Infineon Technologies AG

Patent Trials and Appeals Board

Apr 27, 2021

2019006214 (P.T.A.B. Apr. 27, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/644,236 03/11/2015 Martin Buchsbaum P59816US 5491
81722 7590 04/27/2021
Viering, Jentschura & Partner mbB - Inf
c/o
444 Brickell Avenue
Suite 700
Miami, FL 33131
EXAMINER
LU, ZHIYU
ART UNIT PAPER NUMBER
2665
NOTIFICATION DATE DELIVERY MODE
04/27/2021 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):
patint@vjp.de
vjp-us@vjp.de
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARTIN BUCHSBAUM, JOSEF GRUBER,
JUERGEN HOELZL, WALTER KARGL, and
PETER RAGGAM
____________________

Appeal 2019-006214
Application 14/644,236
Technology Center 2600
____________________

Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 seeks review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–20.2 We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The real party in interest is INFINEON TECHNOLOGIES
AG. (Appeal Br. 3.)
2 We note that Appellant’s claim listing at the time of filing the Notice of
Appeal and Pre-Appeal Brief Request for Review (both dated December 18,
2018) includes independent claim 19, while Appellant’s Appeal Brief lists
claim 19 as cancelled. (See Appeal Br. 3 (“Claims canceled: 19”), 15
(Claims App. indicating claim 19 as cancelled).) However, 37 C.F.R.
§ 41.37(c)(2) provides that “[a] brief shall not include any new or non-
admitted amendment.” Thus, “appellants may not include an amendment
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We AFFIRM.3
CLAIMED INVENTION
The claims are directed to a “circuit arrangement” including an
antenna, a first circuit coupled to the antenna and configured to receive an
antenna signal, and a second circuit coupled to the first circuit via a wire-
based interface, where the “first circuit is configured to transmit [a]
processed antenna signal to the second circuit by a first channel of the wire-
based interface and the second circuit is configured to transmit second data
to the first circuit by a second [different] channel of the wire-based
interface” and the “second data are configuration data for configuring the
first circuit.” (Abstr.)
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A circuit arrangement comprising:
an antenna;
a first circuit that is coupled to the antenna and is set up to
receive an antenna signal, which contains first data, from the
antenna and to process the antenna signal, as a result of which it
produces a processed antenna signal having a different voltage
level than that of the antenna signal, wherein the first data are

under 37 CFR § 41.33(b) in the appeal brief. Should appellants wish to file
an amendment at the same time as a brief, appellants must submit such an
amendment in a paper separate from the appeal brief.” (See MPEP § 1206.)
In addition, “[e]ntry of a new amendment in an application on appeal is not a
matter of right” (see MPEP § 1206), and the Examiner’s Answer indicates
that claim 19 is pending and rejected (see Ans. 3, 5, 10).
3 Our Decision refers to the Specification (“Spec.”) filed March 11, 2015,
Final Office Action (“Final Act.”) mailed September 20, 2018, Appeal Brief
(“Appeal Br.”) filed February 28, 2019, Examiner’s Answer (“Ans.”) mailed
June 24, 2019, and the Reply Brief (“Reply Br.”) filed August 21, 2019.
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Application 14/644,236

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data transmitted from a communication device to the circuit
arrangement;
a second circuit that is coupled to the first circuit via a
wire-based interface;
wherein the first circuit is set up to transmit the processed
antenna signal to the second circuit by a first communication
channel of the wire-based interface; and
wherein the second circuit is configured to reconfigure the
first circuit by transmitting second data stored in the second
circuit to the first circuit; wherein the second data is transmitted
to the first circuit by a second communication channel of the
wire-based interface, wherein the first communication channel
and the second communication channel are different.

(Appeal Br. 12–15 (Claims App.).)

REJECTIONS & REFERENCES
Claims 1–9, 11–17, 19, and 20 stand rejected under 35 U.S.C. § 103
based on Rizzo et al. (US 2014/0036723 A1, published Feb. 6, 2014)
(“Rizzo”), Charles (US 2013/0225074 A1, published Aug. 29, 2013)
(“Charles”), and Krutt et al. (US 2012/0252480 A1, published Oct. 4, 2012)
(“Krutt”). (Final Act. 2–8.)
Claim 10 stands rejected under 35 U.S.C. § 103 based on Rizzo,
Charles, Krutt, and Williams (US 2009/0137219 A1, published May 28,
2009) (“Williams”). (Final Act. 8.)
Claim 18 stands rejected under 35 U.S.C. § 103 based on Rizzo,
Charles, Krutt, and Levy et al. (US 2012/0178366 A1, published July 12,
2012) (“Levy”). (Final Act. 8–9.)

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Application 14/644,236

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ANALYSIS
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir.
2006). We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
With respect to the Examiner’s rejection of claim 1, Appellant argues
modifying Rizzo to incorporate the reconfiguration operations of Charles
and Krutt would destroy or change the principle of operation of Rizzo.
(Appeal Br. 6–8, 10; Reply Br. 4–5.)4 Specifically, Appellant argues the
“master slave relationship [described in ETSI TS 102 613 V7.7.0] is a basic
principle of operation of Rizzo and of the Single Wire Protocol (SWP) upon
which Rizzo relies,” and “[t]he combination of limitations among the
references, including a second circuit configured to reconfigure the first
circuit by transmitting second data stored in the second circuit to the first
circuit, would have changed the very principle of operation of Rizzo and
violated the SWP protocol.” (Appeal Br. 7–8, 10 (citing Rizzo ¶¶ 12, 71–72,

4 We count the pages of the Reply Brief (which are not numbered) starting
from the first page.
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75, 78, 97, 101, 203, Fig. 2); see also Reply Br. 5–6.) Appellant further
explains:
[the Examiner’s] combination is improper at least because Rizzo
specifies that the main element (which the Examiner classifies as
the “first circuit”) and the auxiliary secure element (which the
Examiner classifies as the “second circuit”) are defined by a
master-slave relationship. Such a master-slave relationship
would make the reconfiguration of the main element by the
auxiliary secure element impossible, as the main element has
unidirectional control over the auxiliary secure element in a
master-slave relationship. The proposed combination that would
allow Rizzo to violate the master-slave relationship would
change Rizzo’s principle of operation.

Appeal Br. 6.
We are not persuaded by Appellant’s arguments, and agree with the
Examiner that the asserted combination of Rizzo, Charles, and Krutt teaches
a circuit arrangement comprising the claimed “first circuit” and “second
circuit . . . configured to reconfigure the first circuit by transmitting second
data stored in the second circuit to the first circuit.” (See Final Act. 3–4;
Ans. 11–13.)
At the outset, we note that claim 1’s reconfiguration of the first circuit
by transmitting second data stored in the second circuit to the first circuit is
broad, as Appellant’s Specification does not provide an explicit and
exclusive definition of the claimed term “reconfigure.” Appellant references
various portions of the Specification in support of the claimed “second
circuit [that] is configured to reconfigure the first circuit.” (See Appeal Br.
10 (citing Spec. ¶¶ 52–54); Reply Br. 3, 5 (citing Spec. ¶¶ 4, 18–19, 23–25,
33, 36, 51–54, 80, Abstract).) However, the Specification merely provides
discussion of non-limiting examples of the claimed term “reconfigure.” For
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example, Appellant’s Specification provides that reconfiguration (of the first
circuit) may encompass: “select[ing] a transport application for a particular
country”; a “communication type [for the front end/first circuit] . . . be[ing]
changed over from type A to type B”; “the front end . . . [being]
reconfigured by the secure element 303, e.g. in order to change the bit rate to
a higher bit rate (> 106 kbit/s)”; an “[i]nitialization configuration” by which
“[s]ystem data of the front end (e.g. configuration parameters) are stored in
the secure element 303 and are transmitted to the front end 305 only when
the system (i.e. the circuit arrangement) is started up”; “transmitting
configuration data from a secure element to a front end without an SPI
[(serial peripheral interface)]”; and “communicating configuration data or
control data” to the front end/first circuit. (See Spec. ¶¶ 3, 19, 24, 51–54.)
However, the Specification does not provide that reconfiguration (of the first
circuit) would require transfer of control data (as referenced by Appellant at
Reply Br. 5) or changing the first circuit’s communication type or bit rate
(as referenced by Appellant at Appeal Br. 9). As recognized by the
Examiner (see Ans. 11–12), the broadly claimed reconfiguration of the first
circuit by the second circuit may merely entail “communicating
configuration data” to the first circuit (see Spec. ¶¶ 19, 24 (emphasis
added)) or “[i]nitialization” by which “configuration parameters . . . are
transmitted to the front end 305 only when the system (i.e. the circuit
arrangement) is started up” (see Spec. ¶ 54 (emphasis added)). We further
note the “second data” (used “to reconfigure the first circuit”) is broadly
claimed in claim 1, and the Specification does not provide an explicit and
exclusive definition of this “second data.”
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In conclusion, Appellant’s claimed reconfiguration of the first circuit
using the second data is met by communicating configuration data or
parameters from the second circuit to the first circuit. (Ans. 11–12.)5 Since
control of the first circuit by the second circuit is not required by claim 1, we
are unpersuaded by Appellant’s argument that the Examiner’s rejection
would require Rizzo’s SE (secure element/second circuit) to “control the ME
[(main element/first circuit)].” (See Appeal Br. 9; see also Reply Br. 6.)
Control of the first circuit by the second circuit is not required by
Examiner’s commensurate rejection of the claim; rather, transmission of
configuration data or parameters from the second circuit to the first circuit
is sufficient to teach a “second circuit . . . configured to reconfigure the first
circuit by transmitting second data stored in the second circuit to the first
circuit,” as recited in claim 1. (See Ans. 11–13.) Thus, Appellant argues
limitations that are not present in claim 1. Limitations not appearing in a
claim cannot be relied upon for patentability. See In re Self, 671 F.2d 1344,
1348, 1350 (CCPA 1982).
As further recognized by the Examiner, transmission of configuration
data or parameters from a second circuit to a first circuit/front end does not
change the principle of operation and the purpose of Rizzo—which is to
“connect[] . . . slave SWP interfaces to said master SWP interface through a

5 We note, however, that we disagree with the Examiner’s assertions that the
“filed specification merely supports that the secure element provides data
for reconfiguration of the NFC” and “[t]here is nothing about ‘controlling’
in filed specification.” (See Ans. 12 (emphases added).) As Appellant
explains in the Reply Brief (see Reply Br. 2–4), the Specification provides
ample support (and non-limiting examples) for various types of
reconfigurations, including those performed by a control operation, and
those performed by a transmission of configuration data.
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controllably switchable SWP link and controlling said SWP link switching
for selectively activating at once only one slave SWP interface on said SWP
link.” (See Rizzo ¶ 12, Abstract; Final Act. 4; Ans. 12–13.) The teachings
of Charles and Krutt, when combined with Rizzo, do not destroy or change
Rizzo’s principal purpose and operation as the purpose and control of
Rizzo’s switchable SWP link has not been changed. In addition, the ETSI
TS 102 613 standard disclosing the Single Wire Protocol employed by Rizzo
does not preclude transmission of configuration data or parameters from a
second circuit (e.g., a UICC shown in the ETSI TS 102 613’s figure
reproduced on page 8 of the Appeal Brief) to a first circuit (ContactLess
Frontend/CLF shown in the same figure). To the contrary, for example,
ETSI TS 102 613 discloses that UICC can transmit to CLF data concerning
an error detection code, and initialization data for a passive mode based card
emulation protocol. (See ETSI TS 102 613, 45 (describing a “type-specific
error detection code” that is employed by CLF and “is managed by the
UICC except where specified otherwise,” and the “UICC [that] provides
initialization data to the CLF, which performs RF protocol initialization”),
49–50 (describing “a ISO/IEC 18092 [8] 212/424 kbps passive mode based
card emulation protocol, for which the initialization data shall be provided
by the UICC”).)6 We are therefore unpersuaded by Appellant’s argument
that the “SE of Rizzo cannot do anything outside the control of the ME” and
“cannot reconfigure an ME.” (Appeal Br. 7, 9.)
Thus, Appellant’s arguments have not persuaded us that the
combination of Rizzo, Charles, and Krutt changes the principle operation of

6 Citations are to the pages of the ETSI TS 102 613 Technical Specification
included in the Evidence Appendix of Appellant’s Appeal Brief.
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Rizzo. As Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 1, we sustain the Examiner’s § 103 rejection
of claim 1, and dependent claims 2–18 and 20 not separately argued. We
also sustain the Examiner’s § 103 rejection of independent claim 19, for
which no arguments were submitted.

DECISION SUMMARY
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 103 is
AFFIRMED.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–9, 11–17,
19, 20
103 Rizzo, Charles,
Krutt
1–9, 11–17,
19, 20

10 103 Rizzo, Charles,
Krutt, Williams
10
18 103 Rizzo, Charles,
Krutt, Levy
18
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED