Murata Manufacturing Co., Ltd.

Patent Trials and Appeals Board

Feb 13, 2020

15050539 - (D) (P.T.A.B. Feb. 13, 2020)

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.
15/050,539 02/23/2016 Shinichi NAKANO 36856.3496 8867
54066 7590 02/13/2020
MURATA MANUFACTURING COMPANY, LTD.
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
LU, ZHIYU
ART UNIT PAPER NUMBER
2669
NOTIFICATION DATE DELIVERY MODE
02/13/2020 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):
JKEATING@KBIPLAW.COM
cbennett@kbiplaw.com
uspto@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHI NAKANO, TEPPEI MIURA, and NOBORU KATO
Appeal 2019-001099
Application 15/050,539
Technology Center 2600
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–6. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Murata
Manufacturing Co., Ltd. Appeal Br. 2.
Appeal 2019-001099
Application 15/050,539
2
CLAIMED SUBJECT MATTER
The claims are directed to “an information terminal apparatus that
performs near field communication with an external apparatus.” Spec. ¶ 1.
Claim 2, reproduced below, is illustrative of the claimed subject matter:
2. An information terminal apparatus comprising:
a display;
a conductive housing including a first principal surface, a
second principal surface opposite to the first principal surface, a
slit, a first aperture provided in the second principal surface,
and a second aperture provided in the first principal surface;
and
a coil; wherein
a front surface of a screen of the display is exposed to the
first aperture;
the slit extends from the first aperture to the second
aperture;
the coil is magnetically coupled to the conductive
housing; and
a width of the slit is smaller than a width of the first
aperture.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bungo US 2014/0015724 A1 Jan. 16, 2014
Vakil US 2012/0274800 A1 Nov. 1, 2012
Rappoport US 2013/0094126 A1 Apr. 18, 2013
Casden US 2010/0148968 A1 June 17, 2010

Appeal 2019-001099
Application 15/050,539
3
REJECTIONS
Claims 2–6 are rejected under pre-AIA 35 U.S.C. § 103(a) as obvious
over Bungo, Vakil, Rappoport, and Casden. Final Act. 2–5.
OPINION
The Obviousness Rejection of Claims 2–6 over Bungo, Vakil, Rappoport,
and Casden
The Examiner finds Bungo, Vakil, Rappoport, and Casden teach all
limitations of claim 2. Final Act. 2–4. The Examiner finds Bungo teaches
most limitations of claim 2 but does not teach “a first aperture provided in
the second principal surface”; “a front surface of a screen of the display is
exposed to the first aperture”; and “the slit extends from the first aperture to
the second aperture.” Final Act. 2–3. The Examiner notes that Bungo
teaches “a camera lens is fitted in said aperture . . . parallel to said coil.”
Final Act. 3.
The Examiner finds Vakil teaches a tablet with a front-facing camera
and a back-facing camera, and reasons that one skilled in the art would have
modified the apparatus of Bungo “for dual camera capability whereas a first
aperture for front camera provided in the second principal surface and
exposed to the front surface of a screen of the display.” Final Act. 3.
The Examiner finds Rappoport teaches “a tablet having NFC [(near
field communication)] with external device via openings,” and reasons that
one skilled in the art would have further modified the apparatus of Bungo
“in order to accommodate both a front-facing camera and a back-facing
camera while NFC communications is in place.” Final Act. 3–4.
The Examiner finds Casden teaches “a RFID device having a
mechanically rugged metallic housing slotted to define a radio frequency
Appeal 2019-001099
Application 15/050,539
4
antenna . . . wherein respective end points of the slit are considered as
apertures.” Final Act. 4 (citing Casden Figs. 2–3, ¶¶ 11–14, 23–26, 31). The
Examiner reasons that one skilled in that art would have further modified
Bungo “into having a slit connected to both first aperture and second
aperture on surface of said conductive housing, in order to effectuate said
conductive housing as an RF antenna by design preference.” Final Act. 4.
Among other arguments, Appellant presents the following principal
arguments:
“[T]he metal housing 20 of Casden is not magnetically coupled to a
coil as required by Appellant’s Claim 2, because Casden clearly teaches that
the metal housing 20 itself acts as a single turn spiral antenna that is
connected to an RFID IC 32.” Appeal Br. 8 (citing Casden Figs. 1–3, ¶¶ 16,
17, 23, 24).
Because the antenna apparatus 100 of Bungo and the
antenna 28 of Casden each have a structure, arrangement,
configuration, and functionality that are completely different
from one another, the Examiner’s alleged modification to Bungo
of incorporating the teaching of Casden so as to include ‘a slit
connected to both first aperture and second aperture on surface
of said conductive housing,’ which is not taught or suggested by
the teachings of Casden or any other evidence of record for the
reasons explained above, would have had an unpredictable effect
on the operation of the antenna apparatus 100 of Bungo including
the resonance tuning component 130 and the conductor layer
110.
Appeal Br. 15.
In response to these arguments, the Examiner explains
Thus, corresponding to [the] structural teaching of Bungo (1190-
1210 of Fig. l0B), it would have been obvious to one of ordinary
skill in the art before the invention was made to incorporate [the]
teaching of Casden (e.g., slits on both surface being connected)
Appeal 2019-001099
Application 15/050,539
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and modify the improved apparatus of Bungo, Vakil and
Rappoport [to] have a slit on the front surface (where [the]
display resides) connected to the front-facing camera aperture
and [] another slit [that] extends from the back camera aperture
on the rear surface, in order to improve [an] NFC
communications field on the front surface [to be] as good as on
the back surface. And obviously, said slit on the front surface
would have a width that is smaller than a width of the front-
facing camera aperture.
Ans. 8–9.
In reply, Appellant further argues
The purpose and function of the slit (60) of Casden is to
define a half turn radio frequency antenna 36 so that the tag
housing 40 also becomes the antenna 36 for the RFID
transponder 32 contained in the housing, and the tag housing 40
thus serves the dual function of mechanically containing and
protecting the RFID transponder 32 and of receiving and
radiating RFID radio frequency signals between RFID
transponder 32 and a suitable RFID tag reader unit (see
paragraphs [0031]–[0032] of Casden). However, neither Casden
nor any other evidence of record teaches, suggests, or even hints
that modifying the terminal device in Figs. 10A–10D of Bungo
to include a slit on the front surface where the display resides
would have “[improved] NFC communications field on the front
surface as good as on the back surface” as alleged by the
Examiner.
Reply Br. 10–11
Appellant’s arguments persuade us that, on the record before us, the
Examiner’s reasons to further modify Bungo, after modification in light of
Vakil and Rappoport, lack a rational underpinning. Thus, Appellant’s
arguments persuade us that, on the record before us, the Examiner erred in
making the rejection.
Appeal 2019-001099
Application 15/050,539
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Claim 2 is directed to performing near field communication, and
requires “the coil is magnetically coupled to the conductive housing.” Claim
2. Current is induced in the surfaces of the housing, and due to the claimed
arrangement of the slit and apertures, near field communication is performed
with radiating magnetic field waves. See Spec. ¶ 59.
Bungo is also directed to performing near field communication. See
Bungo ¶ 11. In a technique having some similarity to that recited in claim 2,
Bungo discloses “an aperture and a slit that adjoins the aperture.” Bungo ¶ 3.
In making the rejection, the Examiner modifies the terminal device of
Bungo, in view of Vakil, further modifies the terminal device of Bungo in
view of Rappoport, and even further modifies the terminal device of Bungo
in view of Casden. See Final Act. 2–4. Our decision hinges on the
modification in view of Casden.
Casden discloses the following:
FIG. 2 of the accompanying drawings illustrates another
embodiment of the invention where a metal housing 20 having
both a metal front 22 and metal sides 24 is cut with a slit 26 to
define a single turn radio frequency antenna 28 integral with the
housing 20. Appropriate points of the integrated
housing/antenna 20, 28, such as the opposite ends 30 of the
single turn antenna, are electrically connected to the radio
frequency output of the reader/writer circuits for injecting the
antenna with RF power.
Casden ¶ 24 (emphasis added).
Thus, Casden operates according to a different principal than the
information terminal apparatus of claim 2, which requires that “the coil is
magnetically coupled to the conductive housing.” Claim 2.
Accordingly, the Examiner’s reasons for further modifying the
already modified terminal device of Bungo lack a rational underpinning on
Appeal 2019-001099
Application 15/050,539
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the record. See Appeal Br. 15; see also Reply Br. 10–11. In particular, it is
not apparent how the single turn antenna formed by Casden’s housing is
readily-applicable to an information terminal apparatus as claimed where
“the coil is magnetically coupled to the conductive housing.” Claim 2.
The Examiner’s finding that the proposed further modification to
Bungo in light of Casden is “by design preference” (Final Act. 4) is
insufficient because we do not readily see the applicability of Casden’s
teachings to Bungo. Design choice applies when old elements in the prior art
perform the same function as the now claimed structures. See In re Kuhle,
526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated
problem and presents no unexpected result and “would be an obvious matter
of design choice within the skill of the art”). However, when the claimed
structure performs differently from the prior art a finding of obvious design
choice is precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding
of obvious design choice precluded when claimed structure and the function
it performs are different from the prior art). See In re Chu, 66 F.3d 292, 298-
99 (Fed. Cir. 1995) (“design choice” is appropriate where the applicant fails
to set forth any reasons why the differences between the claimed invention
and the prior art would result in a different function).
Further, the Examiner’s finding that the proposed further modification
to Bungo in light of Casden is “to improve NFC communications field”
(Ans. 9) is also insufficient because we do not see how Casden’s teachings
would improve Bungo, and the Examiner has not otherwise provided
supporting evidence on the record for such a modification to Bungo.
We, therefore, do not sustain the Examiner’s rejection of claim 2.
We also do not sustain the Examiner’s rejection of claims 3–6, which
depend from claim 2.
Appeal 2019-001099
Application 15/050,539
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CONCLUSION
The Examiner’s rejection is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
2–6 103(a) Bungo, Vakil,
Rappoport, Casden
2–6

REVERSED