Ex Parte Timm et al

Patent Trial and Appeal Board

Apr 2, 2014

11574325 (P.T.A.B. Apr. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VOLKER TIMM and KIM NGUYEN
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Appeal 2011-009439
Application 11/574,325
Technology Center 2600
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Before ROBERT E. NAPPI, CARLA M. KRIVAK, and
JASON V. MORGAN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 3 and 5 through 7.
We affirm.

INVENTION
The invention is directed to a document having a Radio Frequency
Identification (RFID) chip wherein the chip is mechanically reinforced by a
reinforcing layer. The rigidity of the reinforcing layer gradually decreases
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Application 11/574,325
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from its center towards its edges. Abstract of Appellant’s Specification.
Claim 1 is representative of the invention and reproduced below:
1. An identification document having multiple pages, wherein at least
one contactless RFID chip and an antenna connected thereto are integrated
on a page of the identification document, characterized in that an additional
layer mechanically reinforcing the RFID chip is situated at the area of the
RFID chip on the page, wherein the rigidity of the additional layer
mechanically reinforcing the RFID chip gradually decreases from its center
towards its edge.

REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 2, 5, and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Hattori (US 2003/0132302 A1) and Wiklof
(US 6,114,962). Answer 3-5.
1

The Examiner has rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Hattori, Wiklof, and Kydd (US 2003/0211246 A1).
Answer 5.
The Examiner has rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Hattori, Wiklof, and Kazumi (JP 2002-216097). Answer
5-6.
ISSUES
Rejection of claims 1, 2, 5, and 7.
Appellants argue on pages 6 through 13 of the Appeal Brief, and
pages 4 and 6 of the Reply Brief that the Examiner’s rejection of
representative claim 1 is in error. Appellants’ arguments present us with the
following issues:

1
Throughout this opinion we refer to the Appeal Brief filed October 18,
2010, Reply Brief filed March 24, 2011, and the Examiner’s Answer mailed
January 24, 2011.
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Application 11/574,325
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a) did the Examiner err in finding the combination of Hattori and
Wiklof teaches or renders obvious the claim limitation “the rigidity
of the additional layer mechanically reinforcing the RFID chip
gradually decreases from its center towards its edge”?
b) did the Examiner err in concluding the skilled artisan would
combine the teachings of Hattori and Wiklof?

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellants’
arguments. We disagree with Appellants’ conclusion that the Examiner
erred in finding the combination of Hattori and Wiklof teaches or renders
obvious the claim limitation “the rigidity of the additional layer
mechanically reinforcing the RFID chip gradually decreases from its center
towards its edge” and that the Examiner erred in concluding the skilled
artisan would combine the references.
With respect to the first issue, Appellants assert while Wiklof may
teach reducing the stiffness of, and increasing flexibility in one direction of,
the substrate “Wiklof does not teach that the flexibility [sic rigidity]
decreases” gradually from center to edge as claimed. Appeal Brief 7. We
disagree with the Appellants’ arguments; we concur with the Examiner’s
response on pages 6 and 7 of the Answer. We further note Appellants’
Specification does not define what is meant by gradually decreasing rigidity
(i.e., increasing flexibility), but does identify that this property is achieved
by using a device such as shown in Figures 4 and 6 (which has serpentine
edges) (see Spec. 4). While Wiklof does not use the term “gradually” to
discuss the change in flexibility/rigidity, the physical structure to achieve the
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change in flexibility/rigidity (the use serpentine edges as shown in Figure 1)
is the same as is used in Appellants’ device. Thus, we consider it reasonable
for the Examiner to find Wiklof teaches gradually decreasing rigidity and we
are not persuaded of error in the Examiner’s finding. See In re Best, 562
F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.”). See also In re Spada, 911 F.2d
705, 708-09 (Fed. Cir. 1990).
With respect to the second issue, Appellants argue the combination is
in error as the combination does not add any functionality beyond what is
already taught by Hattori, thus it would render the prior art unsatisfactory for
its intended purpose. Appeal Brief 10-13. The Examiner has provided a
detailed response to each of the points raised by Appellants. Answer 7-9.
We have reviewed and concur with the Examiner’s response. Further we
note Hattori teaches use of a reinforcing plate item 5, and Wiklof teaches a
different reinforcing plate for an RFID chip, thus we consider the
combination to be a mere substitution of known parts to perform their
known function and is thus an obvious combination. Accordingly, we
sustain the Examiner’s rejection of representative claim 1 and claims 2, 5,
and 7 grouped with claim 1.
Appellants’ arguments directed to claims 3 and 6 assert the rejection
of these claims is in error for the same reasons as claim 1. Thus, we
similarly sustain the Examiner’s rejections of claims 3 and 6.

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DECISION
The decision of the Examiner rejecting claims 1 through 3 and
5 through 7 under 35 U.S.C. § 103(a) 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)(iv).

AFFIRMED

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