Ex Parte HeldDownload PDFPatent Trial and Appeal BoardJul 29, 201611741629 (P.T.A.B. Jul. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 111741,629 22442 7590 Sheridan Ross PC 1560 Broadway Suite 1200 Denver, CO 80202 FILING DATE FIRST NAMED INVENTOR 04/27/2007 Philippe Held 08/02/2016 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 5607-6-PUS 3365 EXAMINER LAU, HO! CHING ART UNIT PAPER NUMBER 2682 NOTIFICATION DATE DELIVERY MODE 08/02/2016 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): e-docket@sheridanross.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PHILIPPE HELD Appeal2015-001127 Application 11/741,629 1 Technology Center 2600 Before MARC S. HOFF, CARLA M. KRIVAK, and ELENI MANTIS-MERCADER, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter new grounds of rejection under 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE Appellant's invention concerns a security sealing device including a sealing element, an integrated circuit, and an antenna connected to the integrated circuit. The integrated circuit and antenna together form an RFID 1 The real party in interest is Assa Abloy AB. Appeal2015-001127 Application 11/741,629 circuit. The sealing element of the security sealing device is conductive and forms a part of the antenna (Abstract). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A security sealing device, comprising: an integrated circuit; and an antenna connected to said integrated circuit, said integrated circuit and said antenna forming a Radio Frequency Identification (RFID) circuit, wherein a part of said antenna forms a sealing element, wherein the sealing element is a radiative portion of the antenna and contributes to an effective area of a loop formed by the antenna thereby increasing a magnetic field generated by the antenna, the effective area of the loop being used to communicate data with a reader. REJECTIONS Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lindsay (US 2005/0242950 1A..l; pub. Nov. 3, 2005) and Sakae (US 7 ,084,825 B2; iss. Aug. 1, 2006). Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lindsay in view of Ahlf (US 7,098,792 B2; iss. Aug. 29, 2006). Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lindsay in view of Kawai (US 2002/0024439 Al; pub. Feb. 28, 2002). ISSUES Appellant argues that the combination of Lindsay and Sakae does not disclose a sealing element that is a radiative portion of the antenna and 2 Appeal2015-001127 Application 11/741,629 contributes to an effective area of a loop formed by the antenna. App. Br. 6- 7. Appellant further asserts that the Examiner proposes to modify Lindsay in contradiction of its explicit teachings. App. Br. 7-8. Appellant contends that there is no reasonable motivation to combine Lindsay and Sakae. App. Br. 9-10. Appellant further argues that various dependent claim limitations are not taught by the references. App. Br. 10-16. Appellants' contentions present us with the following issues: 1. Does the combination of Lindsay and Sakae disclose a sealing element that is a radiative portion of the antenna and contributes to an effective area of a loop formed by the antenna? 2. Is the Examiner's proposed combination contrary to Lindsay's explicit teachings? 3. Do the combined teachings of Lindsay and Sakae suggest to the skilled artisan the desirability of employing the sealing element as a radiative portion of the antenna? PRINCIPLES OF LAW The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Int'! v. Teleflex Inc., 550 U.S. 398, 401 (2007) (quoting Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152 (1950)). ANALYSIS CLAIMS 1, 2, AND 10-13 We do not agree with Appellant's characterization of Sakae as failing to "overcome the shortcomings of Lindsay." App. Br. 7. Appellant's 3 Appeal2015-001127 Application 11/741,629 Figure 2B of Sakae is an exploded view of antenna 1. Feeding element 30 is electrically connected to feeder lead 34 by soldering. Sakae col. 3, 11. 24--25. A region around feeder end B, i.e., a region around feeder lead 34 is a region in which a loop of a standing-wave current exists, and in which a magnetic field occurring due to the antenna becomes largest. Sakae col. 4, 11. 1--4. The Examiner cited Sakae for its disclosure of an antenna, similar to Lindsay's antenna, where the antenna end, again similar to Lindsay, is a radiative portion and contributes to an effective area of a loop formed by the antenna. See Final Act.. 3. We do not agree with Appellant's further contention that the Examiner's proposed combination contradicts the explicit teachings of Lindsay. App. Br. 7. Appellant argues against what "the Examiner appears to argue," specifically the idea that the conductive leads 406 of Lindsay could be placed on Lindsay's bottle cap, or antenna 404 could be moved off 4 Appeal2015-001127 Application 11/741,629 of the bottle cap. App. Br. 8. Appellant argues Lindsay requires the conductive leads to be breakable, thus, if the conductive leads are on the top of the bottle cap, tampering with the cap would not be detectable. Id. However, we agree instead with the Examiner, who suggests that the conductive leads 406 and connection portion of Lindsay may be modified as "additional conductive and radiative element[ sic] for the antenna ... thereby increasing a magnetic field generated by the antenna." Ans. 5---6. Contrary to Appellant's remarks, the Examiner explicitly states that "[t]he rejection is not intended to relocate any electronic components." Ans. 5. We also agree with the Examiner's conclusion that the combined teachings of Lindsay and Sakae would have suggested to the skilled artisan the desirability of employing the sealing element as a radiative portion of the antenna. We agree with the Examiner that this modification would increase the effective area of the loop, thus increasing the magnitude of the magnetic field generated by the antenna. Ans. 7; Sakae col. 4, 11. 1-5. In view of these combined teachings, Appellant's arguments against individual references are not persuasive to show error. Appellant's conjecture concerning modifying Lindsay in conflict with its teachings is also unpersuasive. The Examiner states unequivocally that "[t]he rejection is not intended to relocate any electronic components." Ans. 7. Because we conclude that the Examiner did not err in rejecting claim 1 as being obvious over Lindsay and Sakae, we sustain the Examiner's § 103 rejection. We also sustain the§ 103 rejection of claims 2 and 10-13, not separately argued with particularity. 5 Appeal2015-001127 Application 11/741,629 CLAIMS 3 AND 9 Appellant's argument regarding claim 3 is not persuasive. App. Br. 10-11. We agree with the Examiner that Lindsay discloses a pair of conductive elements, the free ends of which comprise respective first and second connecting points. Ans. 8. We sustain the Examiner's § 103 rejection of claim 3, as well as the rejection of claim 9, not separately argued with particularity. CLAIMS4-8 Appellant's arguments with respect to these claims are unpersuasive. App. Br. 11. With regard to claim 4, we agree with the Examiner that the type of physical connection element between the partial antenna and sealing element of Lindsay would have been an obvious matter of design choice, involving the use of familiar elements according to known methods to achieve predictable results. Ans. 9. As noted by the Examiner, the claim does not disclose the criticality of any particular connector. Id. With regard to claims 5 and 6, we also agree with the Examiner that a connector permanently attached to the housing, or to the sealing element, would have been obvious for similar reasons, given the Examiner's finding that the connection elements of Lindsay are also permanently attached to the cap or bottle respectively. Ans. 10. With respect to claim 8, adding a second connector would have been obvious for the reasons given with respect to claim 4 supra. With respect to claim 7, we agree with the Examiner that a connector performing tamper-evident or locking functions would also have been obvious. Lindsay discloses the desirability of detecting and preventing product tampering. As we discussed with respect to claim 4 supra, adding a 6 Appeal2015-001127 Application 11/741,629 particular physical connector would have been obvious as a matter of design choice. Ans. 12-13. CLAIM 14 Claim 14 depends from claim 1, which stands rejected over Lindsay and Sakae. Because the Examiner's § 103 rejection of claim 14 over Lindsay and Ahlf does not include the teachings of Sakae, which are necessary to reject parent claim 1, we do not sustain the Examiner's rejection. CLAIM 15 Claim 15 depends from claim 1, which stands rejected over Lindsay and Sakae. Because the Examiner's § 103 rejection of claim 15 over Lindsay and Kawai does not include the teachings of Sakae, which are necessary to reject parent claim 1, we do not sustain the Examiner's rejection. NEW GROUND OF REJECTION Pursuant to 37 C.F.R. § 41.50(b), we enter new grounds of rejection for claims 14 and 15. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lindsay, Sakae, and Ahlf. The combination of Lindsay and Sakae does not explicitly disclose a sealing element comprising a length between 1 cm and 5 m. Ahlf discloses a sealing element having a length between 1 cm and 5 m - conductive trace 22, disclosed as having a length of 2. 7 55 inches. Ahlf col. 5, 1. 20-col. 6, 1. 17. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the sealing 7 Appeal2015-001127 Application 11/741,629 element of Lindsay to include a sealing element such as taught by Ahlf~ of the disclosed length or of another length, as a matter of design choice, according to the specific requirements and configuration of the invention, for example the size of the housing or the desired communication range. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lindsay, Sakae, and Kawai. The combination of Lindsay and Sakae does not explicitly disclose the housing having a diameter from 5 mm to 500 mm. However, Kawai discloses a casing for an RFID circuit having an outside diameter of 30 mm. Kawai i-f 58. It would have been obvious to one having ordinary skill in the art to implement the housing structure sized as in Kawai, in the device of Lindsay, as a matter of design choice, depending on the specific application desired by the skilled artisan. We note there is no criticality disclosed regarding the particular size of the housing. CONCLUSIONS 1. The combination of Lindsay and Sakae discloses a sealing element that is a radiative portion of the antenna and contributes to an effective area of a loop formed by the antenna. 2. The Examiner's proposed combination is not contrary to Lindsay's explicit teachings. 3. The combined teachings of Lindsay and Sakae suggest to the skilled artisan the desirability of employing the sealing element as a radiative portion of the antenna. 8 Appeal2015-001127 Application 11/741,629 DECISION The Examiner's decision rejecting claims 1-13 is affirmed. The Examiner's decision rejecting claims 14 and 15 is reversed. TIME PERIOD This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), which provides that a decision including a new ground of rejection shall not be considered final for purposes of judicial review. With respect to the affirmed rejection, Appellant may file a single request for rehearing within two months from the date of this decision under § 41.52(a)(l). With respect to the new grounds of rejection, the Appellant, within two months from the date of this decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of proceedings (37 C.F.R. § § 41.50(b)) as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) 9 Copy with citationCopy as parenthetical citation