Ex Parte Hohmann et al

Patent Trial and Appeal Board

Nov 19, 2014

10490453 (P.T.A.B. Nov. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ARNO HOHMANN and HANS GRAF
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Appeal 2012-008980
Application 10/490,453
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/490,453

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–7. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal, with disputed the
limitation emphasized, reads as follows:
1. A chip card comprising:
a contact pad for data transfer;
a display;
a chip card processor for data processing; and
a display controller that is separate from the chip card
processor, for driving the display to permit certain data,
generated on the chip card, to be displayed on the display;
wherein the chip card processor and the display
controller are realized on a common semiconductor substrate
and said semiconductor substrate is directly applied onto a
same substrate on which the display is directly built up, thereby
forming a mechanical unit that is integrated into the chip card
as a single compact component.
The Examiner’s Rejection
The Examiner rejected claims 1–7 as being unpatentable under 35
U.S.C. § 103(a) over the combination of Asplund (US 6,293,470 B1; issued
Sep. 25, 2001), Suto (US 4,746,787; issued May 24, 1988), and Sowards
(US 6,466,488 B2; issued Oct. 15, 2002). Ans. 5–9.
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Appellants’ Contentions1
(1) Appellants contend (Br. 8–15) that the Examiner erred in rejecting
claims 1–7 under 35 U.S.C. § 103(a) over Asplund, Suto, and Sowards for
numerous reasons, including generally that:
(a) none of the references individually discloses or suggests a
processor and controller on a common substrate with a display on a
chip card as a single compact component, as recited in claim 1 (Br. 8);
(b) Asplund’s anisotropic tape 66 shown in Figure 2 is not a
common semiconductor substrate as asserted by the Examiner (Br. 9–
10);
(c) Asplund fails to disclose or suggest a common
semiconductor substrate that is directly applied to the same substrate
on which the display is directly built up, as recited in claim 1 (Br. 9);
and
(d) Asplund fails to disclose a chip card with a common
substrate having a single compact component, as recited in claim 1
(Br. 10–11).
(2) Appellants separately argue (Br. 15) that the Examiner erred in
rejecting claims 1–7 because there is no rational basis for combining the
references exists, since no reference applied (and namely Sowards) discloses
reducing wiring between a display and a display controller on a smart card.
(3) Appellants separately argue (Br. 16) that the Examiner erred in
rejecting claims 1–7 because the Examiner employed impermissible

1 Independent claim 1 and claims 2–7 which depend therefrom contain the
same disputed limitation and Appellants primarily argue claim 1 (Br. 8–15).
Therefore, we select claim 1 to be representative of claims 1–7.
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hindsight in combining the references, since Sowards (memory cell design to
reduce data noise) is from a completely different field of invention than
Asplund and Suto, and would not be applied to the reduction of data noise in
memory cells.
(4) Appellants contend (Br. 11–12) that Suto fails to disclose or
suggest a display controller separate from a chip card processor, as recited in
claim 1.
(5) Appellants contend (Br. 13–15) that Sowards is silent with respect
to chip card processors and a display controller being on a common
semiconductor substrate.
Reply Brief
No Reply Brief has been presented. Therefore, Appellants have not
disputed the Examiner’s articulated reasoning found at pages 10–13 of the
Answer.
Principal Issue on Appeal
Based on Appellants’ arguments in the Appeal Brief (Br. 5–17), the
following principal issue is presented on appeal:
Did the Examiner err in rejecting claims 1–7 under 35 U.S.C. § 103(a)
over the combination of Asplund, Suto, and Sowards because the properly
made combination of references fails to teach or suggest the limitations at
issue in representative claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (Br. 5–17) that the Examiner has erred in
view of the Advisory Action mailed July 27, 2011 and the Examiner’s
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Answer including the Examiner’s response to Appellants’ arguments (Ans.
10–13). We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Ans. 5–9), as well as the Advisory Action mailed
July 27, 2011, and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 10–13) in response to Appellants’ Appeal Brief.
We concur with the conclusions reached by the Examiner.
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one
cannot show non-obviousness by attacking references individually where the
rejections are based on combinations of references) (citation omitted).
Appellants make arguments as to claim 1 (Br. 8–11) concerning the
individual shortcomings in the teachings of Asplund, Suto, and/or Soward.
These arguments, however, and are not convincing of the non-obviousness
of the claimed invention set forth in independent claims 1–7. For example,
Appellants criticize each reference individually for not disclosing or
suggesting the limitation of claim 1 of a processor and controller on a
common substrate with a display on a chip card as a single compact
component, as recited in claim 1 (Br. 8), when the Examiner has relied upon
the combination of Asplund, Suto, and Sowards to teach or suggest this
feature (Ans. 6–7 and 10–13). And, Appellants contend (Br. 13–15)
Sowards is silent with respect to chip card processors and a display
controller being on a common semiconductor substrate, when Asplund was
relied upon as to this feature (Ans. 6 and 11). Based on the foregoing,
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Appellants’ contentions (1)(a) and (5) supra are not persuasive of Examiner
error.
Further, Appellants contend Asplund fails to disclose a chip card with
a common semiconductor substrate as recited in claim 1 based on what is
shown in Figure 2 (anisotropic tape 66), when the Examiner relies upon
Figure 1 of Asplund as disclosing a processer (microchips 45 attached to
circuitry 13) and a display (5) having a common semiconductor substrate
(upper side 25 of bottom layer 13 and element 31) and being directly applied
to the same substrate on which the display (5) is directly built up (Ans. 11,
para. (c)). In this light, Appellants’ contentions (1)(b)-(d) supra relating to
Asplund’s failure to show a common semiconductor substrate are
unpersuasive. Appellants have not filed a Reply Brief or otherwise disputed
the Examiner’s finding that Figure of Asplund discloses or suggest a
common semiconductor substrate as recited in claim 1.
Regarding Appellants’ contentions (2) and (3) supra relating to
Asplund’s purpose of reducing wiring, we agree with the Examiner (Ans.
10–13) that Appellants’ arguments pertaining to the reduction of wiring are
not persuasive insofar as being incommensurate with the scope of the
claimed invention. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998) (“[The] proffered facts . . . are not commensurate with the claim scope
and are therefore unpersuasive.”). Claim 1 does not contain limitations
requiring the reduction of wiring between the display and display controller
on a smart card. In fact, claim 1 does not recite any wiring at all. In
addition, it is more relevant to the conclusion of obviousness that Sowards
and Appellants’ claims both concern common substrates for multiple
integrated circuits having processors/controllers.
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Regarding Appellants’ contention (4) supra that Suto fails to disclose
or suggest a display controller separate from a chip card processor, as recited
in claim 1 (see Br. 11–12), we find this argument unpersuasive because we
agree with the Examiner (Ans. 6–7 and 11–12) that Suto’s Figure 1 shows a
chip card processor 9 separate from a display controller 11.
In view of the foregoing, Appellants’ arguments in the Appeal Brief
(Br. 8–16) are not persuasive, and we sustain the rejection of claim 1, as well
as claims 2–7 grouped therewith under § 103(a) over the combination of
Asplund, Suto, and Sowards for the reasons provided by the Examiner (see
e.g., Ans. 5–6 and 10–13 discussing claim 1).

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 1–7 under
35 U.S.C. § 103(a) over the combination of Asplund, Suto, and Sowards
because Appellant’s arguments are not persuasive of Examiner error in
reaching the conclusion of obviousness as to representative claim 1.

DECISION
The Examiner’s rejection of claims 1–7 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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