DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-12 are presented for examination on the merits.
Claim Rejections - 35 USC § 102
2. 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 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.
3. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
4. Claims 1-5, 7, 9 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Debates (US 9754137 B2).
As to claim 1, Debates discloses in on-demand activation of radio frequency identification (rfid) tag having claimed:
a. a carrier structure, comprising: a carrier read on Col. 4, Lines 17-32 and Col. 8, Lines 56-67, (example RFID environment 100 includes a radio frequency identification (RFID) tag 102 having an integrated circuit (IC) 104 and an antenna 106, an electronic device 108 having an RFID reader 110, an interrogation signal 112, and a response signal 114. FIG. 3-2 depicts additional example RFID tag implementations for on-demand activation of RFID tags in accordance with one or more embodiments. For example embodiments, RFID tag 102(1)-2 includes (i) an RFID substrate 202 having a first RFID substrate side 202(1) and a second RFID substrate side 202(2) and (ii) a removable temporary adhesive protector 304-1. Second RFID substrate side 202(2) includes an antenna 106 having a first antenna end 206(1) and a second antenna end 206(2));
b. an antenna structure on the carrier; a reception region designed for removable reception of an RF chip, the reception region being arranged relative to the antenna structure in such a way that inductive coupling to the antenna structure is enabled when the RF chip is arranged in the reception region read on Col. 6, Lines 30-35 and Col. 8, Lines 56-67, (an RFID substrate of an RFID tag may be adhered to another object, such as in a shipping or product label usage scenario; may be incorporated into another object, such as packaging material or a medical implement; may comprise an object having another purpose, such as for storage or shipping; and so forth. FIG. 3-2 depicts additional example RFID tag implementations for on-demand activation of RFID tags in accordance with one or more embodiments. For example embodiments, RFID tag 102(1)-2 includes (i) an RFID substrate 202 having a first RFID substrate side 202(1) and a second RFID substrate side 202(2) and (ii) a removable temporary adhesive protector 304-1. Second RFID substrate side 202(2) includes an antenna 106 having a first antenna end 206(1) and a second antenna end 206(2));
c. an inductive blocking element on the carrier, which in a first position of the inductive blocking element blocks communication with the RF chip using the antenna structure and in a second position of the inductive blocking element enables communication with the RF chip using the antenna structure read on Col. 6, Line 54 – Col. 7, Line 7, (disable tab 304 is detachably attached to RFID tag 102(1). RFID tag 102(1) is in an inactive state if disable tab 304 is attached, but RFID tag 102(1) is in an active state if disable tab 304 is detached from RFID tag 102(1). Activation circuitry 302, based at least partially on if disable tab 304 is attached to RFID tag 102(1), places RFID tag 102(1) in, or causes RFID tag 102(1) to be in, an active state or an inactive state. With an active state, RFID tag 102(1) is responsive to an interrogation signal. With an inactive state, RFID tag 102(1) is not responsive to an interrogation signal. In operation, RFID tag 102(1) may be manufactured to be in an inactive state due to the presence of disable tab 304. To activate RFID tag 102(1) on-demand, a person or end-user may detach disable tab 304. Detachment of disable tab 304 (e.g., separation, tearing, removal, etc. of disable tab 304 from RFID tag 102(1)) may be partial or may be complete. Detachment of disable tab 304 (e.g., dislocation, peeling back, withdrawal, etc. of disable tab 304 from RFID tag 102(1)) may be permanent or may be subject to re-attachment to deactivate RFID tag 102(1)).
As to claim 2, Debates further discloses:
a. wherein the inductive blocking element contains an electrically conductive surface, in particular a metal surface read on Col. 7, Line 62 – Col. 8, Line 12, (temporary adhesive protector 304-1 is an example implementation of a disable tab 304 (e.g., of FIG. 3). Temporary adhesive protector 304-1 includes at least one conductive element 314 and is adapted to cover adhesive 310, at least until a person wishes to adhere RFID tag 102(1)-1 to another object. Alternatively, a disable tab 304 may be attached to an RFID tag using a different mechanism than an adhesive, such as a perforated tear-able material, a break-away material, and so forth. A circuit element 312 may comprise, for example, a pad, a connective circuit element, a one or two-dimensional conductive element, an electrical contact, or some combination thereof. Operability input 316 may comprise, for example, a reset input, a chip enable input, a standby input, or some combination thereof. Connective circuit element 320 may comprise, for example, a conductive material connecting two or more other circuit elements, a trace, a lead line, a wire, a portion of a bus, or some combination thereof).
As to claim 3, Debates further discloses:
a. wherein the inductive blocking element includes an electrically closed turn, which in the first position is positioned so that it blocks communication with the RF chip using the antenna structure and in a second position of the inductive blocking element enables communication with the RF chip using the antenna structure read on Col. 6, Line 56 – Col. 7, Line 7, (disable tab 304 is detachably attached to RFID tag 102(1). RFID tag 102(1) is in an inactive state if disable tab 304 is attached, but RFID tag 102(1) is in an active state if disable tab 304 is detached from RFID tag 102(1). Activation circuitry 302, based at least partially on if disable tab 304 is attached to RFID tag 102(1), places RFID tag 102(1) in, or causes RFID tag 102(1) to be in, an active state or an inactive state. With an active state, RFID tag 102(1) is responsive to an interrogation signal. With an inactive state, RFID tag 102(1) is not responsive to an interrogation signal. In operation, RFID tag 102(1) may be manufactured to be in an inactive state due to the presence of disable tab 304. To activate RFID tag 102(1) on-demand, a person or end-user may detach disable tab 304. Detachment of disable tab 304 (e.g., separation, tearing, removal, etc. of disable tab 304 from RFID tag 102(1)) may be partial or may be complete. Detachment of disable tab 304 (e.g., dislocation, peeling back, withdrawal, etc. of disable tab 304 from RFID tag 102(1)) may be permanent or may be subject to re-attachment to deactivate RFID tag 102(1)).
As to claim 4, Debates further discloses:
a. wherein the inductive blocking element has a single low-resistance closed turn, electromagnetic energy is drawn from the antenna structure in the first position read on Col. 6, Lines 43-54, (FIG. 3 illustrates an example RFID tag 102(1) for implementations of on-demand RFID tag activation in accordance with one or more embodiments. As illustrated in logical or block diagram form, example RFID tag 102(1) includes an RFID substrate 202, an IC 104, an antenna 106, activation circuitry 302, and a disable tab 304. IC 104 is coupled to antenna 106 or activation circuitry 302; antenna 106 is coupled to IC 104 or activation circuitry 302; and activation circuitry 302 is coupled to IC 104 or antenna 106. Disable tab 304 may be included as part of or may be separate from RFID substrate 202).
As to claim 5, Debates further discloses:
a. wherein the inductive blocking element has a half-turn, which is electrically separated from a second half-turn in the first position and is electrically connected thereto in the second position read on Col. 5, Lines 39-55 and Col. 8, Lines 13-27, ( First antenna terminal 204(1) of IC 104 is coupled to first antenna end 206(1) of antenna 106, and second antenna terminal 204(2) of IC 104 is coupled to second antenna end 206(2) of antenna 106. Antenna 106 enables IC 104 to receive or send wireless signals for RFID tag 102. First antenna end 206(1) is coupled to first antenna terminal 204(1) of IC 104, and second antenna end 206(2) is coupled to second antenna terminal 204(2) of IC 104. First circuit element 312(1) is coupled (e.g., via connective circuit element 320) to operability input 316 of IC 104. Second circuit element 312(2) is coupled to ground node 318. For an inactive state of RFID tag 102(1)-1 in which IC 104 is incapable of responding to an interrogation signal 112 (e.g., of FIG. 1), temporary adhesive protector 304-1 is flipped over and positioned (i) such that temporary adhesive protector 304-1 covers adhesive portion 310 (e.g., adhesive portion 310 on the left side of first RFID substrate side 202(1) of FIG. 3-1) and (ii) such that conductive element 314 contacts first circuit element 312(1) and second circuit element 312(2)).
As to claim 7, Debates further discloses:
a. wherein the antenna structure has two respectively spiral antenna parts read on Col. 8, Line 56 – Col. 9, Line 6, (an RFID substrate 202 having a first RFID substrate side 202(1) and a second RFID substrate side 202(2) and (ii) a removable temporary adhesive protector 304-1. Second RFID substrate side 202(2) includes an antenna 106 having a first antenna end 206(1) and a second antenna end 206(2). First RFID substrate side 202(1) includes an IC 104, at least one adhesive portion 310, at least one circuit element 312 that is part of activation circuitry 302 (e.g., of FIG. 3), a ground node 318, and a connective circuit element 320).
As to claim 9, Debates further discloses:
a. wherein the carrier is folded in the first position, while the carrier is not folded in the second position Col. 6, Lines 54-67, (For example embodiments, disable tab 304 is detachably attached to RFID tag 102(1). RFID tag 102(1) is in an inactive state if disable tab 304 is attached, but RFID tag 102(1) is in an active state if disable tab 304 is detached from RFID tag 102(1). Activation circuitry 302, based at least partially on if disable tab 304 is attached to RFID tag 102(1), places RFID tag 102(1) in, or causes RFID tag 102(1) to be in, an active state or an inactive state. With an active state, RFID tag 102(1) is responsive to an interrogation signal. With an inactive state, RFID tag 102(1) is not responsive to an interrogation signal).
As to claim 11, Debates further discloses:
a. wherein the reception region is adapted to receive a chip card, which has the RF chip read on Col. 6, Lines 30-35 and Col. 8, Lines 56-67, (an RFID substrate of an RFID tag may be adhered to another object, such as in a shipping or product label usage scenario; may be incorporated into another object, such as packaging material or a medical implement; may comprise an object having another purpose, such as for storage or shipping; and so forth.
Claim Rejections - 35 USC § 103
5. 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 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.
6. 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 of this title, 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.
7. Claim 6, 8, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Debates in view of Harney (CA 3147212 A1).
As to claim 6, Debates does not explicitly recite where a reception apparatus for a cellphone.
However, Harney in RFID signal repeater system includes a RFID repeater circuit and a housing body cures this deficiency by teaching that it may be beneficial wherein a reception apparatus for a cellphone read on page 46, (database via a network. It should be noted that the external RFID device may be any device configured with an appropriate controller, memory and RFID interface (i.e. RFID and or NFC) for reading and or writing to an RFID device, and preferably also configured with a mobile network interface).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention was filed to incorporate the radio frequency signal repeater system of Harney into Debates in order to provide external RFID repeater can be tuned to transmit and receive RFID communications to and from RFID antenna contained within an electromagnetically shielding
metal housing of a pluggable transceiver through an aperture.
As to claim 8, Harney further teaches:
a. wherein the antenna parts are electrically connected to one another by a connecting line read on Page 99, (a plane defining the first housing portion and a plane defining the second housing portion further define a non-zero angle therebetween. The electrical circuit 160 can be curved and/or flexed to make the electrical connection between the non-planar first and second housing portions).
As to claim 10, Harney further teaches:
a. wherein the carrier is cellulose-based read on Page 91, ( the substrate 110 can be a substantially rigid assembly, such as a single layer, or multi-layer, fiber glass epoxy based PCBA that includes dielectric materials and containing and/or supporting RFID antenna electrical circuits. For example, the thickness of a typical 2-layer PCB substrate can be approximately 1.6mm. In an alternative embodiment, the substrate 110 can be a flexible assembly, for example an assembly consisting of flexible plastic film or sheet materials such as polyester (polyethylene terephthalate PET or PETE), polyimide, etc., laminated together containing and or supporting RFID antenna electrical circuits. For example, the thickness of a typical 2-layer flex substrate can be approximately in a range of 0.12mm to 0.22mm. Note: Harney teaches the claimed invention except for cellulose-based material. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to select any material from commonly know material since it has been held to be within the general skill of a worker in the art to select a known material, textured, on the basis of its suitability for the intended use as a matter of obvious engineering choice.
As to claim 12, Harney further teaches:
a. n envelope comprising an inductive blocking instrument operable to block an antenna structure that has been introduced into the envelope read on Page 51, (the designated area can be located on the PCBA 32 and provides an RF interface for the external RFID reader 40, said area being configured to enable RFID communications therefrom with the RFID antenna 39 and RFID memory or reader 36. The RF interface may include at least one dielectric interface surrounded by an electromagnetically shielding material such as to create a path for RFID communications between an interior and an exterior of the housing 12. Preferably, the dielectric interface is sized and configured to attenuate and/or block unintended electro-magnetic waves passing through the interface. In the present embodiment, the dielectric interface comprises air, and is defined by aperture 26 formed in a sidewall of the housing 12. In this configuration, the shielding material surrounding the dielectric interface is the metal forming housing. Note: The shielding material attenuates electromagnetic signals regardless of whether the antenna is enclosed within the envelope. Harney teaches a shielding material the claimed invention except for the antenna is enclosed within the envelope. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to enclose the antenna in an envelope and place the shielding material outside of the envelope, since it has been held that rearranging parts of an invention involves only routine skill.
Response to Arguments
8. Applicant's arguments with respect to claims 1-12 have been fully considered but they are not persuasive.
A. Considering claim 1, applicant’s argument are not persuasive, and the rejection of claim 1 as anticipated by DeBates is maintained.
The reception region and adhesive surface are structurally equivalent. Applicant argues that DeBates only discloses an adhesive surface for permanent attachment and lacks a “reception region” for removable placement. This is a narrow interpretation not supported by the broadest reasonable interpretation.
Structure: DeBates disclosure of an RFID substrate 202 (the carrier) that is configured to be “adhered to another object.
Functional reception: The surface of the object to which the tag is adhered serves as a “reception region.” The claim does not require a specific mechanical socket; that merely requires a regions “designed for removable reception.”
DeBates disclosure of removably: DeBates a “removable temporary adhesive protector.” This protector is a structure that allows for the “removable reception” of the assembly on a carrier, as it can be “permanently detached” or “subject to reattachment.”
Inductive coupling is inherent in DeBates :
The applicant argues the DeBates utilize a “direct electrical connection” while the claim requires “inductive coupling. “The argument fails to address the inherent physics or RFID communication disclosed in the reference.
Wireless Interference: While the IC 104 in DeBates is connected to the antenna 106 via terminals, the entire assembly communicates with an external reader 110 via an “interrogation signal” and “response signal.”
Enabling communication: The claim recites that “inductive coupling is enabled when the RD chip is arranged in the reception.”
Inherent functionality: In DeBates, when the “disable tab 304” is removed, the tag moves from an “inactive state” to an “active state” where it becomes “responsive to an interrogation signal.” The mechanical change (moving the tab) directly “enable” the electromagnetic/inductive interaction between the antenna structure and the interrogation environment.
The “disable Tab” discloses the claimed blocking element: The applicant asserts that the disable tab 304 is not reception region or a blocking element. However, the examiner finds that the tab 304 perfectly maps to the structural and functional requirements of the “inductive blocking element” in claim 1.
First position (Blocking): In DeBates, when the disable tab 304 is attached, the tag is in an “inductive state” and “not responsive to an interrogation signal.” This is the claimed “first position” the blocks communication.
Second Position (Enabling): When the tab 304 is detached/removed, the tag is in an “active state.” This is an “active state.” That blocks communication.
Therefore, applicant attempt to distinguish the “reception region” from the “adhesive surface” is a distinction in nomenclature, not in structure function. DeBates disclosure a carrier with an antenna, a region for removable replacement (via adhesive protectors), and a mechanical element (the tab) that selectively blocks or enables inductive communication. Accordingly, every claim limitation of claim 1 is found in DeBates, and the rejection is sustained.
B. Considering claim 12, applicant’s argument are not persuasive, and applicant contention that Harney reference. Applicant argues that Harney reference “teaches away” from the invention is based on a misinterpretation of the prior art structural capabilities and the legal standard for obviousness. The following is examiner’s opinion.
i. Structural identity overrides intended purpose:
a. Applicant argues that Harney’s housing and aperture are designed to facilitate communication, whereas claim 12 requires blocking communication.
b. Functional capability: While Harney’s intended use is to permit specific wavelength through an aperture, the physical structure (the metal shield) is objectively and “inductive blocking instrument.” A structure that is capable of blocking electromagnetic interference inherently satisfies the “operable to block” limitation of claim 12.
ii. Routine rearrangement and broadest reasonable interpretation. The applicant asserts that Harney is “structurally and functionally distinct from the envelope.”
Definition of “envelope”: under broadest interpretation, an envelope is any structure that encloses or surrounds an object. Harney’s pluggable transceiver enclosure/housing structurally surrounds an internal antenna, thus reading on the “envelope” limitation.
Motivation to combine: It would have been obvious to a person of ordinary skill to utilize the shielding properties disclosed in Harney to prevent unauthorized or unintended communication, The modification of an aperture’s size or the replacement od shielding material to switch from “filtering” to “total blocking” is a matter of routine engineering choice and configuration.
C. Failure of the “teaching away” argument: Applicant claims Harney teaches the “opposite” of the invention.
i. Teaching reality: Harney explicitly teaches how to control electromagnetic passage using shielding and apertures. Teaching how to block unintended waves while allowing intended once provides the person of ordinary skill in the art with the exact technical means to achieve the blocking “blocking” recited in claim 12.
ii. Legal stand: A reference does not “teach away” simply because it performs a function more complex than (or in addition to) the claimed invention. Harney’s disclosure of shielding material provides the motivation and the means to arrive at the claim inductive blocking instrument.
Finally, the combination of DaBates (disclosing RFID antenna structure) and Harney (discloses electromagnetic shielding enclosure) renders the subject matter of claim 12 obvious. The applicant has failed to provide evidence of unexpected results or structural limitations that the prior art is incapable of performing.
Citation of pertinent Prior Arts
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: see PTO-892 Notice of References Cited.
Conclusion
10. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Fekadeselassie Girma whose telephone number is (571)270-5886. The examiner can normally be reached on M-F 8:30am - 5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Davetta W. Goins can be reached on (571) 272-2957. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Fekadeselassie Girma/
Primary Examiner Art Unit 2689