Ex Parte NiederhuefnerDownload PDFPatent Trial and Appeal BoardDec 30, 201613345284 (P.T.A.B. Dec. 30, 2016) Copy Citation 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. 13/345,284 01/06/2012 Joerg Niederhuefner 508036 4732 53609 7590 01/04/2017 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER AKHTER, SHARMIN ART UNIT PAPER NUMBER 2682 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOERG NIEDERHUEFNER1 Appeal 2016-001125 Application 13/345,284 Technology Center 2600 Before JASON V. MORGAN, BRUCE R. WINSOR, and MICHAEL M. BARRY, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—30. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies the real party in interest as Southern Imperial, Inc. (App. Br. 2.) Appeal 2016-001125 Application 13/345,284 Introduction Appellant states the “invention generally relates to systems used for the prevention of theft of packaged products.” (Spec. 12.) Claim 1 is representative: 1. A method of preventing the theft of packaged products from a building, comprising the steps of: incorporating an electronic device into the packaging material for the packaged product; configuring the electronic device to activate an alarm if the packaged product is removed from the building prior to deactivation of the electronic device; further configuring the electronic device to impair the function or appearance of the packaged product if the packaged product is removed from the building prior to deactivation of the electronic device. (App. Br. Claims App’x 1.) Rejections Claims 1—3, 12—14, 16—20, 22, and 23 stand rejected under 35 U.S.C. § 102(b) as anticipated by Besnard (US 2002/0130777 Al; Sept. 19, 2002). (Final Act. 2—6.) Claims 4 and 21 stand rejected under 35 U.S.C. § 103(a) as obvious over Besnard and Simoneau (US 2004/0036577 Al; Feb. 26, 2004). (Final Act. 7-8.) Claims 5—7, 11, and 26—29 stand rejected under 35 U.S.C. § 103(a) as obvious over Besnard and Ohara (US 5,910,770; June 8, 1999). (Final Act. 8-10.) 2 Appeal 2016-001125 Application 13/345,284 Claims 8—10 and 30 stand rejected under 35 U.S.C. § 103(a) as obvious over Besnard and Jang et al. (US 2010/0000441 Al; Jan. 7, 2010). (Final Act. 8—11.) Claims 15 and 24 stand rejected under 35 U.S.C. § 103(a) as obvious over Besnard and Shen (US 7,338,485 Bl; June 17, 2008). (Final Act. 12.) Claims 25 stands rejected under 35 U.S.C. § 103(a) as obvious over Besnard and Shafer et al. (US 2011/0072132 Al; Mar. 24, 2011). (Final Act. 13.) ANALYSIS Appellant argues the Examiner errs in finding Besnard discloses “incorporating an electronic device into the packaging material for the packaged product” as recited in claim 1 because “as can be seen from FIG. 1 of [Besnard], the neutralization and/or destruction and/or signaling device 20 is not incorporated into any type of product packaging.” (App. Br. 6.) The Examiner answers that Besnard “does teach incorporating the anti-theft device into the packaging material of a packaged product” because it “teaches the device 20 is disposed in the envelope with the documents to be stored or transported (Para. 35).” We agree with Appellant. Disposing a device within a package is not the same as incorporating the device into the packaging material. During prosecution, the Patent Office must interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). 3 Appeal 2016-001125 Application 13/345,284 Relevant ordinary meanings of “incorporate” are “to unite or work into something already existent so as to form an indistinguishable whole” or “to unite in or as one body” (see Merriam Webster’s Collegiate Dictionary, 10th ed, p. 589, Merriam-Webster, Incorporated, Springfield, Massachusetts, U.S.A., 1997). These are consistent with use of the “incorporate” in the Specification (see 33—38), and an ordinarily skilled artisan would have understood the term to have such a meaning. The signaling device of Besnard (which corresponds to the “electronic device” recited in claim 1) is coupled to wires of an envelope by connectors and then placed inside the envelope when in use. (See Figs. 1—3, Tflf 34—35.) We agree with Appellant that connecting or coupling a device by wires that extend from a package (which allows for disconnecting or decoupling) is not incorporating the device into the packaging material. (See App. Br. 5—7.) Thus, we do not sustain the rejection of claim 1. For the same reason we do not sustain the rejection of independent claim 19, which includes an analogous requirement (see App. Br. Claims App’x 3 (“the electronic circuit further configured to be incorporated into packaging material for the packaged product”).) Accordingly, we also do not sustain the rejection of dependent claims 2—18 and 20-30. DECISION For the above reasons, we reverse the rejection of claims 1—30. REVERSED 4 Copy with citationCopy as parenthetical citation