Johannes Bader

Patent Trials and Appeals Board

Nov 27, 2019

13515306 - (D) (P.T.A.B. Nov. 27, 2019)

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.
13/515,306 06/12/2012 Johannes Bader 19838.30 2523
22913 7590 11/27/2019
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
DINH, TUAN T
ART UNIT PAPER NUMBER
2848
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHANNES BADER
____________

Appeal 2018-008887
Application 13/515,306
Technology Center 2800
____________
Before JEFFREY T. SMITH, JEFFREY B. ROBERTSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 28–32 and 35–37 of Application

1 In our Decision, we refer to the Specification (“Spec.”) of the ’306
Application filed June 12, 2012; the Final Office Action dated Oct. 6, 2017
(“Final Act.”); the Appeal Brief filed Mar. 23 2018 (“Appeal Br.”); the
Examiner’s Answer dated July 13, 2018 (“Ans.”); and the Reply Brief filed
Sept. 13, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
Giesecke+Devrient Mobile Security GmbH. Appeal Br. 2.
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Application 13/515,306

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13/515,306.3 We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The subject matter of the invention relates to electroconductive
connecting of a chip module to a chip card. Spec. ¶ 1. Claim 28 is
representative of the subject matter of the invention, and is reproduced
below from the Claims Appendix of the Appeal Brief.
28. A chip card comprising:
a chip module, and
a chip-card body,
wherein the chip modules is adhesively connected to the
chip-card body by a thermoplastic elastomeric material,
wherein the thermoplastic elastomeric material is
electroconductive,
wherein the chip module is electroconductively
connected to at least one electrical contact area of the chip-card
body, and
wherein the thermoplastic elastomeric material includes a
thermoplastic silicone.
Appeal Br. 23.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Matsuda et al.
(“Matsuda”)
US 5,666,270 Sept. 9, 1997
Carpier et al. US 6,568,600 B1 May 27, 2003

3 In the Final Action, the Examiner noted that pending claims 17–27 had
been withdrawn. Final Act. 1.
Appeal 2018-008887
Application 13/515,306

3
(“Carpier”)
Fjelstad US 2004/0169263 A1 Sept. 2, 2004
Seidler et al.
(“Seidler”)
US 2009/0090494 A1 Apr. 9, 2009
REJECTION
The Examiner maintains the following rejections of the claims under
35 U.S.C. § 103(a)4: (1) claims 28, 29, 31, 32, 36, and 37 over Fjelstad in
view of Matsuda; (2) claim 30 over Fjelstad in view of Matsuda, and further
in view of Carpier; and (3) claim 35 over Fjelstad in view of Matsuda, and
further in view of Seidler. Final Act. 3–6.
DISCUSSION
Rejection of claims 28, 29, 31, 32, 36, and 27 as obvious over the
combination of Fjelstad and Matsuda
Independent claim 28 and dependent claims 29, 31, 32, 36, and 37
stand rejected over Fjelstad in view of Matsuda. Final Act. 3–5. Appellant
argues these claims as a group. Appeal Br. 18. Although claims 30 and 35,
also dependent from claim 28, are each rejected over Fjelstad in view of
Matsuda and an additional reference, Appellant argues that the additional
references (Carpier or Seidler) fail to remedy the deficiencies of Fjelstad and
Matsuda. Id. at 18–19. Thus, we need only address the rejection of the
independent claim, claim 28.

4 Because this application was filed before the March 16, 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.

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The Examiner finds that Fjelstad discloses a chip card comprising a
chip module (101) is adhesively connected to the chip card body (110) by an
element (105) made from a conductive elastomer or elastomeric material.
Ans. 3. The conductive elastomeric material is comprised of an elastomer
matrix and conductive particles. Id. The Examiner finds that silicone
elastomers and thermoplastic materials are among the preferred elastomeric
matrices. Id. (citing Fjelstad ¶ 22). The Examiner finds that Fjelstad does
not specifically disclose a conductive thermoplastic elastomeric material
made from thermoplastic silicone. Id. at 4.
The Examiner finds that Matsuda teaches a multi-chip module
comprising bump electrodes (30) electrically connected between the pad
(32) of the chip (31) and the pad (42) of the circuit board (41). Ans. 4
(citing Matsuda, Figs. 4–6, col. 2, ll. 44–45, col. 4, ll. 10–12). The Examiner
finds that Matsuda’s bump electrode is covered by a protective layer made
from a thermoplastic silicone (37), and determines that the thermoplastic
silicone (37) is electrically connected to the pad (42) of the circuit board (41)
by a conductive film (36) of the bump electrode (30). Id.
The Examiner finds that one of ordinary skill in the art would have
had to look to a reference other than Fjelstad to determine the proper
thermoplastic material to use in the conductive elastomeric matrix of
Fjelstad, and Matsuda shows that thermoplastic silicon is a well-known
thermoplastic in semiconductor chip assembly. Id. at 4–5. The Examiner
determines that the thermoplastic silicon of Matsuda would have been an
obvious choice as it helps provide long life to electrical connections, and
selection of a material based on its intended use is within the ordinary skill
in the art. Id.
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To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner’s rejections. See 37
C.F.R. § 41.37(c)(1)(iv). Appellant fails to do so here.
Appellant accurately states that the Examiner is incorrect in
determining that Matsuda teaches that thermoplastic silicone (37) is
electrically connected to the pad of the circuit board. Appeal Br. 16.
However, the Examiner’s mistake is harmless error in this instance, as the
Examiner’s findings regarding Fjelstad (teaching a conductive elastomer
comprising conductive particles and an elastomer matrix preferably
comprising silicone elastomers and thermoplastic materials) and Matsuda
(teaching use of thermoplastic silicone is known in the semiconductor
industry) are accurate. See Ans. 3–5. Moreover, the Examiner provides
“articulated reasoning with some rational underpinning” to combine the
references and support the legal conclusion of obviousness. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006); see also In re Fout, 675 F.2d 297, 301
(CCPA 1982) (“Express suggestion to substitute one equivalent for another
need not be present to render such substitution obvious.”) and In re Beattie,
974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some motivation or
suggestion to combine the references is provided by the prior art taken as a
whole, the law does not require that the references be combined for the
reasons contemplated by the inventors.”).
In view of the above discussion, we are not persuaded by Appellant’s
argument that Matsuda would be unworkable if protection film (37) is
electrically conductive (Appeal Br. 16), because the Examiner’s rejection
does not depend upon the position that Matsuda’s thermoplastic silicone
resin is electrically conductive.
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Fjelstad discloses that its conductive elastomeric material typically
comprises an elastomer matrix—which the Examiner found could be
Matsuda’s thermoplastic silicone resin—and conductive particles. See
Fjelstad ¶ 22. The rejection does not rely on Matsuda’s thermoplastic
silicone resin being electrically conductive. Rather, as discussed above, the
rejection relies on Matsuda only for a disclosure that use of thermoplastic
silicone is known in the semiconductor industry to support the position that
it would have been obvious to one of ordinary skill in the art at the time of
the invention to select thermoplastic silicone resin as a preferred silicone
elastomer or thermoplastic material for use in Fjelstad’s package. See Ans.
4–5. Conductivity for the conductive elastomeric material in Fjelstad is
provided by conductive particles. See Fjelstad ¶22. It is well established
that the obviousness inquiry does not ask “whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en banc).
We affirm the rejection of claim 28 as obvious over Fjelstad in view
of Matsuda. For the same reasons as claim 28, we affirm the rejection of
claims 29, 31, 32, 36, and 37 over the same references. See 37 C.F.R. §
41.37(c)(1)(iv).
Rejection of claim 30 as obvious over the combination of Fjelstad,
Matsuda, and Carpier
Claim 30 depends from claim 28 and is rejected over Fjelstad in view
of Matsuda, and further in view of Carpier. See Final Act. 5; Appeal Br. 24.
The Examiner relies on Carpier only for disclosures relating to the antenna
in claim 30.
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Appellant merely argues that Carpier fails to remedy the deficiencies
of Fjelstad and Matsuda regarding a thermoplastic silicone. Appeal Br. 18–
19. Having sustained the rejection of claim 28 over the combination of
Fjelstad and Matsuda, we likewise sustain the rejection of claim 30 over the
references in combination with Carpier.
Rejection of claim 35 as obvious over the combination of Fjelstad,
Matsuda, and Seidler
Claim 35 depends from claim 28 and is rejected over Fjelstad in view
of Matsuda, and further in view of Seidler. See Final Act. 6; Appeal Br. 24.
The Examiner relies on Seidler only for disclosures relating to the
thermoplastic elastomeric material including a copolymer of
polydimethylsiloxane and urea in claim 35.
Similarly to claim 30, for claim 35 Appellant merely argues that
Seidler fails to remedy the deficiencies of Fjelstad and Matsuda regarding a
thermoplastic silicone. Appeal Br. 18–19. Therefore, we sustain the
rejection of claim 35 over Fjelstad, Matsuda, and Seidler, having found no
deficiency in the combination of Fjelstad and Matsuda.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
28, 29, 31,
32, 36, 37
103(a) Fjelstad, Matsuda 28, 29, 31,
32, 36, 37

30 103(a) Fjelstad,
Matsuda, Carpier
30
35 103(a) Fjelstad,
Matsuda, Seidler
35
Overall
Outcome
28–32,
35–37

Appeal 2018-008887
Application 13/515,306

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AFFIRMED