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 .
Claim Objections
Claims 1-2, 5-7, 10, and 12-16 are objected to because of the following informalities:
In claim 1, line 4, “an antenna” should read --a transponder antenna-- to avoid confusion and improper antecedent basis with “the transponder antenna” in line 8 and within subsequent claims.
In claim 1, lines 8 and 10, “grove” should read --groove--.
In claim 2, lines 1-2, “the outer protection means” should read --the outer annular protection means-- to avoid confusion and improper antecedent basis.
In claim 2, line 3, “the base ring” should read --the annular base ring-- to avoid confusion and improper antecedent basis.
In claim 2, line 3, “grove” should read --groove--.
In claim 5, line 4, “grove” should read --groove--.
In claim 6, line 3, “grove” should read --groove--.
In claim 7, lines 3-4, instances of “the base ring” should read --the annular base ring-- to avoid confusion and improper antecedent basis.
In claim 10, line 3, “the inner base ring” should read --the annular base ring-- to avoid confusion and improper antecedent basis.
In claim 12, line 2, “the transponder microchip” should read --the microchip-- to avoid confusion and improper antecedent basis.
In claim 13, line 2, “the outer ring” should read --the annular outer cover-- to avoid confusion and improper antecedent basis.
In claim 13, line 3, “one of its sides” should read --a side of the annular outer cover--.
In claim 13, line 3, “the base ring” should read --the annular base ring-- to avoid confusion and improper antecedent basis.
In claim 14, lines 3 and 6, instances of “grove” should read --groove--.
In claim 14, lines 5-6, “the annular antenna” should read --the transponder antenna-- to avoid confusion and improper antecedent basis.
In claim 14, lines 7-8, instance of “the outer grove” should read --the annular outer groove--.
In claim 14, line 8, “the base ring” should read --the annular base ring--.
In claim 14, lines 8-9, the terms “communication transponder” and “transponder” should read --near field communication transponder-- to avoid confusion and improper antecedent basis.
In claim 15, line 3, instances of “the resin” should read --the liquid sealant resin-- to avoid confusion and improper antecedent basis.
In claim 16, lines 3 and 7-8, “the outer annular grove” should read --the annular outer groove-- to avoid confusion and improper antecedent basis.
In claim 16, line 5-6, “the annular antenna” should read --the transponder antenna-- to avoid confusion and improper antecedent basis.
In claim 16, line 6, “grove” should read --groove--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “an outer annular protection means” in claim 1.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 claims “wherein the performance parameters of the transponder antenna are adjusted with additional capacitors according to the base ring diameter to provide a stable data transmission with an external contactless reader, independent of the wearable ring size.” However, it is unclear how the capacitors are incorporated with the transponder antenna to provide for the adjusted performance parameters. The specification fails to provide any wiring diagram or support (see Paragraph [0026]) as to how the incorporation of a plurality of capacitors is capable of performing the cited functions. Thus, the disclosure fails to convey that the inventor had possession of this part of the claimed invention at the time of filing.
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.
Claims 1-16 are 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.
In claim 1, line 3, the term “flat cylindrical inner surface” is confusing considering the terms flat and cylindrical are antithetical to each other -- the term “flat” generally refers to a shape that is not rounded, and the term “cylindrical” generally refers to a shape that is rounded. For the purposes of examination, the term “flat” will be interpreted as referring to a surface free from projections or indentations.
In claim 7, line 3, it is unclear how the phrase “like a tire on a rim” is related to assembling the wearable ring. The phrase renders the claim indefinite because it is unclear whether the limitation is part of the claimed invention, rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
The term “thin layer” in claims 7 and 10 is a relative term which renders the claim indefinite. The term “thin” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The line between a “thin layer” and a “thick layer” would be unclear to a PHOSITA. For the purposes of examination, “a thin layer” will be interpreted as “a layer.”
Claim 11 recites the limitations “the performance parameters”; “the base ring diameter”; and “the wearable ring size”. There is insufficient antecedent basis for these limitations in the claim.
In claim 13, lines 1-2, “the inner surface of the outer ring” has improper antecedent basis, and is confusing considering “an inner surface” was introduced in claim 1, referring to the inner surface of the base ring. For the purposes of examination, the limitation will be interpreted as “an inner surface of the outer ring.”
Claims 2-16 are also rejected due to their dependency.
Claim Rejections - 35 USC § 103
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 1-4, 7, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over McLear (US Publication No. 2018/0343989) in view of An (US Publication No. 2014/0145518).
Regarding claim 1 (as best understood), McLear discloses a wearable ring (wearable terminal 10) for wearing on a user's finger, the wearable ring (10) comprising: an annular base ring (first ring 12) having a flat (smooth/even; see Paragraph [0031]) cylindric inner surface (inner surface of 12); a near field communication transponder (communication unit 26) having a microchip (IC chip 32) and an antenna (antenna 28) mounted on the outer surface (outer surface of 12) of the annular base ring (12); and an outer annular protection means (comprised of second ring 14 and inner adhesive agent 24) covering the transponder antenna (28) and microchip (32), wherein the outer surface (outer surface of 12) of the annular base ring (12) is provided with an annular outer grove (annular groove 16) in which the transponder antenna (28) and the microchip (32) are mounted.
McLear does not teach wherein the transponder antenna and the microchip are sandwiched between two layers of ferrite mounted into the annular grove of the base ring.
However, An teaches wherein an transponder antenna (Figure 6, reception coil parts 220, 240) is sandwiched between two layers of ferrite (magnets 300; see Paragraphs [0069]-[0073]) and mounted into the annular grove of a base (groove within wireless receiver 200).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the ferrite magnets of An to the annular groove of McLear, such that the antenna and microchip of McLear were sandwiched between the layers of ferrite. Doing so would have increased the manufacturability of the wearable ring, by allowing the inner ring and/or outer ring to be comprised of a metal material and would have prevented the formation of eddy currents on the inner/outer ring (see Paragraphs [0009]-[0012] in An).
Regarding claim 2, McLear in view of An teaches the wearable ring according to claim 1, and further teaches (in McLear) wherein the outer protection means (14, 24) is formed by a protection layer (24) made of a hardened sealant liquid positioned in the annular outer grove (16) of the base ring (12).
Regarding claim 3, McLear in view of An teaches the wearable ring according to claim 2, and further teaches (in McLear) wherein the hardened sealant liquid (24) is a resin seal (see Paragraph [0024]), having a contrasting color or an identical color respective to the color of the annular base ring (12; where adhesive agent 24 and the inner ring 12 are necessarily the same color or a different color).
Regarding claim 4, McLear in view of An teaches the wearable ring according to claim 1, and further teaches (in McLear) wherein the transponder antenna (28) is a coiled antenna including a plurality of turns (see Paragraph [0028] and Figures 5-6).
Regarding claim 7 (as best understood), McLear in view of An teaches the wearable ring according to claim 1, and further teaches (in McLear) wherein the outer annular protection means (14, 24) has the shape of an annular outer cover mounted on the base ring (12) like a tire on a rim and glued on the base ring (12) by a thin layer of glue (outer adhesive agent 24; see Figure 8), the communication transponder (26) being encapsulated and protected between the base ring (12) and the annular outer cover (14, 24).
Regarding claim 14, McLear in view of An teaches a method of manufacturing the wearable ring according to claim 2, the method comprising steps of (in McLear): providing the annular base ring (12) having the annular outer grove (16); mounting the near field communication transponder (26) having the annular antenna (28) and the microchip (32) within the annular outer grove (16); and applying the protection layer (24) to cover over the outer grove (16) and over the communication transponder (26) in order to seal the outer grove (16) of the base ring (12) and encapsulate the transponder (26).
Regarding claim 15, McLear in view of An teaches method according to claim 14, and further teaches (in McLear) wherein applying the protection layer (24) comprises applying a liquid sealant resin (see Paragraph [0024]) and curing the resin to harden the resin (see Paragraphs [0030]-[0031]).
Regarding claim 16, McLear in view of An teaches the method of manufacturing the wearable ring according to claim 7, the method comprising steps of (in McLear): providing the annular base ring (12) having the outer annular grove (16); mounting the near field communication transponder (26) having the annular antenna (28) and the microchip (32) into the annular outer grove (16); and mounting and gluing (via second 24) the annular outer cover (14, 24) over the outer annular grove (16).
Claims 5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over McLear (US Publication No. 2018/0343989), An (US Publication No. 2014/0145518), and in further view of Leybourn (US Parent No. 2019/0387848).
Regarding claim 5, McLear in view of An teaches the wearable ring according to claim 1, and further teaches (in McLear) wherein the transponder antenna (28) is a flat antenna Figure 6, 28e-i) flexible substrate 30) and the flexible PCB substrate (30) being wrapped around the annular outer grove (16) of the base ring (12).
McLear in view of An does not teach wherein the transponder antenna is a flat antenna inlay formed by conductive tracks etched on a flexible PCB substrate.
However, Leybourn teaches wherein the transponder antenna is a flat antenna inlay formed by conductive tracks etched on a flexible PCB substrate (see Paragraphs [0016], [0038]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the conductive tracks of McLear as modified by An to be inlayed and etched within the flexible PCB as taught in Leybourn. Doing so would have provided for a thinner transponder, allowing for the ring to also be lighter and thinner (see Paragraphs [0016], [0038] in Leybourn).
Regarding claim 11 (as best understood), McLear in view of An teaches the wearable ring according to claim 1, but does not explicitly teach wherein the performance parameters of the transponder antenna are adjusted with additional capacitors according to the base ring diameter to provide a stable data transmission with an external contactless reader, independent of the wearable ring size.
However, Leybourn teaches wherein the performance parameters of the transponder antenna (Paragraph [0009], coil antenna) are adjusted with additional capacitors (one or more capacitors) according to the base ring diameter (diameter of the antenna coils) to provide a stable data transmission with an external contactless reader (see Paragraph [0043]), independent of the wearable ring size (see Paragraph [0009]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the capacitors of Leybourn to the antenna of McLear as modified by An. Doing so would have allowed for fine tuning of the transponder circuit (see Paragraph [0009] in Leybourn).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over McLear (US Publication No. 2018/0343989), An (US Publication No. 2014/0145518), and in further view of Corum (US Patent No. 4622558).
Regarding claim 6, McLear in view of An teaches the wearable ring according to claim 1, but does not teach wherein the transponder antenna is a toroidal antenna positioned into the annular outer grove of the base ring.
However, Corum teaches wherein an antenna is a toroidal antenna (see Figures 2-3).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have substituted the antenna of McLear as modified by An for the toroidal antenna of Corum according to known methods to yield the predictable results of using an antenna device to receive electromagnetic energy (see cols. 1-2 in Corum).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over McLear (US Publication No. 2018/0343989), An (US Publication No. 2014/0145518), and in further view of von Badinski (US Publication No. 2015/0220109).
Regarding claim 8, McLear in view of An teaches the wearable ring according to claim 1, but does not explicitly teach wherein the annular base ring is formed of a ceramic material, a precious metal, composite plastic or textile materials, a natural material, wood, or leather
However, von Badinski teaches wherein an annular base ring (Figure 4, inner ring portion of 410; Figure 12, 1212) is formed of a ceramic material, a precious metal, composite plastic or textile materials, a natural material, wood, or leather (see Paragraphs [0188], [0194]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have made the selection of a known ring material, such as a precious metal and/or plastic, based on its suitability for its intended use, here being a durable material to form an inner portion of a wearable electronic ring (see Paragraphs [0188], [0194] in von Badinski). MPEP § 2144.07 and Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Regarding claim 9, McLear in view of An teaches the wearable ring according to claim 7, and further teaches (in McLear) wherein the annular outer cover (14) is a decoration and protection ring (see Figures 1-3), but does not teach wherein the annual outer cover is made of a precious metal, a colored ceramic, a ceramic-metal oxide mixture, or natural or painted wood.
However, von Badinski teaches an annular outer cover (Figure 4, outer ring portion of 410) is made of a precious metal, a colored ceramic, a ceramic-metal oxide mixture, or natural or painted wood (see Paragraph [0188]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have made the selection of a known ring material, such as a precious metal, based on its suitability for its intended use, here being a durable material to form an inner portion of a wearable electronic ring (see Paragraphs [0188] in von Badinski). MPEP § 2144.07 and Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over McLear (US Publication No. 2018/0343989), An (US Publication No. 2014/0145518), and in further view of Ting (US Publication No. 2016/0020833).
Regarding claim 10 (as best understood), McLear in view of An teaches the wearable ring according to claim 7, and further teaches wherein the thin layer of glue (24) is made of a 26) from corrosion and moisture and bind the inner base ring (12) to the annular outer cover (14; see Paragraph [0024]).
McLear in view of An does not teach wherein the glue is a waterproof epoxy resin able to: protect the transponder from corrosion and moisture.
However, Ting teaches wherein a thin layer of glue (waterproof resin adhesive 030) is made of a waterproof epoxy resin (see Paragraphs [0013]-[0014]) able to: protect the transponder (20) from corrosion and moisture (see Paragraphs [0013]-[0014]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have substituted the glue layer of McLear as modified by An for the waterproof glue layer of Ting according to know methods to yield the predictable results of encapsulating transponder components within a wearable ring. Doing so would have also provided a waterproof resin to the ring, further protecting the inner components (see Paragraphs [0013]-[0014] in Ting).
Regarding the functional limitation “protect the transponder from corrosion and moisture,” since the structure of the wearable ring of McLear as modified by An and Ting is identical to the claimed structure, the wearable ring of McLear as modified by An and Ting is considered to be as capable of performing the function as the claimed invention, absent any claimed structural difference. See MPEP § 2114 I & II, "While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function... A claim containing a 'recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus' if the prior art apparatus teaches all the structural limitations of the claim.” In the instant case, the epoxy resin of McLear as modified by An and Ting forms a physical barrier between the inner components and outer environment, and therefore capable of performing the recited function.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over McLear (US Publication No. 2018/0343989), An (US Publication No. 2014/0145518), and in further view of Lazarev (US Publication No. 2021/0271953).
Regarding claim 12, McLear in view of An teaches the wearable ring according to claim 1, but does not explicitly teach wherein the transponder microchip includes an encryption function in order to encrypt and secure sensitive data to be exchanged between the contactless reader and the wearable ring.
However, Lazarev teaches wherein a transponder microchip (4) includes an encryption function in order to encrypt and secure sensitive data to be exchanged between the contactless reader and the wearable ring (see Figures 1-2 and Paragraph [0025]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the encryption function of Lazarev to the microchip of McLear as modified by An. Doing so would have allowed for a secure connection/transfer of information to be made between the wearable ring and a reading device (see Paragraph [0025] in Lazarev).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over McLear (US Publication No. 2018/0343989), An (US Publication No. 2014/0145518), and in further view of Gafen (US Patent No. 6701618).
Regarding claim 13 (as best understood), McLear in view of An teaches the wearable ring according to claim 7, but does not teach wherein the inner surface of the outer ring presents a local recess on one of its sides and the local recess nudges against an outer edge of the base ring.
However, Gafen teaches a base ring (inner ring 140) and an outer ring (outer ring 120), wherein an inner surface of the outer ring (inner surface of 120) presents a local recess (portion of 120 accommodating rail portions 144) on one of its sides (see Figures 2-5) and the local recess (portion of 120 accommodating rail portions 144) nudges against an outer edge (rail 144) of the base ring (140).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the interlocking engagement taught in Gafen to the base ring and outer ring portions of McLear as modified by An. Doing so would have ensured the inner and outer ring portions were aligned during assembly (see col. 3-4 and Figures 2-5 in Gafen).
Alternatively, claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over McLear (US Publication No. 2018/0343989) in view of Yoshikawa (JP Publication No. 2018148452) and An (US Publication No. 2014/0145518).
Regarding claim 1 (as best understood), McLear discloses a wearable ring (wearable terminal 10) for wearing on a user's finger, the wearable ring (10) comprising: an annular base ring (first ring 12) having a flat (smooth/even; see Paragraph [0031]) cylindric inner surface (inner surface of 12); a near field communication transponder (communication unit 26) having a microchip (IC chip 32) and an antenna (antenna 28) mounted on the outer surface (outer surface of 12) of the annular base ring (12); and an outer annular protection means (second ring 14) covering the transponder antenna (28) and microchip (32), wherein the outer surface (outer surface of 12) of said the annular base ring (12) is provided with an annular outer grove (annular groove 16) in which the transponder antenna (28) and the microchip (32) are mounted.
McLear does not teach wherein the transponder antenna and the microchip are sandwiched between two layers of ferrite mounted into the annular grove of the base ring.
However, Yoshikawa teaches a wearable ring, wherein a transponder antenna (Figure 10, coil 1) and a microchip (RFIC connected to end of coil) are sandwiched between two layers of magnetic material (inner and outer magnetic bodies; see Figure 10 below) and mounted into the annular grove of a base (space within ring, corresponding to 16 in McLear).
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An further teaches wherein a transponder antenna (Figure 6, reception coil parts 220, 240) is sandwiched between two layers of ferrite (magnets 300; see Paragraphs [0069]-[0073]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the magnetic layers of Yoshikawa to the annular groove of McLear, such that the transponder antenna and the microchip of McLear were sandwiched between layers of magnetic, ferrite material, as taught in An. Doing so would have increased the manufacturability of the ring by allowing the inner and/or outer ring to be comprised of a metal material and would have prevented the formation of eddy currents on the inner/outer ring, while providing for/maintaining good antenna communication characteristics (see pages 6-7 in Yoshikawa; see Paragraphs [0009]-[0012] in An).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have made the selection of a known magnetic material, such as ferrite, based on its suitability for its intended use, here being a magnetic material used to direct magnetic fields to enhance antenna communication (see pages 6-7 in Yoshikawa; see Paragraphs [0009]-[0012] in An). MPEP § 2144.07 and Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Alternatively, claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over McLear (US Publication No. 2018/0343989) in view of Yoshikawa (JP Publication No. 2018148452) and Wai (US Publication No. 2023/0043018).
Regarding claim 1 (as best understood), McLear discloses a wearable ring (wearable terminal 10) for wearing on a user's finger, the wearable ring (10) comprising: an annular base ring (first ring 12) having a flat (smooth/even; see Paragraph [0031]) cylindric inner surface (inner surface of 12); a near field communication transponder (communication unit 26) having a microchip (IC chip 32) and an antenna (antenna 28) mounted on the outer surface (outer surface of 12) of the annular base ring (12); and an outer annular protection means (second ring 14) covering the transponder antenna (28) and microchip (32), wherein the outer surface (outer surface of 12) of said the annular base ring (12) is provided with an annular outer grove (annular groove 16) in which the transponder antenna (28) and the microchip (32) are mounted.
McLear does not teach wherein the transponder antenna and the microchip are sandwiched between two layers of ferrite mounted into the annular grove of the base ring.
However, Yoshikawa teaches a wearable ring, wherein a transponder antenna (Figure 7, coil 5; Figure 10, coil) and a microchip (RFIC connected to end of coil) are sandwiched between two layers of magnetic material (inner and outer magnetic bodies; see Figure 10 above) and mounted into the annular grove of a base (space within ring, corresponding to 16 in McLear).
Wai further teaches wherein a transponder (Figures 11-16, NFC components 52-58) is covered by two layers of ferrite (ferrite sheets 74, 76; see Paragraph [0078]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the magnetic layers of Yoshikawa to the annular groove of McLear, such that the transponder antenna and the microchip of McLear were sandwiched between layers of magnetic, ferrite material, as taught in Wai. Doing so would have allowed the inner and/or outer ring to be comprised of a metal material, while providing for/maintaining efficient antenna communication characteristics (see pages 6-7 in Yoshikawa; see Paragraph [0078] in Wai).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have made the selection of a known magnetic material, such as ferrite, based on its suitability for its intended use, here being a magnetic material used to direct magnetic fields to enhance antenna communication (see pages 6-7 in Yoshikawa; see Paragraph [0078] in Wai). MPEP § 2144.07 and Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Publication No. 20150303561, 20170277990, 20180089478, 20180120891, 20190181544, 20200373072, 20210037932, 20230043018, and 20230112231 also teach ring structures and magnetic layers similar to the claimed device.
US Patent No. 9805530, 10855335, and 11967830 also teach ring structures and magnetic layers similar to the claimed device.
US Publication No. 20030179151 and JP Publication No. 2010176358 also teach magnetic shielding layers sandwiching a transponder.
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/GAGE CRUM/Examiner, Art Unit 2841
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