Ex Parte Held

Patent Trial and Appeal Board

Jul 29, 2016

11741629 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
111741,629
22442 7590
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
FILING DATE FIRST NAMED INVENTOR
04/27/2007 Philippe Held
08/02/2016
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
5607-6-PUS 3365
EXAMINER
LAU, HO! CHING
ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
08/02/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
e-docket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE HELD
Appeal2015-001127
Application 11/741,629 1
Technology Center 2600
Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS-MERCADER, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter new grounds of rejection under 37 C.F.R.
§ 41.50(b).
STATEMENT OF THE CASE
Appellant's invention concerns a security sealing device including a
sealing element, an integrated circuit, and an antenna connected to the
integrated circuit. The integrated circuit and antenna together form an RFID
1 The real party in interest is Assa Abloy AB.
Appeal2015-001127
Application 11/741,629
circuit. The sealing element of the security sealing device is conductive and
forms a part of the antenna (Abstract).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A security sealing device, comprising:
an integrated circuit; and
an antenna connected to said integrated circuit, said
integrated circuit and said antenna forming a Radio Frequency
Identification (RFID) circuit, wherein a part of said antenna
forms a sealing element, wherein the sealing element is a
radiative portion of the antenna and contributes to an effective
area of a loop formed by the antenna thereby increasing a
magnetic field generated by the antenna, the effective area of
the loop being used to communicate data with a reader.
REJECTIONS
Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lindsay (US 2005/0242950 1A..l; pub. Nov. 3, 2005) and
Sakae (US 7 ,084,825 B2; iss. Aug. 1, 2006).
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lindsay in view of Ahlf (US 7,098,792 B2; iss. Aug. 29,
2006).
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lindsay in view of Kawai (US 2002/0024439 Al; pub.
Feb. 28, 2002).
ISSUES
Appellant argues that the combination of Lindsay and Sakae does not
disclose a sealing element that is a radiative portion of the antenna and
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Application 11/741,629
contributes to an effective area of a loop formed by the antenna. App. Br. 6-
7. Appellant further asserts that the Examiner proposes to modify Lindsay
in contradiction of its explicit teachings. App. Br. 7-8. Appellant contends
that there is no reasonable motivation to combine Lindsay and Sakae. App.
Br. 9-10. Appellant further argues that various dependent claim limitations
are not taught by the references. App. Br. 10-16.
Appellants' contentions present us with the following issues:
1. Does the combination of Lindsay and Sakae disclose a sealing
element that is a radiative portion of the antenna and contributes to an
effective area of a loop formed by the antenna?
2. Is the Examiner's proposed combination contrary to Lindsay's
explicit teachings?
3. Do the combined teachings of Lindsay and Sakae suggest to the
skilled artisan the desirability of employing the sealing element as a
radiative portion of the antenna?
PRINCIPLES OF LAW
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results. KSR
Int'! v. Teleflex Inc., 550 U.S. 398, 401 (2007) (quoting Great Atlantic &
Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152
(1950)).
ANALYSIS
CLAIMS 1, 2, AND 10-13
We do not agree with Appellant's characterization of Sakae as failing
to "overcome the shortcomings of Lindsay." App. Br. 7. Appellant's
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Application 11/741,629
Figure 2B of Sakae is an exploded view of antenna 1. Feeding
element 30 is electrically connected to feeder lead 34 by soldering. Sakae
col. 3, 11. 24--25. A region around feeder end B, i.e., a region around feeder
lead 34 is a region in which a loop of a standing-wave current exists, and in
which a magnetic field occurring due to the antenna becomes largest. Sakae
col. 4, 11. 1--4.
The Examiner cited Sakae for its disclosure of an antenna, similar to
Lindsay's antenna, where the antenna end, again similar to Lindsay, is a
radiative portion and contributes to an effective area of a loop formed by the
antenna. See Final Act.. 3.
We do not agree with Appellant's further contention that the
Examiner's proposed combination contradicts the explicit teachings of
Lindsay. App. Br. 7. Appellant argues against what "the Examiner appears
to argue," specifically the idea that the conductive leads 406 of Lindsay
could be placed on Lindsay's bottle cap, or antenna 404 could be moved off
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Application 11/741,629
of the bottle cap. App. Br. 8. Appellant argues Lindsay requires the
conductive leads to be breakable, thus, if the conductive leads are on the top
of the bottle cap, tampering with the cap would not be detectable. Id.
However, we agree instead with the Examiner, who suggests that the
conductive leads 406 and connection portion of Lindsay may be modified as
"additional conductive and radiative element[ sic] for the antenna ... thereby
increasing a magnetic field generated by the antenna." Ans. 5---6. Contrary
to Appellant's remarks, the Examiner explicitly states that "[t]he rejection is
not intended to relocate any electronic components." Ans. 5.
We also agree with the Examiner's conclusion that the combined
teachings of Lindsay and Sakae would have suggested to the skilled artisan
the desirability of employing the sealing element as a radiative portion of the
antenna. We agree with the Examiner that this modification would increase
the effective area of the loop, thus increasing the magnitude of the magnetic
field generated by the antenna. Ans. 7; Sakae col. 4, 11. 1-5. In view of
these combined teachings, Appellant's arguments against individual
references are not persuasive to show error. Appellant's conjecture
concerning modifying Lindsay in conflict with its teachings is also
unpersuasive. The Examiner states unequivocally that "[t]he rejection is not
intended to relocate any electronic components." Ans. 7.
Because we conclude that the Examiner did not err in rejecting claim
1 as being obvious over Lindsay and Sakae, we sustain the Examiner's § 103
rejection. We also sustain the§ 103 rejection of claims 2 and 10-13, not
separately argued with particularity.
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Application 11/741,629
CLAIMS 3 AND 9
Appellant's argument regarding claim 3 is not persuasive. App. Br.
10-11. We agree with the Examiner that Lindsay discloses a pair of
conductive elements, the free ends of which comprise respective first and
second connecting points. Ans. 8. We sustain the Examiner's § 103
rejection of claim 3, as well as the rejection of claim 9, not separately argued
with particularity.
CLAIMS4-8
Appellant's arguments with respect to these claims are unpersuasive.
App. Br. 11. With regard to claim 4, we agree with the Examiner that the
type of physical connection element between the partial antenna and sealing
element of Lindsay would have been an obvious matter of design choice,
involving the use of familiar elements according to known methods to
achieve predictable results. Ans. 9. As noted by the Examiner, the claim
does not disclose the criticality of any particular connector. Id. With regard
to claims 5 and 6, we also agree with the Examiner that a connector
permanently attached to the housing, or to the sealing element, would have
been obvious for similar reasons, given the Examiner's finding that the
connection elements of Lindsay are also permanently attached to the cap or
bottle respectively. Ans. 10. With respect to claim 8, adding a second
connector would have been obvious for the reasons given with respect to
claim 4 supra.
With respect to claim 7, we agree with the Examiner that a connector
performing tamper-evident or locking functions would also have been
obvious. Lindsay discloses the desirability of detecting and preventing
product tampering. As we discussed with respect to claim 4 supra, adding a
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particular physical connector would have been obvious as a matter of design
choice. Ans. 12-13.
CLAIM 14
Claim 14 depends from claim 1, which stands rejected over Lindsay
and Sakae. Because the Examiner's § 103 rejection of claim 14 over
Lindsay and Ahlf does not include the teachings of Sakae, which are
necessary to reject parent claim 1, we do not sustain the Examiner's
rejection.
CLAIM 15
Claim 15 depends from claim 1, which stands rejected over Lindsay
and Sakae. Because the Examiner's § 103 rejection of claim 15 over
Lindsay and Kawai does not include the teachings of Sakae, which are
necessary to reject parent claim 1, we do not sustain the Examiner's
rejection.
NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter new grounds of rejection
for claims 14 and 15.
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lindsay, Sakae, and Ahlf. The combination of Lindsay and Sakae does
not explicitly disclose a sealing element comprising a length between 1 cm
and 5 m. Ahlf discloses a sealing element having a length between 1 cm and
5 m - conductive trace 22, disclosed as having a length of 2. 7 55 inches.
Ahlf col. 5, 1. 20-col. 6, 1. 17. It would have been obvious to one of ordinary
skill in the art at the time the invention was made to modify the sealing
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Application 11/741,629
element of Lindsay to include a sealing element such as taught by Ahlf~ of
the disclosed length or of another length, as a matter of design choice,
according to the specific requirements and configuration of the invention, for
example the size of the housing or the desired communication range.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lindsay, Sakae, and Kawai. The combination of Lindsay and Sakae
does not explicitly disclose the housing having a diameter from 5 mm to 500
mm. However, Kawai discloses a casing for an RFID circuit having an
outside diameter of 30 mm. Kawai i-f 58. It would have been obvious to one
having ordinary skill in the art to implement the housing structure sized as in
Kawai, in the device of Lindsay, as a matter of design choice, depending on
the specific application desired by the skilled artisan. We note there is no
criticality disclosed regarding the particular size of the housing.
CONCLUSIONS
1. The combination of Lindsay and Sakae discloses a sealing element
that is a radiative portion of the antenna and contributes to an effective area
of a loop formed by the antenna.
2. The Examiner's proposed combination is not contrary to Lindsay's
explicit teachings.
3. The combined teachings of Lindsay and Sakae suggest to the
skilled artisan the desirability of employing the sealing element as a
radiative portion of the antenna.
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Application 11/741,629
DECISION
The Examiner's decision rejecting claims 1-13 is affirmed. The
Examiner's decision rejecting claims 14 and 15 is reversed.
TIME PERIOD
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that a decision including a new ground of
rejection shall not be considered final for purposes of judicial review.
With respect to the affirmed rejection, Appellant may file a single
request for rehearing within two months from the date of this decision under
§ 41.52(a)(l).
With respect to the new grounds of rejection, the Appellant, within
two months from the date of this decision, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of proceedings (37 C.F.R. § § 41.50(b)) as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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