Ex Parte YOSUI et al

Patent Trial and Appeal Board

Jul 13, 2018

13765541 (P.T.A.B. Jul. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/765,541 02/12/2013
78198 7590
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
07/17/2018
FIRST NAMED INVENTOR
Kuniaki YOSUI
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.
002000-121 6269
EXAMINER
DINH, TRINH VO
ART UNIT PAPER NUMBER
2845
NOTIFICATION DATE DELIVERY MODE
07/17/2018 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 KUNIAKI YOSUI,
HIROYUKI KUBO, HIROMITSU ITO, and
MURATA MANUFACTURING CO., LTD.
Appeal2017-007839
Application 13/7 65,541
Technology Center 2800
Before LINDA M. GAUDETTE, BRIAND. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm the rejection on the ground of nonstatutory double
patenting but reverse all other rejections. Because the rejection on the
ground of nonstatutory double patenting affects all claims on appeal, we
affirm.
1 Appellants identify Murata Manufacturing Co., LTD. of Kyoto, Japan as
the real party in interest. App. Br. 2.
Appeal2017-007839
Application 13/765,541
The subject matter on appeal is directed to an antenna useful in a
Radio Frequency Identification (RFID) system to communicate with an
external device by using electromagnetic field signals. Spec. ,r 1 2. The
antenna includes an antenna coil comprising a magnetic-material core and a
coil conductor wound around the magnetic-material core that is positioned
adjacent a planar surface of a planar support so it transmits a magnetic flux
to a reader part of a reader-writer. Spec. ,r,r 6, 64 and Figures 2A-2D, 3A.
The Specification describes the coil conductor of the antenna coil as having
a first and second conductor parts configuration where second conductor
part 12 is arranged in a position near to the center of planar conductor 2
compared with first conductor part 11 to improve communication
performance by passing the long axis of the loop of a magnetic flux H
through the magnetic-material core of the antenna coil at an inclined
orientation from the surface of planar conductor 2. Spec. ,r,r 65---66 and
Figures 2B, 3A. Claim 1 illustrates the subject matter on appeal and is
reproduced below:
1. An antenna comprising an antenna coil and a
planar conductor, the antenna coil including a magnetic-
material core having a first main face and a second main face
and a coil conductor wound around the magnetic-material core,
the antenna coil being positioned adjacent to a planar surface of
the planar conductor and configured to transmit magnetic flux
to a reader part of a reader-writer and couple magnetically
therewith,
wherein the first main face of the magnetic-material core
opposes the planar conductor, and
2 All references to the Specification ("Spec.") are to the Substitute
Specification filed October 30, 2013.
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Appeal2017-007839
Application 13/765,541
wherein, in a plan view of the planar surface, the entire
antenna coil is positioned towards one side of the center of the
planar surface of the planar conductor between a first end and
an opposite second end thereof and arranged toward a side of
the planar conductor such that the magnetic flux passing
through the magnetic-material core is inclined from the planar
surface of the planar conductor.
Appellants (see generally Appeal Brief) request review of the
following rejections from the Examiner's Non-Final Office Action dated
June 2, 2016:
I. Claims 1-11 rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention. 3
II. Claims 1, 4--6, and 8-11 rejected under pre-AIA 35 U.S.C.
§ I02(b) as anticipated by Kubo (US 2007/0247387 Al, published October
25, 2007). 4
III. Claims 2 and 7 rejected under 35 U.S.C. § I03(a) as
unpatentable over Kubo and Endo (US 2005/0007296 Al, published January
13, 2005).
IV. Claim 3 rejected under 35 U.S.C. § I03(a) as unpatentable over
Kubo and Kobayashi (US 2010/0309081 Al, published December 9, 2010).
V. Claims 1-11 rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over the claims of
3 The Examiner presents two separate grounds of rejections under 35 U.S.C.
§ 112 (pre-AIA), second paragraph. Non-Final Act. 2, 4. For brevity, we
address both grounds together in our opinion.
4 There is a discrepancy concerning the claims rejected over the prior art.
The Non-Final Action presents a rejection over prior art under 35 U.S.C.
§§ I02(b) and I03(a) for claims 1--4 and 6-10. Non-Final Act. 10-15.
However, both the Examiner and Appellants indicate that claims 1-11 are
rejected under 3 5 U.S. C. § 102 (b) ( we take both are stating all claims are
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Appeal2017-007839
Application 13/765,541
Yosui (US 9,136,600 B2, issued September 15, 2015) designated by the
Examiner.
OPINION5
The Indefiniteness Rejection
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner's rejection of claims 1-11 under
35 U.S.C. § 112, second paragraph as indefinite and incomplete for the
reasons presented by Appellants in the Appeal and Reply Briefs. We add
the following for emphasis.
The subject matter of independent claim 1 requires an antenna having
an antenna coil where
the entire antenna coil is positioned towards one side of the
center of [a] planar surface of [a] planar conductor between a
first end and an opposite second end thereof and arranged
toward a side of the planar conductor such that the magnetic
flux passing through the magnetic-material core is inclined
from the planar surface of the planar conductor.
The Examiner finds the claimed arrangement of the antenna coil and
planar conductor "such that the magnetic flux passing through the magnetic-
material core is inclined from the planar surface of the planar conductor"
(illustrated in Figure 3A of the Specification) is indefinite because it is
unclear what specific structure of the antenna coil and the planar conductor
performs the claimed function. Non-Final Act. 3 (emphasis omitted).
rejected over prior art as indicated in the previous sentence). App. Br. 3--4;
Ans. 3, 9. In view of the agreement between the Examiner and Appellants
as to the claims rejected over the prior art, we modified the anticipatory
rejection statement to include claims 5 and 11.
5 We limit our discussion of all grounds of rejections to independent claim 1.
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Appeal2017-007839
Application 13/765,541
According to the Examiner, the structure recited in claim 1 does not support
the claimed function because it encompasses the conventional embodiment
shown in Appellants' Figure 3B that performs a different function where the
magnetic flux passes through the magnetic-material core parallel to the
planar conductor instead of inclined from the planar surface of the planar
conductor as claimed. Non-Final Act. 3. Thus, the Examiner asserts claim 1
is indefinite and incomplete because it does not recite essential elements or
necessary structural relationships that result in the claimed function. Non-
Final Act. 3--4; Ans. 5-7.
Appellants contend that it is the combination of the structural position
of the antenna coil with respect to the planar surface and the functionally
recited properties of the antenna coil itself that results in the recited feature
of claim 1 that "magnetic flux ... is inclined from the planar surface of the
planar conductor." Reply Br. 2-3.
"'Functional' terminology may render a claim quite broad. By its
own literal terms a claim employing such language covers any and all
embodiments which perform the recited function." In re Swinehart, 439
F.2d 210,213 (CCPA 1971). However, "breadth is not to be equated with
indefiniteness .... " In re Miller, 441 F.2d 689, 693 (CCPA 1971). "[T]he
definiteness of the language employed must be analyzed-not in a vacuum,
but always in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232,
1235 (CCPA 1971).
The Specification describes an antenna coil having a coil conductor
CW where the coil conductor CW comprises first and second conductor
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Application 13/765,541
parts 11, 12 as configured in Figures 2A and 2B. Spec. ,r 62. In the
configuration illustrated, first conductor part 11 and second conductor part
12 are arranged such that second conductor part 12 is not over first
conductor part 11 and second conductor part 12 is arranged in a position far
from the center of planar conductor 2, compared with first conductor part 11.
Id. ,r 63. The Specification and Figure 3A describe this antenna coil
configuration, as positioned, results in the long axis of the loop of a
magnetic flux H passing through the magnetic-material core of the antenna
coil 21 inclined from the surface of the planar conductor 2. Id. ,r,r 64---65.
The Specification and Figure 3B also describe an antenna coil having a coil
conductor where the conductor comprises a second conductor part arranged
over a first conductor part that does not result in the desired magnetic flux.
Id. ,I 66.
Given this disclosure, we find that, when read in light of the
Specification, a skilled artisan would understand what is claimed in claim 1.
We have also considered the Examiner's additional objections on
pages 2-3 of the Non-Final Action (as clarified on pages 4--5 of the Answer)
to additional language in claim 1 as indefinite (for example, "therewith,"
"thereof'). However, we agree with Appellants that this language is not
indefinite for the reasons presented in the Appeal and Reply Briefs. App.
Br. 3; Reply Br. 1-2.
Accordingly, the Examiner has not persuasively established that
claims 1-11 are indefinite or incomplete. We, therefore, will not sustain the
Examiner's§ 112, second paragraph, rejection of claims 1-11.
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Application 13/765,541
The Prior Art Rejections
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner's prior art rejections of claims
1-11 under 35 U.S.C. §§ 102(b) and 103(a) for the reasons presented by
Appellants in the Appeal and Reply Briefs. We add the following for
emphasis.
The Examiner finds Kubo' s Figures 17 and 19 describe the subject
matter of independent claim 1. Non-Final Act. 10-12. The Examiner also
finds the claim 1 language "configured to transmit magnetic flux from a
reader part of a reader-writer" and "such as the magnetic flux passing
through the magnetic-material core is inclined from the surface of the planar
conductor" are functional recitations and/or expected results of the recited
structures that do not define over prior art. Id. at 11.
Appellants argue the structure of Kubo does not inherently perform
the functional limitations of the "magnetic flux ... is inclined from the
surface of the planar conductor." App. Br. 4. In the Reply Brief, Appellants
assert that the magnetic coil must also be wound as shown in Figures 2A-2D
so as to give rise to a tilted (inclined) magnetic flux. Reply Br. 3.
The question is not whether patentable weight should be accorded to
the functional language, but rather whether the structure of the prior art is
capable of performing the recited function of the claim. Where there is
reason to conclude that the structure of the prior art is inherently capable of
performing the function, the burden shifts to the applicant to show that the
function patentably distinguishes the claimed structure from the prior art
structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re
Hallman, 655 F.2d 212,215 (CCPA 1981). In this instance, however, the
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Application 13/765,541
Examiner does not provide the necessary "capable of' analysis. Therefore,
the Examiner has not met the burden to establish that Kubo' s antenna
anticipates the claimed invention.
Accordingly, we reverse the Examiner's rejection of claims 1, 4---6,
and 8-11 under 35 U.S.C. § 102(b) as anticipated by Kubo for the reasons
presented by Appellants and given above. We also reverse the separate
rejections of claims 2, 3, and 7 under 35 U.S.C. § 103(a) because the
Examiner does not rely on the additionally cited references to overcome the
noted deficiency of Kubo. Non-Final Act. 14--15.
Nonstatutory obviousness-type double patenting
The Examiner rejects claims 1-11 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over the claims of Y osui
(US 9,136,600 B2, issued September 15, 2015). Non-Final Act. 5; Ans. 3, 7.
Appellants do not substantively address the nonstatutory double
patenting rejection in the Appeal or Reply Briefs. See generally Appeal and
Reply Briefs. 6
Accordingly, we summarily sustain the Examiner's rejection of claims
1-11 on the ground ofnonstatutory double patenting. See MPEP § 1205.02
(2017) ("If a ground of rejection stated by the examiner is not addressed in
the appellant's brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it."); see also Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) ("If an appellant fails to
6 In a communication filed April 27, 2016, Appellants indicated that a
terminal disclaimer would be filed once this rejection becomes the sole
rejection of the claims.
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Application 13/765,541
present arguments on a particular issue----or more broadly, on a particular
rejection-----the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.").
ORDER
The Examiner's rejection of claims 1-11 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner's prior art rejections of claims 1-11 are reversed.
The Examiner's rejection of claims 1-11 on the ground of
nonstatutory double patenting 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 )(iv).
AFFIRMED
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