Ex Parte 5861807 et al

Patent Trial and Appeal Board

Dec 26, 2012

90009635 (P.T.A.B. Dec. 26, 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.
90/011,404 02/04/2011 5,861,807 RX-1001 9320
7590 12/27/2012
WOOD PHILLIPS VAN SANTEN CLARK & MORTIMER
500 WEST MADISON STREET
SUITE 3800
CHICAGO, IL 60661
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/27/2012 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
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.
90/009,635 11/09/2009 5861807 SEN-R-09-002 8611
7590 12/27/2012
John Mortimer
WOOD, PHILLIPS, VAN SANTEN, CLARK & MORTIMER
500 West Madison Street
Suite 3800
Chicago, IL 60661
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/27/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex Parte SE-KURE CONTROLS, INC.
Appellant
____________________

Appeal 2013-000729
Reexamination Control Nos. 90/009,635 and 90/011,404
Patent 5,861,807
Technology Center 3900
____________________

Before DANIEL S. SONG, JOSIAH C. COCKS, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant, patent owner Se-Kure Controls, Inc., appeals under 35
U.S.C. §§ 134(b) and 306 from the final rejection of claims 1-8, 10-14, 16-
20, 24-39, 42-45, 48-56, and 69-78. Claims 9, 15, 21-23, 40, 41, 46, 47, 57-
68, 79, and 80 were confirmed. We have jurisdiction under 35 U.S.C.
§ 6(b)(2).
We AFFIRM-IN-PART.

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Patent 5,861,807

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STATEMENT OF THE CASE
This proceeding arose from two separate requests for ex parte
reexamination of U.S. Patent 5,861,807 (the “‘807 patent”), Reexamination
Control No. 90/009,635 filed by Sennco Solutions, Inc. and Reexamination
Control No. 90/011,404 filed by InVue Security Products Inc. The ‘807
patent is entitled “Security System,” was issued January 19, 1999 to Roger J.
Leyden and Michael A. Parent, and is assigned to Se-Kure.
Pursuant to 37 C.F.R. § 1.565(c), the separate requests were merged
into a single proceeding on June 27, 2011.

CLAIMED INVENTION
The ‘807 patent relates to security systems for preventing
unauthorized removal of portable consumer articles such as digital cameras,
from a specified area, such as a store display. (Col. 1, lines 5-7.) Claim 1
on appeal reads as follows and with emphasis added:
1. In combination:
a portable article to be monitored;
a body which is rigidly attached to the portable article to
be monitored,
said body being substantially smaller than the portable
article to be monitored;
a first sensor having a secured state and an unsecured
state and capable of being attached to an article to be
monitored,
the first sensor having a housing; and
a first elongate cord extending between the first sensor
and body and having first and second separate conductors and
a) mechanically connecting the first sensor to the body and b)
defining a conductive path through both the first and second
conductors between the first sensor and the body,
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the first and second conductors each being attached to the
housing so as to be in fixed relationship to each other both with
the first sensor fully separated from a portable article to be
monitored and attached to a portable article to be monitored,
the first sensor being in the unsecured state with the
conductive path between the first sensor and the body
interrupted.

EVIDENCE
The Examiner relies upon the following prior art references:
Israel
Keifer
Leyden 1992
Leyden 1995
Ott II translation
Ott I1
Ott II
US 4,746,909
US 5,146,205
US 5,172,098
US 5,421,667
US 5,910,768
WO 91/02337 A1
WO 96/31852 A2
May, 24, 1988
Sep. 8, 1992
Dec. 15, 1992
Jun. 6, 1995
Jun. 8, 1998
Feb. 21, 1991
Oct. 10, 1996

REJECTIONS
The Examiner makes the following rejections:
1. Claims 1-3, 5, 7, 8, 10, 11, 16-18, 20, 24-31, 48-52, and 69-78 under
35 U.S.C. § 102(b) as anticipated by Ott I.
2. Claims 12 and 14 under 35 U.S.C. § 102(b) as anticipated by Ott II.
3. Claims 4 and 35 under 35 U.S.C. § 103(a) as unpatentable over Ott I
and Leyden 1995.
4. Claims 6 and 19 under 35 U.S.C. § 103(a) as unpatentable over Ott I
and Leyden 1992.

1 All page and line references to Ott I refer to the English-language
translation filed by third-party requester Sennco Solutions, Inc. on
November 9, 2009 in Reexamination Control No. 90/009,635.
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5. Claims 32-34 and 53-56 under 35 U.S.C. § 103(a) as unpatentable
over Ott I and Keifer.
6. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Ott II and
Israel.
7. Claims 36-39 and 42-45 under 35 U.S.C. § 103(a) as unpatentable
over Ott II.

PRINCIPLES OF LAW
Claim Construction
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010). “Construing claims broadly during prosecution is not unfair to the
applicant (or, in this case, the patentee), because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.” In
re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (appeal from reexamination proceeding).
“The words of a claim are generally given their ordinary and
customary meaning as understood by a person of ordinary skill in the art
when read in the context of the specification and prosecution history[.]”
Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362,
1365 (Fed. Cir. 2012) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (en banc)). “We do not read limitations from the
specification into claims; we do not redefine words.” Thorner, 669 F.3d at
1366.
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Obviousness
“Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.”’ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103(a)). “What matters is the objective reach of
the claim. If the claim extends to what is obvious, it is invalid under § 103.”
KSR, 550 U.S. at 419. To be nonobvious, an improvement must be “more
than the predictable use of prior art elements according to their established
functions.” Id. at 417. Further, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court [or the Office] can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. at 418.
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but did not are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2008); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Various Claims Rejected As Anticipated By Ott I
(Rejection 1)
Claims 1, 2, 5, 7, 8, 10, 11, 16-18, 20, and 24-26
Claim 1 requires, in relevant part: “a body which is rigidly attached to
the portable article to be monitored” (emphasis added). The Examiner found
this limitation disclosed in Ott I by the rectangular sensor housing 10 that is
attached to the underside of a camera by firmly tightening a mounting screw
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44 into the camera. (Answer 3 (citing Ott I Figs. 1, 2; p. 4, lines 32-35; p. 8,
lines 12-15, 25, and 26).) Ott I expressly states that “firm mounting of the
contact sensors to the camera is provided.” (Ott I p. 8, lines 25-26.)
Appellant proposes that the limitation “a body which is rigidly
attached to the portable article to be monitored” in claim 1 be construed to
mean “that the rigidly attached body: a) has a fixed shape; and b) is securely
affixed to the article being monitored.” (Appeal Br. 8 (emphasis added).)
Appellant then argues that the sensor housing in Ott I does not have a “fixed
shape” because the rear wall 12 of the sensor housing is capable of bending,
and does bend, 0.2 to 0.5 mm. (Appeal Br. 10; see also Ott I p. 8, lines 16-
24.) Hence, Ott I could not anticipate claim 1, as construed by Appellant.
To support its proposed construction that the body has a fixed shape,
Appellant makes three arguments: (1) an embodiment of the specification
employs a body made from metal; (2) a prior art patent referenced in the
specification utilizes a similar body and expressly characterizes it as “rigid”;
and (3) the term “rigidly mounted” (which is similar to claim 1’s “rigidly
attached”) appearing in the specification must mean something more than
securely mounting/affixing because otherwise it would be redundant.
(Appeal Br. 8-9.) We are not persuaded by any of these arguments.
Appellant’s first argument is that, at column 5, lines 31-36, the ‘807
patent describes an embodiment in which the body is made from metal and
further states that, for purposes of integrity, the mounting surface and the
oppositely facing surface can be made from a single piece, either solid or
hollowed out. (Appeal Br. 8.) This argument is not persuasive, as it relies
on reading limitations from the specification into the claims. Thorner, 669
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F.3d at 1366 (“We do not read limitations from the specification into
claims[.]”).
Appellant’s second argument is that:
In discussing prior art of the type claimed, in column 1 of the
‘807 patent, reference is made to one of Appellant’s own
patents (U.S. Patent No. 5,421,667) that utilizes a similar body
in a purely mechanical type of restraint system. The body is
characterized as ‘rigid.’ This ‘rigid’ body in U.S. Patent No.
5,421,667 is described therein as a ‘solid body’ (col. 3, line 33)
and shown in Fig. 4 as a thick metal piece. (Appeal Br. 8-9.)

This argument is not persuasive. Indeed, Appellant does not even
explain how the alleged facts could support its proposed claim construction.
(See Appeal Br. 8-9.)
As we do not read limitations from the specification into the claims,
Thorner, 669 F.3d at 1366, we certainly will not read in limitations from
extrinsic specifications. Further, U.S. Patent 5,421,667 does not characterize
the body as “rigid,” as asserted by Appellant. (Compare Appeal Br. 9 with
U.S. Patent 5,421,667 col. 3, line 33.) Rather, it refers to the body as
“solid.” (U.S. Patent 5,421,667 col. 3, line 33.) Notably, the ‘807 patent
states that the “body 16 can be made hollow,” which is generally understood
as being the opposite of solid. (Col. 5, line 34.) Thus, for multiple reasons,
we do not find U.S. Patent 5,421,667 supportive of construing “a body” to
mean a body that “has a fixed shape.”
Appellant’s third argument is that the term “rigidly mounted” (which
is similar to claim 1’s “rigidly attached”) must mean something more than
securely mounting/affixing because otherwise it would be redundant.
(Appeal Br. 9.) This argument is also not persuasive.
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The sentence from the ‘807 patent on which Appellant relies states:
By tightening the bolt 34 into the camera bore 38, the body 16
is borne positively against the camera surface 20 to thereby
rigidly mount the body 16 on the camera 14 so that the body 16
and camera 14 are moveable as one piece. (‘807 patent col. 4,
lines 14-18.)

This language from the specification demonstrates that, in the embodiment
being described, rigid mounting is achieved by the tightening of the bolt that
pulls the body and camera together so that they are moveable as one piece.
This language merely precludes loose or movable mounting and does not
suggest that “rigidly mounting” means the body must be rigid or have a
fixed shape.
In sum, we reject Appellant’s proposed construction because it is not
the broadest reasonable construction consistent with the specification. In
particular, claim 1 requires “a body which is rigidly attached to the portable
article to be monitored” but claim 1 does not require that the body itself be
rigid. Thus, we agree with the Examiner’s finding that this limitation is
disclosed in Ott I by the rectangular sensor housing 10 that is attached to the
underside of a camera by firmly tightening a mounting screw 44 into the
camera. (Answer 3 (citing Ott I Figs. 1, 2; p. 4, lines 32-35; p. 8, lines 12-
15, 25, and 26).)
Accordingly, we sustain the decision to reject independent claim 1 as
anticipated by Ott I. For the same reasons, we sustain the decision to reject
independent claims 16, 24, and 25, which were argued by Appellant only on
the same grounds as claim 1. (Appeal Br. 15-16.) We also sustain the
decision to reject dependent claims 2, 5, 7, 8, 10, 11, 17, 18, 20, and 26,
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Figure 2 depicts a sensor housing 10 for mounting to a camera (not
shown) via a mounting screw 44. In describing Figure 2, Ott I states:
the thickness of the front wall of the housing 18 is a bit smaller
than the depth of the collar 16, leaving a small distance “x”
between the top side of the front wall of the housing 18 and the
exposed edge of the housing side walls 14. In practical
applications this distance can be between 0.2 and 0.5 mm.
(P. 5, lines 14-19.)

Ott I, however, later describes that the front wall 18 bends upward
during mounting to the camera, stating the following:
When screwing the contact sensor illustrated in the
drawing to a camera, the entire housing is first placed against
the underside of the camera, whereby the operating cap 40 takes
the position illustrated in FIG. 2 during which there are still
alarm conditions. By firmly tightening the mounting screw 44,
the housing’s rear wall 12 is bent upward, and because of the
height of the collar 16 described before, the housing’s front
wall 18 can follow the bending movement.

During this deformation, in order to get 0.2 to 0.5 mm in
practical applications, the operating cap 40 continues to be
moved into the switch housing 28, and during this motion the
switch set point of the micro-switch 30 is exceeded. Only then
are there no longer any alarm conditions. (P. 8, lines 11-24
(emphasis added).)

As such, the front wall does not remain in the configuration shown in
Figure 2 after mounting has occurred. Rather, having followed the same
upward bending of the rear wall, it is bent upward 0.2 to 0.5 mm to contact,
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i.e., engage, the camera and arm the micro-switch. Thus, we find that the
front wall 18 does abut the camera.2
We also find that the front wall remains “substantially flat.”
Appellant does not argue any construction for the term, and the Specification
is not detailed in this regard. (See, e.g., ‘807 patent col. 2, lines 15-26, lines
58-60 (referring to “substantially flat” surfaces but not describing them in
any further detail with respect to flatness).) It is clear, however, that the
term “substantially flat” cannot mean exactly flat. See, e.g., York Prods.,
Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1572-73 (Fed. Cir.
1996) (“The term ‘substantially’ has been construed in patent claims as
‘largely but not wholly that which is specified.’”) (quoting Webster’s Ninth
New Collegiate Dictionary 1176 (9th ed. 1983)); Deering Precision
Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d 1314,
1323 (Fed. Cir. 2003) (“The term ‘substantially’ can also mean ‘largely’ or
‘essentially.’”) (quoting Webster’s New 20th Century Dictionary 1817
(1983)); cf. Anchor Wall Systems, Inc. v. Rockwood Retaining Walls, Inc.,
340 F.3d 1298, 1311 (Fed. Cir. 2003) (“the phrase ‘generally parallel’
envisions some amount of deviation from exactly parallel”). As the bending
is only slight – again, just 0.2 to 0.5 mm – and because this amount is
relatively small given the width and length of the front wall (see Ott I

2 Although we sustain the rejection based on our own findings with respect
to the bending of the front wall in Ott I, we also note that Appellant has
offered two alternative illustrations of the bending. Notably, in both of
Appellant’s illustrations, the front wall contacts the mounting surface of the
camera. (See Appeal Br. p. 13, Fig. B; p. 14, Fig. C.)

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Figures 1, 2), we find that the front wall of Ott I is “substantially flat” when
mounted to the camera.
In sum, we do not find any error in the Examiner’s finding that the
front wall of Ott I is a substantially flat mounting surface. Hence, we sustain
the decision to reject claim 3 as anticipated by Ott I.
Claims 27-31, 48-52, 69-73, and 74-78
Each of claims 27, 48, 69, and 74 requires, in relevant part, “a
mounting surface on the body that is supported in a planar shape” and
wherein “the mounting surface facially engages a flat surface on the portable
article at the central region of the body and the perimeter region of the
body[.]”
The Examiner relies on the front wall 18 of the sensor housing in Ott I
as the mounting surface. (Answer 10.) We find, however, that the front
wall does not facially engage the camera at a perimeter region of the sensor
housing. (Ott I Fig. 2; p. 8, lines 11-24.) Instead, the front wall is separated
from the camera at the perimeter region by a distance of approximately 0.2
to 0.5 mm. (Id.) That is, such separation between the front wall and the
camera at the perimeter region precludes a finding that they are facially
engaged there.
For the foregoing reasons, we cannot sustain the decision to reject
claims 27, 48, 69, and 74.
For the same reasons, we cannot sustain the decision to reject claims
28-31 (which ultimately depend from claim 27), claims 49-52 (which
ultimately depend from claim 48), claims 70-73 (which ultimately depend
from claim 69), and claims 75-78 (which ultimately depend from claim 74).
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Claims 4 and 35 Rejected As Unpatentable Over Ott I and Leyden 1995
(Rejection 3)
Claim 4
Appellant groups claim 4 and 35 together but advances an argument
that is only relevant to claim 35. (See Appeal Br. 23-24.) As such,
Appellant does not apprise us of any error in the rejection of claim 4.
Hence, we sustain the decision to reject claim 4.
Claim 35
Claim 35 requires, in relevant part, “a second surface facing
oppositely to the mounting surface and the control unit is connected to the
body at the second surface.” (Emphasis added.) The Examiner
acknowledges that Ott I does not specifically disclose that the control unit is
connected to the body at the second surface (i.e., the bottom wall 12).
(Answer 15.) The Examiner found, however, that:
it would have been obvious to a person of ordinary skill in the
art to connect the control unit already disclosed by Ott I to the
second surface opposite of the mounting surface in the system
described by Ott I in view of Leyden 19953 as engineering
design choice of a location for the disclosed connection on the
body in order to place the body in positions other than shown in
Figure 1 to display different articles to their best advantage to
customers. (Answer 15-16.)

Appellant counters that the Examiner has used hindsight to arrive at
the claimed invention. (Appeal Br. 24.) We are not persuaded by
Appellant’s argument. There are a limited number of surfaces for locating

3 Leyden 1995 is cited for disclosing another limitation not argued by
Appellant, namely that “the mounting and second surfaces are formed from
a single piece.” (Answer 14-15.)
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the connection to the sensor housing of Ott I. Indeed, there are effectively
only three design choices: (1) locate the connection on one of the four side
surfaces that are perpendicular to the mounting surface as Ott I discloses, (2)
locate the connection on the “second surface facing oppositely to the
mounting surface” as claim 35 requires, or (3) locate the connection on the
mounting surface itself (note that this last option is not practical without
further modification since the entire mounting surface in Ott 1 is intended to
abut the article to be secured).
A finding of obviousness “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418. In this case, due to the limited number of practical options,
we find that it would take very little creativity by a person of ordinary skill
in the art to locate the connection on the “second surface facing oppositely to
the mounting surface.” Changing the location of the connection is merely a
predictable variation of the sensor housing already disclosed in Ott I. See id.
at 417 (“If a person of ordinary skill can implement a predictable variation,
§103 likely bars its patentability.”). Hence, we sustain the decision to reject
claim 35.

Claims 6 and 19 Rejected As Unpatentable Over Ott I and Leyden 1992
(Rejection 4)

Appellant argues against the rejection of claims 6 and 19 only on the
basis that they ultimately depend from claim 1. As we are sustaining the
decision to reject claim 1, we also sustain the decision to reject claims 6
and 19.

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Claims 32-34 and 53-56 Rejected As Unpatentable Over Ott I and Keifer
(Rejection 5)

Claim 32 requires, in relevant part, “a mounting pin fixedly attached
to the body and projecting in cantilever fashion from the body, wherein the
mounting pin projects away from the portable article to which the body is
attached.” (Emphasis added.)
The Examiner found that Ott I teaches all of the limitations of
claim 32 except for a mounting pin that meets the specific configurations of
claim 32. (Answer 17-18, 30.) In particular, the Examiner found that “Ott I
generally discloses a mounting pin fixedly attached to the body in the form
of positioning pin 62 (Figure 2) but does not specifically disclose a
mounting pin projecting away from the portable article to which the body is
attached.” (Answer 18.) The Examiner further found, however, that claim
32 would have been obvious over Ott I in view of Kiefer, which does
disclose “a mounting pin [that] projects away from the portable article.”
(Answer 18.) The Examiner concluded that “it would have been obvious to
a person of ordinary skill in the art to include a mounting pin projecting
away from the portable article and a pedestal as taught by Keifer in the
system disclosed by Ott I in order to attractively support and display the
cameras for customers.” (Answer 19.)
Appellant points out that in Keifer, the sensor 37 (i.e., body) and
mounting pin 17 are separate from one another, and, thus, a person of
ordinary skill in the art, if modifying Ott I in view of Keifer, would locate
the pin separate from the Ott I sensor. Thus, Appellant argues that Keifer
teaches away from “a mounting pin fixedly attached to the body” and that
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the combination of the references would result in an apparatus not meeting
this requirement of claim 32. (Appeal Br. 25; Reply Br. 10.)
In determining obviousness, a reference “must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
Examiner found, and Appellant has not disputed, that Ott I teaches a
mounting pin fixedly attached to the body in the form of positioning pin 62
(Figure 2). (Answer 18.) We agree with that finding and additionally find
that the positioning pin 62 projects in cantilever fashion from the body
(sensor housing 10). (See Ott I Fig. 2.) The only aspect missing from Ott I
is the requirement of claim 32 that the mounting pin also project away from
the portable article. This aspect is taught by Keifer. (See Fig. 1 ref. 17.)
Appellant cannot establish non-obviousness by attacking Keifer for
not disclosing the mounting pin fixedly attached to the body where that
aspect is taught by Ott I. See In re Merck & Co., 800 F.2d at 1097 (“Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Similarly, Appellant cannot establish non-obviousness by attacking Keifer
for mere disclosure of an alternative design in which the mounting pin is not
fixedly attached to the body. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (prior art does not teach away from claimed subject matter merely
by disclosing a different solution to a similar problem unless the prior art
also criticizes, discredits, or otherwise discourages the solution claimed).
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For the foregoing reasons, we sustain the decision to reject claim 32.
For the same reasons, we sustain the decision to reject claims 33 and 34,
which were argued by Appellant only on the basis that they depend from
claim 32. (Appeal Br. 28.)
We also sustain the decision to reject dependent claim 53, which was
argued by Appellant only the basis that it depends from claim 16, the
rejection of which we are sustaining as discussed above. (Appeal Br. 28.)
We also sustain the decision to reject claims 54-56, which were
argued by Appellant only the bases that (1) they depend from claim 16; and
(2) Appellant’s arguments with respect to claim 32 apply to claims 54-56 --
arguments that we find unpersuasive. (Appeal Br. 28.)

Claims 12 and 14 Rejected As Anticipated By Ott II
(Rejection 2)
Claim 12
Claim 12 requires, in relevant part, “a connector on the body capable
of releasably connecting to a connector on a second elongate cord to allow
the second elongate cord to establish a conductive path between the at least
one conductor and a control unit for monitoring the state of the first sensor.”
(Emphasis added). The Examiner found this limitation disclosed by the
electrical connection cable 162 shown in Figure 9 of Ott II. (Answer 13.)
The Examiner additionally relies on the disclosure by Ott II of “plug
elements” and “electrical plug connections” as disclosure of a connector
capable of releasably connecting to another connector. (Appeal Br. 13; Ott
II translation col. 18, lines 9-13.)
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Ott II is in German, and the Examiner relied on U.S. Patent 5,910,768
(Ott II translation) as an English-language equivalent. (Answer 12.)
Appellant does not contest that the Ott II translation is an English-language
equivalent to the German-language Ott II. Appellant does, however, argue
that “[t]ranslation from German to English is not a precise exercise, and the
use of the word ‘plug’, absent some further explanation or disclosure
through drawings in Ott II, cannot be dissected by assuming that the German
word from which ‘plug’ is translated has an identical counterpart in the
English language.” (Appeal Br. 20.)
This argument is not persuasive. We will not speculate that the
German word from which ‘plug’ was translated means something different
than plug. Appellant has not offered an alternative translation of Ott II in
this Appeal or any evidence to support its speculation that the German word
from which ‘plug’ was translated may mean something else or that such
something else would not disclose a releasable connection.
Citing a dictionary definition from thefreedictionary.com, Appellant
argues that the phrase “plug into” merely conveys that a connection is made
(e.g. a “computer [that] plugs into a data bank”) and “does not additionally
require that an element is physically moved from a separated state into an
engaged state to effect the connection.” (Appeal Br. 21.)
This argument is also not persuasive, as the Examiner does not rely on
prior art that discloses the action “plug into.” The Examiner relies on prior
art that discloses physical “plug elements” and “electrical plug connections,”
which are nouns, not verbs. (See Ott II translation col. 18, lines 9-13.)
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Appellant also argues that a plug is not necessarily releasable and,
once plugged into a corresponding connector, could result in a permanent
connection. (Appeal Br. 22.) Notably, the evidence on which Appellant’s
argument relies refers to such plugs as “a fixed plug connection” and “fixed
connection plugs.” (Appeal Br. 22.) In contrast, Ott II does not qualify its
plug elements and connections as “fixed.” Thus, we find this argument also
not persuasive.
In sum, we find that Ott II’s disclosure of “plug elements” and
“electrical plug connections” discloses “a connector . . . capable of
releasably connecting to a connector,” as required by claim 12. As such, we
sustain the decision to reject claim 12.
Claim 14
Claim 14 requires, in relevant part, “a second elongate cord and
cooperating connectors on the body and second elongate cord which can be
coupled by press fitting to establish a conductive path through the second
cord between the at least one conductor and a control unit for monitoring the
state of the first sensor.” (Emphasis added).
Appellant argues against the rejection of claim 14 largely on the same
unpersuasive grounds that it argues with respect to claim 12. Appellant’s
additional argument is that “even if it is argued that the end user, or the like,
is capable of making the end connections for the cable 112 in Ott II, ‘press
fitting’ is not the only way that such connections can be made.” (Appeal Br.
23.) Aside from the conclusory nature of that argument, we observe that the
Appellant makes no contention that, even if other plug connection types
exist, press fitting is a type which was unknown or would have been
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perceived as not viable. We have considered the Appellant’s arguments but
are not persuaded of error in the Examiner’s rejection.

Claim 13 Rejected As Unpatentable Over Ott II and Israel
(Rejection 6)

Claim 13 requires, in relevant part, that “the connector on the body
comprises a phone jack.” Appellant argues that a specific type of releasable
connection such as a phone jack would be not obvious since, as Appellant
asserts, Ott II lacks disclosure of a releasable connection. (Appeal Br. 28.)
As already discussed above with respect to claim 12, however, Ott II does
disclose a releasable connection. As this is Appellant’s only argument with
respect to claim 13, it has failed to apprise us of any error in the rejection of
it. Hence, we sustain the decision to reject claim 13.

Claims 36-39 and 42-45 Rejected As Unpatentable Over Ott II
(Rejection 7)

Claim 36 requires, in relevant part, that “the body has a mounting
surface to engage an article to be monitored with the body attached to the
article to be monitored, and an oppositely facing second surface and the
connector on the body is at the second surface.” (Emphasis added.)
The Examiner found that Ott II discloses all the limitations of claim
36 except that it does not specifically disclose the connector at the second
surface. (Answer 21.) Instead, Ott II appears to show the connector (where
cable 162 and body 152 meet) located along one of the four perpendicular
side walls extending between the mounting surface and second surface of the
body 152. (See Fig. 9, ref. 162.) The Examiner further found that “it would
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be well understood in the art that the cable may be connected to locations on
the body other than the particular side wall shown in Figure 9.” (Answer
21.) We agree with the Examiner’s findings, for the reasons already
discussed above with respect to claim 35 – i.e., there are a limited number of
design choices for locating the connection and changing that location is
merely a predictable variation of the prior art. See KSR, 550 U.S. at 417,
418.
Appellant points out that the Examiner identifies the corresponding
second surface as the surface on component 152 that faces the television 154
in Ott II. (See Answer 21 (referring to “oppositely facing second surface
(i.e., the rear surface of first securing part 152 facing television 154 in
Figure 9)”.) Therefore, as Appellant argues, it is not practical to locate a
connector on that surface since it is abutted directly to the television.
(Appeal Br. 29.)
The Examiner’s identification of the asserted “second surface” in Ott
II as the mounting surface that engages the television is harmless error and
perhaps inadvertent. The corresponding “second surface” of body 152 is
clearly the surface opposite the mounting surface that engages the television.
(See claim 36 (“the body has a mounting surface to engage an article to be
monitored with the body attached to the article to be monitored, and an
oppositely facing second surface”).)
Thus, Appellant has not apprised us of any error in the rejection of
claim 36 that would warrant reversal. Accordingly, we sustain the decision
to reject claim 36.
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Claims 37-39 (which ultimately depend from claim 36) are not
separately argued from claim 36. (Appeal Br. 29.) Thus, in accordance with
37 C.F.R. § 41.37(c)(1)(vii)(2008), we select claim 36 as representative of
the group and treat those claims as falling with representative claim 36.
Hence, we also sustain the decision to reject claims 37-39.
Appellants argue against the rejection of claims 42-45 only on the
basis that “[t]he arguments advanced relative to the allowability of
claims 36-39 apply equally to claims 42-45.” (Answer 29.) Hence, as with
claims 36-39, we sustain the decision to reject claims 42-45.

DECISION
The Examiner’s decision to reject claims 1-3, 5, 7, 8, 10, 11, 16-18,
20, and 24-26 as anticipated by Ott I is AFFIRMED.
The Examiner’s decision to reject 27-31, 48-52, 69-73, and 74-78 as
anticipated by Ott I is REVERSED.
The Examiner’s decision to reject claims 4 and 35 as unpatentable
over Ott I and Leyden 1995 is AFFIRMED.
The Examiner’s decision to reject claims 6 and 19 as unpatentable
over Ott I and Leyden 1992 is AFFIRMED.
The Examiner’s decision to reject claims 32-34 and 53-56 as
unpatentable over Ott I and Keifer is AFFIRMED.
The Examiner’s decision to reject claims 12 and 14 as anticipated by
Ott II is AFFIRMED.
The Examiner’s decision to reject claim 13 as unpatentable over Ott II
and Israel is AFFIRMED.
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The Examiner’s decision to reject claims 36-39 and 42-45 as
unpatentable over Ott II is AFFIRMED.

No time period for taking action in connection with this appeal may
be extended under 37 C.F.R. § 1.135(a)(1)(iv)(2010).

AFFIRMED-IN-PART
ack
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