Ex Parte Tucker

Patent Trial and Appeal Board

Mar 30, 2016

12806726 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/806,726 08/18/2010
20879 7590 03/31/2016
EMCH, SCHAFFER, SCHAUB & PORCELLO CO
POBOX916
ONE SEAGATE SUITE 1980
TOLEDO, OH 43697
Randall L. Tucker
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.
10005A 5712
EXAMINER
KELLY, RAFFERTY D
ART UNIT PAPER NUMBER
2876
MAILDATE DELIVERY MODE
03/31/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte RANDALL L. TUCKER
Appeal2014-004397
Application 12/806, 726 1
Technology Center 2800
Before PETERF. KRATZ, MICHAEL P. COLAIANNI, and
WESLEY B. DERRICK, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
10-21, 23, and 24. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellant's invention is directed to a RFID (Radio Frequency
Identification) device (20) that uses a wireless antenna (24) of conductive
rubber along with a computer chip and is embedded in the body of a tire (T)
or affixed to the inner surface of the tire (Spec. 2:5-7; Figs. 1 and 4).
1 According to Appellant, the real party in interest is Cooper Tire & Rubber
Company. Br. 1.
Appeal2014-004397
Application 12/806,726
Claim l 0 is illustrative:
10. An RFID device comprising:
(a) a first sheet of non-conductive material having an
outwardly facing peripheral edge;
(b) an antenna of a single unitary sheet of conductive
rubber engaged to said first sheet and having an outwardly
facing peripheral edge spaced inwardly from said first sheet
peripheral edge, said antenna having a slot therein, said slot
following a straight or non-straight path part way toward an
opposing portion of said peripheral edge;
( c) a microchip positioned in said slot and conductively
engaged to said antenna at least two points, one of said points
located on one side of said slot and the other of said points
located on the other side of said slot;
( d) a non-conductive member encircling said antenna and
engaging said outwardly facing peripheral edge of said antenna,
said non-conductive member having an internal extension
positioned in said slot; and
( e) a second sheet of non-conductive material engaged to
(i) said antenna and (ii) said encircling non-conductive member.
Appellant appeals the following rejections:
1. Claims 10, 13-21, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nakao et al. (US 2010/0032066 Al published Feb.
11, 2010 (hereinafter "Nakao")) in view of Ellis et al.
(US 2008/0119957 Al published May 22, 2008 (hereinafter "Ellis")).
2. Claims 11, 12, and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakao in view of Ellis and Montecalvo et al.
(US 5,330,527 issued July 19, 1994 (hereinafter "Montecalvo")).
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Appeal2014-004397
Application 12/806,726
Appellant argues subject matter common to claims l 0, 16, and 20 (Br.
5-11). We select claim 10 as representative of the group. Appellant further
argues dependent claim 13 (id. at 7-8). Claims not separately argued will
stand or fall with our analysis of claim 10.
FINDINGS OF FACT AND ANALYSES
The Examiner finds that Nakao teaches all the limitations of claim 10,
except for the specifics of the antenna in limitation (b) (Ans. 4--5). The
Examiner finds that Ellis teaches using a single unitary sheet of conductive
rubber to form an antenna (id. at 5). The Examiner concludes that it would
have been obvious to combine the teachings of Nakao and Ellis since such
would provide an antenna that will minimize fracture of antenna components
as taught by Ellis (id.).
Regarding the requirement that the antenna has a slot formed therein,
the Examiner finds that Nakao teaches an antenna having a slot in Figure
2(A) (id. at 4). The Examiner annotated Nakao's Figure 2(A) to show where
the Examiner considers a slot is formed in the antenna (id. at 8). The
Examiner's annotated Figure 2(A) is shown below:
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Appeal2014-004397
Application 12/806,726
7
'•\'\
"'l
6A(6)
/
:'
FIG.2(A}
·~ ~ ' l'\ ,..., ________ _
!~
\
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5
The Examiner's annotated Figure 2(A) of Nakao shows antenna 6B and chip
6A forming a circuit 7 on an insulated film 5 (Nakao i-f 39). From the
annotated Figure, it appears that the Examiner finds that the space between
the two L-shaped bridges connecting the antennae 6B constitutes a slot
within the meaning of the claims (id. at 9).
Appellant argues that Nakao and Ellis fail to teach a space or slot
within a unitary sheet of conductive rubber forming an antenna (Br. 8-9).
Appellant contends that Ellis teaches in paragraph 44 forming a slot in a
non-conductive material, not the antenna (id. at 10).
We begin our analysis by construing the claim. Claim 10 recites, in
relevant part, "an antenna of a single unitary sheet of conductive rubber ...
said antenna having a slot therein .... " We understand the claim to require
the antenna be a single unitary sheet of conductive rubber with a slot formed
in the single unitary sheet. In other words, the slot is formed physically in
the antenna sheet itself.
Nakao teaches, as shown in Figure 2(A), that the antenna is labelled as
6B. Nakao describes that the antenna 6B and integrated circuit chip 6A are
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Appeal2014-004397
Application 12/806,726
attached to an insulated substrate 5 (Nakao i139). Nakao further teaches that
the antenna 6B and chip 6A form an electronic circuit 7. Id. The unlabeled
L-shaped bridges that connect the antenna 6B to the chip 6A on the insulated
substrate 5 provide the electrical connection between the various antenna
stripes and the chip 6A (Fig. 2A). Accordingly, the L-shaped bridges
provide connections between the antenna and the chip. In other words, the
L-shaped bridges via their connection with antenna 6B constitute part of the
antenna that is electrically connected to chip 6A. In light of our
understanding regarding Nakao, we agree with the Examiner that Nakao
teaches forming a slot within the antenna via the slot formed between the L-
shaped members that provide electrical connection of the antenna 6B with
the chip 6A.
Ellis was cited by the Examiner to teach that it is known to use a
conductive rubber sheet as an antenna (Ans. 5). The Examiner finds that one
of ordinary skill in the art would have used Ellis' conductive rubber antenna
for the antenna in Nakao's device to minimize fracturing of the antenna by
providing better flexibility to the device (id.). Therefore, once Nakao's
RFID device is modified to use Ellis' conductive rubber sheet antenna to
minimize fracturing of the antenna, the antenna would have been structured
to have a slot for coupling the RFID chip.
Appellant argues that Ellis fails to teach forming a slot in the
conductive rubber antenna (Br. 8-10). Appellant argues that Ellis'
embodiment taught in paragraph 44 has a slot formed in a non-conductive
member between two conductive antenna elements with the chip fitting in
the slot formed in the nonconductive element (id. at 9-10).
5
Appeal2014-004397
Application 12/806,726
Ellis discloses in paragraph 44 "[a ]nother construction" that may be
used in the construction of a RFID tag. The paragraph 44 embodiment uses
two thin, flexible rods as the antenna separated by a non-conductive element.
The non-conductive element has a slot in it that the chip may be inserted into
to permit the chip to interact with the antenna (Ellis i-f 44). Ellis'
embodiment in paragraph 44 does not concern a sheet of conductive rubber
as the antenna. Moreover, the combined teachings of Ellis and Nakao would
have suggested forming a conductive rubber antenna with a slot for the
RFID chip as noted supra.
Appellant contends that Ellis is non-analogous art (Br. 10). Appellant
argues that Ellis is directed to a tracking system for garments using an RFID
tag connected to the garment (id.). To be analogous art the prior art must be
either from the same field of endeavor, regardless of the problem addressed,
and ifthe problem is not within the field of the inventor's endeavor, the
reference must be reasonably pertinent to the particular problem with which
Appellant is involved. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Appellant does not explain why Ellis is non analogous under either prong of
the test discussed in Clay. We are unpersuaded that as a factual matter Ellis
is not in the same field of endeavor (i.e., RFID devices).
Regarding claim 13, Appellant argues that the claim requires "a
thickness range of 0.05mm to 3mm for the entire thickness of the protective
cover, RFID microchip and antenna device" (Br. 8).
Appellant appears to be arguing that claim 13 requires that the entire
thickness of the RFID device is between 0.5 to 3 mm. Claim 13 depends
from claim 10 and recites, "wherein each of said antenna and said encircling
non-conductive member has a thickness in the range of 0.05 mm to 3 mm."
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Appeal2014-004397
Application 12/806,726
By the plain language of the claim, the antenna and each non-conductive
layer (i.e., layers 22) must have a thickness within the recited thickness
range. This interpretation is supported by the Specification at page 6, lines
4--9.
The Examiner finds de facto that Nakao's rubber protective layer is a
non-conductive, i.e., an insulating layer, that provides the necessary
insulating property. Nakao teaches, accordingly, use of non-conductive
layers with thicknesses between 0.3 and 2.0 mm (i-f 40). Nakao further
discloses that the IC tag inlet 2 that contains the chip 6A, antenna 6B
insulated film 5, and protective film 9 has a thickness of at most 0.1 mm,
which overlaps with the claimed range (i-f 39). Therefore, Nakao would have
suggested an antenna having each antenna and non-conductive member
element with a thickness falling within the claimed range.
On this record and for the above reasons, Appellant's arguments do
not persuade us of any reversible error in the Examiner's rejection of the
appealed claims. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the Examiner's§ 103 rejections of record.
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).
ORDER
AFFIRMED
7