John Clark et al.

Patent Trials and Appeals Board

Sep 16, 2020

2020000892 (P.T.A.B. Sep. 16, 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.
15/380,116 12/15/2016 John J. Clark 039636-04814 4819
112985 7590 09/16/2020
Arent Fox LLP
1717 K St. NW
Washington, DC 20006
EXAMINER
YANG, JAMES J
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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 ADAM S. BERGMAN
____________

Appeal 2020-000892
Application 15/380,116
Technology Center 2600
____________

Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
STACY B. MARGOLIES, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21, which constitute all the claims
pending in this application. 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(a). Appellant identifies the real party in interest as
Sensormatic Electronics, LLC. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosure is directed to “Electronic Article Surveillance
(‘EAS’) detection systems” and “implementing systems and methods for
responding to EAS alarm’s issuance resulting from a detection of an active
EAS security tag’s presence in a surveillance zone.” Spec. ¶¶ 1, 4. In
response to determining that a mobile device is within a specific
communication range, “the mobile device receives a user input for inputting
a reason code specifying a reason for the EAS alarm’s issuance.” Spec. ¶ 4.
In response to the reason code, a user of the mobile device may be prompted
“to indicate at least one detail associated with human activities associated
with the EAS alarm’s issuance” and/or “the mobile device’s voice or sound
detection and recognition operations are automatically initiated or enabled.”
Spec. ¶ 5.
Claim 1 is illustrative of the invention and reads as follows:
1. A method for responding to an Electronic Article
Surveillance (“EAS”) alarm’s issuance, comprising:
disabling alarm response functions of a mobile device to
prevent acknowledgement of the EAS alarm by a user of the
mobile device while the user is not in proximity of EAS
equipment issuing the EAS alarm;
receiving, by the mobile device, a short range
communication signal from a fixed device located in proximity
to the EAS equipment issuing the EAS alarm;
in response to the short range communication signal’s
reception, automatically enabling the previously disabled alarm
response functions of the mobile device so that the user of the
mobile device is able to provide acknowledgement of the EAS
alarm to a system;
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receiving, by the mobile device, a user input for inputting
a reason code specifying a reason for the EAS alarm’s issuance;
communicating the reason code from the mobile device
to an external device for causing a deactivation of the EAS
alarm’s issuance;
determining, by the mobile device, whether the reason
code is a certain reason code of a plurality of possible reason
codes; and
automatically activating operations of select input
devices of the mobile device to obtain information about a
surrounding environment in response to a determination that the
reason code is the certain reason code of the plurality of
possible reason codes.
The Examiner’s Rejection
Claims 1–21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shafer (US 2014/0351098 Al; pub. Nov. 27, 2014), Rocas
(US 2014/0126010 Al; pub. May 8, 2014), and Allen (US 2009/0174544 Al;
pub. July 9, 2009). See Final Act. 3–12.

ANALYSIS
With respect to claim 1, the Examiner finds Shafer discloses (1) a
method for responding to an Electronic Article Surveillance (“EAS”)
alarm’s issuance; (2) receiving, by the mobile device, a short range
communication signal from a fixed device located in proximity to the EAS
equipment issuing the EAS alarm; (3) in response to the short range
communication signal’s reception, automatically enabling the previously
disabled alarm response functions of the mobile device so that the user of the
mobile device is able to provide acknowledgement of the EAS alarm to a
system; (4) receiving, by the mobile device, a user input for inputting a
command for the EAS alarm; (5) communicating the command from the
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mobile device to an external device for causing a deactivation of the EAS
alarm’s issuance. Final Act. 3–4 (citing Shafer Figs. 1, 4, 10, ¶¶ 44, 62, 67,
72, 76, 116, 129–131). The Examiner further relies on Rocas as disclosing
“[d]isabling response functions of a mobile device to prevent commands by
a user of the mobile device while the user is not in proximity of equipment
and automatically enabling the previously disabled response functions of the
mobile device.” Final Act 4–5 (citing Rocas ¶¶ 76–77). The Examiner
specifically relies on paragraph 77 of Rocas and concludes that one of
ordinary skill in the art would have modified Shafer with Rocas to ensure
correct operation of the alarm system controlled by a mobile device. Final
Act. 5. For the remaining limitations of claim 1, the Examiner finds Allen
discloses (1) inputting a reason code specifying a reason for the EAS
alarm's issuance; (2) determining whether the reason code is a certain reason
code of a plurality of possible reason codes; and (3) automatically activating
operations of select input devices of the mobile device to obtain information
about a surrounding environment in response to a determination that the
reason code is the certain reason code of the plurality of possible reason
codes. Final Act. 5–6 (citing Allen ¶¶ 33, 35). According to the Examiner,
one of ordinary skill in the art would have modified the Shafer-Rocas
combination with Allen in order “to reduce or eliminate false alarms in
system detection zones.” Final Act. 6 (citing Allen ¶ 9).
Appellant acknowledges the claim features that were found as missing
in Shafer, as specified by the Examiner and outlined above, and contends
that the Examiner erred in relying on Rocas and Allen to cure the
deficiencies of Shafer. See Appeal Br. 10–19.
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Appellant argues “Rocas does not teach that a response function of the
mobile device is selectively disabled by the proximity detection mechanism
(730), but rather an unsafe feature of the multi-function device (104) is
selectively disabled by the proximity detection mechanism (730).” Appeal
Br. 13.
The Examiner responds by explaining:
The teachings of Rocas states that the features of controlling the
multifunction device 104 via the telecommunication device 116
and/or 122 are only disabled when the device user interface 710
is out of range 740, i.e. the user is not within a proximity of
multifunction device 104. Thus, a feature of the
telecommunication device 116 and/or 122 are disabled when
the device(s) is/are out of range, but enabled when the device(s)
is/are in range.
Ans. 3.
We agree with the Examiner that the rejection is based on modifying
Shafer to include the feature Rocas describes as disabling a device user
interface when the device is not within a proximity of the multifunction
device and enabling the previously disabled functions of the user mobile
device when the device is within the proximity of multifunction device. See
Final Act. 4–5. More specifically, the disclosure of Rocas is directed to
wirelessly activating or deactivating the features of a mobile multi-function
device user interface based on user proximity. See Rocas Abstract. As
shown in Figure 7, Rocas determines the distance between multi-function
device 104 and telecommunication device 116 configured with user interface
710 and enables certain previously disabled functions if device 116 is within
programmed range 740. See Rocas ¶¶ 73–75.
We are unpersuaded by Appellant’s argument that Rocas’s teaching is
limited to disabling unsafe features. Rocas discloses that the
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enabling/disabling device functionality may be used for not only “safe”
operation of multi-function device 104 but also for “correct” operation of the
multi-function device. Rocas ¶ 77. Moreover, we observe that the rejection
relies on Shafer as disclosing different information related to the alarm event
and how the user inputs override the alarm (Shafer Fig. 9B, ¶¶ 127–129).
See Final Act. 3–5. We find no error in the Examiner’s reliance on Rocas’s
general teaching of disabling while not within range and automatically
enabling while within range and on Shafer for other aspects of the
“proximity” claim limitations.
Appellant contends the proposed combination would render Shafer
inoperable because, in Rocas, “the ‘unsafe’ transmitting feature of the
location beacons (66) are automatically enabled when an alert device (5) is
in proximity thereto, and are automatically disabled when the alert device
(5) is no longer in proximity thereto.” Appeal Br. 14. According to
Appellant, “[s]uch a modification to Shafer’s EAS system renders it
inoperable for its intended purpose” considering that “active EAS tags
would only be detected when an employee in possession of an alert device is
in proximity of the EAS system.” Id. Appellant further argues that the
Examiner’s stated motivation to combine Shafer and Rocas is insufficient
and “[i]t is unclear why one of ordinary skill in the art would look beyond
Shafer to find further information about EAS system operations.” Appeal
Br. 14–15.
In response, the Examiner reiterates that the motivation is “to ensure
correct operation of a device/system controllable by a mobile device.” Ans.
4 (citing Rocas ¶ 77); see Final Act. 5 (same). The Examiner also explains
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that the features of Rocas are added to the functionality of Shafer rather than
replacing the functionality of Shafer. Ans. 4.
Appellant has not persuaded us of error. As explained by the
Examiner (Ans. 4), one of ordinary skill in the art would have understood
that Rocas teaches certain features of a multi-functional device that are
activated or deactivated based on a user device proximity to the multi-
functional device, which may be added to a system like the article tracing
system of Shafer and allow using a user device such as a smart phone as part
of the alert system. Rocas ¶¶ 76–77; Shafer ¶¶ 72–75; see also Final Act. 4–
5. We observe that Appellant’s reference to enabling Shafer’s “‘unsafe’
transmitting feature of the location beacons” based on the teachings of Rocas
(see Appeal Br. 13–14) is not commensurate with the disclosure of the
references. In contrast with Appellant’s discussion of “safety feature
operations” in Rocas (see Reply Br. 2), Rocas considers safety in discussion
of the situations in which the device features are disabled when those
features require the user’s presence “within a visual distance of the device.”
See Rocas ¶ 5. In other words, the safety concern disclosed in Rocas is as to
whether certain functions of a multi-function device (such as a multi-
function printer) may be used remotely. See Rocas ¶¶ 4, 5, 10, 75, 77. By
contrast, the cited passages of Shafer do not disclose a safety concern with
EAS systems, such as transmission signals interfering with medical devices,
as asserted by Appellant. See Shafer ¶¶ 50, 53–55, 80, 117, 118; Appeal Br.
13–14.
As also explained by the Examiner, the disclosure of activating or
deactivating certain features of a system based on the proximity of the user
device in paragraphs 76–78 of Rocas, when considered together with the
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disclosure of the alert system in paragraphs 72–75 of Shafer, does not
change the principle of operation of Shafer with respect to disabling the
alarm response function of the monitoring device. Additionally, the
Supreme Court made clear that when considering obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Furthermore, the skilled
artisan is “a person of ordinary creativity, not an automaton,” and this is a
case in which the skilled artisan would “be able to fit the teachings of
multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 421.
We therefore find the Examiner provided a sufficiently reasonable
motivation for one of ordinary skill in the art to combine Shafer and Rocas
based on the above discussed improvements to Shafer’s system as modified
by Rocas.
Appellant recognizes that Allen discloses an EAS system where a user
provides a reason code using a mobile device. Appeal Br. 15–16. However,
Appellant contends that Allen does not disclose or suggest that the mobile
device determines whether the reason code is a certain reason code of a
plurality of possible reason codes, as required by claim 1. Appeal Br. 16.
According to Appellant, the EAS system controller 106, and not the mobile
device, of Allen analyzes the reason code. Id. Appellant also argues that
there is “no reason apparent from Allen” that the mobile device should be
modified to analyze the reason code and perform actions for adjusting the
EAS system’s sensitivity and that such a modification “would result in
increased cost and complexity.” Appeal Br. 17.
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We are not persuaded. First, the Examiner finds Allen teaches
verifying false alarms by determining whether the reason code is a certain
reason code, whereas “the functions of inputting, analyzing, and determining
based on reason codes as taught by Allen is incorporated into the mobile
device as taught by the combination of Shafer in view of Rocas.” Ans. 4.
Thus, the Examiner does not rely on Allen alone for teaching “determining,
by the mobile device, whether the reason code is a certain reason code of a
plurality of possible reason codes.” Second, we agree with the Examiner
that nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See Id.; In re Keller, 642 F.2d 413, 425 (CCPA 1981) and In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the proposed
combination is based on modifying the EAS system of Shafer-Rocas
including the disclosed use of a mobile device with the teachings of Allen
with respect to evaluating the reason code. In other words, Allen’s stated
benefit of analyzing the entered reason code to more accurately adjust the
EAS system’s accuracy or sensitivity would have suggested further
modifying Shafer-Rocas combination with Allen’s teachings to, in addition
to enabling or disabling multifunction device, incorporate entering and
analyzing a reason code by the mobile device.
Appellant further contends that the combination of Shafer with Allen
fails to disclose or suggest the determining limitation. Appeal Br. 19.
Specifically, Appellant argues that the combination teaches that the network
system, and not the alert device, analyzes the reason code. Id. . Id.
According to Appellant, the network system “is not the same as or
equivalent to the mobile device” and therefore performing the determining
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step at the network system is distinct from the recited determining by a
mobile device. Id.
We are unpersuaded. As discussed above, Appellant is arguing the
references individually whereas the rejection is based on the combination of
the cited references where all of the features of the secondary reference need
not be bodily incorporated into the primary reference (see Keller, supra, at
642 F.2d 425) and the artisan is not compelled to blindly follow the teaching
of one prior art reference over the other without the exercise of independent
judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984)). We agree with the Examiner that the combination of references
teaches the determining step. Specifically, we agree with the Examiner’s
finding and observe that modifying Shafer’s EAS system with disabling
alarm response functions, as taught by Rocas per the discussion supra, and
determining a reason code among certain reason codes, as taught by Allen
(Final Act. 4–6), would have suggested performing the functions of
disabling the alarm response functions and analyzing the reason code by the
mobile device. This is a combination of familiar elements according to
known methods with predicable results. See KSR, 550 U.S. at 416.
Contrary to Appellant’s statement that “Shafer and Rocas teach
different concepts” in that Shafer teaches “a system for protecting items
using EAS tags” and Rocas teaches “a system for wirelessly activating and
deactivating features of a multi-function device” (Reply Br. 3), the
references relate to different aspects of wirelessly controlling device features
by a user’s mobile device. Such control features are relevant to EAS tags in
tracking systems and wirelessly activating or deactivating functions
associated with a multi-function device user interface based on a user’s
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mobile device proximity. See Shafer Abstract; Rocas Abstract. Further, we
find the Examiner has provided a rational underpinning to support the
conclusion of obviousness based on knowledge within the level of ordinary
skill in the art, specifically to provide an EAS system the additional
functionality of enabling certain functions. Ans. 3–4. See KSR, 550 U.S. at
417–418.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1. The Examiner rejects independent claim 11 on a
similar basis as claim 1, and, therefore, we also sustain the Examiner’s
obviousness rejection of claim 11, as well as dependent claims 2–10 and 12–
21, which are not separately argued by Appellant. See Appeal Br. 10–19.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 103 Shafer, Rocas,
Allen
1–21

FINALITY AND RESPONSE
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