10532231 (B.P.A.I. May. 31, 2012)

Ex Parte Ott

Board of Patent Appeals and InterferencesMay 31, 2012

10532231 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/532,231 01/18/2006 Reinhold Ott 40770-000164/US 8372 30593 7590 06/01/2012 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER LU, SHIRLEY ART UNIT PAPER NUMBER 2612 MAIL DATE DELIVERY MODE 06/01/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte REINHOLD OTT ____________________ Appeal 2010-000887 Application 10/532,231 Technology Center 2600 ____________________ Before DEBRA K. STEPHENS, JEFFREY S. SMITH, and KALYAN K. DESHPANDE, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000887 Application 10/532,231 2 Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Introduction According to Appellant, the invention relates to a retaining component for securing an item from theft. The retaining component comprises a first and second retaining area for fastening the retaining component to a fastening component and the item, respectively. The second retaining area is designed to deform more easily than the first retaining area. Further, the retaining component can be attached to the item using double-sided adhesive strip. (Spec. 1, § Description). STATEMENT OF THE CASE Exemplary Claim Claim 1 is an exemplary claim and is reproduced below: 1. Retaining component for securing an item from theft, the retaining component comprising: a first retaining area for fastening the retaining component to a fastening component; and at least one second retaining area for fastening the retaining component to the item, the second retaining area being designed to be more easily deformable than the first retaining area, wherein the retaining component is attachable to the item using a double-sided adhesive tape and includes an elastically deformable material, the double-sided adhesive tape being ductile. Appeal 2010-000887 Application 10/532,231 3 Prior Art Jagger US 5,433,391 Jul. 18, 1995 Leyden US 5,565,848 Oct. 15, 1996 Hamlin US 5,964,353 Oct. 12, 1999 Hadfield US 6,268,795 B1 Jul. 31, 2001 Zimmermann US 6,436,527 B1 Aug. 20 2002 Rejections (1) Claims 1, 7-18, 20, 22, 25, and 26 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Leyden. (2) Claims 2, 3, 5, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leyden and Hadfield. (3) Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leyden and Zimmermann. (4) Claims 19 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leyden and Hamlin. (5) Claims 24, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leyden and Jagger. We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2009). Appeal 2010-000887 Application 10/532,231 4 ISSUE 1 35 U.S.C. § 102(b): claims 1, 8-18, 20, 22, 25, and 26 Appellant argues their invention as recited in claim 1 is not anticipated by Leyden (App. Br. 10-13). Specifically, Appellant contends the Examiner has misinterpreted the term “elasticity” and that Leyden fails to disclose an “elastically deformable material” (id.). Issue 1: Has the Examiner erred in finding Leyden discloses “wherein the retaining component is attachable to the item using a double- sided adhesive tape and includes an elastically deformable material” as recited in claim 1? ANALYSIS We find Leyden discloses the retaining component includes an elastically deformable material. Specifically, although Appellant argues Leyden discloses the body 62 is made from a thermal setting rubber that will retain different shapes (App. Br. 11-13), Leyden also indicates this is “a preferred form” (col. 6, ll. 39-40). Moreover, Leyden also discloses a conventional plastic flexible material that is reconfigurable but tends to reassume its undeformed state (col. 6, ll. 42-43). Therefore, even if Appellant’s definition of “elastically deformable material” were to be adopted, Leyden discloses “wherein the retaining component is attachable to the item using a double-sided adhesive tape and includes an elastically deformable material” as recited in claim 1. Appellant has not presented any persuasive evidence or argument that a person of ordinary skill would be led in a direction divergent than the path Appeal 2010-000887 Application 10/532,231 5 taken by Appellant as Leyden teaches alternatives. Therefore, we are not persuaded Leyden teaches away from the present invention. Accordingly, the Examiner did not err in finding Leyden discloses the invention as recited in claim 1 and claims 8-18, 20, 22, 25, and 26, not separately argued. Therefore, the Examiner did not err in rejecting claims 1, 8-18, 20, 22, 25, and 26 under 35 U.S.C. § 102(b) for anticipation by Leyden. ISSUE 2 35 U.S.C. § 102(b): claim 7 Appellant argues their invention is not anticipated (App. Br. 13-14). Specifically, Appellant contends the first retaining area is the housing of Leyden and is made of a hard plastic while the second retaining area is the thermal setting rubber (App. Br. 13-14). Issue 2: Has the Examiner erred in finding Leyden discloses “wherein the first retaining area and the second retaining area include the same material” as recited in claim 7? ANALYSIS We agree with and adopt the Examiner’s findings and conclusions as set forth on page 12 of the Answer. Appeal 2010-000887 Application 10/532,231 6 ISSUE 3 35 U.S.C. § 103(a): claims 24, 27, and 28 Appellant assert their invention is not obvious over Leyden and Jagger because the Examiner improperly combined Leyden and Jagger (App. Br. 14-15). Specifically, Appellant contends Jagger relates to a cereal milling machine and is not related to a retaining component for securing items from theft (App. Br. 14). Issue 3: Has the Examiner improperly combined Leyden and Jagger? ANALYSIS We agree with Appellant that Jagger is outside of the inventor’s field of endeavor. Moreover, we also agree that the reference is not reasonably pertinent to the particular problem with which the inventor is involved – securing items from theft by attaching an item to be secured to a retaining system. Accordingly, the Examiner erred in finding the combination of Leyden and Jagger would have taught or suggested the invention as recited in claims 24, 27, and 28. Therefore, the Examiner erred in rejecting claims 24, 27, and 28 under 35 U.S.C. § 103(a) for obviousness over Leyden and Jagger. DECISION The Examiner’s rejection of claims 1, 7-18, 20, 22, 25, and 26 under 35 U.S.C. § 102(b) as being anticipated by Leyden is affirmed. Appeal 2010-000887 Application 10/532,231 7 The Examiner’s rejection of claims 2, 3, 5, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Leyden and Hadfield is affirmed. The Examiner’s rejection of claims 4 and 6 under 35 U.S.C. § 103(a) as being unpatentable over Leyden and Zimmermann is affirmed. The Examiner’s rejection of claims 19 and 21 under 35 U.S.C. § 103(a) as being unpatentable over Leyden and Hamlin is affirmed. The Examiner’s rejection of claims 24, 27, and 28 under 35 U.S.C. § 103(a) as being unpatentable over Leyden and Jagger is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED-IN-PART ELD