Ian J. Forster et al.

Patent Trials and Appeals Board

Nov 8, 2019

13014806 - (D) (P.T.A.B. Nov. 8, 2019)

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.
13/014,806 01/27/2011 Ian J. FORSTER 4874-US-1 1422
63721 7590 11/08/2019
Avery Dennison Corporation
Michael C. Maier
8080 Norton Parkway, 22D
Mentor, OH 44060
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
11/08/2019 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):
rbis_patentdocket@averydennison.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IAN J. FORSTER, DAVID WELCH, HAOCHUAN WANG,
SRIRAM VENKATASANTHANAM, and STEVEN R. CHAPMAN
____________

Appeal 2018-004866
Application 13/014,806
Technology Center 3600
____________

Before ROBERT E. NAPPI, CATHERINE SHIANG, and
MICHAEL T. CYGAN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 11–16 and 20–33, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Avery Dennison Corp. as the real party in interest. App.
Br. 3.

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Application 13/014,806

2
STATEMENT OF THE CASE
Introduction
The present invention relates to “the art of graphic displays and/or
signage.” Spec. ¶ 2. Claim 11 is exemplary:
11. A method of using an advertising system, comprising
the steps of:
providing a frame having a backlighting illumination
source, an RFID reader and a controller connected to the RFID
reader;
producing a replaceable graphic medium, the graphic
medium having at least one of advertising and marketing
information provided on a surface thereof; and
an RFID inlay, the RFID inlay having a chip encoded
with product information and illumination instructions;
wherein the replaceable graphic medium is transparent,
semitransparent, or translucent;
affixing the replaceable graphic medium to the frame;
sensing an individual near the frame;
varying the output of the illumination source with the
controller in connection with the illumination instructions
provided on the chip;
detecting a mobile communication device near the fame;
uploading at least a portion of the information encoded
on the chip on the RFID inlay to the mobile communication
device; and
displaying information on the mobile communication
device;
wherein the controller shuts off the light source if the
RFID reader does not detect valid authentication data on the
chip.

Appeal 2018-004866
Application 13/014,806

3
References and Rejections2
Claims 11, 12, 14, 20, and 27–30 are rejected under pre-AIA 35
U.S.C.103(a) as being unpatentable over Reynolds (US 2003/0115096 A1;
June 19, 2003), Hines (US 2008/0276507 A1; Nov. 13, 2008), Selgrath (US
2009/0212919 A1; Aug. 27, 2009), and Michaelis (US 2008/0262928 A1;
Oct. 23, 2008). Final Act. 4–10.3
Claim 13 is rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Reynolds, Hines, Selgrath, Michaelis, JP 02002162918A
(June 7, 2002), and JP 02007034362A (Feb. 8, 2007). Final Act. 10–11.
Claims 15, 25, and 26 are rejected under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over Reynolds, Hines, Selgrath, Michaelis, and Shin (US
2002/0154633 A1; Oct. 24, 2002). Final Act. 11–12.
Claim 16 is rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Reynolds, Hines, Selgrath, Michaelis, and Ribi (US
2007/0273951 A1; Nov. 29, 2007). Final Act. 12–13.
Claims 21–24 are rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Reynolds, Hines, Selgrath, Michaelis, and JP
02002162918A. Final Act. 13–15.
Claim 31 is rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Reynolds, Hines, Selgrath, Michaelis, and Hassenbuerger
(US 2006/0266824 A1; Nov. 30, 2006). Final Act. 15–16.

2 Throughout this opinion, we refer to the (1) Final Office Action dated Oct.
6, 2016 (“Final Act.”); (2) Appeal Brief dated July 28, 2017 (“App. Br.”);
(3) Examiner’s Answer dated Feb. 5, 2018 (“Ans.”); and (4) Reply Brief
dated April 16, 2018(“Reply Br.”).
3 The Examiner lists claims 17–19 (Final Act. 4), but those claims have been
cancelled (Final Act. 1; App. Br. 5).
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Claims 32 and 33 are rejected under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over Reynolds, Hines, Selgrath, Michaelis,
Hassenbuerger, and Reiter (US 2011/0047759 A1; Mar. 3, 2011). Final Act.
17–18.

ANALYSIS4
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in finding the cited portions of Reynolds
teach “wherein the controller shuts off the light source if the RFID reader
does not detect valid authentication data on the chip,” as recited in each of
independent claims 11, 20, and 21. See App. Br. 18–19; Reply Br. 13–14.
The Examiner finds:
wherein the controller shuts off the light source if the RFID
reader does not detect valid authentication data on the chip;
(paragraph 0066), and (paragraph 0035-0036).
Final Act. 5.
Appellant argues
The Examiner cited Reynolds’ disclosures at paragraphs
[0035], [0036], and [0066] as allegedly teaching this feature.
However, paragraphs [0035] and [0036] merely refer to the use
of a motion detector to selectively illuminate a display if
motion is detected along the aisle. Furthermore, paragraph
[0066] merely discloses an inventory detection and updating
flow chart. Reynolds completely fails to disclose or suggest
using a controller to shut off the light source if an RFID reader
does not detect valid authentication data on a chip. The recited
claim feature provides advantages over the prior art by
preventing counterfeiting and the unauthorized

4 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not need to reach the additional arguments.
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5
removal/installation of media. See paragraph [0028] of the
present specification.
App. Br. 18.
The Examiner does not respond to that argument. We have reviewed
the cited Reynolds portions, and agree with Appellant that they do not
discuss “the controller shuts off the light source if the RFID reader does not
detect valid authentication data on the chip,” as required by the claims. See
App. Br. 18. Absent further explanation from the Examiner, we do not see
how the cited Reynolds portions teach the disputed claim limitation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of independent claims 11, 20, and 21.
We also reverse the Examiner’s rejection of corresponding dependent
claims 12–16 and 22–33. Although the Examiner cites additional references
for rejecting some dependent claims, the Examiner has not shown the
additional references overcome the deficiency discussed above in the
rejection of independent claims 11, 20, and 21.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 11–16 and 20–33
under 35 U.S.C. § 103.
In summary:
Appeal 2018-004866
Application 13/014,806

6
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
11, 12, 14, 20,
27–30
103 Reynolds,
Hines, Selgrath,
Michaelis
11, 12, 14, 20,
27–30
13 103

Reynolds,
Hines, Selgrath,
Michaelis, JP
02002162918A,
JP
02007034362A
13
15, 25, 26 103 Reynolds,
Hines, Selgrath,
Michaelis, Shin
15, 25, 26
16 103 Reynolds,
Hines, Selgrath,
Michaelis, Ribi
16
21–24 103 Reynolds,
Hines, Selgrath,
Michaelis, JP
02002162918A
21–24
31 103 Reynolds,
Hines, Selgrath,
Michaelis,
Hassenbuerger
31
32, 33 103 Reynolds,
Hines, Selgrath,
Michaelis,
Hassenbuerger,
Reiter
32, 33
Overall
Outcome
11–16, 20–33

REVERSED