10167056 (B.P.A.I. Aug. 30, 2010)

Ex Parte Salemi et al

Board of Patent Appeals and InterferencesAug 30, 2010

10167056 (B.P.A.I. Aug. 30, 2010)

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. 10/167,056 06/11/2002 Robert D. Salemi 01-1299 3923 7590 08/30/2010 James M. Deimen Suite 300 320 N. Main Street Ann Arbor, MI 48104-1192 EXAMINER DAVIS, CASSANDRA HOPE ART UNIT PAPER NUMBER 3611 MAIL DATE DELIVERY MODE 08/30/2010 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 ROBERT D. SALEMI, DENNIS J. TATE, and DAVID W. DUNWIDDIE ____________________ Appeal 2009-006311 Application 10/167,056 Technology Center 3600 ____________________ Before: WILLIAM F. PATE III, JOHN C. KERINS, and MICHAEL W. O’NEILL, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-006311 Application 10/167,056 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 4- 6 and 21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to concealed security tags on bottles. Claim 4, reproduced below, is illustrative of the claimed subject matter: 4. A bottle having a top, bottom and sidewall, a depressed area formed in the sidewall, said depressed area sized to be hidden by a label to be placed thereover and of a depth just sufficient to enable a fake security tag to be positioned in the depressed area, a fake security tag positioned in the depressed area to simulate the presence of a security tag and a label attached to the bottle, said label covering the fake security tag and depressed area. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Wallace US 1,686,354 Oct. 2, 1928 REJECTION Claims 4-6 and 21 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Wallace. Ans. 3. OPINION We have carefully reviewed the rejection on appeal in light of the arguments of the Appellants and the Examiner. It is our finding that the Appeal 2009-006311 Application 10/167,056 3 claimed subject matter lacks novelty over the Wallace reference. Therefore the rejection on appeal is affirmed. The first issue that presents itself is the construction of the claim term “fake security tag.” The Appellants and the Examiner have not construed this claim limitation. Moreover, Appellants do not define “fake security tag” in the Specification. On the other hand, Appellants do give examples of real security tags in the Specification. Spec. 3:11-13. According to Appellants, a real security tag can be a variety of devices printed or formed which can be read through the label by electronic, electromagnetic or optical devices. However, this discussion does not inform a construction of “fake security tag.” In Appellants’ Brief, Appellants state that the purpose of the fake security tag is to fool a shoplifter or thief into believing a real security tag is under the label when the shoplifter or thief presses on the label and feels the shape underneath. Br. 4, ll. 6-8. Accordingly, the construction of the claim term “fake security tag” is an article that feels like or could be mistaken for a real security tag. We will use this construction in our analysis of the Examiner’s findings of fact. We adopt the Examiner’s findings on page 3 of the Answer as our own. Given our claim construction above, it is our further finding that the recipe booklet 16 of Wallace would feel like a rectangular security tag when placed underneath the label and in the recess 11 of the bottle of Wallace. Accordingly, we are in agreement with the Examiner that the subject matter of claims 4 and 5 lacks novelty over the Wallace disclosure. Likewise, we find the claim term “simulated substrate”, appearing in dependent claims 6 and 21, to be equally broad. We see no reason why the jacket 13 of Wallace could not be considered a simulated substrate when felt Appeal 2009-006311 Application 10/167,056 4 by a potential shoplifter or thief. Accordingly, we agree with the Examiner that claims 6 and 21 lack novelty over the Wallace disclosure. We have carefully reviewed Appellants’ arguments. Appellants’ arguments seem to be directed to what a fake security tag is, but Appellants have never defined the term. Furthermore, the term “fake security tag” seems to be defining the article by what it is not, i.e., a real or actual security tag. As can be seen, such negative limitations serve to overly broaden the claims and encompass subject matter that Appellants regard as far from their inventive endeavor. We acknowledge Appellants’ argument that Wallace does not contain a fake booklet. However, as noted above, Wallace does have an article that a shoplifter or a thief might sense is a security tag when the outline of the bottle is palpated. We agree with the Examiner that this satisfies the limitation of a “fake security tag.” DECISION The rejection of claims 4-6 and 21 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED nlk James M. Deimen Suite 300 320 N. Main Street Ann Arbor MI 48104-1192