Ex Parte YOSUI et alDownload PDFPatent Trial and Appeal BoardJul 13, 201813765541 (P.T.A.B. Jul. 13, 2018) Copy Citation 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. 2 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 3 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. 4 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 5 Appeal2017-007839 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. 6 Appeal2017-007839 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 7 Appeal2017-007839 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. 8 Appeal2017-007839 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 9 Copy with citationCopy as parenthetical citation