Ex Parte Rutfors et al

Board of Patent Appeals and Interferences

Sep 21, 2010

10312563 - (D) (B.P.A.I. Sep. 21, 2010)

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.
10/312,563 09/25/2003 Tomas Rutfors 9062A-000101/US/NP 5573
28997 7590 09/21/2010
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
ALEMU, EPHREM
ART UNIT PAPER NUMBER
2821
MAIL DATE DELIVERY MODE
09/21/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOMAS RUTFORS, CHRISTIAN BRAUN, HENRIK FALKEN,
LENNART HAKANSSON, and LIU DONGHUI
_____________

Appeal 2010-009649
Application 10/312,563
Technology Center 2800
____________

Before THOMAS S. HAHN, ELENI MANTIS MERCADER,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-009649
Application 10/312,563

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellants’ Figure 1 is depicted below:

Figure 1 depicts Appellants’ claimed invention which is directed to a
first antenna element 1 shown as a Planar Inverted F Antenna (PIFA) and the
second antenna element 2 as a meander antenna. The PIFA 1 and meander 2
antenna elements are positioned close to each other so as to take up as little
space as possible in a portable radio communication device. A conductive
shield 4, extending from the ground plane device 3, is positioned between
the antennas 1, 2. The shield 4 provides additional isolation, and thereby
reduces the coupling between the antennas 1, 2, which is usually present
between closely spaced antennas. Since the coupling is reduced it is
possible to position the antennas 1, 2 closer to each other than without the
shield 4. See Spec. 4:2-25.
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Application 10/312,563

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Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. An antenna arrangement for a portable radio communication
device, comprising:
- a first and a second antenna elements, and
- a conductive shield connectable to a ground plane device, wherein
said first and second antenna elements are located on opposite sides of the
shield, characterized in that
- said first and second antenna elements are of different types.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Macdonald US 5,608,413 Mar. 4, 1997
Vaisanen US 6,560,443 B1 May 6, 2003
(filed May 28, 1999)
The following rejection is before us for review:
The Examiner rejected claims 1-18 under 35 U.S.C. § 103(a) as being
unpatentable over Macdonald in view of Vaisanen.

ISSUE
The pivotal issue is whether the combination of Macdonald in view of
Vaisanen teaches “a conductive shield . . . wherein said first and second
antenna elements are located on opposite sides of the shield” and wherein
the first and second antenna elements are of different types as recited in
independent claim 1.

Appeal 2010-009649
Application 10/312,563

4
FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence:
1. Macdonald’s Figure 1 is reproduced below:

As shown in Macdonald’s Figure 1, slot radiator 40 is next to the
patch radiator 42.
2. Vaisanen teaches that a conductive shield 47 attached to a ground
plane can be placed between two antennas 41, 42 positioned next to
each other for “improved isolation to effect shielding” between them
(Fig. 4; col. 8, ll. 38-48).

PRINCIPLES OF LAW
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
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Application 10/312,563

5
reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” Id. at
425.

ANALYSIS
Appellants first argue (Br. 7) that there is no place the alleged
shielding of Vaisanen could be connected to the ground plane of Macdonald
wherein the first and second antenna elements would reside on opposite
sides of the ground plane.
As shown in Macdonald’s Figure 1, slot radiator 40 (i.e., first antenna
element) is next to the patch radiator 42 (i.e., second antenna element) (FF
1). Vaisanen teaches that a conductive shield 47 attached to a ground plane
can be placed between two antennas 41, 42 positioned next to each other for
improved isolation to effect shielding between them (FF 2). Thus, it would
have been obvious to one skilled in the art that a conductive shield as taught
by Vaisanen could be placed between Macdonald’s slot radiator 40 and the
patch radiator 42 to improve isolation to effect shielding between them.
Accordingly, we are not persuaded by Appellants’ argument (Br. 7)
that there is no place for the shielding. Furthermore, if the conductive shield
is placed closer to the patch radiator 42, the conductive shield would extend
from the ground plane 52 (see Macdonald’s Figs. 6-7). Thus, we are also
not persuaded by Appellants’ argument (Br. 7) that it is physically
impossible to arrange a conductive shield that extends from the ground plane
between the radiating elements.
Appellants further argue (Br. 7) that there is “sufficient isolation”
between the elements of Macdonald because the ground planes reside
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between them, and thus, there is no need to add a conductive shield. We
remain unpersuaded by this argument as well. Vaisanen clearly provides the
motivation for adding the conductive shield in between antennas, which is
“improved isolation to effect shielding” (col. 8, ll. 38-48 (emphasis added)).
Even if Macdonald provided sufficient isolation, one skilled in the art would
be motivated to further improve that isolation.
Appellants (Br. 7-8) also argue that Vaisanen teaches that the two
antennas are not required to operate at the same time, and that the
combination would render Macdonald’s antennas system inoperable because
those antennas operate at the same time. We are not persuaded by
Appellants’ argument.
We note that the test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference, but rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.
See Keller, 642 F.2d at 425. The Examiner modified Macdonald by simply
incorporating Vaisanen’s conductive shield to improve isolation between the
two antenna elements of Macdonald. Thus, the combined teachings of
Macdonald and Vaisanen would have suggested introduction of a conductive
shield to improve isolation. Id. While we note that the Examiner never
proposed modification of Macdonald’s antennas, nonetheless, even if that
was the case, the features of the secondary reference would not be bodily
incorporated into the structure of the primary reference. Id.
Accordingly, for the reasons articulated supra, we will affirm the
Examiner’s rejection of independent claims 1 and 16, and for similar
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reasons, the rejections of dependent claims 2-15 and 17-18 as no other
arguments of patentability were presented with respect to these claims.

CONCLUSION
The combination of Macdonald in view of Vaisanen teaches “a
conductive shield . . . wherein said first and second antenna elements are
located on opposite sides of the shield” and wherein the first and second
antenna elements are different.

ORDER
The decision of the Examiner to reject claims 1-18 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)(v).

AFFIRMED

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HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105