SONY CORPORATION

Patent Trials and Appeals Board

Jun 9, 2021

2020001786 (P.T.A.B. Jun. 9, 2021)

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.
14/896,816 12/08/2015 Hideo KOSAKA 1946-0838 8152
60803 7590 06/09/2021
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
EXAMINER
RUSHING, MARK S
ART UNIT PAPER NUMBER
2685
MAIL DATE DELIVERY MODE
06/09/2021 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 HIDEO KOSAKA

Appeal 2020-001786
Application 14/896,816
Technology Center 2600

Before ALLEN R. MACDONALD, JEAN R. HOMERE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1 and 3–10, 17, and 18. Appeal Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We refer to the Specification, filed Dec. 8, 2015 (“Spec.”); Final Office
Action, mailed May 8, 2019 (“Final Act.”); Appeal Brief, filed Oct. 8, 2019
(“Appeal Br.”); Examiner’s Answer, mailed Nov. 7, 2019 (“Ans.”); and
Reply Brief, filed Jan. 6, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sony
Corp. Appeal Br. 3.
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Application 14/896,816
2
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to article
packing element (10) including seal breakage detecting module (40) emitting
tracking signals to detect a seal breakage in package/blister pack (20) for
purposes of managing and administering the transportation of packaged
food, cosmetics, or medicine. Spec. ¶¶ 16, 25. Figure 2, reproduced below, is
useful for understanding the claimed subject matter:

Figure 2 illustrates article packing element (10) including seal breakage
detecting module (40) emitting tracking signals to detect a seal breakage in
package/blister pack (20). Id. ¶ 16.

In particular, seal breakage detecting module (40) includes signal
processor (44) containing detection unit (60) transmitting a test signal to
lines (36) of blister pack (20) via terminal section (42). Id. ¶ 25. Upon
failing to receive a return signal via container portion region (24, 34) after a
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Application 14/896,816
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predetermined delay time has elapsed since the test signal transmission,
detection unit (60) detects a breakage in the seal of the container portion. Id.
Independent claim 1 is illustrative of the claimed subject matter:
1. A signal processing device comprising:
a processor that is configured to execute a program; and
a non-transitory computer-readable memory that is
configured to store the program for causing the processor to
execute a method, the method comprising:
transmitting a signal to one or more signal lines
formed of a breakable material in such a manner that the
signal passes through regions corresponding to one or
more respective container portions of a package for
containing one or more respective articles; and
detecting seal breakage of each container portion
on the basis of whether the transmitted signal returns via
each region,
wherein the processor is further configured to determine
that the transmitted signal returns by checking a status of a
general purpose input/output (GPIO) of the processor, and
wherein seal breakage of a first container portion is
detected in a case in which a first signal does not return via a
first region when a predetermined delay time has elapsed since
a transmission time of the first signal that is to pass through the
first region corresponding to the first container portion.

Appeal Br. 19 (emphasis added).
III. REFERENCES
The Examiner relies upon the following references as evidence.3
Name Reference Date
Hanpeter US 4,616,316 Oct. 7, 1986
Gordon US 4,617,557 Oct. 14, 1986
Niemiec US2003/0063524 Apr. 3, 2003

3 All reference citations are to the first named inventor only.
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Application 14/896,816
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Lev US 2009/0189765 A1 July 30, 2009
Greenberg US 2013/0307683 A1 Nov. 21, 2013
IV. REJECTIONS
The Examiner rejects claims 1 and 3–18 as follows:
Claims 1, 3, 4, and 6–9 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Gordon, Niemiec, and Lev.
Final Act. 2–6.
Claim 5 stands rejected under 35 U.S.C. § 103 as unpatentable over
the combined teachings of Gordon, Niemeic, Lev, and Hanpeter. Id. at 6–7.
Claims 10, 17, and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Gordon, Niemiec, Lev, and
Greenberg. Id. at 7–8.
IV. ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 10–18 and the Reply Brief, pages 4–9.4 We are not
persuaded by Appellant’s contentions.
Appellant argues that the Examiner errs in rejecting claims 1, 3, 4, and
6–9 as obvious over the combination of Gordon, Niemiec, and Lev. Appeal
Br. 10–15; Reply Br. 4–6. In particular, Appellant argues that Lev is non-
analogous art, and therefore cannot be properly combined with Gordon,
which relates to “electronic circuitry to remind the patient when the next
dose is due”. Appeal Br. 12 (citing Gordon Abstract). Further, Appellant
argues that because Lev’s theft deterrence apparatus, Gordon’s medication

4 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are forfeited. See
37 C.F.R. § 41.37(c)(1)(iv) (2017).
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packaging, and Niemiec’s drug delivery system are directed to different
fields of endeavor, the Examiner’s proposed combination of Gordon, Lev,
and Niemiec is not supported by sufficient rationale. Id. According to
Appellant, while Lev pertains to a general purpose input/output (GPIO)
controller in a security apparatus for protecting electronic devices from theft,
it is not even remotely related to medication packaging or other drug
delivery management system. Id.
More particularly, Appellant argues the following:
Appellant respectfully submits that Lev is directed to an anti-theft
device which determines undesired disconnection of wires from a
single electronic device (see Lev para. [0001]), whereas Gordon
pertains to “aiding patient compliance with a desired medication
regimen” based on scheduled interruptions of conductive pathways
that occur according to the desired “removal of a dose of medicine.”
Gordon col. 1, lines 6-7, Abstract. As such, while Gordon and Lev
both generally relate to interruption of conductive pathways, Gordon
teaches to monitor a plurality of desired interruptions of such
pathways indicating compliance with a scheduled removal of
medicine. By contrast, Lev teaches to monitor a single pathway to
determine if such pathway is undesirably severed, which may indicate
theft of the electronic device to which the conductive pathway is
connected. Moreover, there is no teaching or suggestion in Lev that is
even remotely related to medication packaging or other drug delivery
management system that is based on intended interruption of each of a
plurality of conductive pathways. Thus, Appellant respectfully
submits that Lev is not reasonably pertinent to the particular problem
contemplated by Gordon, nor to the particular problem addressed by
the claimed invention, and so one of ordinary skill in the art would not
have had sufficient reason to combine the teachings of the cited
references to achieve the claimed subject matter.

Reply Br. 5.
Additionally, Appellant argues the proposed combination of Gordon,
Niemiec, and Lev does not teach or suggest using “a predetermined delay
Appeal 2020-001786
Application 14/896,816
6
time” in determining seal breakage, as recited in independent claim 1.
Appeal Br. 13–14 (citing Spec. ¶ 25); Reply Br. 6. Therefore, Appellant
submits that the proposed combination of references is made based on
impermissible hindsight gleaned from Appellant’s own disclosure. Appeal
Br. 14.
We are not persuaded by Appellant’s argument that Lev is non-
analogous art, and, therefore, that Lev cannot be properly used in the
proffered combination. “Whether a reference in the prior art is ‘analogous’ is
a fact question.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir.
1987)).
Two criteria have evolved for answering the analogous art
question: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
Id. at 658–59 (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In
re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
We agree with the Examiner that the cited solution of Lev is directed
to the same problem with which Appellant’s claimed subject matter is
concerned. Ans. 5. As correctly noted by the Examiner, both Appellant’s
claimed subject matter and Lev are concerned with using the well-known
and widely used technique of “monitoring a conductive pathway to
determine and generate desired alerts when the pathway is interrupted”. Id.
See also Spec. ¶ 23; Lev ¶¶ 13, 14, 17. Because Lev’s solution pertains to
the particular problem with which Appellant’s claimed subject matter is
involved, we are thus satisfied that Lev qualifies as analogous art. See
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Application 14/896,816
7
Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359–61 (Fed.
Cir. 2020).
Further, we are not persuaded by Appellant’s argument that the
Examiner’s proposed reason to combine the teachings of Lev with those of
Gordon and Niemec is insufficient, thereby rendering the proposed
combination improper. The U.S. Supreme Court has held “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007). The Court further instructs that:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.
Id. at 418. “[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited by
KSR, 550 U.S. at 418). However, the Court also instructs that “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418.
In addition, the Court instructs, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. at 417.
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This precedent controls, and the application of the cited legal
principles to the facts of this appeal provide us with the necessary guidance
in affirming this obviousness rejection. The Examiner relies upon Lev to
teach the technique of “monitoring a conductive pathway to determine and
generate desired alerts when the pathway is interrupted”. Ans. 5.
Accordingly, the Examiner concludes that, at the time of the claimed subject
matter, combining Lev’s teachings with those of Gordon and Niemiec to
achieve the claimed device would have been obvious to the ordinarily skilled
artisan because it would have yielded “using a GPIO in order to perform a
predetermined security measure in response to detecting the absence of the
electrical signal, using readily available components.” Final Act. 4 (citing
Lev ¶ 13). We agree with the Examiner that the proposed combination of the
teachings of Gordon, Niemiec, and Lev is supported by a preponderance of
the evidence, and the ensuing conclusion of obviousness is consistent with
controlling authorities.
Now, turning to Appellant’s argument that the Godon, Niemiec, and
Lev combination does not teach using “a predetermined delay” in
determining seal breakage, we note that Appellant’s Specification states the
following:
For example, the detection unit 60 can detect the breakage of
the seal of the container portion 24a, if the test signal does not return
via the container portion region 34a when a predetermined delay time
has elapsed since the transmission time of the test signal that is to
pass through the container portion region 34a corresponding to the
container portion 24a. In the same way, the detection unit 60 can
detect the breakage of the seal of the container portion 24b, if the test
signal does not return via the container portion region 34b when a
predetermined delay time has elapsed since the transmission time
of the test signal that is to pass through the container portion region
34b corresponding to the container portion 24b.
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Spec. ¶ 25 (emphasizes added).
Although the cited portion of the Specification discusses examples
wherein a “predetermined delay time” is used to determine whether the seal
of a package is broken, it does not confer a special meaning to the cited
phrase. Instead, the cited examples seem to ascribe to “predetermined delay
time” its ordinary meaning of a preset time period during which a response
to a transmitted signal is expected. As such, we broadly but reasonably
construe “predetermined delay time” consistent with the Specification to
mean “a time period during which a response to a transmitted signal is
expected”.5 Notwithstanding the disclosed use of a predetermined delay
time, we note that the claimed “detecting seal breakage” step turns on the
failure to receive a return signal in response to the transmitted signal, not
any predetermined delay time. Therefore, irrespective of a predetermined
delay time, the seal breakage is detected based on the failure to receive a
return signal. Instead, the “predetermined delay time” is only required in the
separate “wherein” clause that requires “seal breakage . . . is detected in a
case in which a first signal does not return . . . when a predetermined delay
time has elapsed,” which does not preclude that seal breakage also is
detected in a case in which a first signal does not return before the

5 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would have been interpreted by one of ordinary skill in the art. In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); see also In re
Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (noting that such
interpretation is one “that corresponds with what and how the inventor
describes his invention in the specification, i.e., an interpretation that is
‘consistent with the specification’”).
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predetermined delay time has elapsed. Here, an artisan would recognize that
once “interrupting the compartment’s uniquely associated conducting line”
(Gordon (col. 5:2–3)) has occurred, the condition of this conducting line is
now static (unchanging) and detecting of the interruption does not change
based on adding a time delay in performing the detection.
As correctly noted by the Examiner, Gordon discloses a system for
determining whether the seal of a medication package is broken by using a
scanner that continuously scans the conducting pathways or compartments
of the medication package to provide an output X for a compartment, which
is compared to the last known status Y of the compartment, stored in
memory. Ans. 6 (citing Gordon, 3:19–28, 4:47–5:3). According to Gordon,
when the pathway is interrupted and no return signal is detected, the scanner
outputs a value X that differs from the last status value Y thereby indicating
that the seal is broken. Id. (citing Gordon 1:3). Because both the claimed
subject matter and Gordon determine the seal breakage on the basis of the
return signal not being received (including “in a case in which” the signal
“does not return . . . when a predetermined delay time has elapsed since a
transmission time”), we agree with the Examiner that Gordon teaches or at
least suggests the disputed claim limitation. We also agree with the
Examiner that Gordon renders this claim obvious because “some amount of
time is required for signals to complete their circuit path” and Gordon
teaches detecting a lack of response, which obviously is detected after the
required amount of time has passed. Ans. 6.
Further, we find the ordinarily skilled artisan, being “a person of
ordinary creativity, not an automaton,” would have been able to fit the cited
teachings of Gordon, Niemiec, and Lev together like pieces of a puzzle to
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predictably result in a signal processing device that detects seal breakage of
a container upon failing to receive a return signal to a transmitted signal that
is to pass through a first region of the container, as recited in the rejected
claims. KSR, 550 U.S. at 421. Furthermore, although it is necessary for an
Examiner to identify a reason for modifying the familiar elements obtained
from the prior art in establishing a prima facie case of obviousness, so long
as the Examiner provides an articulated reasoning with some rational
underpinning to conclude the claim is obvious, such a conclusion is proper.
In this case, the afore-cited rationale provided by the Examiner is more than
just a mere conclusory statement. In our view, such a statement suffices as
an articulated reason with a rational underpinning to support the proffered
combination. Final Act. 3–4. As noted above, the Examiner may look to the
state of the prior art, including the knowledge of the ordinarily skilled
artisan, to arrive at such a reason for combining the known elements of the
prior art. Consequently, the Examiner’s reliance upon available knowledge
to arrive at an articulated reason with a rational underpinning to support the
proffered combination is proper in rejecting claim 1. Accordingly, we
sustain the Examiner’s rejection of claim 1.
Regarding the rejections of claims 3–10, 17, and 18, Appellant either
does not present separate patentability arguments or reiterates substantially
the same arguments as those discussed above for the patentability of claim 1.
As such, claims 3–10, 17 and 18 fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
VI. CONCLUSION
On this record, we affirm the Examiner’s rejections of claims 1 and 3–
10, 17, and 18.
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VII. DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6–9 103 Gordon, Niemiec,
Lev
1, 3, 4, 6–9
5 103 Gordon, Niemiec,
Lev, Hampeter
5
10, 17, 18 103 Gordon, Niemiec,
Lev, Greenberg
10, 17, 18
Overall
Outcome
1, 3–10, 17,
18

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED