NXP B.V.

Patent Trials and Appeals Board

Mar 18, 2021

2019006815 (P.T.A.B. Mar. 18, 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.
15/135,669 04/22/2016 Thomas Suwald 81670164US03 1091
65913 7590 03/18/2021
Intellectual Property and Licensing
NXP B.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
LIN, HANG
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
03/18/2021 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte THOMAS SUWALD

Appeal 2019-006815
Application 15/135,669
Technology Center 2600

Before JAMES R. HUGHES, JOHNNY A. KUMAR, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9–10, 13, and 15–28. Appeal Br.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 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 NXP
Semiconductors. Appeal Br. 2.
Appeal 2019-006815
Application 15/135,669

2
CLAIMED SUBJECT MATTER
The claimed subject matter relates to an electronic device comprising
a non-conductive substrate and a touch-based user interface unit. Spec.
1:27–28. The touch-based user interface unit has a capacitive sensor
structure with conductive wires embedded in the non-conductive substrate. .
Id. at 1:29–30. The electronic device may be a smart card, for which “it is
relatively difficult and expensive to integrate a touch-based user interface”
because of “form factor and manufacturing constraints.” Id. at 1:10–23.
Independent claim 1 is illustrative, with the limitations at issue
emphasized in italics:
1. A smart card device comprising:
a non-conductive substrate formed of a thermoplastic material;
an antenna; and
a touch-based user interface having a capacitive sensor, wherein
the capacitive sensor comprises conductive wires including
adjacent insulated portions and other electrode-connection
portions that are not insulated, the antenna and conductive
wires being embedded in the thermoplastic material of the non-
conductive substrate.
Appeal Br. 19 (Claims App.). Independent claims 15 and 18 recite
methods of manufacturing a smart card having limitations substantially
commensurate with claim 1. Dependent claims 2–7, 9, 10, 13, 16, 17, and
19–28 each incorporate the limitations of their respective independent
claims. Id. at 19–26.

REFERENCES
Name Reference Date
Hollenbeck et al. US 5,930,304 July 27, 1999
Appeal 2019-006815
Application 15/135,669

3
(“Hollenbeck”)
Leighton US 6,036,099 Mar. 14, 2000
Wang et al.
(“Wang”)
US 2012/0305654 A1 Dec. 6, 2012
Bollesen et al.
(“Bollesen”)
US 2013/0169294 A1 July 4, 2013
Chang US 2014/0118633 A1 May 1, 2014
Yilmaz US 2014/0176819 A1 June 26, 2014
Suwald et al.
(“Suwald”)
EP 2,667,156 A1 Nov. 27, 2013

REJECTIONS
Claims 21–24 are rejected under 35 U.S.C. §112(a) as lacking
sufficient written description.
Claims 15–17 are rejected under 35 U.S.C. §112(b) as being
indefinite.
Claims 1, 3–5, 9, 13, and 19–20 are rejected under 35 U.S.C. §103 as
being obvious over the combined teachings and suggestions of Bollesen,
Suwald, Chang, and Yilmaz.
Claims 6, 21, and 23 are rejected under 35 U.S.C. §103 as being
obvious over the combined teachings and suggestions of Bollesen, Suwald,
Chang, Yilmaz, and Hollenbeck.
Claims 7 and 24 are rejected under 35 U.S.C. §103 as being obvious
over the combined teachings and suggestions of Bollesen, Suwald, Chang,
Yilmaz, Hollenbeck, and Leighton.
Claim 22 is rejected under 35 U.S.C. §103 as being obvious over the
combined teachings and suggestions of Bollesen, Suwald, Chang, Yilmaz,
and Wang.
Appeal 2019-006815
Application 15/135,669

4
Claims 2, 10, 15–18, and 25–28 are rejected under 35 U.S.C. §103 as
being obvious over the combined teachings and suggestions of Bollesen,
Suwald, Chang, Yilmaz, and Leighton.

OPINION
1. Written Description
a) Claims 21, 23, and 24
The Examiner finds a lack of written description in the limitation of
claim 21:
further including conductive contacts configured and arranged
for contacting external card readers having a power source,
upon placement of the conductive contacts of the smart card
device in contact with one of the external card readers; wherein
the touch-based user interface unit is configured and arranged
to sense touches via the capacitive sensor structure, utilizing
power provided by the power source and coupled via the
conductive contacts
Final Act. 3.2
The Examiner finds a lack of written description because the
Specification does not describe “a smart card read to supply power.” Id.;
Ans. 16–17. The Examiner finds the Specification to describe only a power
supply, and that “the first sub-module 902 may comprise a contact-interface
terminal 904 for connection to a contact-interface, for example an interface
based on the standard ISO-7816." Id.

2 We quote the claim language from the Claims Appendix (Appeal Br. 23)
rather than the Final Action, because the Final Action mistakenly duplicates
the “further . . . readers” clause of the claim.
Appeal 2019-006815
Application 15/135,669

5
Appellant argues that the Specification provides adequate written
description. Appeal Br. 16–17. Appellant argues that the Examiner has
overlooked various embodiments involving utilizing power from card
readers to power smart cards. Id. at 17. Appellant points specifically to
Figure 9 and its accompanying discussion of a contact card having a contact
interface terminal 904, connected to and powered by a reader interface based
on the standard ISO-7816 in accordance with power specifications within.
Id.
We are persuaded by Appellant’s argument. Appellant’s cited portion
of the Specification describes certain features of a smart card, including a
power supply, wherein each feature may be implemented by hardware
components. Spec. 7: 1–7. Hardware implementation may be by “a contact-
interface terminal 904 for connection to a contact-interface.” Id. at 7:5–9.
Thus, the Specification describes a power supply implemented by a contact-
interface terminal that may connect to a separate contact to supply power to
the described circuit. Id. at 7: 3–9, 25–28.
Against this factual background, the Examiner has not explained why
the claim lacks written description. The examiner has the initial burden of
presenting by a preponderance of evidence why a person skilled in the art
would not recognize in an applicant’s disclosure a description of the
invention defined by the claims. In re Wertheim, 541 F.2d 257, 263 (CCPA
1976). Although the Examiner finds the disclosure to lack “a smart card
read to supply power,” the claim does not require any act of reading of the
smart card, or a smart card reader. Claim 21 requires the card to be
“configured and arranged for contacting external card readers having a
power source, upon placement of the conductive contacts of the smart card
Appeal 2019-006815
Application 15/135,669

6
device in contact with one of the external card readers.” Appeal Br. 23
(Claims App.). The Examiner has not explained how the described power
supply, implemented by contact-interface terminal 904 designed for
connection to a contact-interface, fails to describe to one having ordinary
skill in the art a configuration arranged for contact with contacting an
external card reader. For example, the Examiner does not explain how the
described contact-interface terminal would not function in the claimed
manner, by contacting an external card reader when such a reader is brought
into contact with the described contact-interface terminal. Further, although
the Examiner acknowledges the portion of the Specification cited by
Appellant, the Examiner does not provide any analysis of that cited portion
with respect to claim 21. Ans. 16–17. Consequently, we are persuaded of
error in the Examiner’s finding of lack of written description for claim 21.
Because the rejections of claims 23 and 24 involve the same reasoning
applied to the same (claim 23) or similar (claim 24) language, we are also
persuaded of error in the rejection of those claims. Accordingly, we reverse
the Examiner’s rejection of claims 21, 23, and 24 for lack of written
description.
b) Claim 22
The Examiner finds a lack of written description in the limitation of
claim 22:
further including a power supply configured and arranged to
generate power using RF signals received via the antenna; and
wherein the touch-based user interface unit is configured and
arranged to communicate signals to an external reader, via the
antenna in response to touches sensed via the capacitive sensor,
using power provided by the power supply
Appeal 2019-006815
Application 15/135,669

7
Final Act. 3.3
The Examiner finds that the Specification does not provide written
description for “generate power using RF signals received via the antenna.”
Id. at 3–4. The Examiner finds the Specification’s description of a power
supply and sensor controller does not provide adequate description. Id. at 4.
Appellant contests the Examiner’s finding, stating
the Examiner acknowledges the disclosure of a power supply,
in connection with embodiments in the specification involving
a contactless smart card (i.e., utilizing an RF antenna). By
definition, such approaches require the transfer of RF power for
such a smart card to operate. Indeed, the power supplies noted
by the Examiner may utilize RF power for operation. This is
also consistent with the ISO-7816 standard, and related well-
known operation of a smart card.
Appeal Br. 17.
We are not persuaded by Appellant’s argument. Although
Appellant’s Specification discusses a contactless smart card having an
antenna, Appellant has not pointed to any portion of the Specification that
explicitly describes the use of RF power. To the extent that the
Specification provides a generic disclosure of power supplied through an
antenna, but does not specifically describe RF power or an RF antenna,
description of a genus does not provide adequate description of a species
within that genus. In re Smith, 458 F.2d 1389, 1395 (CCPA 1972).
Although Appellant characterizes a smart card as utilizing an RF
antenna “[b]y definition,” Appellant has not provided such a definition in the

3 We quote the claim language from the Claims Appendix (Appeal Br. 23)
rather than the Final Action, because the Final Action mistakenly duplicates
the “further . . . readers” clause of the claim.
Appeal 2019-006815
Application 15/135,669

8
Specification, or as evidence to support Appellant’s argument. Where
Appellant provides a factual assertion, as here, factual evidence must be
provided to prove such an assertion. See 37 C.F.R. § 1.132 (“any evidence
submitted to traverse the rejection . . . must be by way of an oath or
declaration under this section”). Arguments of counsel cannot take the place
of evidence in the record. In re Schulze, 346 F.2d 600, 602 (CCPA 1965).
Accordingly, Appellant has not established that the Specification describes
an RF antenna.
Nor is Appellant’s reliance on the ISO-7816 standard, as identified in
the Specification, sufficient to show adequate written description. Material
necessary to support a written description of a claimed invention is defined
as “essential material,” and may be relied upon only where it is properly
incorporated by reference in a Specification. 37 C.F.R. § 1.57(d). Such
incorporation of essential material is limited to references to U.S. patents,
U.S. patent application publications. Id. The ISO-7816 standard is neither.
Accordingly, the Specification’s reference to the ISO-7816 standard does
not incorporate the material within that standard, and cannot provide
adequate written description for an “RF” antenna not otherwise described by
the Specification.
For the above-mentioned reasons, we are not persuaded by
Appellant’s arguments that the Specification provides written description of
the claimed “RF antenna.”4 Consequently, we affirm the Examiner’s written
description rejection of claim 22.

4 Note that we take no position on whether a smart card inherently requires
RF signals, only that the RF signal limitation is a factual issue that has not
Appeal 2019-006815
Application 15/135,669

9
2. Indefiniteness
The Examiner rejects claims 15–17 as being indefinite. Final Act. 5.
The Examiner points to the limitation in claim 15 of “connecting the
communication and processing circuitry to certain of the portions of the
insulated conductive wire.” Id. The Examiner states, “Examiner is unable
to ascertain[] the exact meaning of the recitation.” Id. In particular, the
Examiner points to the phrase “certain of the portions.” Ans. 18.
Appellant submits that the meaning of the phrase is clear. Appeal Br.
17. Appellant argues, “the Examiner has not clearly explained why there
seems to be lack of understanding of the cited language.” Id. In its Reply
Brief, Appellant does not address this rejection further, because “the
Examiner’s Answer does not provide a basis for overcoming/rebutting the
issue.” Reply Br. 2.
Indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112,
second paragraph requires a determination of whether those skilled in the art
would understand what is claimed when the claim is read in light of the
specification. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350
(Fed. Cir. 2010). Our reviewing court further addressed the Examiner’s
burden in In re Packard, stating
it is a reasonable implementation of the examination
responsibility, as applied to § 112(b), for the USPTO, upon
providing the applicant a well-grounded identification of clarity
problems, to demand persuasive responses on pain of rejection.
. . . The examiner here, having ample grounds, set forth a
variety of ways in which he found the claims imprecise or

been shown to be described in the Specification either explicitly or
inherently.
Appeal 2019-006815
Application 15/135,669

10
confusing, sometimes not even understandable, considering
them in light of the written description.
In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). The USPTO has
reaffirmed the requirement for a clear explanation for indefiniteness during
prosecution. Ex parte McAward, 5 (PTAB 2017) (precedential) (“the Office
establishes a prima facie case of indefiniteness with a rejection explaining
how the metes and bounds of a pending claim are not clear because the
claim contains words or phrases whose meaning is unclear”).
Here the Examiner has not provided any explanation of why the
phrase “certain of the portions” would not be understood, instead providing
an unsupported, subjective conclusion of indefiniteness. The Examiner has
provided notice of which claim phrase is considered unclear, but not “how”
that phrase renders the metes and bounds of the claimed invention unclear.
Moreover, the Examiner only states that the Examiner is unable to
understand what is claimed by the phrase “certain of the portions.” Ans. 18.
The Examiner, by addressing only the Examiner’s understanding, has not
addressed the understanding of one skilled in the art, which is the proper
standard for indefiniteness. Power-One, 599 F.3d at 1350. Further, the
Examiner has not explained why “certain of the portions” would not be
understood in light of the Specification, which is also a requirement of the
indefiniteness determination. Packard, 751 F.3d at 1313.
We note that Appellant has not provided reasons why the phrase
“certain of the portions” is not indefinite, relying instead on the Examiner’s
lack of an explanation as to why that phrase is considered indefinite. Appeal
Br. 17; Reply Br. 2. We, however, agree with Appellant that the Examiner
has not presented “a well-grounded identification of clarity problems” that
would require an appellant to persuasively show error in the Examiner’s
Appeal 2019-006815
Application 15/135,669

11
grounds for the rejection. Packard, 751 F.3d at 1313. Accordingly, we are
persuaded that the Examiner has not shown claims 15–17 to be indefinite,
and reverse the Examiner’s indefiniteness rejection.
3. Obviousness
Appellant contests the Examiner’s obviousness rejections of claims 1–
7, 9, 10, 13, and 15–28. Appeal Br. 6. Appellant argues that the rejections
fail to teach each and every limitation of the claims, and moreover, fail to
provide adequate motivation to combine the references to arrive at the
claimed smart card device having the claimed features. Id. at 6–16. We find
the latter argument dispositive, and begin with that argument as applied to
the rejection of claim 1.
The Examiner applies the combination of Bollesen, Suwald, Chang,
and Yilmaz to teach or suggest the limitations of claim 1. Final Act. 6. The
Examiner relies solely on Suwald for teaching the “smart card” limitation of
claim 1. Final Act. 8–9 (stating, “Bollesen does not teach (i) the electronic
device is a smart card device”). The Examiner finds Suwald to teach that the
electronic device of Bollesen is a smart card device. Final Act. 9 (quoting
Suwald ¶ 46). The Examiner states that such modification would be obvious
“so as to offer an additional use for the device of Bollesen in order to
enhance the functionality of the device.” Id. at 9–10; Ans. 15.
Appellant argues that the rejection fails to provide proper motivation
for modifying the Bollesen’s laptop computers/mobile telephone for use as a
smart card. Appeal Br. 14. Appellant argues, inter alia, that the Examiner’s
motivation of “enhancing functionality” is generic, and the Examiner does
not explain how it applies to the specific references used in the combination.
Id. at 15. Appellant argues that “enhancing functionality” is merely
Appeal 2019-006815
Application 15/135,669

12
conclusory, and does not comply with the requirement that “such rationales .
. . must be explained and shown to apply to the facts at hand.” Id. at 16.
The Federal Circuit has identified “conclusory statements” as
insufficient articulations of motivation to combine. In re Nuvasive, 842 F.3d
1376, 1383 (Fed. Cir. 2016). Nor can an examiner rely solely on common
knowledge, common sense, or the level of skill in the art as a “wholesale
substitute for reasoned analysis and evidentiary support.” Id. Although an
examiner (or the Board) may rely on common sense to provide motivation
“without any specific hint or suggestion in a particular reference,” such
common sense must be supported by a “reasoned explanation that avoids
conclusory generalizations.” Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355,
1362, 1366 (Fed. Cir. 2016) (internal citations omitted). The Federal Circuit
has further explained, “[a]bsent some articulated rationale, a finding that a
combination of prior art would have been ‘common sense’ or ‘intuitive’ is
no different than merely stating the combination ‘would have been
obvious,’” which would be inadequate. In re Van Os, 844 F.3d 1359, 1361
(Fed. Cir. 2017) (finding error in the Board’s affirmance of an obviousness
rejection having a rationale that it would be “intuitive” to combine the
references).
Here, the Examiner finds that integrating a smart card into the
electronic device of Bollesen would “enhance the functionality of the device
for which its benefit is evident.” Ans. 15. However, the Examiner does not
explain what those “evident” benefits are, and why they would be obvious to
one having ordinary skill in the art. The Examiner’s reliance on the general
knowledge in the art lacks a specific benefit, such as “stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, [or] more efficient.” See
Appeal 2019-006815
Application 15/135,669

13
DyStar Textilfarben Gmbh & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1368
(Fed. Cir. 2006). Providing a specific rationale permits Appellant to
specifically traverse that rationale, and if traversed, permits the Examiner to
provide evidence supporting the reliance on that specific knowledge in the
art. The Examiner’s stated rationale of enhancing functionality, without
explaining what functionality is being enhanced and what benefit is
provided, is no different than stating the combination would have been
obvious, and thus, inadequate.
Because the Examiner has not provided a sufficient explanation of the
motivation to combine Bollesen and Suwald, we are persuaded of error in
the Examiner’s obviousness rejection of claim 1. Having found error in the
rejection, we need not address Appellant’s additional assertions of error.
Each of the remaining claims 2–7, 9, 10, 13, and 15–28 contains the “smart
card” limitation, and the Examiner’s rejections of these claims rely on the
same insufficient motivation. Final Act. 20–22 and 24–27. Consequently,
we also are persuaded of error in those rejections, and we reverse the
Examiner’s obviousness rejections of claims 1–7, 9, 10, 13, and 15–28.

CONCLUSION
For the above-described reasons, we reverse the Examiner’s rejection
of claims 15–17 as being indefinite under 35 U.S.C. §112(b), reverse the
Examiner’s rejection of claims 21, 23, and 24 as lacking written description
under 35 U.S.C. §112(a), affirm the Examiner’s rejection of claim 22 as
lacking written description under 35 U.S.C. §112(a), and reverse the
Examiner’s rejections of claims 1–7, 9–10, 13, 15–21 and 24–28 as being
Appeal 2019-006815
Application 15/135,669

14
obvious over the applied references under 35 U.S.C. §103, as detailed
below.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–24 112(a) Written Description 22 21, 23, 24
15–17 112(b) Indefiniteness 15–17
1, 3–5, 9,
13,19–20
103 Bollesen, Suwald,
Chang, Yilmaz
1, 3–5, 9,
13, 19–20
6, 21, 23 103 Bollesen, Suwald,
Chang, Yilmaz,
Hollenbeck
6, 21, 23
7, 24 103 Bollesen, Suwald,
Chang, Yilmaz,
Hollenbeck, Leighton
7, 24
22 103 Bollesen, Suwald,
Chang, Yilmaz,
Wang
22
2, 10, 15–
18, 25–28
Bollesen, Suwald,
Chang, Yilmaz,
Hollenbeck, Leighton
2, 10, 15–
18, 25–28
Overall
Outcome
22 1–7, 9,
10, 13,
15–21,
23–28

TIME PERIOD FOR RESPONSE

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