core
layer, made of a thermosetting polymeric material used to bond the bottom
or the rear side of an electrical signal sensing component located on the face
surface of a smart card to prevent tampering, as corresponding to the body
recited in claims 1, 12, and 20. Final Act. 3-5; Ans. 3-5.
The Examiner then concludes (Final Act. 5) that:
[I]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to include the foregoing
body formation features of Tiffany, in the memory card of
4 The Examiner does not rely upon the disclosure of Wang or Nickerson to
teach the body recited in claims 1, 12, and 20. Ans. 6. Rather, the Examiner
relies upon the disclosure of Wang as teaching "a substrate (765) having a
plurality of contacts (730) which are each formed directly thereon" as a basis
for forming socket 7 on folded flexible substrate 4 of the memory card
device taught by Shinohara and the disclosure of Nickerson as teaching "a
stiffener attached to the substrate to provide structural support to the contacts
disposed thereon" as a basis for attaching a stiffener on flexible substrate 4
to provide structural support to socket 7. Final Act. 7-9; Ans. 7-9.
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Application 11/681, 121
Shinohara, for the purpose of providing a memory card with
enhanced tamper/fraudulent resistance characteristics [to
address the tampering/fraudulent use problems] that plague[ d]
conventional memory cards.
However, as correctly explained by Appellants, the Examiner has not
demonstrated that any conventional memory card devices, much less the
memory card device taught by Shinohara, were known to suffer from any
tampering/fraudulent use problems associated with a smart card having an
electrical signal sensing component on its face or obverse surface. App. Br.
8-11, 16-18, and 22-25. According to Tiffany, these tampering/fraudulent
use problems occur because of the "proximity of the signal sensing
component to the face surface (or its obverse) of ... smart cards[, which]
presents an opportunity for tampering with, and fraudulent use of, such
cards." Tiffany, col. 2, 11. 27-31. Tiffany goes onto state (col. 2, 11. 34--59)
that its
smart cards (e.g., credit cards, ATM cards, personal identity
cards, access control cards, telephone cards, etc.) and methods
for making them are primarily based upon the use of certain
hereinafter more fully described physical elements and
manufacturing procedures. Applicant's tamper-preventing
construction for contact type smart cards is achieved by coating
the rear side of the smart card's contact device (e.g., its signal
sensor, pickup head, computer chip) with a primer/adhesive that
has the ability to form a strong bond with a thermosetting
polymeric material that is injected into a void space that
eventually becomes the core or center layer of the smart card ....
The tamper-preventing action provided by applicant's
placement of a primer/adhesive on the rear side (i.e., the
thermosetting polymer contacting-side) of the card's contact
device can be replaced by or further enhanced by placement of
certain, hereinafter more fully described, "anchor hooks" on the
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Appeal2014-002778
Application 11/681, 121
electrical sensing component in a manner such that said hooks
are immersed in the incoming, liquid, thermosetting polymer.
However, Shinohara teaches a memory card device comprising
memory chips mounted inside of a folded flexible substrate which is placed
within a stainless steel case held together by a U-shaped resin molded form
with a separate socket connector soldered to one end of the flexible
substrate. App. Br. 8-11, 16-18 and 23-25; see also Shinohara i-fi-14, 13, 30,
32, 33, and 36. The Examiner has not identified any teachings in Shinohara
or any other evidence to show that any memory chips or signal sensing
components used in Shinohara's memory card devices are located on the
proximity of the exposed face surface of a plastic substrate such that they are
susceptible to the tampering and/or fraudulent use problems which are
associated with smart cards. Final Act. 2--4; Ans. 2--4.
Thus, the weight of the evidence supports Appellants' contention that
the Examiner has not shown that one of ordinary skiU in the art wouid have
had a reason to employ the thermosetting material taught by Tiffany in
Shinohara's memory card device to form a body "between the juxtaposed
portions of the substrate and covering each of the electronic components," as
required by claim 1, "a body at least partially filling the interior cavity and
covering each of the electronic components disposed therein," as required by
claim 12, or "a body partially covering the rigid and flexible substrates
[which are connected at their peripheral edges] such that each of the
electronic components [mounted on the rigid substrate] are encapsulated by
the body," as required by claim 20. App. Br. 8-11, 16-18, and 22-25. Even
if we were to agree with the Examiner that one of ordinary skill in the art
would have been led to use the thermosetting material in the manner
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Application 11/681, 121
proposed by Tiffany to prevent any tampering and/or fraudulent use, the
thermosetting material taught by Tiffany would be used on the bottom or
rear side of the memory chip or the electronic components taught by
Shinohara to bond the bottom or rear side of the memory chips or the
electronic components to the substrate, rather than to encapsulate or cover
the electronic components as required by claims 1, 12, and 20.
Accordingly, we are constrained to reverse the Examiner's decision
rejecting claims 1-20 under 35 U.S.C. § 103(a).
ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1-20
under 35 U.S.C. § 103(a) is REVERSED.
REVERSED
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