DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to the Applicant’s communication filed on 01/26/26.
In view of applicant’s amendment and arguments regarding objection to specification, the objection is partially withdrawn, however a new objection to the amended specification is added.
The applicant’s arguments have been considered but are moot in view of new ground(s) of rejections necessitated by the applicant’s amendment.
Specification
The amendment to specification filed on 01/26/2026 in response to the objection to specification presented in the previous office action is objected to under 35 U.S.C. 132(a) because it did not completely remove the new matter from the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The amended paragraph bridging pages 3 and 4 of the specification as originally filed (which is the first paragraph in the Amendment to the Specification on page 2) still contains the material (underlined below) which is not supported by the original disclosure is as follows:
“The antenna housing may also comprise a centre bar and a circumferential frame that encompasses a space divided by a centre bar such that two windows are provided. This allows the antenna frame to house two separate antennas such that coverage in dual areas is provided. In this way, the two antennas can be used independently for two external device or improve the coverage if one antenna is blocked or fails. Further, having two different antennas with two different locations allows for one NFC system being used in different applications located in proximity to each other.
While the Applicant removed most of the new matter indicated in the previous office action, the underlined portion still remains in the most recent amendment.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 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 inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites the limitations "the antenna housing" and “the antenna frame”. There is insufficient antecedent basis for these limitations in the claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 5, 7, 15, 16 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019121565 (Nishimura) in view of JP 2009119044 (Tabata) (references are given according to English translation).
Regarding claim 1, Nishimura teaches “A near field communication (NFC) system (FIG 1 and 2 and abstract: an NFC antenna 15 placed on the outside of the device enclosure 13, and capable of detecting a radio signal for short-range radio communication, an NFC circuit 16 placed in the device enclosure 13) implemented in a vehicle (this appears to be merely a statement of intended use or environment in which the device is used and thus this recitation has not been given patentable weight. It should be emphasized that “apparatus claims must be structurally distinguishable from the prior art.” In re Danly, 263 F. 2d 844, 847, 120 USPQ 528, 531 (CCPA 1959) it was held that apparatus claims must be distinguished from prior art in terms of structure rather than function. In Hewlett-Packard Co. v Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held that: “Apparatus claims cover what a device is, not what it does” (emphases in original). To emphasize the point further, the court added: “An invention need not operate differently than the prior art to be patentable, but need only be different”. “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” a statement of intended use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).), comprising:
a NFC device with a device housing (abstract: an NFC circuit 16 placed in the device enclosure 13) and an antenna (abstract: an NFC antenna 15),
wherein the NFC device and the antenna are two separate components (abstract: an NFC antenna 15 placed on the outside of the device enclosure 13, and an NFC circuit 16 placed in the device enclosure 13. Thus, two separate components) connected to each other with a flexible connection forwarding currents between the NFC device and the antenna (FIG 1 and 2 and paragraph 0023: The wireless signal detected by the NFC antenna 15 is transmitted via a wire W4. Wire represents “a flexible connection”)…”
Nishimura does not teach “wherein the device housing has a fastening mechanism such that the antenna is reversibly attached to the device housing of the NFC device, and wherein the antenna is placed into a recess of the device housing when the antenna is attached to the device housing.”
On the other side, Tabata teaches in FIG 1 and paragraph 0009 a metal shelf board 10, which may be equivalent to the wall of “the device housing”, into which panels 30 each incorporating one of the antennas 20 are placed. Paragraph 0020 states that only a single antenna panel may be used. Paragraph 0010: The shelf board 10 has a recess 10a formed on the top surface, and each panel 30 is arranged in the recess 10a (corresponds to the claimed “wherein the antenna is placed into a recess of the device housing when the antenna is attached to the device housing”). Since Tabata does not disclose any specific hardware that would make the attachment of the antenna panel to the shelf board permanent, a person of ordinary skill in the art would have understood that the attachment of the antenna panels to the shelf board is reversible, since it appears that the panels are simply dropped into the recess. This corresponds to claimed “the antenna is reversibly attached to the device housing.” Additionally, as shown in FIG 9 and described in paragraphs 0025 – 0026, a panel cover 60 is fixed to the shelf board body 11 by a plurality of screws 63. This appears to ensure that the antenna plates are held in place by the panel cover. This also corresponds to the claimed “wherein the device housing has a fastening mechanism” represented by the plurality of screws 63. Summarizing, the limitation “the device housing has a fastening mechanism such that the antenna is reversibly attached to the device housing” is met in the embodiment of FIG 9 so that the shelf board (representing the wall “of the device housing”) has openings for the screws 63 (representing “the device housing has a fastening mechanism”) to attach the panel cover 60 “such that the antenna is reversibly attached to the device housing” by being under the panel cover when fully assembled. A person of ordinary skill in the art would have understood that to remove the antenna panels 30 from the shelf board, it would be required to undo the screws 63, remove the panel cover 60 and remove the antenna panels.
Therefore, since Nishimura does not disclose the way the antenna 15 is attached onto the device enclosure 13, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Tabata antenna attachment method, in the system of Nishimura with predictable results and simply to fill in where Nishimura is silent since, according to the Supreme Court, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Regarding claim 5, Nishimura alone or in combination with Tabata teaches “wherein the antenna and the NFC device are movable with respect to each other so as to be mounted in separate locations (Nishimura, FIG 1 and 2 and abstract: an NFC antenna 15 placed on the outside of the device enclosure 13, and an NFC circuit 16 placed in the device enclosure 13. Various places of positioning of the antenna are also covered in paragraph 0023. Tabata, FIG 1 showing that antenna panels may be mounted in different locations along the shelf board 10).”
Regarding claim 7, Nishimura in combination with Tabata teaches “wherein the antenna is placed into an antenna housing (Tabata, FIG 1 and paragraph 0009: panels 30 each incorporating one of the antennas 20. Panel 30 represents “an antenna housing”).”
Regarding claim 15, Nishimura does not explicitly teach “wherein a circuit board is positioned inside the device housing.”
Nishimura, however, teaches that an NFC circuit 16 is placed in the device enclosure 13 (see abstract).
in the previous office action the Examiner took an official notice that usage of printed circuit boards on which electronic components, including chips, passive components, etc. are installed was well known and widely used in the industry before the effective filing date of the application. Since the applicant failed to properly traverse the Official Notice, this common knowledge or well-known in the art statement is now taken to be admitted prior art.
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize printed circuit board positioned within the device enclosure 13, as is well-known in the art to support and provide interconnections for the electronic components of the NFC circuit 16. Doing so would have provided substrate to position electronic components in an orderly fashion and provide connections between them, rather than doing it haphazardly and use individual wires for interconnection as was done in the old days (e.g. in the 1930s).
Regarding claim 16, Nishimura teaches or fairly suggests “wherein the antenna is attached to the device housing on a side opposite to the circuit board.”
Indeed, in the rejection of claim 15 above, it was shown the obviousness of using a printed circuit board with electronic components for the NFC circuit 16 inside the device enclosure 13. Further, Nishimura teaches at least in abstract and FIG 2 that an NFC antenna 15 is placed on the wall and outside of the device enclosure 13 (“the antenna is attached to the device housing on a side”). Summarizing, “the circuit board” is inside the device enclosure 13, while the antenna is attached on the wall on the outside of the device enclosure 13. Thus, there is a wall of the device enclosure 13 that is between “the circuit board” and the antenna, as shown in the sketch below:
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As may be seen from the sketch, the conditions of the claim are fulfilled in the arrangement of Nishimura so that the antenna is attached to the housing on the side of the wall which is opposite to the circuit board.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2019121565 (Nishimura) in view of JP 2009119044 (Tabata) evidenced by one or more of US 20230070101 (Dorst) and/or US 20090156118 (Schadler).
Regarding claim 3, Nishimura in combination with Tabata does not teach “wherein the fastening mechanism comprises a snap-in member or a clip member.”
In Tabata, as was explained in the rejection of claim 1 above, “the fastening mechanism” is represented by the plurality of screws 63 for attachment of the panel cover 60 to the shelf board 10, representing the wall of “the device housing”.
However, it is well known in the art that the screws may be replaced by clips. This may be evidenced by Dorst, paragraph 0096 (the threaded screws are replaced by spring-elastic clips), or Schadler, paragraph 0048 (various screws may be replaced by rivets or spring clips).
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to replace disclosed by Tabata screws 63 with spring clips, as is well-known in the art, simply as design choice with predictable results and since the court stated in KSR, "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740 (2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)).
Claims 6, 9 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019121565 (Nishimura) in view of JP 2009119044 (Tabata) as applied to claims 1 and 7 above, and further in view of US 20190086968 (Yun).
Regarding claim 6, Nishimura does not teach “wherein the antenna is located on a frame, wherein the frame is smaller compared to the device housing of the NFC device.” In fact, Nishimura does not provide any details regarding construction of the NFC antenna, thus prompting a person of ordinary skill in the art to search for additional references.
Yun teaches a near field communication antenna in FIG 2(a) and (b) with corresponding description. The antenna has a shape resembling figure “8” and is positioned on a substrate 220 which has a shape of “a frame”.
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Yun NFC antenna construction, in the device of Nishimura simply as a design choice with predictable results since, according to the Supreme Court, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
When the antenna of the combined Nishimura and Yun’s disclosures is positioned on the substrate having the shape of a frame, as disclosed by Yun, this frame would be “smaller compared to the device housing of the NFC device”, as may be inferred from Nishimura’s FIG 1 and 2 showing that the size of the NFC antenna 15 is much smaller than “the device housing of the NFC device” 13 in FIG 1 and 2. Indeed, since the overall dimension of the NFC antenna 15 is much smaller than the device housing 13, the size of the frame on which the antenna is positioned would also be smaller than the device housing 13.
Regarding claim 9, Nishimura in combination with Tabata teaches “wherein the antenna housing (Tabata, FIG 1 and paragraph 0009: panels 30 each incorporating one of the antennas 20. Panel 30 represents “an antenna housing”)…”
Nishimura in combination with Tabata does not teach that the antenna housing “comprises a center bar and a circumferential frame that encompasses a space divided by the center bar such that two windows are provided.”
Yun teaches a near field communication antenna in FIG 2(a) and (b) with corresponding description. The antenna has a shape resembling figure “8” and is positioned on a substrate 220 which has “a center bar and a circumferential frame”. In other words, Yun in FIG 2(b) teaches “comprises a center bar and a circumferential frame (220) that encompasses a space divided by the center bar such that two windows are provided (cutouts 225 in FIG 2(b)).”
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Yun NFC antenna construction, in the device of Nishimura simply as a design choice with predictable results since, according to the Supreme Court, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
It would have further been obvious to a person of ordinary skill in the art at the effective filing date of the application that since the NFC antenna of Yun has a shape of a figure “8” and the substrate 220 on which the antenna is positioned has two openings 225, to make the housing enclosing the NFC antenna essentially (such as Tabata’s panel 30 incorporating antenna 20) to repeat the shape of the substrate by providing two openings at the places corresponding to the openings in the substrate. Doing so would have allowed to reduce the weight of the antenna assembly as well as the cost of the housing by reducing the amount of material used to construct the housing.
Regarding claim 18, Nishimura in combination with Tabata does not teach “wherein the antenna is a flexible antenna or placed on a thin board structure.”
Yun teaches a near field communication antenna in FIG 2(a) and (b) with corresponding description. The antenna is positioned on a substrate 220 which appears to be thin enough. Alternatively, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to make the substrate 220 thin enough to save on weight and material. In other words, Yun teaches or fairly suggests “wherein the antenna is … placed on a thin board structure.”
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Yun NFC antenna construction, in the device of Nishimura and Tabata simply to fill in where Nishimura is silent and as a design choice with predictable results since, according to the Supreme Court, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Claims 10 – 14 and 18 (alternatively) are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019121565 (Nishimura) in view of JP 2009119044 (Tabata) as applied to claim 1 above, and further in view of US 20160292560 (AYATOLLAHI).
Regarding claim 10 – 12, Nishimura does not teach “wherein the flexible connection comprises at least two flexible wires” (as in claim 10), “wherein the at least two flexible wires are separately formed” (as in claim 11), and “wherein the at least two flexible wires are parallel and within proximity to each other” (as in claim 12).
AYATOLLAHI in paragraphs 0106 – 0107 teaches a wireless communication system 100C which includes a coil antenna 1A and an NFC transceiver circuit 5 connected to each other using a flexible cable 3C. The flexible cable 3C is a cable formed by positioning two parallel conducting patterns with metal such as a copper foil on a substrate formed from a thin insulating material with high curvature such as polyimide and covering the conducting pattern with insulating material. This type of construction of the flexible cable meets the requirements of claims 10 – 12.
Therefore, since Nishimura does not disclose details of the wire W4 connecting an NFC antenna 15 and an NFC circuit 16, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to use disclosed by AYATOLLAHI flexible cable specifically for this type of connection, in the system of Nishimura and Tabata simply as design choice with predictable results and to fill in where Nishimura is silent. Doing so would have also allowed to increase productivity in manufacturing (see AYATOLLAHI, paragraph 0107).
Regarding claim 13, Nishimura in combination with AYATOLLAHI teaches “wherein a ground plate is attached to one side of the at least two flexible wires (AYATOLLAHI, paragraph 0110: The conductor 35 is a conductor as a metal pattern such as copper formed parallel to a longitudinal direction of the base film 31, and functions as a ground line. As shown in FIG. 10B, the conductor 35 is formed on the lower surface of the base film 31. Therefore, “attached to one side of the at least two flexible wires”).”
Regarding claim 14, Nishimura does not teach “wherein the flexible connection comprises a flat conductor cable.”
AYATOLLAHI in paragraphs 0106 – 0107 teaches a wireless communication system 100C which includes a coil antenna 1A and an NFC transceiver circuit 5 connected to each other using a flexible cable 3C. Further, AYATOLLAHI teaches “wherein the flexible connection comprises a flat conductor cable (paragraph 0116: examples of the cable 3 include a FFC (Flexible Flat Cable) as a flexible cable in which two conducting wires with flat rectangular cross sections are positioned parallel covered with a flat insulator).”
Therefore, since Nishimura does not disclose details of the wire W4 connecting an NFC antenna 15 and an NFC circuit 16, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to use disclosed by AYATOLLAHI flexible cable specifically for this type of connection, in the system of Nishimura and Tabata simply as design choice with predictable results and to fill in where Nishimura is silent.
Regarding claim 18, Nishimura in combination with Tabata does not teach “wherein the antenna is a flexible antenna or placed on a thin board structure.”
AYATOLLAHI in paragraphs 0106 – 0107 teaches a wireless communication system 100C which includes a coil antenna 1A and an NFC transceiver circuit 5 connected to each other using a flexible cable 3C. Further, AYATOLLAHI teaches “wherein the antenna is a flexible antenna or placed on a thin board structure (paragraph 0082: The coil antenna 1A includes a flexible substrate on which the antenna element composed of wire is disposed.).”
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to use disclosed by AYATOLLAHI antenna structure that includes a flexible substrate on which the antenna element composed of wire is disposed, in the system of Nishimura and Tabata simply as design choice with predictable results since, according to the Supreme Court, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2019121565 (Nishimura) in view of JP 2009119044 (Tabata) as applied to claim 15 above, and further in view of US 20130256412 (Yeh).
Regarding claim 17, Nishimura teaches or fairly suggests “…wherein an access opening is provided in the device housing, via which the connector is accessible (as may be seen from FIG 1 and FIG 2, multiple wires are coming into or going out of the device housing 13, including wires W2, W3 and W4. Also see paragraphs 0022, 0023 and 0026. Therefore, “an access opening is provided in the device housing” must necessarily be present “via which the connector is accessible”).”
Nishimura does not teach “wherein a connector for the NFC device is placed on the circuit board” such that it is accessible via an access opening.
Yeh teaches “a connector for the NFC device is placed on the circuit board (paragraph 0024: the RFID assembly 10 includes an RFID reader/writer 200 having a first micro-USB connector 210. Paragraph 0031: FIG. 11 illustrates a schematic view of the circuit board 250 with the first micro-USB connector 210.), and wherein an access opening is provided in the device housing, via which the connector is accessible (paragraph 0027: the front cover 245 has an opening 247, and the first micro-USB connector 210 extends out of the insulating housing 240 through the opening 247.).”
Therefore, since Nishimura does not explicitly disclose how the wires coming into or going out of the device housing are connected to the internal circuitry, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Yeh connector installed on the main printed circuit board, in the device of Nishimura. Doing so would have provided a way to connect the wires to the rest of the circuitry within the device housing with the capability of easily connecting and disconnecting the wires.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2019121565 (Nishimura) in view of JP 2009119044 (Tabata) and further in view of US 20160292560 (AYATOLLAHI).
Regarding claim 19, Nishimura teaches “A near field communication (NFC) system (FIG 1 and 2 and abstract: an NFC antenna 15 placed on the outside of the device enclosure 13, and capable of detecting a radio signal for short-range radio communication, an NFC circuit 16 placed in the device enclosure 13) implemented in a vehicle (this appears to be merely a statement of intended use or environment in which the device is used and thus this recitation has not been given patentable weight. It should be emphasized that “apparatus claims must be structurally distinguishable from the prior art.” In re Danly, 263 F. 2d 844, 847, 120 USPQ 528, 531 (CCPA 1959) it was held that apparatus claims must be distinguished from prior art in terms of structure rather than function. In Hewlett-Packard Co. v Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held that: “Apparatus claims cover what a device is, not what it does” (emphases in original). To emphasize the point further, the court added: “An invention need not operate differently than the prior art to be patentable, but need only be different”. “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” a statement of intended use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).), comprising:
a NFC device with a device housing (abstract: an NFC circuit 16 placed in the device enclosure 13) and an antenna (abstract: an NFC antenna 15),
wherein the NFC device and the antenna are two separate components (abstract: an NFC antenna 15 placed on the outside of the device enclosure 13, and an NFC circuit 16 placed in the device enclosure 13. Thus, two separate components) connected to each other with a flexible connection forwarding currents between the NFC device and the antenna (FIG 1 and 2 and paragraph 0023: The wireless signal detected by the NFC antenna 15 is transmitted via a wire W4. Wire represents “a flexible connection”)…”
Nishimura does not teach “wherein the antenna is placed into a recess of the device housing when the antenna is attached to the device housing.” However, this limitation is rejected in view of Tabata as explained in the rejection of similar limitation of claim 1 above, the explanation being incorporated herein by reference.
Lastly, Nishimura does not teach “wherein the flexible connection comprises at least two flexible wires that are parallel and within proximity to each other.”
AYATOLLAHI in paragraphs 0106 – 0107 teaches a wireless communication system 100C which includes a coil antenna 1A and an NFC transceiver circuit 5 connected to each other using a flexible cable 3C. Paragraph 0116: Other examples of the cable 3 include a FFC (Flexible Flat Cable) as a flexible cable in which two conducting wires with flat rectangular cross sections are positioned parallel (“at least two flexible wires that are parallel and within proximity to each other”).
Therefore, since Nishimura does not disclose details of the wire W4 connecting an NFC antenna 15 and an NFC circuit 16, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to use disclosed by AYATOLLAHI flexible cable specifically for this type of connection, in the system of Nishimura and Tabata simply as design choice with predictable results and to fill in where Nishimura is silent.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2019121565 (Nishimura) in view of US 20190086968 (Yun).
Regarding claim 20, Nishimura teaches “A near field communication (NFC) system (FIG 1 and 2 and abstract: an NFC antenna 15 placed on the outside of the device enclosure 13, and capable of detecting a radio signal for short-range radio communication, an NFC circuit 16 placed in the device enclosure 13) implemented in a vehicle (this appears to be merely a statement of intended use or environment in which the device is used and thus this recitation has not been given patentable weight. It should be emphasized that “apparatus claims must be structurally distinguishable from the prior art.” In re Danly, 263 F. 2d 844, 847, 120 USPQ 528, 531 (CCPA 1959) it was held that apparatus claims must be distinguished from prior art in terms of structure rather than function. In Hewlett-Packard Co. v Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held that: “Apparatus claims cover what a device is, not what it does” (emphases in original). To emphasize the point further, the court added: “An invention need not operate differently than the prior art to be patentable, but need only be different”. “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” a statement of intended use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).), comprising:
a NFC device with a device housing (abstract: an NFC circuit 16 placed in the device enclosure 13) and an antenna (abstract: an NFC antenna 15),
wherein the NFC device and the antenna are two separate components (abstract: an NFC antenna 15 placed on the outside of the device enclosure 13, and an NFC circuit 16 placed in the device enclosure 13. Thus, two separate components) connected to each other with a flexible connection forwarding currents between the NFC device and the antenna (FIG 1 and 2 and paragraph 0023: The wireless signal detected by the NFC antenna 15 is transmitted via a wire W4. Wire represents “a flexible connection”)…”
Nishimura does not teach “wherein the antenna housing comprises a center bar and a circumferential frame that encompasses a space divided by the center bar such that two windows are provided so that the antenna frame houses two separate antennas.”
Nishimura, however, in FIG 1 and 2 and abstract teaches that an NFC antenna 15 is placed on the outside of the device enclosure 13, and an NFC circuit 16 placed in the device enclosure 13. Various places of positioning of the antenna are also covered in paragraph 0023.
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize a housing for the NFC antenna to be attached to the device enclosure 13, in the system of Nishimura. Doing so would have provided rigidity for the antenna assembly as well as protection from the external elements.
Yun teaches a near field communication antenna in FIG 2(a) and (b) with corresponding description. The antenna has a shape resembling figure “8” and is positioned on a substrate 220 which has “a center bar and a circumferential frame”. In other words, Yun in FIG 2(b) teaches “comprises a center bar and a circumferential frame (substrate 220) that encompasses a space divided by the center bar such that two windows are provided (cutouts 225 in FIG 2(b)) so that the antenna frame (substrate 220) houses two separate antennas (paragraph 0105: first conductive strips 211 extending in a first direction, second conductive strips 212 located at one side of the first conductive strips 211 in a second direction perpendicular to the first direction, forming the first antenna loop L1, and third conductive strips 213 located at the other side of the first conductive strips 211 in the second direction, forming the second antenna loop L2, which is separate from the first antenna loop L1).”
Therefore, since Nishimura does not provide any details regarding construction of the NFC antenna, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Yun NFC antenna construction, in the device of Nishimura simply to fill in where Nishimura is silent and as a design choice with predictable results since, according to the Supreme Court, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
It would have further been obvious to a person of ordinary skill in the art at the effective filing date of the application that since the NFC antenna of Yun has a shape of a figure “8” and the substrate 220 on which the antenna is positioned has two openings 225, to make the housing enclosing the NFC antenna essentially to repeat the shape of the substrate by providing two openings at the places corresponding to the openings in the substrate. Doing so would have allowed to reduce the weight of the antenna assembly as well as the cost of the housing by reducing the amount of material used to construct the housing.
Claims 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019121565 (Nishimura) in view of JP 2009119044 (Tabata) (references are given according to English translation) and further in view of US 20170294825 (Waikar).
Regarding claim 4, this claim depends from claim 1 and is, therefore, rewritten to include the limitations of claim 1:
Nishimura teaches “A near field communication (NFC) system (FIG 1 and 2 and abstract: an NFC antenna 15 placed on the outside of the device enclosure 13, and capable of detecting a radio signal for short-range radio communication, an NFC circuit 16 placed in the device enclosure 13) implemented in a vehicle (this appears to be merely a statement of intended use or environment in which the device is used and thus this recitation has not been given patentable weight. It should be emphasized that “apparatus claims must be structurally distinguishable from the prior art.” In re Danly, 263 F. 2d 844, 847, 120 USPQ 528, 531 (CCPA 1959) it was held that apparatus claims must be distinguished from prior art in terms of structure rather than function. In Hewlett-Packard Co. v Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held that: “Apparatus claims cover what a device is, not what it does” (emphases in original). To emphasize the point further, the court added: “An invention need not operate differently than the prior art to be patentable, but need only be different”. “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” a statement of intended use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).), comprising:
a NFC device with a device housing (abstract: an NFC circuit 16 placed in the device enclosure 13) and an antenna (abstract: an NFC antenna 15),
wherein the NFC device and the antenna are two separate components (abstract: an NFC antenna 15 placed on the outside of the device enclosure 13, and an NFC circuit 16 placed in the device enclosure 13. Thus, two separate components) connected to each other with a flexible connection forwarding currents between the NFC device and the antenna (FIG 1 and 2 and paragraph 0023: The wireless signal detected by the NFC antenna 15 is transmitted via a wire W4. Wire represents “a flexible connection”)…”
Nishimura does not teach “the antenna is reversibly attached to the device housing of the NFC device”, “wherein the antenna is placed into a recess of the device housing when the antenna is attached to the device housing.”
On the other side, Tabata teaches in FIG 1 and paragraph 0009 a metal shelf board 10, which may be equivalent to the wall of “the device housing”, into which panels 30 each incorporating one of the antennas 20 are placed. Paragraph 0020 states that only a single antenna panel may be used. Paragraph 0010: The shelf board 10 has a recess 10a formed on the top surface, and each panel 30 is arranged in the recess 10a (corresponds to the claimed “wherein the antenna is placed into a recess of the device housing when the antenna is attached to the device housing”). Since Tabata does not disclose any specific hardware that would make the attachment of the antenna panel to the shelf board permanent, a person of ordinary skill in the art would have understood that the attachment of the antenna panels to the shelf board is reversible, since it appears that the panels are simply dropped into the recess. This corresponds to claimed “the antenna is reversibly attached to the device housing.”
Therefore, since Nishimura does not disclose the way the antenna 15 is attached onto the device enclosure 13, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Tabata antenna attachment method, in the system of Nishimura with predictable results and simply to fill in where Nishimura is silent since, according to the Supreme Court, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Further, Nishimura does not teach “wherein the device housing has a fastening mechanism”, and “wherein the fastening mechanism is configured to clip the antenna onto the device housing of the NFC device.”
Waikar in FIG 18 with corresponding description in paragraphs 0095 – 0101 teaches attachment of an NFC antenna 220 to a housing (electrical enclosure 54), and specifically teaches “the device housing (electrical enclosure 54 in FIG 18) has a fastening mechanism (paragraph 0099: corresponds to retention device 1804 with an interior side surface 1832 of electrical enclosure 54. More broadly it also includes first and second arms 1814 and 1816 together with first and second legs 1824 and 1826 in FIG 18) such that the antenna is reversibly attached to the device housing of the NFC device (paragraph 0095: antenna cover 1800 is made of nonconductive material, such as plastic and/or rubber, and houses antenna 220 therein. Paragraphs 0098 – 0099: first and second arms 1814 and 1816. Each arm 1814 and 1816 includes a first end 1818 protruding vertically from an interior side surface 1820 of horizontal body portion 1802 and a second end 1822 opposite from first end 1818. Also first and second legs 1824 and 1826. Each leg 1824 and 1826 includes a first end 1828 coupled to a respective second end 1822 of said first and second arms 1814 and 1816, and a second end 1830 configured to be seated against an interior side surface 1832 of electrical enclosure 54. In other words, the attachment of the antenna to the housing is through first and second arms 1814 and 1816, which are made of plastic or rubber. It is implicit that by squeezing these arms toward each other the antenna cover may be removed from the device housing, therefore, “reversibly attached”.)”, and “wherein the fastening mechanism is configured to clip the antenna onto the device housing of the NFC device (paragraph 0095: antenna cover 1800 is made of nonconductive material, such as plastic and/or rubber, and houses antenna 220 therein. Paragraphs 0098 – 0099: first and second arms 1814 and 1816. Each arm 1814 and 1816 includes a first end 1818 protruding vertically from an interior side surface 1820 of horizontal body portion 1802 and a second end 1822 opposite from first end 1818. Also first and second legs 1824 and 1826. Each leg 1824 and 1826 includes a first end 1828 coupled to a respective second end 1822 of said first and second arms 1814 and 1816, and a second end 1830 configured to be seated against an interior side surface 1832 of electrical enclosure 54. In other words, the attachment of the antenna to the housing is through first and second arms 1814 and 1816, or by clipping “the antenna onto the device housing”.).”
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Waikar arrangement for reversible attachment of the NFC antenna to the device housing, in the system of Nishimura and Tabata simply as design choice with predictable results and to fill in where Nishimura is silent, since, according to the Supreme Court, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Regarding claim 8, this claim depends from claim 1 and is, therefore, rewritten to include the limitations of claim 1:
Nishimura teaches “A near field communication (NFC) system (FIG 1 and 2 and abstract: an NFC antenna 15 placed on the outside of the device enclosure 13, and capable of detecting a radio signal for short-range radio communication, an NFC circuit 16 placed in the device enclosure 13) implemented in a vehicle (this appears to be merely a statement of intended use or environment in which the device is used and thus this recitation has not been given patentable weight. It should be emphasized that “apparatus claims must be structurally distinguishable from the prior art.” In re Danly, 263 F. 2d 844, 847, 120 USPQ 528, 531 (CCPA 1959) it was held that apparatus claims must be distinguished from prior art in terms of structure rather than function. In Hewlett-Packard Co. v Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held that: “Apparatus claims cover what a device is, not what it does” (emphases in original). To emphasize the point further, the court added: “An invention need not operate differently than the prior art to be patentable, but need only be different”. “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” a statement of intended use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).), comprising:
a NFC device with a device housing (abstract: an NFC circuit 16 placed in the device enclosure 13) and an antenna (abstract: an NFC antenna 15),
wherein the NFC device and the antenna are two separate components (abstract: an NFC antenna 15 placed on the outside of the device enclosure 13, and an NFC circuit 16 placed in the device enclosure 13. Thus, two separate components) connected to each other with a flexible connection forwarding currents between the NFC device and the antenna (FIG 1 and 2 and paragraph 0023: The wireless signal detected by the NFC antenna 15 is transmitted via a wire W4. Wire represents “a flexible connection”)…”
Nishimura does not teach “the antenna is reversibly attached to the device housing of the NFC device”, “wherein the antenna is placed into a recess of the device housing when the antenna is attached to the device housing.”
On the other side, Tabata teaches in FIG 1 and paragraph 0009 a metal shelf board 10, which may be equivalent to the wall of “the device housing”, into which panels 30 each incorporating one of the antennas 20 are placed. Paragraph 0020 states that only a single antenna panel may be used. Paragraph 0010: The shelf board 10 has a recess 10a formed on the top surface, and each panel 30 is arranged in the recess 10a (corresponds to the claimed “wherein the antenna is placed into a recess of the device housing when the antenna is attached to the device housing”). Since Tabata does not disclose any specific hardware that would make the attachment of the antenna panel to the shelf board permanent, a person of ordinary skill in the art would have understood that the attachment of the antenna panels to the shelf board is reversible, since it appears that the panels are simply dropped into the recess. This corresponds to claimed “the antenna is reversibly attached to the device housing.”
Therefore, since Nishimura does not disclose the way the antenna 15 is attached onto the device enclosure 13, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Tabata antenna attachment method, in the system of Nishimura with predictable results and simply to fill in where Nishimura is silent since, according to the Supreme Court, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Further, Nishimura does not teach “wherein the device housing has a fastening mechanism”, and “wherein the device housing has a snap-in member capable of establishing a snap-fit connection with the antenna housing and/or wherein the antenna housing has a snap-in member capable of establishing a snap-fit connection with the device housing.”
Waikar in FIG 18 with corresponding description in paragraphs 0095 – 0101 teaches attachment of an NFC antenna 220 to a housing (electrical enclosure 54), and specifically teaches “the device housing (electrical enclosure 54 in FIG 18) has a fastening mechanism (paragraph 0099: corresponds to retention device 1804 with an interior side surface 1832 of electrical enclosure 54. More broadly it also includes first and second arms 1814 and 1816 together with first and second legs 1824 and 1826 in FIG 18) such that the antenna is reversibly attached to the device housing of the NFC device (paragraph 0095: antenna cover 1800 is made of nonconductive material, such as plastic and/or rubber, and houses antenna 220 therein. Paragraphs 0098 – 0099: first and second arms 1814 and 1816. Each arm 1814 and 1816 includes a first end 1818 protruding vertically from an interior side surface 1820 of horizontal body portion 1802 and a second end 1822 opposite from first end 1818. Also first and second legs 1824 and 1826. Each leg 1824 and 1826 includes a first end 1828 coupled to a respective second end 1822 of said first and second arms 1814 and 1816, and a second end 1830 configured to be seated against an interior side surface 1832 of electrical enclosure 54. In other words, the attachment of the antenna to the housing is through first and second arms 1814 and 1816, which are made of plastic or rubber. It is implicit that by squeezing these arms toward each other the antenna cover may be removed from the device housing, therefore, “reversibly attached”.)”, and “wherein the antenna housing (paragraph 0095: antenna cover 1800 is made of nonconductive material, such as plastic and/or rubber, and houses antenna 220 therein.) has a snap-in member capable of establishing a snap-fit connection with the device housing (Paragraphs 0098 – 0099: first and second arms 1814 and 1816. Each arm 1814 and 1816 includes a first end 1818 protruding vertically from an interior side surface 1820 of horizontal body portion 1802 and a second end 1822 opposite from first end 1818. Also first and second legs 1824 and 1826. Each leg 1824 and 1826 includes a first end 1828 coupled to a respective second end 1822 of said first and second arms 1814 and 1816, and a second end 1830 configured to be seated against an interior side surface 1832 of electrical enclosure 54. It is implicit that during installation, when the antenna assembly is pushed through the opening in the housing 54, “a snap-fit connection” is established. In other words, each of the combination of first and second arms 1814 and 1816, their respective first and second ends 1818 and 1822 and first and second legs 1824 and 1826 corresponds to the recited “snap-in member capable of establishing a snap-fit connection with the device housing”.).”
Therefore, since Nishimura does not teach how the antenna is attached to the device enclosure, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Waikar arrangement for a snap-in attachment of the NFC antenna housing to the device housing, in the system of Nishimura and Tabata simply as design choice with predictable results and to fill in where Nishimura is silent, since, according to the Supreme Court, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
With respect to the limitation “wherein the device housing has a snap-in member capable of establishing a snap-fit connection with the antenna housing”, this limitation is recited on alternative basis with the limitation “wherein the antenna housing has a snap-in member capable of establishing a snap-fit connection with the device housing.” Since the claim is written in the alternative form (“A and/or B”), it is sufficient to meet at least one of the limitations “A” or “B” in the claim to meet the limitations of the whole claim. In this case the limitation “B” is met.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/GENNADIY TSVEY/ Primary Examiner, Art Unit 2648