Ex Parte Linke et al

Patent Trial and Appeal Board

Aug 30, 2016

11659953 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111659,953
22913 7590
Workman Nydegger
60 East South Temple
Suite 1000
08/14/2007
09/01/2016
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
Andreas Linke
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
19838.1 5193
EXAMINER
KIM,TAEW
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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 ANDREAS LINKE, THOMAS TARANTINO,
ANDO WELLING, JOHANN ANGERER,
and KOLJA VOGEL
Appeal2013-006643
Application 11/659 ,953 1
Technology Center 2800
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision finally rejecting claims 1 and 3-16. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.2
1 According to Appellants, the real party in interest is GIESECKE &
DEVRIENT GMBH. Appeal Br. 2.
2 Our decision refers to Appellants' Specification (Spec.) filed February 12,
2007, the Examiner's Final Office Action (Final Act.) of July 17, 2012,
Appellants' Appeal Brief (Appeal Br.) filed December 17, 2012, the
Appeal2013-006643
Application 11/659,953
STATEMENT OF THE CASE
The invention relates to a method for producing a portable data
carrier, a semifinished product for the production of the portable data carrier,
and the portable data carrier. Spec. i-f 1; claims 1, 15, and 16. The portable
data carrier includes an integrated circuit (IC) and a contact field embodied
in accordance with the universal serial bus (USB) standard, i.e., embodied as
a USB plug whose geometry and contact assignment are matched to a USB
jack. Spec. i-fi-12, 7. The portable data carrier includes a chip card element in
the shape of a flat card body, which body includes a chip module having the
IC, the contact field, and data and/or program code required for the
operation of the portable data carrier loaded into the IC. Id. at i-fi-1 7, 9. The
element is disposed in a recess or an at least partially framed section of a
carrier, and permanently fixed thereto. Id. at i-f 13.
Independent claims 1, 15, and 16, reproduced below from the Claims
Appendix to the Appeal Brief, are illustrative of the subject matter on
appeal. Limitations at issue are italicized.
1. Method for production of a portable data carrier, the data carrier
comprising a carrier and an element with an integrated circuit
and a contact field galvanically connected to the integrated
circuit,
wherein the portable data carrier is shaped in an area
defined by the contact field and the contact field is embodied
such that a direct contacting of the contact field by a contacting
component embodied in accordance with the USB standard is
enabled, and
wherein the element of the portable data carrier featuring
the integrated circuit and the contact field is produced in chip
Examiner's Answer (Ans.) mailed February 26, 2013, and Appellants' Reply
Brief (Reply Br.) filed April 26, 2013.
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Application 11/659,953
card technology and the element is embodied as a chip card
element having a card body in a shape of a flat piece, and
wherein either or both data and program code required to
operate the portable data carrier is loaded into the integrated
circuit, and
wherein the carrier is embodied partially congruent to
the element and partially laterally extends beyond the element,
the partially lateral extension forming an at least partially
framed section on a main surface of the carrier, and
wherein the card body of the element is placed in the at
least partially framed section on the main surface of the
carrier, and
wherein the card body of the element is subsequently
permanently connected to the carrier.
15. Semifinished product for the production of a portable data carrier
having a contact field embodied and shaped in an area defined
by the contact field such that a direct contacting of the contact
field by a contacting component embodied in accordance with
the USB standard is possible,
wherein the semifinished product has an integrated circuit
and the contact field which is galvanically connected to the
integrated circuit, and the semifinished product is embodied as
an element produced in chip card technology and the element is
embodied as a chip card element having a card body in a shape
of a flat piece,
wherein an area outside of the area defined by the contact
field includes at least one opening to receive a corresponding
locking engagement part of a carrier,
wherein, in addition to the memory content produced
during the production of the integrated circuit, either or both data
and program code required to operate the portable data carrier
are stored in the integrated circuit of the semifinished product.
16. Portable data carrier comprising:
an integrated circuit and a contact field galvanically
connected to the integrated circuit,
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Application 11/659,953
wherein the portable data carrier is shaped in an area defined by
the contact field and the contact field is embodied such that a direct
contacting of the contacting field by a contacting component
embodied in accordance with the USB standard is possible,
wherein the portable data carrier comprises a carrier and an
element produced in chip card technology with the integrated circuit
and the contact field,
wherein the element is embodied as a chip card element having
a card body in a shape of a flat piece, and
wherein the carrier is embodied partially congruent to the
element and partially laterally extends beyond the element, the
partially lateral extension forming an at least partially framed section
on a main surface of the carrier, and
wherein the card body of the element is disposed in a recess or
the at least partially framed section on a main surface of the carrier
and the card body of the element is subsequently permanently
connected to the carrier.
The Rejections
The Examiner maintains, 3 and Appellants request review of, the
fo llo\'l1ing grounds of rejection:
3 Although the Examiner indicates that all rejections set forth in the Final
Office Action of July 17, 2012 are maintained (Ans. 3), we note that the
Advisory Action mailed November 13, 2012 states that the rejection of
claims 1and3-16 under 35 U.S.C. § 112, second paragraph, was overcome,
i.e., has been withdrawn. Accordingly, this rejection is not before us on
appeal.
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Application 11/659,953
A. Claims 1, 3---6, 9-11, and 16 under 35 U.S.C. § 102(a) as
anticipated by Elbaz. 4 Final Act. 3; Ans. 3.
B. Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Elbaz in view of Park. 5 Final Act. 7.
C. Claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable
over Elbaz. Final Act. 8.
D. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Elbaz
in view of Fehrman. 6 Final Act. 9.
E. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Elbaz
in view Chan. 7 Final Act. 9.
ANALYSIS
Rejection A
The Examiner finds Elbaz discloses a method for the production of a
portable data carrier comprising a carrier with an IC and a contact field
galvanically connected to the IC. Final Act. 3. The Examiner also finds an
element of the portable data carrier featuring the IC and the contact field is
produced in chip card technology and embodied as a chip card element
having a card body in the shape of a flat piece. Id. Further, the Examiner
finds the carrier is embodied partially congruent to the element and partially
laterally extends beyond the element such that the partial lateral extension
forms an at least partially framed section in which the card body of the
element is placed and permanently fixed. Id. at 4.
4 US 2004/0259423 Al, published December 23, 2004.
5 US 6,588,673 Bl, issued July 8, 2003.
6 US 6,554,193 Bl, issued April 29, 2003.
7 US 2004/0128371 Al, published July 1, 2004.
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Application 11/659,953
Appellants contend the Examiner improperly interprets the same
element in Elbaz to correspond to two different claim features. Appeal Br.
10-15. In particular, Appellants argue that Elbaz fails to disclose a carrier in
accordance with the limitations of claim 1, though the Examiner interprets
Elbaz' card body to correspond to both the card body of the element and the
carrier of claim 1. Id. at 10-11.
In response, the Examiner finds Elbaz teaches a carrier corresponding
to a card body. Ans. 6 ("second line from the bottom of the Paragraph
66/first line from of the Paragraph 68/dongle (1) in Figures 8A & 8B without
part 511 OR the dongle (1) in Figure 9 without part 513" (citing Elbaz)). 8
Conversely, the Examiner finds Elbaz teaches an element corresponding to a
micromodule. Id. ("third line from the bottom of the Paragraph 66 and
throughout Paragraph 67" (citing Elbaz)). As for the card body of the
element, the Examiner finds Elbaz teaches a dielectric support film which
corresponds to this limitation. Id. ("first two lines of Paragraph 67" (citing
Elbaz)).
We are persuaded the Examiner's finding that Elbaz teaches a carrier
as recited in claim 1 is in error. In particular, the Examiner erroneously finds
dongle 1 corresponds to the carrier of claim 1, whilst Elbaz's micromodule
corresponds to the element of claim 1. Claim 1 requires an element of the
portable data carrier feature, i.e., includes, the IC and the contact field
produced in chip card technology and having a flat card body. Claim 1
further requires a carrier that is partially congruent to the element and
8 Throughout this Opinion, for clarity, we present labels to elements in
Figures in bold font, regardless of their presentation in the original
document.
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Application 11/659,953
partially laterally extends beyond the element, wherein the partial lateral
extension forms an at least partially framed section on a main surface of the
carrier such that the card body of the element is placed in the extension and
permanently fixed to the carrier.
Elbaz, Figures 8A and 8B, depict a USE-standard dongle in the shape
of a key having a contact field 28 and an IC (not shown) embedded therein.
Elbaz i-f 36. Dongle 1 is made using card body technology as shown in
Figure 5. Elbaz i-fi-133, 42. Elbaz describes forming the dongle by placing
and permanently fixing a micromodule (including the IC) in a cavity of a
card body underlying contact areas. Elbaz i-fi-1 66, 67. Thus, Elbaz' dongle 1
corresponds to the element of the portable data carrier of claim 1. Elbaz
does not teach the micromodule has a flat card body prior to placement in
the cavity. It appears the Examiner misinterprets Elbaz's description of
forming the dongle in paragraphs 66 and 67 as separately forming the
micromodule as a flat card prior to placement of the micromodule in the
cavity of the dongle. As such, we cannot sustain the Examiner's anticipation
rejection of claim 1 by Elbaz.
The Examiner also rejects independent claim 16 covering the portable
data carrier as anticipated by Elbaz. Claim 16, similar to claim 1, recites
both an element with an IC and a contact field, wherein the element is
embodied as a chip card element having a card body in a shape of a flat
piece, and a carrier partially congruent to the element and partially laterally
extending beyond the element, the partial lateral extension forming an at
least partially framed section on a main surface of the carrier, such that the
card body of the element is disposed in a recess or the at least partially
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Application 11/659,953
framed section. For the same reasons given above, we likewise cannot
sustain the Examiner's anticipation rejection of claim 16.
Rejections B-D
The Examiner rejects various claims dependent from claim 1 as
obvious over Elbaz, alone or combined with Park or Fehrman. Final Act. 7-
9. However, the Examiner's reliance on the additional prior art or rationale
does not address or otherwise remedy the deficiencies in Elbaz noted above.
Accordingly, for the same reasons given above, we will not sustain
rejections B-D.
Rejection E
The Examiner rejects independent claim 15, drawn to a semifinished
product relating to the element of the portable data carrier only (without the
carrier), over Elbaz in view of Chan. The Examiner finds Elbaz discloses a
semifinished product as recited in claim 15, except for an area outside the
area defined by the contact field including at least one opening to receive a
corresponding locking engagement part of a carrier and, in addition to the
memory content produced during the production of the IC, either or both
data and program code required for the operation of the portable data carrier
stored in the IC. Final Act. 10, 11. As to the second feature regarding the
memory content, data and program code, the Examiner finds, without
dispute, that Chan discloses such and that it would have been obvious to
incorporate Chan's teaching into Elbaz' s product for the purpose of reducing
cost and time in producing cards. Id.
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Application 11/659,953
Regarding the first feature, the opening in the element in an area
outside the contact field, the Examiner finds Elbaz discloses "one
component's opening to receive a corresponding locking engagement part of
another component (512 in [F]igs[.] 8b & lOc)." Final Act. 10. The
Examiner concludes it would have been obvious "to incorporate this
teaching about connecting two components in a material locking manner in
Elbaz' s method [sic] for the purpose of providing a less permanent
connection between the components for the ease of disassembly." Id. at 10-
11.
Appellants contend that Elbaz fails to provide any reason to modify
the card body of module 5 in dongle 1 in the manner required by claim 15
since Elbaz does not teach or suggest using a carrier to which the module 5
of dongle 1 would be connected. Appeal Br. 1 7. Appellants argue that
lining 511 enables locking of the module 5 in adaptor 514, which would
provide no reason to modify Elbaz to add a connecting means to a carrier.
Id. Appellants further argue that the rejection fails to specify which parts in
Elbaz would be modified to be connected using openings 512. Id. at 18.
Finally, Appellants assert that the carrier is a structural element which is
attached to the chip card element using the at least one opening and a
corresponding locking engagement of the carrier. Id. at 19. Appellants
further assert that "there is a coordinated structural relationship between the
carrier and the element. Therefore, a carrier as required by the claim cannot
simply be any person or thing that carries." Id.
Initially, we note that claim 15 recites a semifinished product
directed to the element of the portable data carrier without the carrier (unlike
claims 1 and 16). Claim 15 structurally recites a product which is the
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Application 11/659,953
element, where "an area outside of the area defined by the contact field [of
the element] includes at least one opening." Claim 15's sole reference to the
carrier is through functional language - "to receive a corresponding locking
engagement part of a carrier."
"[A]pparatus claims cover what a device is, not what a device
does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990). Therefore, the patentability of an apparatus claim depends
on the claimed structure, not on the use or purpose of that structure, Catalina
Mktg. International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed.
Cir. 2002), or the function or result of that structure. In re Danly, 263 F.2d
844, 848 (CCPA 1959); In re Gardiner, 171F.2d313, 315-16 (CCPA
1948). Although "[a] patent applicant is free to recite features of an
apparatus either structurally or functionally[,] .... choosing to define an
element functionally, i.e., by what it does, carries with it a risk." In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Here, the Examiner directs our attention to openings 512 in dongle 1
which receives a corresponding locking engagement with another
component. Final Act. 10. Although the Examiner relies on this disclosure
in support of an obvious modification of Elbaz, we see no reason for such
modification. The question simply is whether Elbaz discloses at least one
opening on the dongle 1 in an area outside of the area defined by the contact
field that is capable of receiving a corresponding locking engagement part of
any carrier. The openings 512 referred to by the Examiner are indeed on the
dongle 1 and are not only capable of a corresponding locking engagement
part of a carrier, the Examiner finds Elbaz teaches such locking engagement
part. Id.; see also Elbaz i-f 54 ("openings 512 intended to receive the bottom
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locking blades 33b"). Appellants' arguments as to the structure and function
of the carrier per se are without effect since, as we note above, claim 15 fails
to require a carrier, let alone any particular carrier structure. Appellants
have not provided any evidence or persuasive technical reasoning to refute
the Examiner's finding that Elbaz does in fact disclose openings in the
dongle or element in an area outside of the area of the contact field for
receiving a corresponding locking engagement part. As such, Appellants
have not identified a reversible error in the Examiner's rejection of claim 15.
We will sustain this rejection.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1, 3-14, and 16 is reversed.
For the reasons given above, and in the Final Office Action and
Answer, the decision of the Examiner rejecting claim 15 under 35 U.S.C.
§ 103(a) as unpatentable over Elbaz and Chan 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)(l).
AFFIRMED-IN-PART
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