Ex Parte RE41,562 et al

Patent Trial and Appeal Board

Oct 29, 2014

90012095 (P.T.A.B. Oct. 29, 2014)

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.
90/012,095 01/17/2012 RE41,562 012378/000003-562 8864
27299 7590 10/30/2014
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
TARAE, CATHERINE MICHELLE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/30/2014 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 ROUND ROCK RESEARCH, LLC
____________________

Appeal 2014-007813
Reexamination Control 90/012,095
Patent RE 41,562 E
Technology Center 3900
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE1
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–28 and 30–82. Claim 29 has
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Illustrative Claims2
Independent claims 1 and 21, as well as dependent claims 30 and 31,
reproduced below, with key limitations italicized, illustrate the invention:
1. A method for electronic tracking of units originating
from a common source, comprising:
physically associating a first transponder with a common
source, the source comprising a plurality of units physically
joined with one another, the first transponder sending a code
which is electrically associated with common source;

1 We refer to Appellant’s reissued patent number US RE 41,562 E
(“Dando”) issued August 24, 2010, Appeal Brief (“App. Br.”) filed February
5, 2014, and Reply Brief (“Reply Br.”) filed May 27, 2014. We also refer to
the Examiner’s Advisory Action (“Advisory Act.”) mailed October 31,
2013, Answer (“Ans.”) mailed March 27, 2014, and Final Rejection (“Final
Rej.”) mailed August 5, 2013.
2 Claim 29 has been canceled, and we interpret claims 30 and 31
which depend from claim 29 as having a metal identification assembly
having meat assembly, meat spike, rod, point, holder (claim 30), loop (claim
31), and transponder attached to a substrate configured to be retained in the
rod by the holder/loop (claim 30/claim 31). See MPEP 2260.01 (stating that
the content of the canceled base claim remains as part of the confirmed or
allowed dependent claim). Therefore, claim 30 recites a transponder of a
metal identification assembly that is removably attached to a meat spike
having a rod, point, and holder as set forth in claim 30.

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splitting the common source to separate the source into
two or more of the units;
physically associating a second transponder with one of
the two or more units, the second transponder sending a code;
and
electrically associating the code of the second
transponder with an identifier of the common source in a
database.
21. An identification assembly comprising:
a housing having an outer periphery;
a transponder entirely contained within the housing; and
at least one spike removably secured to the housing.
29. [canceled] A metal identification assembly
comprising a transponder removably attached to a meat spike.
30. The assembly of claim 29 wherein: the meat spike
comprises:
a rod having a pair of opposing ends;
a point at one of the opposing ends of the rod; and
a holder at an other of the opening ends of the rod; and
the transponder is attached to a substrate configured to
slide over the rod and be retained by the holder.
Rejections on Appeal
(1) The Examiner rejects claims 1–20, 35, 46–59, 63–68, and 74–82
under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No.
5,478,990, issued Dec. 26, 1995 (“Montanari”), and U.S. Patent No.
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5,781,112, issued July 14, 1988 (“Shymko”). Final Rej. 11–27 and 40–61;
Ans. 3–18 and 31–52.
(2) The Examiner rejects claims 21, 23, 25–28, 30–34, and 36–45
under 35 U.S.C. §§ 102(a), (e) as being anticipated by Shymko.3 Final Rej.
27–40; Ans. 18–31.
(3) The Examiner rejects claims 22 and 24 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Shymko and U.S. Patent No.
4,847,592, issued July 11, 1989 (“Hogen Esch”). Final Rej. 61–62; Ans.
52–54.
(4) The Examiner rejects claims 60–62 and 67–73 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Montanari, Shymko, and U.S.
Patent No. 6,002,344, issued Dec. 14, 1999 (“Bandy”). Final Rej. 62–65;
Ans. 54–57.

3 The Examiner (Ans. 20–22) has treated claims 30 and 31 as rejected by
including claims 30 and 31 in the statement of the rejection (see Final Rej.
27; Ans. 18), as well as addressing the merits of claims 30 and 31 in the
body of the rejection (see Final Rej. 29–30; Ans. 21–22). In addition,
Appellant has also treated claims 30 and 31 as being included in the
rejection for anticipation and as being on appeal (App. Br. 1, 7, 10, and 12–
14). Both the Examiner (Ans. 18 and 20–21) and Appellant (Br. 10)
incorrectly treat claim 29 as rejected for anticipation by Shymko, when both
Appellant (App. Br. 1) and the Examiner (Final Rej. 1) agree that claim 29
has been canceled.
We note that claims 30 and 31 each depend from canceled claim 29
(i.e., each of claims 30 and 31 recite, “The assembly of claim 29 wherein:
the meat spike comprises:”). Therefore, claims 30 and 31 (and not claim 29)
are rejected for anticipation by Shymko.
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ISSUES
Appellant argues separate patentability only for independent claim 1
(App. Br. 8–10; Reply Br. 1–3). Claim 1 recites similar subject matter as
remaining independent claims 7, 10, and 17 which are also rejected for
obviousness over the combination of Montanari and Shymko. Appellant
relies on the arguments presented for claim 1, and make similar arguments
as presented as to claim 1, as to the patentability of claims 2–20, 35, 46–59,
63–68, and 74–82 (App. Br. 8–10 and 19–21; Reply Br. 1–3). Appellant
also presents similar arguments for claims 60–63 and 65–73 as presented for
claims 54 and 65 (App. Br. 21). Therefore, we select claim 1 as
representative of the group of claims rejected for obviousness over
Montanari and Shymko (claims 1–20, 35, 46–59, 63–68, and 74–82), and we
will decided the appeal of claims 60–62 and 67–73 on the same basis as
claims 54 and 65 from which these claims depend (and the appeal of claims
54 and 65 will in turn be decided on the basis of claim 1).
With regard to claims 21, 23, 25–28, 30–34, and 36–45 rejected under
35 U.S.C. §§ 102(a) and (e) over Shymko, we consider (i) independent claim
21 to be representative of the group of claims including 21, 23, 25–28, 31,
39, 41, 44, and 45; and (ii) claim 30 to be representative of the group of
claims including claims 30, 32–34, 38, 40, and 43.4 Because Appellant

4 Each of claims 30, 32–34, 36–38, 40, and 42–43 contain the similarly
recited feature of a transponder or RFID being “attached to a substrate
configured to slide over the rod and be retained by the holder.” Each of
claims 31, 39, 41, 44, and 45 recite an assembly including a meat spike
having a rod, point and loop, as well as a transponder/RFID “attached to a
substrate configured to be retained” in/to “the rod by the loop.” Claims 36
(Footnote continued on next page.)
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relies on the arguments presented as to claim 21 for the patentability of
claims 22 and 24 (App. Br. 21), we will decide the appeal of claims 22 and
24 on the same basis as claim 21 from which these claims depend.
Accordingly, our analysis herein will address representative claims 1,
21, and 30, as well as the groups of claims (i) claims 31, 39, 41, 44, and 45,
and (ii) claims 36 and 42.
Based on our review of the administrative record, Appellant’s
contentions (App. Br. 8–21; Reply Br. 1–8), the Examiner’s findings and
conclusions (Final Rej. 11-65; Ans. 3–56) as well as the Examiner’s
response to Appellant’s contentions in the Answer (Ans. 57–69), the five
pivotal issues before us follow:
(1) Did the Examiner err in concluding that the combination of
Montanari and Shymko is properly combinable and the applied references
collectively teach or would have suggested a method for electronic tracking
of units originating from a common source using a code and identifier
associated with the common source, as recited in representative claim 1?
(2) Did the Examiner err in concluding that Shymko discloses an
identification assembly including a housing, transponder, and “at least one
spike removably secured to the housing,” as recited in representative claim
21?

and 42 each contain the similarly recited feature of an identification
assembly including a housing, transponder, “wherein the at least one spike
extends from the sidewall” which joins a pair of planar surfaces of the
housing, “wherein the planar surfaces comprise circular outer peripheries,
and wherein the sidewall extends around the circular outer peripheries.”
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(3) Did the Examiner err in concluding that Shymko discloses an
assembly including a meat spike having a rod, point and loop, as well as a
transponder/RFID “attached to a substrate configured to be retained” in/to
“the rod by the loop,” as recited in each of claims 31, 39, 41, 44, and 45?
(4) Did the Examiner err in concluding that Shymko discloses an
assembly including meat spike having a rod, point, and holder, as well as a
transponder “attached to a substrate configured to slide over the rod and be
retained by the holder,” as recited in claims 30, 38, and 43?
(5) Did the Examiner err in concluding that Shymko discloses an
identification assembly including a housing, transponder, “wherein the at
least one spike extends from the sidewall” which joins a pair of planar
surfaces of the housing, “wherein the planar surfaces comprise circular outer
peripheries, and wherein the sidewall extends around the circular outer
peripheries,” as recited in each of independent claims 36 and 42?

ANALYSIS
We have reviewed the Examiner’s rejections (Final Rej. 11–65) in
light of Appellant’s contentions in the Appeal Brief (App. Br. 8–21) and the
Reply Brief (Reply Br. 1–8) that the Examiner has erred, as well as the
Examiner’s response to Appellant’s arguments in the Brief (Ans. 56–69).
With the exception of Appellant’s conclusions as to representative claim 30
(App. Br. 12–13; Reply Br. 5–7) and independent claims 36 and 42 (App.
Br. 15–17; Reply Br. 7–8), we disagree with Appellant’s conclusions. With
regard to representative claims 1 and 21, and claims 31, 39, 41, 44, and 45,
we concur with the conclusions reached by the Examiner, and we adopt as
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our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Rej. 11–36 and 38–65; Ans. 3–23 and
25–56), and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief (Ans. 57–63, 66, and 69).
We highlight and amplify certain teachings and suggestions of the
references, as well as certain ones of Appellant’s arguments as follows.
As to representative claim 1, we agree with the Examiner (Ans. 3–18
and 58–62) that the combination of Montanari and Shymko is properly
combinable and the applied references collectively teach or would have
suggested a method for electronic tracking of units originating from a
common source using a code and identifier associated with the common
source, as recited in representative claim 1. Appellant’s arguments
pertaining to the failure of Montanari and Shymko to teach or suggest
receiving an “updateable code” or to add information throughout the
lifecycle of the food product being tracked are not commensurate in scope
with the subject matter recited in representative claim 1. Claim 1 does not
require that the code or identifier recited in the claim be “updateable.” In
view of the foregoing, Appellant’s arguments (App. Br. 8–10 and 15–21;
Reply Br. 1–3) that Montanari and/or Shymko do not teach or suggest
receiving an “updateable code” are not persuasive.
As to representative claim 21, we agree with the Examiner (Ans. 18–
31 and 62) that Shymko discloses an identification assembly including a
housing, transponder, and “at least one spike removably secured to the
housing,” as recited in representative claim 21. The spike (hanger section 42
shown in Figure 1 of Shymko) is “removably secured” to housing (the
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substrate 34, support structure 35, and the walls of the cylinder containing
the transponder 10). Shymko discloses that hanger section 42 carries the
carcass and that the arrangement is “shown only schematically since these
will be well known to one skilled in the art” (col. 6, ll. 10–12). In view of
this disclosure of the schematics of Figure 1, along with what is actually
shown in Figure 1 (hanger section 42 hangs in/through/over the loop which
is part of element 34 and the support structure 35), the technologist would
know that hanger section 42 is removably attached to element 34 and
support structure 35. See In re Aslanian, 590 F.2d 911, 914 (CCPA 1979)
(drawings can be relied upon for what they reasonably disclose and suggest
to one of ordinary skill in the art); see also Mooney v. Brunswick Corp., 489
F.Supp. 544, 557 (D.C.Wis. 1980) (“An accidental disclosure from a
drawing that teaches or suggests a claimed disclosure is available as prior art
if the disclosure is ‘clearly made in a drawing.’” (citations omitted)). In
view of the foregoing, Appellant’s arguments (App. Br. 10–12; Reply Br. 3–
5) that Shymko’s hanger section 42 is not removably secured are not
persuasive.
As to claims 30, 32–34, 36–38, 40, 42, 43, and 45, we agree with
Appellant’s principal argument (App. Br. 12–13; Reply Br. 5–7) pertaining
to claims 30, 38, and 43 that Shymko fails to disclose an assembly including
meat spike having a rod, point, and holder, as well as a transponder
“attached to a substrate configured to slide over the rod and be retained by
the holder,” as recited in each of claims 30, 38, and 43. Even if Shymko’s
element 34 is considered to be a substrate, and the various parts of hanger
section 42 are considered to include a rod, point, and holder, we do not agree
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with the Examiner that element 34 operates to “slide over the rod and be
retained by the holder” as recited in the claims. We find Appellant’s similar
arguments presented as to claims 32–34, 36, 37, 40, 42, and 45 to be
persuasive for similar reasons.
As to claims 36 and 42, we agree with Appellant (App. Br. 15–17;
Reply Br. 7–8) that Shymko’s spike 42 shown in Figure 1 extends from a
bracket (or substrate) 34, and not from a sidewall as recited and defined in
each of claims 36 and 42.

CONCLUSIONS
(1) The Examiner did not err in rejecting representative claim 1, and
claims 2–20, 35, 46–59, 63–68, and 74–82 grouped therewith, under 35
U.S.C. § 103(a) as being unpatentable over the combination of Montanari
and Shymko. For similar reasons as provided for representative claim 1, the
Examiner also did not err in rejecting claims 22, 24, 60–62, and 67–73 as
being obvious over the various combinations that include Shymko.
(2) The Examiner did not err in rejecting representative claim 21, and
claims 23, 25–28, 31, 39, 41, 44, and 45 grouped therewith, under 35 U.S.C.
§ 102 as being anticipated by Shymko. The Examiner erred in rejecting
claims 30, 32–34, 36–38, 40, 42, 43, and 45 as being anticipated by Shymko.
(3) Appellant has not shown that the Examiner erred in rejecting
claims 31, 39, 41, 44, and 34 based on the Examiner’s conclusion that
Shymko discloses an assembly including a meat spike having a rod, point
and loop, as well as a transponder/RFID “attached to a substrate configured
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to be retained” in/to “the rod by the loop,” as recited in each of claims 31,
39, 41, 44, and 45.

DECISION
We affirm the Examiner’s (i) anticipation rejection of claims 21, 23,
25–28, 31, 39, 41, 44, and 45, and (ii) obviousness rejections of claims 1–20,
22, 24, 35, and 46–82.
We reverse the Examiner’s anticipation rejection of claims 30, 32–34,
36–38, 40, 42, and 43.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

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Patent Owner:

GADZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127

Third Party Requester:

TUCKER ELLIS LLP
925 EUCLID AVENUE
SUITE 1150
CLEVELAND, OH 44115-1414

ELD