Ex Parte KUBO et al

Patent Trial and Appeal Board

Oct 26, 2017

13188658 (P.T.A.B. Oct. 26, 2017)

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.
13/188,658 07/22/2011 Hiroyuki KUBO 002000-71 8646
78198 7590 10/30/2017
StiiHehaker & Rraokett PP EXAMINER
8255 Greensboro Drive DINH, TRINH VO
Suite 300
Tysons, VA 22102 ART UNIT PAPER NUMBER
2845
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
info@ sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte HIROYUKI KUBO, HIROMITSUITO,
KUNIAKI YOSUI, and HIROMASA KOYAMA
Appeal 2017-0009131
Application 13/188,658
Technology Center 2800
Before PETER F. KRATZ, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest as indicated in the Appeal Brief is “Murata
Manufacturing Co., Ltd.”
Appeal 2017-000913
Application 13/188,658
Appellants appeal under 35 U.S.C. § 134 the non-final rejection of
claims 1—23. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants’ invention is directed to communication terminals that can
be used in radio frequency identification (RFID) systems that communicate
with external devices via electromagnetic signals (Spec. 12).
Claim 1 is illustrative:
1. A communication terminal comprising:
an antenna coil including a magnetic core having a first principal
surface and a second principal surface, and a coil conductor wound around
the magnetic core; and
housing configured to house or hold the antenna coil;
wherein the coil conductor has a first conductor portion located
adjacent to the first principal surface of the magnetic core, and a second
conductor portion located adjacent to the second principal surface of the
magnetic core and at a position different from that of the first conductor
portion in plan as viewed from the first principal surface or the second
principal surface;
the first conductor portion includes adjacent first conductor segments
and the second conductor portion includes at least one second conductor
segment, and one of the adjacent first conductor segments is connected to
the other adjacent first conductor segment by the at least one
second conductor segment; and
the antenna coil is positioned such that the first conductor portion of
the coil conductor is closer to an end portion of the housing in a longitudinal
direction of the housing compared with the second conductor portion of the
coil conductor, and the second principal surface of the magnetic core faces
toward an outer surface of the housing.
Appellants appeal the following rejections:
1. Claims 1,4, 10, 22, and 23 are rejected 35 U.S.C. § 103(a) as
unpatentable over Kubo (US 2007/0247387 Al, Oct. 25, 2007) in
view of Endo (US 7,088,304 B2, Aug. 8, 2006).
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2. Claims 1—10 and 16—23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ito (US 2009/0096694 Al, Apr. 16, 2009) in view
of Endo.
3. Claims 1, 4, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable overNinomiya (US 2006/0151619 Al, July 13, 2006) in
view of Endo.
4. Claims 11—15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kubo, or alternatively over Ito, in view of Endo and Takahashi
(US 2007/0120758 Al, May 31, 2007).
FINDINGS OF FACT & ANALYSIS
REJECTION (1): § 103 Kubo in view of Endo
Appellants argue that the Examiner’s rejection is based upon
substituting Endo’s antenna structure for the antenna structure in Kubo’s
Figures 17 and 19 embodiment in order to provide an antenna structure with
more rigidity and the ability to operate at higher frequencies (App. Br. 5;
Reply Br. 3—4). Appellants contend that Kubo’s Figures 17 and 19 are prior
art embodiments that are disclosed by Kubo as not functioning reliably
(Reply Br. 4). Appellants contend that the Examiner’s reason for modifying
Kubo is based upon modifying Kubo’s Figures 17 and 19 disclosure of a
prior art embodiment that does not work such that there would have been no
motivation to modify Kubo’s Figures 17 and 19 embodiment to use Endo’s
antenna structure absent hindsight (Reply Br. 6). Appellants contend that
there are an infinite number of orientations for Endo’s first and second
conductor portion positions and there would have been no reason to orient
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the antenna so that the first and second conductor portions were aligned as
stated in the claim absent impermissible hindsight (Reply Br. 5—6).
Claim 1 requires:
wherein the coil conductor has a first conductor portion
located adjacent to the first principal surface of the magnetic
core, and a second conductor portion located adjacent to the
second principal surface of the magnetic core and at a position
different from that of the first conductor portion in plan as
viewed from the first principal surface or the second principal
surface; . . . the antenna coil is positioned such that the first
conductor portion of the coil conductor is closer to an end
portion of the housing in a longitudinal direction of the housing
compared with the second conductor portion of the coil
conductor, and the second principal surface of the magnetic
core faces toward an outer surface of the housing.
Claim 1 requires that the second principal surface of the magnetic
core (MS2), which is adjacent to the second conductor portion (12) and
above the first conductor portion (11) (see, Figure 2B), is positioned to face
toward the outer surface of the housing (200) with the first conductor portion
11 closer to an end portion of the housing in a longitudinal direction of the
housing (See, Fig. 4C).
The Examiner has not explained why it would have been obvious to
modify Kubo’s device so as to place Endo’s antenna structure in the position
required by the claims. The Examiner finds that Kubo’s antenna depicted in
Figures 17 and 19 may be considered to have the same structure as claimed
(Non-Final Act. 4). However, Kubo discloses that the embodiment in
Figures 17 and 19 does not work reliably because the metal housing 700
impedes the magnetic flux (4>) from reaching the antenna 600 (Fig. 19; 1 8).
The embodiments of Kubo that present a solution to the problem discussed
with regard to the prior art embodiment shown in Kubo’s Figure 19 teach a
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preference for mounting the antenna so that the longitudinal axis of the
magnetic core extends parallel to the lateral direction of the circuit board, so
that a larger amount of magnetic flux can be collected flflf 14, 33, 90). In our
view, the Examiner has not explained sufficiently why one of ordinary skill
would have modified Kubo’s device by positioning the antenna as required
by the claims. In light of these findings, we find that the preponderance of
the evidence favors the Appellants’ arguments of non-obviousness.
We reverse the Examiner’s § 103 rejections based upon Kubo (i.e.,
rejections (1) and (4) listed above).
REJECTIONS (2), (3), AND (4)
CLAIM 1
Regarding the rejections based upon Ito or Ninomiya in view of Endo,
Appellants argue that the Examiner failed to consider the references as a
whole (App. Br. 5). Appellants contend that the Examiner made a
conclusory statement that a combination of Endo with Ito or Ninomiya
yields the features of independent claim 1 without providing an underlying
logic or rationale for the modification (App. Br. 6). Appellants further
contend that Endo is markedly different from the configurations of Ito or
Ninomiya and there would have been no motivation for a person of ordinary
skill to combine Endo with either reference. Id. Appellants contend the
Examiner failed to explain how a person of ordinary skill would understand
how to orient the antenna of Endo as recited in independent claim 1. Id.
Appellants’ arguments fail because they fail to show reversible error
in the Examiner’s specifically stated rejections. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011). The Examiner made specific findings and
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conclusions regarding the teachings of Ito, Ninomiya, and Endo in the Non-
Final Action (Non-Final Act. 7—12). Appellants’ broad arguments fail to
show any reversible error with regard to any specific factual finding or
conclusion. Although Appellants contend that Endo is markedly different
from the configurations of Ito or Ninomiya, Appellants do not state what
those specific differences are. The Examiner’s rejection is based upon
modifying Ito’s or Ninomiya’s structure to have Endo’s antenna structure
that provides better rigidity and may be used at relatively high frequencies
(Non-Final Act. 8, 11). Appellants’ arguments do not address this
motivation for the modification. Nor do Appellants proffer evidence that
modifying Ito’s or Ninomiya’s structure to have Endo’s antenna structure
would have been beyond the skill of the ordinary artisan.
The Examiner finds that Ito and Ninomiya teach an antenna arranged
as in the claims, but the Examiner finds that Ito and Ninomiya fail to teach
first conductor segments and at least one second conductor segment
connected to each other as recited in claim 1 (Non-Final Act. 8, 11).
Therefore, the modification proposes using the same antenna position as
stated in the claims and taught by Ito and Ninomiya, but instead using
Endo’s antenna. Appellants’ arguments fail to show error with these
findings and conclusions of the Examiner.
CLAIMS 2 AND 3: § 103 over Ito in view of Endo
Claim 2 depends from claim 1 and recites:
wherein the magnetic core and the coil conductor are
configured such that a length of a portion of the magnetic core
where the second conductor portion of the coil conductor [(B)]
is adjacent to the magnetic core is larger than a length of a
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portion of the magnetic core where the first conductor portion
of the coil conductor is adjacent to the magnetic core [(A)].
In other words, as depicted in Appellants’ Figure 18, B > A.
Claim 3 depends from claim 2 and recites “wherein the magnetic core
and the coil conductor are configured such that the length of the portion of
the magnetic core where the first conductor portion of the coil conductor is
adjacent to the magnetic core [(A)] is smaller than a width of the first
conductor portion [(c)].” In other words, as depicted in Appellants’ Figure
18,0 A.
Appellants argue that Ito does not teach the limitations of claim 2 or 3
(App. Br. 6—7). Appellants argue that the Examiner arbitrarily determines
that the first and second coil conductors of Ito are something less than the
entirety of the coil conductors without any technical basis, logic or rationale
(App. Br. 6—7). Regarding claim 3, Appellants argue that the Examiner fails
to provide any rationale as to why only a portion of the magnetic core of Ito
is considered while considering the entirety of the coil conductor that is
adjacent to the magnetic core (App. Br. 7). Appellants contend that the coil
conductor in Ito includes portions B and E with the magnetic core extending
through B and E and thus, the magnetic core is longer than the length of
portions B and E (App. Br. 7).
The Examiner determines that claims 2 and 3 recite “a portion of the
magnetic core” where a “portion” may include only a piece or the entirety of
the magnetic core (Ans. 7). The Examiner finds that “a portion of the
magnetic core where the second conductor portion of the coil conductor is
adjacent to the magnetic core” is construed as “only a portion of the
magnetic core.” (Ans. 7) (emphasis omitted). The Examiner construes a
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portion of the magnetic core where the first conductor portion of the coil
conductor is adjacent to the magnetic core as including “the entirety of the
magnetic core.” Id. (emphasis omitted).
Appellants do not respond to this construction of the Examiner (Reply
Br. generally). Appellants do not direct us to where in the Specification the
term “portion” is defined in a manner that is contrary to or inconsistent with
the Examiner’s claim construction. In light of Appellants’ failure to show
reversible error in the Examiner’s claim interpretation, we find that the
Examiner reasonably construes the term “portion” in claims 2 and 3 as
including the coil conductor and magnetic core arrangements shown in Ito
and Ninomiya.
On this record, we affirm the Examiner’s § 103 rejections (2) and (3)
and rejection (4) based on Ito as the primary reference.
DECISION
The Examiner’s decision 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). See 37 C.F.R. § 1.136(a)(l)(iv).
ORDER
AFFIRMED
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