Ex Parte Taniguchi et al

Board of Patent Appeals and Interferences

May 31, 2007

10254835 (B.P.A.I. May. 31, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHIAKI TANIGUCHI and TOSHIYA KITAGAWA
____________

Appeal 2007-0973
Application 10/254,835
Technology Center 2800
____________

Decided: May 31, 2007
____________

Before KENNETH W. HAIRSTON, HOWARD B. BLANKENSHIP, and
MAHSHID D. SAADAT, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-28, the only claims pending in this
application. We have jurisdiction under 35 U.S.C. §§ 6(b), 134(a).
Appeal 2007-0973
Application 10/254,835

INTRODUCTION
The claims are directed to a radio guidance antenna in which the sum
of mutual inductances of antennae is minimized, and a data communications
method and a non-contact data communication apparatus which make use of
the radio guidance antenna. (Abstract.) Claim 1 is illustrative:
1. A radio guidance antenna comprising:

first and second antennas,

wherein

the first antenna has at least two regions for generating lines of
magnetic flux in reciprocal directions, and the second antenna
has first (S1) and second (S2) mutual inductances for
generating induced electromotive forces in opposite directions
due to electromagnetic induction from the first antenna,

the second antenna being arranged so that the sum of mutual
inductances between it and the first antenna is minimized.

The Examiner relies on the following prior art reference to show
unpatentability:
Bowers US 5,602,556 Feb. 11, 1997
The rejection as presented by the Examiner is as follows:
1. Claims 1-28 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bowers.
OPINION
Section 103 rejection over Bowers
Appellants submit (Br. 9) there is no teaching or suggestion in Bowers
regarding minimizing the sum of mutual inductances of the antennae as
recited in representative claim 1. Appellants argue that in Figure 4 of
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Application 10/254,835

Bowers, because of the relative dimensions shown in the drawing, figure-8
antenna 38 and loop antenna 12 are not of the proper relative size and
positioning to minimize the sum of mutual inductances. (Br. 10-11.)
Appellants seem to answer their own argument, however, with the
acknowledgement that patent drawings are generally presumed to “not be in
scale.” (Id. at 11.) Appellants do not show that Bowers’ Figure 4 is
intended to be drawn to scale. Appellants are correct to the extent that
conclusions based on the dimensions and relative arrangements of the
antennae of Figure 4 are of little value. See In re Wright, 569 F.2d 1124,
1127, 193 USPQ 332, 335 (CCPA 1977) (“Absent any written description in
the specification of quantitative values, arguments based on measurement of
a drawing are of little value.”); In re Wilson, 312 F.2d 449, 454, 136 USPQ
188, 192 (CCPA 1963) (“Patent drawings are not working drawings [and
arguments are not persuasive when based on a] drawing obviously never
intended to show the dimensions of anything.”). We thus find the argument
based on the configuration depicted in Figure 4 to be untenable.
Appellants also submit that the reference at column 9, lines 14
through 23 refers to Figure 4 as the top and bottom loops 42, 44 of the
figure-8 loop element 38 being shown as generally equal in area, but they
need not be of equal area. According to Appellants, this says nothing about
areas of mutual inductance between antenna 12 and antenna 38 which are
affected by the location of antenna 21 relative to antenna 38. (Br. 11-12.)
The referenced section of Bowers also teaches, however, that providing
loops of equal areas aids in cancelling far field coupling.
Moreover, the Examiner also relies on material in column 5 of
Bowers, discussing mutual magnetic coupling between antenna elements, as
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Appeal 2007-0973
Application 10/254,835

support for the rejection. The Examiner finds that the “mutual magnetic
coupling” described in the reference is no different from the claimed
“mutual inductance.” Bowers teaches, in the text at column 5, that
cancellation of electromagnetic fields generated by antenna elements may be
effected by maximizing opposite phase current in loop elements, and that
mutual coupling is thus minimized. Bowers col. 4, l. 66 - col. 5, l. 44.
We do not find any arguments in the briefs that address Bowers’
teachings at column 5. When questioned on the point at the oral hearing,
Appellants’ representative indicated that the arguments bridging pages 11
and 12 of the Brief, discussing the material at column 9 that refers to Figure
4, served as a response to the Examiner’s findings with respect to column 5
of the reference.
We find, however, that the Examiner has provided reasonable
inferences with respect to the physical processes described in column 5 of
Bowers, which serve as further explanation of the embodiment of Figure 4.
We also observe that Bowers’ further description of ways to provide far field
cancellation (col. 1, l. 44 - col. 2, l. 2) is similar to Appellants’ teachings of
how to minimize the sum of mutual inductances between antennae. Bowers
is nominally directed to cancelling or minimizing far field antenna effects.
However, we find substantial support in Bowers for the Examiner’s finding
that antenna arrangements taught by the reference also serve to minimize the
sum of mutual inductances between antenna elements.
The Examiner has set forth at least a prima facie case for
unpatentability of instant claim 1. Appellants’ arguments to the contrary are
not persuasive. Appellants have not adduced evidence to call into question
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Application 10/254,835

any of the Examiner’s findings in support of the rejection. We sustain the
rejection of claim 1.
Appellants place remarks for claims 2, 3, 19, and 28 under separate
headings in the Brief. The remarks, however, consist of repeating
limitations from the dependent claims, and submitting that Bowers fails to
disclose or suggest the respective limitation because Bowers fails to disclose
the limitation. To the extent the remarks may be considered separate
arguments for patentability, the arguments do not show error in the
Examiner’s position as set out in the Answer. The rejection applied against
the dependent claims does not assert that Bowers discloses the limitations,
but that the limitations would have been obvious in view of the teachings of
the reference. Appellants having not shown error in the rejection of any of
claims 1-26 and 28, we sustain the § 103 rejection over Bowers.
We agree with Appellants, however, that the evidentiary basis for the
rejection of claim 27 is insufficient. We do not sustain the rejection of the
claim. We enter a new ground of rejection against claim 27, infra.
New ground of rejection
We enter the following new ground of rejection against the claims in
accordance with 37 C.F.R. § 41.50(b): Claim 27 is rejected under 35 U.S.C.
§ 102(e)(2) as being anticipated by U.S. Patent 6,570,490 B1 (“Saitoh”).

Claim 27

A method of operating a non-contact
identification device, comprising:

Saitoh

Describes a method of operating a
contactless IC card (identification
device)

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Application 10/254,835

generating an induced
electromagnetic force in an antenna
belonging to a tag;

providing electric power to said tag;

relaying said electromagnetic force
to a demodulator circuit through an
impedance matching circuit;

demodulating said electromagnetic
force;

decoding a data signal resulting
from said demodulating; and

storing data from within said data
signal into a storage circuit.

electromagnetic field emitted from
antenna 67 (Fig. 3) induces
electromagnetic force (emf) in patch
antenna 62 of IC card (tag) 61; col.
2, ll. 32-46

electric power is provided to the tag
by circuit 22b (Fig. 1) in
transmit/receive circuit 63 (Fig. 3);
col. 1, ll. 16-32; col. 3, ll. 20-29

the emf is relayed to demodulator
circuit 22a (Fig. 1) through
impedance matching circuit 2, 3, 9,
both circuits residing in
transmit/receive circuit 63; col. 2, l.
54 - col. 3, l. 19

the emf is demodulated by
transmit/receive circuit 63 (Fig. 3)
and relayed to CMOS logic circuit
64

the demodulated signal is decoded by
CMOS logic circuit 64, which
separates a clock and data from the
signal received from transmit/receive
circuit 63 through terminal 10 (Fig.
1); col. 3, ll. 15-17

CMOS logic circuit 64 stores the
data to memory 65; col. 2, ll. 44-46
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Application 10/254,835

Claim 27 is thus anticipated by Saitoh. The reference was found after
a cursory search of the U.S. patent database, and is thus not necessarily the
best available reference against the claim. In the event of further
prosecution of claims similar in scope to instant claim 27, the Examiner
should perform a full search to identify and apply the best reference.
CONCLUSION
The rejection of claims 1-28 under 35 U.S.C § 103(a) as unpatentable
over Bowers is affirmed with respect to claims 1-26 and 28 but reversed
with respect to claim 27.
A new rejection of claim 27 under 35 U.S.C. § 102(e)(2) over Saitoh
is set forth herein.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2006). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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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-IN-PART -- 37 C.F.R. § 41.50(b)

tdl/ce

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