Ex Parte Dohse et al

Patent Trial and Appeal Board

Oct 29, 2014

10551871 (P.T.A.B. Oct. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LARS DOHSE and
WERNER GLASEN
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Appeal 2012-009115
Application 10/551,871
Technology Center 3600
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Before: EDWARD A. BROWN, MICHAEL L. HOELTER, and
SCOTT A. DANIELS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 3‒11, 13–21, and 23–28. Br. 4. Claims 2, 12, and 22
have been canceled. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a means for fastening,
securing or clamping goods or for securing a person, such as a load strap,
support strap, tie member, rope and safety harnesses or the like, with an
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information medium attached thereto.” Spec. 1.1 Independent claim 1,
reproduced below, is illustrative of the claims on appeal:
1. Means for fastening, securing or clamping goods or for
securing a person, said means comprising:
(a) a strap; and
(b) an information medium permanently and rigidly
connected to said strap,
wherein only a portion of the information medium is
connected directly to the strap;
wherein the information medium consists of at least one
identification medium, an insert, different from the at least one
identification medium, having high tear strength, and a
protective casing, which surround the at least one identification
medium and the insert having high tear strength;
wherein the at least one identification medium, the insert,
and the protective casing are joined to form a durable unit with
a multilayered structure.
REFERENCES RELIED ON BY THE EXAMINER
Larsen US 4,773,175 Sept. 27, 1988
Peterson US 5,581,924 Dec. 10, 1996
Liener Chin US 6,632,042 B1 Oct. 14, 2003
Seawright US 6,644,694 B2 Nov. 11, 2003
THE REJECTIONS ON APPEAL
Claims 1, 24, 27, and 28 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Seawright. Ans. 4.
Claims 1, 3–11, 13–16, 18–21, and 23–26 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Peterson and Liener Chin. Ans.
5.

1 Appellants’ Specification does not provide line or paragraph numbering
and, accordingly, reference will only be made to the page number.
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Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Peterson, Liener Chen, and Larsen. Ans. 8.
ANALYSIS
The rejection of claims 1, 24, 27, and 28 as being anticipated by Seawright
Appellants argue the rejection of claims 1, 24, 27, and 28 as a group.
Br. 9–10. We select claim 1 for review with independent claim 24 and
dependent claims 27 and 28 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Appellants dispute that Seawright anticipates claim 1 contending that
“Seawright does not disclose means for fastening, securing or clamping
goods or for securing a person.” Br. 9. Appellants’ Specification states that
the claimed “means for fastening” etc., can be “a load strap, support strap,
tie member, rope, safety harness or the like, with an information medium
attached thereto.” Spec. 2. The structure in Seawright the Examiner
identifies as corresponding to this limitation is strap 72. Ans. 4.
Seawright’s Figures 10–15 illustrate strap 72 wrapped around the arm of a
user and securing a map (40) thereto. See also Seawright 3:9–23, 6:10–13,
and 7:5–6. Appellants do not explain how Seawright’s disclosed structure
fails to meet this limitation. Instead, Appellants contend that “[o]ne skilled
in the art would not recognize a wearable reference guide to be goods or
cargo.” Br. 9. The Examiner points out that the claims, rather than
identifying a particular type of goods or cargo, instead “only require[] a
means for fastening.....comprising a strap” and that “Seawright clearly
discloses the limitations” that are claimed. Ans. 9. Appellants’ contentions
are not persuasive of Examiner error.
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We further note that the preamble to claim 1 recites “[m]eans for
fastening, securing or clamping goods.”2 As the body of claim 1 contains
structure sufficient to perform the claimed function in its entirety, the recited
preamble is understood to indicate an intended use or function. As such,
Appellants do not persuade us that Seawright’s disclosed structure is
incapable of performing this function. See Ans. 9.
Appellants also address the limitation of a protective casing “which
surround[s]” other structure. Br. 10. Appellants contend that Seawright’s
“[l]id 62 partially folds over the base 61 and substrate 40, but the lid 62 does
not surround the base 61 and the substrate 40 since edges are exposed.” Br.
10. The Examiner finds that “[h]aving exposed . . . sides does not hide the
fact the elements are surrounded on top and bottom surface.” Ans. 10.
Appellants do not indicate how the claim term “surround” 3 is restricted to
the definition involving envelopment on all sides (i.e., no exposed edges) to
the exclusion of its equal definition involving encirclement of some sides
(i.e., some edges exposed). Accordingly, Appellants’ contention is not
persuasive of Examiner error.
Appellants also contend that the various components of Seawright
“are not joined to form a durable unit with a multilayered structure.” Br. 10.
Seawright’s Figure 9 appears to disclose a construction that is contrary to

2 We are instructed by our reviewing court that use of the term “means”
raises a presumption that the inventor used the term to invoke 35 U.S.C. §
112, sixth paragraph. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363
(Fed. Cir. 2003). But that this presumption may not be applicable “when the
claim, in addition to the functional language, recites structure sufficient to
perform the claimed function in its entirety.” Altiris, at 1375.
3 Surround Definition, Meriam-Webster.com, http://www.merriam-
webster.com/dictionary/surround (last visited October 17, 2014).
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this assertion (see also, e.g., Seawright 4:53–56, 6:61–65, and 7:10–13) and
Appellants do not otherwise explain how Seawright’s folded unit fails to
form a durable multilayered structure. In other words, Appellants provide
no support for this contention and it is not otherwise self-evident from the
record.
For the forgoing reasons, we sustain the Examiner’s rejection of
claims 1, 24, 27, and 28.
The rejection of claims 1, 3–11, 13–16, 18–21, and 23–26
as being unpatentable over Peterson and Liener Chin
Appellants argue these claims together. Br. 10–13. We select claim 1
for review with claims 3–11, 13–16, 18–21, and 23–26 standing or falling
with claim 1.
The Examiner relies on Peterson for disclosing a strap 12, an
information medium 14 permanently and rigidly connected to the strap, and
an identification medium 46. Ans. 5. The Examiner, however,
acknowledges that Peterson fails to disclose an insert having high tear
strength, an identification medium that is rigidly connected, and a protective
casing. Ans. 6. The Examiner relies on the teachings of Liener Chin for
these limitations (i.e., insert 908, a rigidly connected identification medium
904 and protective casing 910). The Examiner expresses a reason to
combine Peterson and Liener Chin that is acknowledged by Appellants but
not expressly challenged other than a general disagreement with the
Examiner’s findings and conclusions. Ans. 7; Br. 10–11.
Appellants do express, however, two reasons why Peterson and Liener
Chin fail to teach the claimed limitations. Br. 11. The first reason is
directed to the “insert having high tear strength,” and the second reason is
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directed to the various components being “joined to form a durable unit with
a multilayered structure.” Br. 11.
Addressing the second reason first, Appellants describe Peterson and
contend that Peterson “does not teach or suggest that an identification
medium, an insert, and a protective casing are joined to form a durable unit
with a multilayered structure.” Here, Appellants are arguing the art
individually (i.e., not responding to the Examiner’s rejection) in that while
the Examiner relied on Peterson for disclosing an identification medium, the
Examiner acknowledged that “Peterson fail[s] to disclose an insert having
high tear strength and a protective casing.” Ans. 6. The Examiner relies on
Liener Chin (not Peterson as alleged by Appellants) for disclosing a high
tear strength insert and a protective casing. Ans. 6. Appellants’ contention
is not persuasive of Examiner error.
Additionally, Appellants contend that regarding Peterson’s teaching of
“information card 46,” this card can be removed from a pocket via “slit 62.”
Br. 11–12. As such, “Peterson's teaching of a slit is contradictory to
[Appellants’] claimed invention.” Br. 12. Appellants’ argument is
misplaced in that the Examiner relies on Peterson’s item 14 (not item 46) for
disclosing the corresponding “information medium” and further, the
Examiner relies on Peterson’s item 46 as the corresponding “identification
medium” (not “information medium” or card). Ans. 5. Further, whether
Peterson discloses slit 62 enabling identification medium/card 46 to be
removed is not germane to the limitation of the claimed identification
medium. See Ans. 10. This is because claim 1 recites the “information
medium” (i.e., Peterson’s corresponding item 14) as being “permanently and
rigidly connected to said strap” and Appellants do not explain how
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Peterson’s item 14 is not permanently connected to Peterson’s strap 12. See
Peterson Fig. 2. Accordingly, Appellants’ contention is not persuasive of
Examiner error.
Addressing Liener Chin, Appellants contend that the disclosed items
910 and 908 are “not joined to form a unit” because they can be removed
from each other. Br. 12. More specifically, Appellants contend that
“instead of joining, Liener Chin discloses removing and replacing the paper
at will and thus, teaches away from joining the identification medium, the
insert, and the protective casing to form a durable unit, as required by
[Appellants’] claims.” Br. 12. The Examiner notes that the limitation in
question (i.e., specific components that “are joined to form a durable unit
with a multilayered structure”) is devoid of language requiring the joining to
be permanent. Ans. 11. As such, the Examiner reasserts that these
components of Liener Chin “are still joined together.” Ans. 11. To be clear,
Figure 23 of Liener Chin clearly illustrates the one being inserted into the
other. Appellants do not explain how such an act, as disclosed in Liener
Chin, does not join the two together. We are not persuaded by Appellants’
arguments that the Examiner’s findings are in error.
Appellants also contend that neither reference teaches or suggests “an
insert having high tear strength” (i.e., Appellants’ first contention supra)
nor, more specifically, that Liener Chin “does not disclose a tear strength
requirement for tabbed sheet 908.” Br. 12. Appellants address the
advantages of high tear strength as discussed in the Specification and that
Liener Chin’s “tabbed sheet 908 likely has lower tear strength than the
picture 904.” Br. 12–13. Hence, Appellants conclude that “Liener Chin
does not disclose tear strengths, and it is not inherent that tabbed sheet 908
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has a high tear strength.” Br. 13. We understand Appellants to be
acknowledging that while Liener Chin is silent as to any specific tear
strength values, or ranges thereof; nevertheless, Liener Chin’s item 908 has
tear strength, just not a high one (i.e., it “likely has a lower tear strength than
the picture 904”). Appellants do not identify any language in the claims, or
in Appellants’ Specification, that provides guidance as to what value is a
high tear strength value, or any reference point for that matter that might
assist in ascertaining whether a tear strength value is high or not. As such,
we agree with the Examiner that “[s]ince, the claims [do] not distinctly
require a certain number of strength, any number can be considered high tear
strength.” Ans. 11. In short, Appellants do not persuade us that the
Examiner’s finding regarding tear strength is in error. Accordingly, we
sustain the Examiner’s rejection of claims 1, 3–11, 13–16, 18–21, and 23–
26.
The rejection of claim 17
as being unpatentable over Peterson, Liener Chen, and Larsen
Claim 17 depends from claim 1 and includes an additional limitation
directed to a transponder. Appellants acknowledge that the additional art to
“Larsen is cited solely as disclosing that the identification medium is a
transponder” but that “Larsen does not cure the deficiencies of Peterson and
Liener Chin.” Br. 13. As we are not persuaded there are deficiencies with
the combination of Peterson and Liener Chin, we are not persuaded that the
Examiner’s additional reliance on Larsen in the rejection of claim 17 is in
error. We sustain the Examiner’s rejection of claim 17.

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DECISION
The Examiner’s rejections of claims 1, 3‒11, 13–21, and 23–28 are
affirmed.
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).

AFFIRMED

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