Clark, John J. et al.

Patent Trials and Appeals Board

Nov 20, 2020

2019004302 (P.T.A.B. Nov. 20, 2020)

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.
15/426,101 02/07/2017 John J. Clark 111693.00108(T-
RS-00104)
8153
112985 7590 11/20/2020
Arent Fox LLP
1717 K Street, NW
Washington, DC 20006-5344
EXAMINER
GIRMA, FEKADESELASS
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
11/20/2020 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):
fbarrison@foxrothschild.com
fbarrison@foxrothschild.com
fbarrison@foxrothschild.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte JOHN J. CLARK and JAMES A. COOK

Appeal 2019-004302
Application 15/426,101
Technology Center 2600

Before CARL L. SILVERMAN, NORMAN H. BEAMER, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. Appeal Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
SENSORMATIC ELECTRONICS LLC. Appeal Br. 3.
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Application 15/426,101

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CLAIMED SUBJECT MATTER
The claimed invention generally relates to a method for detecting a
security tag. Appeal Br. 7.
Independent claim 1 is illustrative:
1. A method for detecting a security tag, comprising:
detecting motion of the security tag while in use to protect an
article from unauthorized removal from a protected area; and
emitting a first waveform from a radiating device of the security
tag in response to the motion's detection, the first waveform
having characteristics selected (a) to be within a range
detectable by an Electronic Article Surveillance ("EAS")
monitoring system and (b) for causing an alarm issuance by the
EAS monitoring system;
wherein the radiating device comprises a device other than an
EAS element, a Radio Frequency Identification ("RFID")
device and a Near Field Communication ("NFC") enabled
device; and
wherein the device comprises at least one of a sound generator,
an antenna, a magnetic component, a piezo component, and a
metallic component.
Appeal Br. 16 (Claims App.). Independent claim 11 recites a security tag
having limitations similar to that of claim 1. Id. at 18. Dependent claims 2–
10 and 12–20 each incorporate the limitations of their respective
independent claims. Id. at 28–36.
REFERENCES
Name Reference Date
Holm et al.
(Holm)
US 2010/0039280 A1 Feb. 18, 2010
Shafer et al.
(Shafer)
US 2014/0351098 A1 Nov. 27, 2014

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REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 103 as being obvious over
the combined teachings and suggestions of Shafer and Holm.

OPINION
With respect to claim 1, the issues are (1) whether the combination of
applied references teaches or suggests the limitation
emitting a first waveform from a radiating device of the security
tag in response to the motion's detection, the first waveform
having characteristics selected (a) to be within a range
detectable by an Electronic Article Surveillance (“EAS”)
monitoring system and (b) for causing an alarm issuance by the
EAS monitoring system.
(hereinafter, the “contested limitation”), and (2) whether there is sufficient
reason to combine the references. Appeal Br. 13–14; Reply Br 1–3.
The Examiner finds Shafer to describe a monitoring device that
responds to motion by transmitting a status message and having an alarm
producing an output in the form of sound, light, or vibration. Final Act. 2–3.
The Examiner further finds Shafer to describe that the monitoring device
includes an antenna for receiving signals from a ping node. Id. at 3. The
Examiner further finds Shafer to teach that a communication device having
wired communication and various wireless protocols wherein ping nodes act
as routers. Id. at 3–4. The Examiner finds these descriptions of Shafer to
teach each limitation of claim 1 except for the contested limitation.
The Examiner finds Holm to describe an asset tag that, in response to
detection motion of the tag, transmitting signals or beacons at a particular
rate, causing movement information to be displayed on a user interface, and
signaling of an alarm. Id. at 5. The Examiner finds the combination of
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Holm and Shafer to teach the contested limitation. The Examiner finds that
the combination would have been obvious to provide an alarm at the
controller to prevent theft of an asset. Id.; Ans. 7 (citing Holm ¶ 6).
Appellant’s first argument is that the contested limitation is not taught
by the combination of Shafer and Holm. Appeal Br. 9–14. Appellant argues
that the combination of Shafer’s status message and Holm’s beacon signals
do not have characteristics to be within a range detectable by an EAS
monitoring system, and are not for causing an alarm issuance by the EAS
system. Id. at 14. Appellant argues that Holm’s remote server is absent of
an EAS gate, and that Holm nowhere teaches an EAS monitoring system.
Id. at 12, 14; Reply Br. 2.
We are not persuaded by Appellant’s arguments. The Examiner has
found Shafer to teach the emission of a status message from a radiating
device in response to the detection of motion, and Holm to teach emission of
a waveform detectable by an EAS monitoring system and causing an alarm
issuance by that system. Final Act. 5–6. We have reviewed each of
Appellant’s arguments that Holm’s system is not an EAS system, and found
them, in total, unpersuasive as to the teachings of the combination. First,
Appellant’s argument that Holm does not use the identical term, “EAS”, is
not persuasive, because it is not necessary for a term to be found ipsis verbis
in the prior art for that element to be taught or suggested. Appellant’s
argument that Holm does not describe an “EAS gate” in its system is not
persuasive, because Appellant has not established, by evidence in the
Specification or elsewhere, that an EAS monitoring system as claimed
necessarily requires an EAS gate. Appellant’s argument that Holm’s use of
beacon technology would be readily understood by one in skilled in the art
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to be “not the same as or equivalent to EAS technology” (Reply Br. 2) is a
factual assertion, requiring factual support and not a mere assertion by
Appellant’s representative in the Reply Brief. See In re Schulze, 346 F.2d
600, 602 (CCPA 1965). In considering whether the combined teachings of
Shafer and Holm teach or suggest a waveform detectable by an EAS system,
we further take into account Appellant’s statement that Shafer is, itself,
using EAS technology in its security tag messaging system. Reply Br. 2.
Considering the entirety of the teachings of the applied references, we are
not persuaded that the Examiner errs in combining the individual teachings
of the references to teach or suggest the alleged invention of claim 1.
Appellant’s second argument is that the Examiner’s reason to
combine Shafer and Holm is no more than generic, conclusory, and based in
hindsight. Reply Br. 2–3. To sufficiently provide a reason to combine under
guiding precedent, “[a] brief explanation may do all that is needed if, for
example, the technology is simple and familiar and the prior art is clear in its
language and easily understood.” Personal Web Techs v. Apple, 848 F.3d
987, 994 (Fed. Cir. 2017). The Examiner has explained the combination to
provide “an alarm at the controller to prevent theft of an asset.” Ans. 7.
Because Appellant states that Shafer’s tag provides only a status message
“for communicating information relating to the tag’s operational state (i.e.,
awake, enabled or fully operational)” in response to movement, the
provision of Holm’s alarm to prevent theft adequately explains the
advantage of combining the teachings and suggestions of Holm and Shafer.
With respect to Appellant’s argument that the combination is merely
reconstructed from Appellant’s disclosure using hindsight, we note that
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[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392 (CCPA 1971).
The Examiner has relied on advantages of the alarming function in
Holm for the reason to combine the features of the references. Ans. 7 (citing
Holm ¶ 6). Appellant has not specifically contested this finding by the
Examiner. Consequently, we agree with the Examiner that the applied
references, viewed by one of ordinary skill in the art, independently provide
a reason to combine the references beyond mere reconstruction of the
disclosed and claimed invention. Accordingly, we are not persuaded that the
Examiner’s determination is based solely upon knowledge gleaned from
Applicant’s disclosure, and therefore are not persuaded that the rejection
improperly relies upon hindsight reconstruction.
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 1. Appellant does not separately argue claims 2–20, rejected over the
same combination of references. Consequently, we sustain the Examiner’s
rejection of those claims. 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
For the above-described reasons, we affirm the Examiner’s
obviousness rejections of claims 1–20.

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Application 15/426,101

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103 Shafer, Holm 1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED