Ex Parte Sweeney

Board of Patent Appeals and Interferences

Sep 14, 2011

11049861 (B.P.A.I. Sep. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte WILLIAM R. SWEENEY
________________

Appeal 2009-010142
Application 11/049,861
Technology Center 2600
________________

Before MAHSHID D. SAADAT, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-010142
Application 11/049,861

2
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-5, 7-9, 11, and 13-16:
Claims 1-5, 9, 11 and 13-16 stand rejected under 35 U.S.C. § 103(a)
as obvious over Selker (US 6,863,220 B2; issued Mar. 8, 2005 (filed Dec.
31, 2002)) in view of Shibata (US 6,343,744 B1; issued Feb. 5, 2002);
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as obvious
over Selker in view of Shibata and Wei (US 2006/0085266 A1; published
Apr. 20, 2006);
We affirm.

STATEMENT OF THE CASE
The Invention
Appellant’s invention relates to a controllable RFID (radio frequency
identification) card (Spec. 1).
Based on an identification of a customer through the use of [the
RFID] card, personalized information is selectively produced
and wirelessly provided to a display such as a wireless display.
The identification of the customer, as well as additional
information, can be provided through the use of the card,
wherein functions of the card can be enabled or disabled by the
customer through the use of on-card switches, buttons, slides
and/or bistable domes.
(Abstract).

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Application 11/049,861

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Independent claims 1 and 11 are illustrative:
1. A display system, comprising:
a display;
an information reader; and
a card with at least one control,
wherein:
the control has at least two states for enabling or
disabling a function of the card, the state of the at least one
control being selected by a user momentarily activating or
deactivating the at least one control, and the selected state is
maintained until the user deactivates or activates the at least one
control; and wherein
information on the card is read by the information reader;
and
the at least one control comprises a tactile or visual
response display on the card.
11. A customer controllable identification card, comprising:
a card with first and second planar surfaces;
at least one radio frequency identification tag within the
card; and
one or more controls located on the card, the one or more
controls having at least two states selected by momentary
activation of one or more controls by a user and that maintain
the selected state until deactivated by the user, wherein the state
of the one or more controls enables or disables radio frequency
readable functions of the card wherein the one or more controls
extend beyond the first planar surface when positioned in an up
direction and extend beyond the second planar surface in a
down direction.
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Appeal 2009-010142
Application 11/049,861

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positioned over the switch assembly 400 and acts as a Belleville
spring. When the user presses on the dimple 450 as shown in
FIG. 6, the resilient dimple deflects inwardly, urging the wire
421 into engagement with the distal end 452 of the cantilevered
arm of the spring clip 423. The upper surface of the clip end
452 is oriented at an angle to the direction of motion of the wire
421, creating a wiping action as the wire and clip engage, and
providing self-cleaning of the metallic contacts to ensure a good
electrical connection during the life of the card.
The switch assembly 400 is sandwiched between two
planar panels 441 and 442 which form the outer surfaces of the
data card 401 and which also house the integrated circuit 405
and the antenna 403. The panel 441 is molded to form a dome
shaped dimple seen at 450 which is positioned over the switch
assembly 400 and acts as a Belleville spring. When the user
presses on the dimple 450 as shown in FIG. 6, the resilient
dimple deflects inwardly, urging the wire 421 into engagement
with the distal end 452 of the cantilevered arm of the spring clip
423. The upper surface of the clip end 452 is oriented at an
angle to the direction of motion of the wire 421, creating a
wiping action as the wire and clip engage, and providing self-
cleaning of the metallic contacts to ensure a good electrical
connection during the life of the card.
The cardholder can feel the presence of the dimple on
the card, providing a tactile indication to the cardholder of the
place on the card which should be pressed to activate the card.
In addition, when the dome-shaped dimple is depressed, it
deforms to allow the cardholder to feel a significant movement
as the switch closes. The noticeable movement provides tactile
feedback to the cardholder to confirm that the switch has been
properly activated.
(Selker, col. 4, ll. 24-59).

Appeal 2009-010142
Application 11/049,861

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The Examiner’s Rejections
The Examiner combines the rejection of claims 1 and 11, finding that
Selker discloses an RFID card that discloses all of the limitations of these
claims except for two features (Ans. 4-6). First, the Examiner states that
Selker fails to disclose “the control being selected by a user and the selected
state is maintained until the user deactivates/activates,” as required by claim
1 (Ans. 5). The Examiner relies on Shibata’s switch 3 (see, e.g., Fig. 8) to
compensate for this shortcoming of Selker (Ans. 5-6), and provides
motivation for why the substitution of Shibata’s RFID switch for Selker’s
control would have been obvious (Ans. 6).
The second feature that the Examiner finds to be missing from Selker
is “a card with first and second planar surfaces” and “wherein the one or
more controls extend beyond the first planar surface when positioned in an
up direction and extend beyond the second planar surface in a down
direction” (see claim 11). The Examiner interprets the claimed first and
second planar surfaces as respectively reading on the planar outer and inner
surfaces of Selker’s top panel 441 that forms the front face of the RFID.
The Examiner also states that while Selker’s movable switch extends beyond
a first planar surface of the RFID when positioned in an up direction (i.e.,
beyond the outer surface of the front panel), “Selker does not specifically
disclose that the switch is extending beyond the second planar surface in a
down direction” (Ans. 4-5). The Examiner nonetheless finds
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Application 11/049,861

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[a]s long as, [sic] the switch is being [sic] enable/disable RFID
card, employing any structure design such as extend [sic]
beyond the second planar surface in a down direction (e.g.,
switch pressed) for performing the same function is not
constitute [sic] an inventive step, but it is a matter of obvious of
[sic] design choice.
(Ans. 5). Based upon this rationale, the Examiner concludes that providing
the switch so as to have “any appropriate fashion structure design” would
have been obvious (id.).
Appellant contends that the combination of Selker, Shibata, and
Official Notice fails to teach the two features noted above. Because the
limitation, “the at least one control comprises a tactile or visual response
display on the card,” appears only in claim 1, and because the limitation
regarding the control extending below the second surface appears only in
independent claim 11, we address these claims separately.

ANALYSIS
Claims 1-5, 8, and 9
Appellant discusses Selker’s structure and provides reasons why
“Selker fails to suggest a card having a tactile or visual response display as
recited by Claim 1” (App. Br. 5-6). As noted hereinabove, though, the
Examiner already acknowledges that Selker fails to disclose this feature and,
instead, relies upon Shibata for this teaching (Ans. 5-6). With respect to
Shibata, though, Appellant solely states “Shibata et al. does not cure the
deficiency of Selker noted above. As such, the combination of Selker with
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Shibata fails to suggest a tactile or visual response display of information on
an information card with at least one control” (App. Br. 6; see also Reply Br.
2).
Appellant’s statements regarding Shibata’s shortcomings are merely
conclusory and are not supported by any evidence or reasoning. For
example, Shibata states that the tactile switch depicted in Figure 8 may take
the form of a slide type or a push button type (col. 4, ll. 53-55), but
Appellant has not provided any evidence or reasoned arguments for why a
slide type switch would fail to constitute a tactile or visual response display,
as required by claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2006) (establishing
that “[a] statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim”).
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s obviousness rejection of representative claim 1.1 We
accordingly sustain the Examiner’s rejection of that claim, as well as for
dependent claims 2-5 and 9, which are not separately argued.
Likewise, Appellant has not presented any separate arguments
regarding the rejection of claim 8, which was additionally based upon the
teachings of Wei. Accordingly, we also sustain the rejection of dependent
claim 8 for the reasons discussed above.

1 Appellant argues claims 1-5 and 7-9 together as a group. See App. Br. 5-6.
Appellant presents additional arguments regarding dependent claim 7 (App.
Br. 6). Accordingly, we select independent claim 1 as representative of
claims 1-5, 8, and 9. See 37 C.F.R. § 41.37(c)(1)(vii).
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Application 11/049,861

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Claim 7
Claim 7 depends from claim 1, further reciting that “the system
comprises a cigarette sales promotion system, a consumer buying pattern
recognition system, a game of chance system, or an electronic price display
system.” Appellant solely argues that “[c]laim 7 is patentable over Selker in
view of Shibata et al. and Wei et al. because Selker, Shibata et al. and Wei et
al. do not disclose a cigarette sales promotion system or a game of chance
system as recited in Claim 7” (App. Br. 6). However, the Examiner did not
rely on Wei for teaching a cigarette sales promotion system or a game of
chance system. The Examiner instead relies upon Wei for teaching “a RFID
reader comprising an electronic display for displaying personal information
and price” (Ans. 6). Appellant has not alleged that Wei fails to disclose this
feature. We therefore affirm the Examiner’s rejection of dependent claim 7.

Claims 11 and 13-16
As an initial matter, we note that claim 11 recites that “the one or
more controls having at least two states selected by momentary activation of
one or more controls by a user and that maintain the selected state until
deactivated by the user.” This language does not limit the claim scope to a
control that changes state, or activates a circuit, in response to a momentary
pressing and releasing of the control. The claim language regarding the
momentary activation is broader, additionally reading on a user depressing
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Application 11/049,861

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and holding down the dome shaped dimple, and the deactivation feature
reads on the point of time when user releases the button.2
Moreover, because Selker’s switch is held in a depressed or activated
state until the time delay expires (see col. 4, l. 60 – col. 5, l. 7), a user can
see and feel whether the switch’s dimple is either in the raised (/deactivated)
state, or alternatively, in the depressed (/activated) state. Contrary to
Appellant’s assertion on page 4 of the Reply Brief, then, Selker’s dimple
does provide tactile and visual feedback (i.e., a display response). As such,
the obviousness rejection of claim 11 need not rely on Shibata, either for
teaching that the selected state is maintained until deactivated by the user, or
for otherwise modifying Selker’s switch mechanism. We see no harm,
though, in the Examiner including the additional, albeit unnecessary,
teachings of Shibata.
We now turn to the modification that the Examiner finds to constitute
an obvious design choice. The Examiner interprets the “first and second
planar surfaces” of the claimed customer controllable identification card as
reading on Selker’s outer and inner surfaces of planar panel 441 (Ans. 8).
Appellant does not dispute this interpretation (see App. Br. 7; Reply Br. 2-

2 Deactivation also alternatively reads on the conclusion of the time delay
period that follows the user releasing the dimple. See Selker, col. 4, l. 60 –
col. 5, l. 7 (describing an optional bleed aperture 480 that “creat[es] a time
delay before the switch contacts again open as the resilient dimple returns to
its normal shape. The time delay provides a prolonged time interval during
which the card is enabled to permit the chip to be powered up”).
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3). Nor does Appellant contest (id.) the Examiner’s position that dome
shaped dimple 450 “extend[s] beyond the first planar surface when
positioned in an up position” as required by claim 11 (Ans. 4-5). See Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an
appellant fails to present arguments on a particular issue – or, more broadly,
on a particular rejection – the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.”). Designated
precedential at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/index.jsp.
We therefore address the following question: would it have
constituted an obvious design choice to modify Selker’s switch mechanism
such that the dome shaped dimple 450 is alternatively able to be depressed to
a greater extent before the switch is activated (before wire 421 makes
contact with the cantilevered arm of spring clip 423), such that, instead of
being even with the plane of panel 441 when activation occurs, the deformed
dimple becomes concave, “extend[ing] beyond the second planar surface in
a down direction,” as required by claim 11?
Appellant contends that the modification is not an obvious design
choice at least “because extending below the planar surface implements the
unobvious function of providing a tactile or visual display” (App. Br. 7).
This argument is not persuasive.
The issue is not whether it would have been obvious to modify
Selker’s switch in order to additionally achieve the function of a tactile or
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visual display. As explained supra, Selker’s switch already provides a
tactile or visual function. The question is, instead, whether it would have
been obvious to modify the dimple’s position relative to the wire and spring
clip in the noted manner without modifying the function of Selker’s switch.
Appellant has failed to present any arguments as to why it would have been
unobvious to make such a structural modification that does not modify the
switch’s function.
To the contrary, we find that such a structural modification would
have been based upon common sense considerations such as (1) what size
switches were available relative to what overall card profile or thickness was
deemed to be acceptable for a given application; and (2) how pronounced
Selker’s disclosed tactile or visual response display would have been desired
to be. Furthermore, an additional embodiment (see Selker, Figs. 2 and 3)
provides evidence that the alternative positional relationship (wherein the
panel is disposed relative to the wire and contact such that, upon activation,
the depressed point of the panel extends beyond the panel’s inner surface)
constitutes an art-recognized functionally equivalent structure.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s obviousness rejection of representative claim 11. We
accordingly sustain the Examiner’s rejection of that claim, as well as of
dependent claims 13-16, which were not separately argued.
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Application 11/049,861

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DECISION
We sustain the Examiner's rejections with respect to all pending
claims on appeal. Therefore, the Examiner’s decision rejecting claims 1-5,
7-9, 11, and 13-16 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv)(2010).

AFFIRMED

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