Ex Parte Held

Board of Patent Appeals and Interferences

Aug 31, 2012

11741629 (B.P.A.I. Aug. 31, 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.
11/741,629 04/27/2007 Philippe Held 5607-6-PUS 3365
22442 7590 09/04/2012
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
EXAMINER
LAU, HOI CHING
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
09/04/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILIPPE HELD
____________

Appeal 2011-007231
Application 11/741,6291
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.

1 The real party in interest is Assa Abloy AB.
Appeal 2011-007231
Application 11/741,629

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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
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.

REFERENCES
Ahlf US 7,098,792 B1 Aug. 29, 2006
Kawai US 2002/0024439 A1 Feb. 28, 2002
Lindsay US 2005/0242950 A1 Nov 3, 2005

REJECTIONS
Claims 1, 2, and 10-13 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Lindsay.
Claims 3-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Lindsay.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lindsay in view of Ahlf.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lindsay in view of Kawai.
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Application 11/741,629

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ISSUES
With respect to the anticipation rejection, Appellant argues that
Lindsay does not teach that a part of the antenna forms a sealing element
(App. Br. 4) or visible tamper-evident elements (App. Br. 5-6).
With respect to the obviousness rejection, Appellant argues that
Lindsay teaches away from an antenna forming a sealing element (App. Br.
9).
Appellants’ contentions present us with the following issues:
1. Does Lindsay teach an antenna that forms a sealing element?
2. Does Lindsay teach visible tamper-evident elements?
3. Does Lindsay teach a second RFID circuit?
4. Does the combination of Lindsay and Ahlf teach or suggest a
sealing element having a length between 1 cm and 5 m?
5. Does the combination of Lindsay and Kawai teach or suggest the
antenna and integrated circuit being sealed in a housing comprising at least
one of a plastic and a metal?

PRINCIPLES OF LAW
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). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
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Application 11/741,629

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the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407, (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991). If the proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, then there
is no suggestion or motivation to make the proposed modification. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court
has held that “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg. v. SGS Importers Int’l,
73 F.3d 1085, 1090 (Fed. Cir. 1995).

ANALYSIS
CLAIMS 1, 2, AND 10-13
Appellant argues that Lindsay does not teach that a part of the antenna
forms a sealing element (App. Br. 4). We are not persuaded by Appellant,
because we agree with the Examiner’s finding that the connection end point
between the sealing element 406 and antenna 404 may be considered part of
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Application 11/741,629

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the antenna (Ans. 11), and therefore the connection end point is “a part of
said antenna” that “forms a sealing element.”
We further agree with the Examiner, contrary to Appellant’s argument
(App. Br. 5-6), that Lindsay teaches visible tamper-evident elements (¶
[0052]). “The RFID chip is connected to the antenna with delicate
conductive leads (e.g. micro printed conductive lines) to form a tamper
evident seal that is broken when the bottle is opened” (id.).
We are not persuaded by Appellant’s further argument regarding
claims 12 and 13 (App. Br. 10-11).2 We agree with the Examiner’s finding
that Lindsay teaches a second RFID circuit (Lindsay element 408, elements
508 and 502 taken together, or 608 and 602 taken together). We agree with
the Examiner that the second RFID circuit maintains functionality when the
sealing element from the primary antenna is broken or separated (Ans. 13).
We find that the Examiner did not err in rejecting claims 1, 2, and
10-13 under § 102. We will sustain the Examiner’s anticipation rejection.

CLAIMS 3-9
We are not persuaded by Appellant’s arguments that Lindsay fails to
teach or suggest the subject matter of claim 3. We agree with the Examiner’s
finding that Figure 4 of Lindsay illustrates a sealing element (leads 406)
having first and second ends connected to a respective connecting point.
Appellant again argues that Lindsay expressly teaches a sealing element that
is separate from the antenna (App. Br. 9). As noted supra with reference to

2 Appellant’s argument concerning claims 12 and 13 appears in the section
of the Brief discussing the Examiner’s § 103 rejection. We will treat this
argument as pertaining to the Examiner’s rejection of claims 12 and 13
under § 102 (Ans. 6).
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claim 1, we agree with the Examiner’s finding that Lindsay teaches that a
part of the antenna forms a sealing element. We agree with the Examiner’s
conclusion that it would have been obvious to include the configuration of
Lindsay Figure 4 in the embodiment of Lindsay Figures 5-6 (Ans. 13).
Because we conclude that the Examiner did not err in rejecting claims
3-9 under § 103 as being unpatentable over Lindsay, we will sustain the
Examiner’s rejection.
CLAIM 14
Appellant argues that it would not have been obvious to combine
Lindsay with Ahlf to arrive at the claimed invention because Ahlf does not
teach dimensions for a sealing element (App. Br. 11-12). We are not
persuaded by Appellant’s argument, because Appellant has not disclosed the
criticality of the length of the sealing element. We therefore agree with the
Examiner’s conclusion that the specific length of the sealing element would
have been an arbitrary choice based on the specific requirements and
configuration of the system (Ans. 14).
We conclude that the Examiner did not err in rejecting claim 14 as
unpatentable over Lindsay in view of Ahlf. We will sustain the § 103
rejection.
CLAIM 15
Appellant argues that Lindsay teaches away from an antenna and
integrated circuit being sealed in a housing (App. Br. 12). We are not
persuaded by Appellant’s argument, instead agreeing with the Examiner that
Lindsay teaches a housing comprising at least one of a plastic and a metal
(Ans. 9; Lindsay ¶ [0064], e.g., a foil casing).
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We conclude that the Examiner did not err in rejecting claim 15 as
being unpatentable over Lindsay in view of Kawai. We will sustain the
Examiner’s § 103 rejection.

CONCLUSIONS
1. Lindsay teaches an antenna that forms a sealing element.
2. Lindsay teaches visible tamper-evident elements.
3. Lindsay teaches a second RFID circuit.
4. The combination of Lindsay and Ahlf suggests a sealing element
having a length between 1 cm and 5 m.
5. The combination of Lindsay and Kawai teaches an antenna and
integrated circuit being sealed in a housing comprising at least one of a
plastic and a metal.
DECISION
The Examiner’s decision rejecting claims 1-15 is 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)(2010).

AFFIRMED

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