Ex Parte Rancien et al

Board of Patent Appeals and Interferences

Apr 30, 2010

10312009 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SANDRINE RANCIEN and THIERRY MAYADE
____________

Appeal 2009-008793
Application 10/312,009
Technology Center 2600
____________

Decided: April 30, 2010
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
THOMAS S. HAHN, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4-41, 43-47, and 50-55. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was held on April 13, 2010.
We affirm-in-part.

Appeal 2009-008793
Application 10/312,009

2
STATEMENT OF THE CASE
Appellants’ claimed invention is a multilayer structure and method for
making a multilayer structure, such as covers for booklets, that includes a
radio frequency identification device (RFID) (Spec. 1:1-5). The multilayer
structure that includes the RFID does not add extra thickness (Spec. 4:26-27)
Independent claims 1 and 13, reproduced below, are representative of
the subject matter on appeal.

1. A multilayer structure for a booklet cover, the structure
comprising a radio-frequency identification device having a
chip, wherein the multilayer structure is configured for being
folded along a fold, and wherein the multilayer structure
comprises a first layer having a fiber base and comprising a
cavity in which the chip is at least partially received.

13. A method of making a multilayer structure configured for
being folded along a fold and comprising a radio-frequency
identification device having a chip, the chip being received at
least partially in a thickness of the multilayer structure, the
method comprising:

- placing the radio-frequency identification device on a first
sheet; and

- laminating said first sheet with a second sheet having a fiber
base, the chip of the radio-frequency identification device being
situated on an inside face of the first sheet, a cavity being
formed in the second sheet, said cavity being configured for
receiving the chip, the chip being put into place in said cavity.

Appeal 2009-008793
Application 10/312,009

3
REFERENCES
Moskowitz US 5,528,222 Jun. 18, 1996
Ho US 6,064,855 May 16, 2000
Nicholson US 6,255,949 B1 Jul. 3, 2001
Lofgren US 6,608,911 B2 Aug. 19, 2003
Meyers US 7,006,116 B1 Feb. 28, 2006

The Examiner rejected claims 1, 2, 4-14, 16-29, 31-41, 43, 44, 46, 47,
and 50-55 under 35 U.S.C. § 103(a) based upon the teachings of Moskowitz,
Ho, and Meyers.
The Examiner rejected claims 15 and 45 under 35 U.S.C. § 103(a)
based upon the teachings of Moskowitz, Ho, Meyers, and Lofgren.
The Examiner rejected claim 30 under 35 U.S.C. § 103(a) based upon
the teachings of Moskowitz, Ho, Meyers, and Nicholson.
Appellants contend Moskowitz fails to teach a multilayer substrate
having a fiber based first layer and a cavity for partially receiving an RFID
chip (App. Br. 10). Appellants further contend Moskowitz does not teach a
method such that a second sheet is compressible at the time of assembly to
receive a chip in its thickness (App. Br. 15; Reply 3). Additionally,
Appellants contend none of the cited references teach or suggest placing an
RFID chip on a first layer and laminating the first layer to a second layer
having a cavity therein (App. Br. 17), providing a three part method, or
laminating in the manner set forth in Appellants’ claims (App. Br. 18).

ISSUE
Did the Examiner err in finding the combination of Moskowitz, Ho,
and Meyers, along with Lofgren and Nicholson, teaches or suggests a
multilayer structure having a cavity therein for receiving an RFID chip?
Appeal 2009-008793
Application 10/312,009

4
FINDINGS OF FACT
1. Moskowitz teaches a flexible radio frequency tag apparatus that
fits within a thickness limit of an International Organization for Standards
(ISO) credit card, passport cover, postage stamp, anti-theft device, or
admission ticket (col. 3, ll. 3-6).
2. Moskowitz further teaches, for example, a core of a credit card,
0.5mm thick, has a window formed therein at time of manufacture for
placing a 0.5 mm thick tag therein and then sealing the card. This results in
a credit card including an RF tag that meets ISO standards for length and
thickness (col. 7, ll. 25-31).
3. The RF tag in Moskowitz is embedded in the cover of a
passport by being sandwiched between paper covers. The passport cover
can be used as a tag laminate. (Col. 6, ll. 57-63)
4. Ho teaches a voice book 10. Each page 13 of the voice book
has a sheet body 131 made of cardboard or plastic and two cover papers 132,
133 adhered on two sides of the sheet body. Each sheet body has a cavity
134 for receiving memory chips. The sheet body also has a thickness at least
equal to the thickness of a memory chip 141 that stores information. (Col. 3,
ll. 35-43; Fig. 1)
5. Meyers teaches an electronic book 3 having a cover 5
containing an electronic tag 7. The electronic book communicates with a
storage unit 13 that stores information for viewing by a user. This
communication can occur wirelessly or by wired means. (Col. 5, ll. 31-42)
6. Nicholson describes a high temperature RFID tag having a
survival temperature of approximately -40°C to 300°C and an operating
temperature in the range of approximately -20°C to 200°C (Abstract).
Appeal 2009-008793
Application 10/312,009

5
PRINCIPLES OF LAW
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-988 (Fed. Cir. 2006), In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
initial burden of establishing reasons for unpatentability rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992).
The Examiner can satisfy this burden by showing some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In
re Kahn, 441 F.3d at 988). “[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR International
Co. v. Teleflex Inc., 550 U.S. at 417.

ANALYSIS
Appellants’ group claim 1 and dependent claims 4, 5, 7-11, 29-34, 41,
43-47, and 53-55 together. This rejection is addressed with respect to
representative claim 1.
The Examiner finds Moskowitz teaches an RF tag embedded in a
passport cover that is a multilayer structure. The Examiner then finds Ho
and Meyers show it would have been obvious to one of skill in the art at the
time of Appellants invention to place a chip in a cavity between pages made
of fiber. (Ans. 8) It should be noted that Moskowitz itself teaches placing a
chip in a cavity (window) (FF 2). Therefore, Moskowitz alone would teach
Appeal 2009-008793
Application 10/312,009

6
Appellants’ claim 1. The Examiner’s rejection is merely strengthened by the
secondary references. Thus, Moskowitz, Ho, and Meyers teach or suggest
claim 1. Because claims 4, 5, 7-11, 29-34, 41, 43-47, and 53-55 depend
therefrom, the Examiner’s rejection of these claims as obvious over the
collective teachings of these references is sustained.
Appellants argue claim 2 is not obvious over Moskowitz, Ho, and
Meyers because none of these references teach or suggest a chip situated
close to a fold as claimed. Appellants argue Fig. 9 of Moskowitz shows an
RFID centrally located to a passport cover. (App. Br.12) As found by the
Examiner (Ans. 8), the RFID tag can be placed anywhere in Moskowitz as
long as it will continuously work without interference. Further, claim 2
merely recites “close to the fold” (emphasis added). As a passport is not a
large document, placing the RFID tag near a central portion of the cover
would meet the limitation of being “close” to the fold. Thus, claim 2 is
obvious over the collective teachings of the references.
Appellants argue claim 6 is not obvious over Moskowitz, Ho, and
Meyers because none of these references teach or suggest “the layer has a
thickness greater than the thickness of the chip” as claimed (App. Br. 12).
As found by the Examiner, Ho teaches that a sheet receiving a memory chip
has a thickness at least equal to the thickness of the memory chip (Ans. 9;
FF 4). Thus, Ho suggests that the layer is, at a minimum, as thick as the chip
and can be greater than thickness of the chip.
Appellants argue claim 30 is not obvious over Moskowitz, Ho,
Meyers, and Nicholson because Nicholson does not teach or suggest a
multilayer structure capable of withstanding both mechanical and thermal
shocks as claimed (App. Br. 13). As found by the Examiner, Moskowitz
Appeal 2009-008793
Application 10/312,009

7
teaches and suggests a flexible multilayer structure that is also strong due to
tough polyester on an outside surface for providing environmental protection
while maintaining flexibility of the package (Ans. 7; Moskowitz, col. 4, ll.
54-57). Further, Nicholson describes an RFID tag capable of withstanding
thermal shocks (FF 6). Thus, claim 30 is merely the combination of old
elements that yield no more than predictable results. KSR, 550 U.S. at 416
(citation omitted).
Appellants argue claims 15 and 45 are not obvious over Moskowitz,
Ho, Meyers, and Lofgren because Lofgren is directed to digital watermarks
integrated into holograms and does not overcome the deficiencies Appellants
assert with respect to base claims 1 and 13 (App. Br. 13, 17). Appellants
merely recite the elements found in claims 1 and 13 and state that Lofgren
does not overcome the deficiencies noted with respect to the base claim
rejection. In the absence of separate substantive arguments with respect to
claims 15 and 45, these claims fall with claims 1 (supra) and 13 (infra.). See
37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue claims 50 and 51 are not obvious over Moskowitz,
Ho, and Meyers because none of these references teaches a multilayer
structure configured for folding (cl. 50) and a chip received at least partially
in the thickness of the multilayer structure without leading to extra thickness
(cl. 51) (App. Br. 14; Figs. 2, 3). With respect to claim 50, no separate
substantive arguments were provided. With respect to claim 51, Moskowitz,
as above-mentioned, discloses the core of a credit card has a window formed
therein for receiving an RF tag; therefore, there is no additional thickness
(FF 2). Thus, for the reasons previously presented, the collective teachings
of Moskowitz, Ho, and Meyers suggest claims 50 and 51.
Appeal 2009-008793
Application 10/312,009

8
Appellants argue claims 12, 23-26, 28, 35, 36, and 40 are not obvious
over Moskowitz, Ho, and Meyers, as Moskowitz does not teach or suggest a
second sheet being sufficiently compressible at the time of assembly to
receive the chip and result in a substantially constant thickness (App. 15).
We agree. None of the cited references teaches a second sheet being
sufficiently compressible at time of assembly to receive the chip and result
in a substantially constant thickness. Thus, claim 12 and claims 23-26, 28,
35, 36, and 40 that depend therefrom are not obvious over the collective
teachings of the cited references.
Appellants argue claims 13-16, 27, 37-39, and 52 are not obvious over
Moskowitz, Ho, and Meyers. Appellants contend none of the references
recites a method of making a multilayer structure including the steps of
placing an RFID on a first sheet, laminating the first sheet with a fiber base
having the chip situated on an inside face of the first sheet, and a cavity
formed in the second sheet to receive the chip from the first sheet, as recited
in claim 13 (App. Br. 16). Ho discloses a sheet body having a cavity therein
to receive a chip and two covers adhered on each side of the sheet body (FF
4). Ho does not specifically state how the chip is received in the cavity,
however it must be done one of at least two ways: 1) by inserting the chip
and then laminating the cover over the sheet body; or 2) by inserting the chip
while it is on the cover. The claims recite only the steps of placing and
laminating. Ho suggests both of these steps (see FF 4).
Appellants argue claims 18-22 are not obvious over Moskowitz, Ho,
and Meyers because none of the references recites a step of depositing a
coating on a sheet in a thickness greater than the chip as claimed (App. Br.
18). As set forth above with respect to claim 6, Ho does indeed suggest a
Appeal 2009-008793
Application 10/312,009

9
layer that can be greater than the chip thickness. Appellants further argue
that Ho teaches away from applying a coating because it teaches using paper
to cover the chip. However, Moskowitz, rather than Ho, was cited for use of
a coating (FF 3). Additionally, claim 18 does not specify the type of
coating. Thus, claim 18 does not exclude the coating being one of a paper
based substance.

DECISION
The Examiner’s decision rejecting claims 1, 2, 4-11, 13-22, 27, 29-34,
37-39, 41, 43-47, and 50-55 is affirmed.
The Examiner’s decision rejecting claims 12, 23-26, 28, 35, 36, and
40 is reversed.
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).

AFFIRM-IN-PART

KIS

Oliff & Berridge, P.L.C.
P. O. Box 320850
Alexandria, VA 22320-4850