Ex Parte 5861807 et al

Patent Trial and Appeal BoardDec 26, 2012

90009635 (P.T.A.B. Dec. 26, 2012)

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. 90/011,404 02/04/2011 5,861,807 RX-1001 9320 7590 12/27/2012 WOOD PHILLIPS VAN SANTEN CLARK & MORTIMER 500 WEST MADISON STREET SUITE 3800 CHICAGO, IL 60661 EXAMINER LEUNG, CHRISTINA Y ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/27/2012 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 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. 90/009,635 11/09/2009 5861807 SEN-R-09-002 8611 7590 12/27/2012 John Mortimer WOOD, PHILLIPS, VAN SANTEN, CLARK & MORTIMER 500 West Madison Street Suite 3800 Chicago, IL 60661 EXAMINER LEUNG, CHRISTINA Y ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/27/2012 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 SE-KURE CONTROLS, INC. Appellant ____________________ Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 Technology Center 3900 ____________________ Before DANIEL S. SONG, JOSIAH C. COCKS, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant, patent owner Se-Kure Controls, Inc., appeals under 35 U.S.C. §§ 134(b) and 306 from the final rejection of claims 1-8, 10-14, 16- 20, 24-39, 42-45, 48-56, and 69-78. Claims 9, 15, 21-23, 40, 41, 46, 47, 57- 68, 79, and 80 were confirmed. We have jurisdiction under 35 U.S.C. § 6(b)(2). We AFFIRM-IN-PART. Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 2 STATEMENT OF THE CASE This proceeding arose from two separate requests for ex parte reexamination of U.S. Patent 5,861,807 (the “‘807 patent”), Reexamination Control No. 90/009,635 filed by Sennco Solutions, Inc. and Reexamination Control No. 90/011,404 filed by InVue Security Products Inc. The ‘807 patent is entitled “Security System,” was issued January 19, 1999 to Roger J. Leyden and Michael A. Parent, and is assigned to Se-Kure. Pursuant to 37 C.F.R. § 1.565(c), the separate requests were merged into a single proceeding on June 27, 2011. CLAIMED INVENTION The ‘807 patent relates to security systems for preventing unauthorized removal of portable consumer articles such as digital cameras, from a specified area, such as a store display. (Col. 1, lines 5-7.) Claim 1 on appeal reads as follows and with emphasis added: 1. In combination: a portable article to be monitored; a body which is rigidly attached to the portable article to be monitored, said body being substantially smaller than the portable article to be monitored; a first sensor having a secured state and an unsecured state and capable of being attached to an article to be monitored, the first sensor having a housing; and a first elongate cord extending between the first sensor and body and having first and second separate conductors and a) mechanically connecting the first sensor to the body and b) defining a conductive path through both the first and second conductors between the first sensor and the body, Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 3 the first and second conductors each being attached to the housing so as to be in fixed relationship to each other both with the first sensor fully separated from a portable article to be monitored and attached to a portable article to be monitored, the first sensor being in the unsecured state with the conductive path between the first sensor and the body interrupted. EVIDENCE The Examiner relies upon the following prior art references: Israel Keifer Leyden 1992 Leyden 1995 Ott II translation Ott I1 Ott II US 4,746,909 US 5,146,205 US 5,172,098 US 5,421,667 US 5,910,768 WO 91/02337 A1 WO 96/31852 A2 May, 24, 1988 Sep. 8, 1992 Dec. 15, 1992 Jun. 6, 1995 Jun. 8, 1998 Feb. 21, 1991 Oct. 10, 1996 REJECTIONS The Examiner makes the following rejections: 1. Claims 1-3, 5, 7, 8, 10, 11, 16-18, 20, 24-31, 48-52, and 69-78 under 35 U.S.C. § 102(b) as anticipated by Ott I. 2. Claims 12 and 14 under 35 U.S.C. § 102(b) as anticipated by Ott II. 3. Claims 4 and 35 under 35 U.S.C. § 103(a) as unpatentable over Ott I and Leyden 1995. 4. Claims 6 and 19 under 35 U.S.C. § 103(a) as unpatentable over Ott I and Leyden 1992. 1 All page and line references to Ott I refer to the English-language translation filed by third-party requester Sennco Solutions, Inc. on November 9, 2009 in Reexamination Control No. 90/009,635. Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 4 5. Claims 32-34 and 53-56 under 35 U.S.C. § 103(a) as unpatentable over Ott I and Keifer. 6. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Ott II and Israel. 7. Claims 36-39 and 42-45 under 35 U.S.C. § 103(a) as unpatentable over Ott II. PRINCIPLES OF LAW Claim Construction “During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). “Construing claims broadly during prosecution is not unfair to the applicant (or, in this case, the patentee), because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.” In re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (appeal from reexamination proceeding). “The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history[.]” Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)). “We do not read limitations from the specification into claims; we do not redefine words.” Thorner, 669 F.3d at 1366. Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 5 Obviousness “Section 103(a) forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”’ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). “What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.” KSR, 550 U.S. at 419. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Further, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court [or the Office] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. ANALYSIS Only those arguments actually made by the Appellant have been considered in this decision. Arguments that the Appellant could have made but did not are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Various Claims Rejected As Anticipated By Ott I (Rejection 1) Claims 1, 2, 5, 7, 8, 10, 11, 16-18, 20, and 24-26 Claim 1 requires, in relevant part: “a body which is rigidly attached to the portable article to be monitored” (emphasis added). The Examiner found this limitation disclosed in Ott I by the rectangular sensor housing 10 that is attached to the underside of a camera by firmly tightening a mounting screw Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 6 44 into the camera. (Answer 3 (citing Ott I Figs. 1, 2; p. 4, lines 32-35; p. 8, lines 12-15, 25, and 26).) Ott I expressly states that “firm mounting of the contact sensors to the camera is provided.” (Ott I p. 8, lines 25-26.) Appellant proposes that the limitation “a body which is rigidly attached to the portable article to be monitored” in claim 1 be construed to mean “that the rigidly attached body: a) has a fixed shape; and b) is securely affixed to the article being monitored.” (Appeal Br. 8 (emphasis added).) Appellant then argues that the sensor housing in Ott I does not have a “fixed shape” because the rear wall 12 of the sensor housing is capable of bending, and does bend, 0.2 to 0.5 mm. (Appeal Br. 10; see also Ott I p. 8, lines 16- 24.) Hence, Ott I could not anticipate claim 1, as construed by Appellant. To support its proposed construction that the body has a fixed shape, Appellant makes three arguments: (1) an embodiment of the specification employs a body made from metal; (2) a prior art patent referenced in the specification utilizes a similar body and expressly characterizes it as “rigid”; and (3) the term “rigidly mounted” (which is similar to claim 1’s “rigidly attached”) appearing in the specification must mean something more than securely mounting/affixing because otherwise it would be redundant. (Appeal Br. 8-9.) We are not persuaded by any of these arguments. Appellant’s first argument is that, at column 5, lines 31-36, the ‘807 patent describes an embodiment in which the body is made from metal and further states that, for purposes of integrity, the mounting surface and the oppositely facing surface can be made from a single piece, either solid or hollowed out. (Appeal Br. 8.) This argument is not persuasive, as it relies on reading limitations from the specification into the claims. Thorner, 669 Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 7 F.3d at 1366 (“We do not read limitations from the specification into claims[.]”). Appellant’s second argument is that: In discussing prior art of the type claimed, in column 1 of the ‘807 patent, reference is made to one of Appellant’s own patents (U.S. Patent No. 5,421,667) that utilizes a similar body in a purely mechanical type of restraint system. The body is characterized as ‘rigid.’ This ‘rigid’ body in U.S. Patent No. 5,421,667 is described therein as a ‘solid body’ (col. 3, line 33) and shown in Fig. 4 as a thick metal piece. (Appeal Br. 8-9.) This argument is not persuasive. Indeed, Appellant does not even explain how the alleged facts could support its proposed claim construction. (See Appeal Br. 8-9.) As we do not read limitations from the specification into the claims, Thorner, 669 F.3d at 1366, we certainly will not read in limitations from extrinsic specifications. Further, U.S. Patent 5,421,667 does not characterize the body as “rigid,” as asserted by Appellant. (Compare Appeal Br. 9 with U.S. Patent 5,421,667 col. 3, line 33.) Rather, it refers to the body as “solid.” (U.S. Patent 5,421,667 col. 3, line 33.) Notably, the ‘807 patent states that the “body 16 can be made hollow,” which is generally understood as being the opposite of solid. (Col. 5, line 34.) Thus, for multiple reasons, we do not find U.S. Patent 5,421,667 supportive of construing “a body” to mean a body that “has a fixed shape.” Appellant’s third argument is that the term “rigidly mounted” (which is similar to claim 1’s “rigidly attached”) must mean something more than securely mounting/affixing because otherwise it would be redundant. (Appeal Br. 9.) This argument is also not persuasive. Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 8 The sentence from the ‘807 patent on which Appellant relies states: By tightening the bolt 34 into the camera bore 38, the body 16 is borne positively against the camera surface 20 to thereby rigidly mount the body 16 on the camera 14 so that the body 16 and camera 14 are moveable as one piece. (‘807 patent col. 4, lines 14-18.) This language from the specification demonstrates that, in the embodiment being described, rigid mounting is achieved by the tightening of the bolt that pulls the body and camera together so that they are moveable as one piece. This language merely precludes loose or movable mounting and does not suggest that “rigidly mounting” means the body must be rigid or have a fixed shape. In sum, we reject Appellant’s proposed construction because it is not the broadest reasonable construction consistent with the specification. In particular, claim 1 requires “a body which is rigidly attached to the portable article to be monitored” but claim 1 does not require that the body itself be rigid. Thus, we agree with the Examiner’s finding that this limitation is disclosed in Ott I by the rectangular sensor housing 10 that is attached to the underside of a camera by firmly tightening a mounting screw 44 into the camera. (Answer 3 (citing Ott I Figs. 1, 2; p. 4, lines 32-35; p. 8, lines 12- 15, 25, and 26).) Accordingly, we sustain the decision to reject independent claim 1 as anticipated by Ott I. For the same reasons, we sustain the decision to reject independent claims 16, 24, and 25, which were argued by Appellant only on the same grounds as claim 1. (Appeal Br. 15-16.) We also sustain the decision to reject dependent claims 2, 5, 7, 8, 10, 11, 17, 18, 20, and 26, App Reex Paten whic one o Claim has a limit App front from 19).) shap eal 2013-0 amination t 5,861,80 h were arg f claims 1 3 Claim 3 substanti ation discl ellant argu wall 18 d the surfac Appellan e as disclo 00729 Control N 7 ued by Ap , 16, and 2 depends fr ally flat m osed by th es that the oes not ab e of the ca t’s argum sed in Fig os. 90/00 pellant on 5. (Appe om claim ounting su e front ho limitation ut the cam mera. (A ent is prem ure 2, whic 9,635 and 9 ly on the g al Br. 16-1 1 and add rface[.]” T using wall is not disc era and, in ppeal Br. 1 ised on th h is repro 90/011,40 rounds th 7.) itionally re he Exam 18 in Ott losed by O stead, is s 6 (citing O e front wa duced belo 4 at they dep quires tha iner found I. (Answe tt I becau paced 0.2 tt I p. 5, l ll 18 retai w: end from t the “bod this r 4.) se the to 0.5 mm ines 14- ning its y Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 10 Figure 2 depicts a sensor housing 10 for mounting to a camera (not shown) via a mounting screw 44. In describing Figure 2, Ott I states: the thickness of the front wall of the housing 18 is a bit smaller than the depth of the collar 16, leaving a small distance “x” between the top side of the front wall of the housing 18 and the exposed edge of the housing side walls 14. In practical applications this distance can be between 0.2 and 0.5 mm. (P. 5, lines 14-19.) Ott I, however, later describes that the front wall 18 bends upward during mounting to the camera, stating the following: When screwing the contact sensor illustrated in the drawing to a camera, the entire housing is first placed against the underside of the camera, whereby the operating cap 40 takes the position illustrated in FIG. 2 during which there are still alarm conditions. By firmly tightening the mounting screw 44, the housing’s rear wall 12 is bent upward, and because of the height of the collar 16 described before, the housing’s front wall 18 can follow the bending movement. During this deformation, in order to get 0.2 to 0.5 mm in practical applications, the operating cap 40 continues to be moved into the switch housing 28, and during this motion the switch set point of the micro-switch 30 is exceeded. Only then are there no longer any alarm conditions. (P. 8, lines 11-24 (emphasis added).) As such, the front wall does not remain in the configuration shown in Figure 2 after mounting has occurred. Rather, having followed the same upward bending of the rear wall, it is bent upward 0.2 to 0.5 mm to contact, Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 11 i.e., engage, the camera and arm the micro-switch. Thus, we find that the front wall 18 does abut the camera.2 We also find that the front wall remains “substantially flat.” Appellant does not argue any construction for the term, and the Specification is not detailed in this regard. (See, e.g., ‘807 patent col. 2, lines 15-26, lines 58-60 (referring to “substantially flat” surfaces but not describing them in any further detail with respect to flatness).) It is clear, however, that the term “substantially flat” cannot mean exactly flat. See, e.g., York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1572-73 (Fed. Cir. 1996) (“The term ‘substantially’ has been construed in patent claims as ‘largely but not wholly that which is specified.’”) (quoting Webster’s Ninth New Collegiate Dictionary 1176 (9th ed. 1983)); Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d 1314, 1323 (Fed. Cir. 2003) (“The term ‘substantially’ can also mean ‘largely’ or ‘essentially.’”) (quoting Webster’s New 20th Century Dictionary 1817 (1983)); cf. Anchor Wall Systems, Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003) (“the phrase ‘generally parallel’ envisions some amount of deviation from exactly parallel”). As the bending is only slight – again, just 0.2 to 0.5 mm – and because this amount is relatively small given the width and length of the front wall (see Ott I 2 Although we sustain the rejection based on our own findings with respect to the bending of the front wall in Ott I, we also note that Appellant has offered two alternative illustrations of the bending. Notably, in both of Appellant’s illustrations, the front wall contacts the mounting surface of the camera. (See Appeal Br. p. 13, Fig. B; p. 14, Fig. C.) Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 12 Figures 1, 2), we find that the front wall of Ott I is “substantially flat” when mounted to the camera. In sum, we do not find any error in the Examiner’s finding that the front wall of Ott I is a substantially flat mounting surface. Hence, we sustain the decision to reject claim 3 as anticipated by Ott I. Claims 27-31, 48-52, 69-73, and 74-78 Each of claims 27, 48, 69, and 74 requires, in relevant part, “a mounting surface on the body that is supported in a planar shape” and wherein “the mounting surface facially engages a flat surface on the portable article at the central region of the body and the perimeter region of the body[.]” The Examiner relies on the front wall 18 of the sensor housing in Ott I as the mounting surface. (Answer 10.) We find, however, that the front wall does not facially engage the camera at a perimeter region of the sensor housing. (Ott I Fig. 2; p. 8, lines 11-24.) Instead, the front wall is separated from the camera at the perimeter region by a distance of approximately 0.2 to 0.5 mm. (Id.) That is, such separation between the front wall and the camera at the perimeter region precludes a finding that they are facially engaged there. For the foregoing reasons, we cannot sustain the decision to reject claims 27, 48, 69, and 74. For the same reasons, we cannot sustain the decision to reject claims 28-31 (which ultimately depend from claim 27), claims 49-52 (which ultimately depend from claim 48), claims 70-73 (which ultimately depend from claim 69), and claims 75-78 (which ultimately depend from claim 74). Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 13 Claims 4 and 35 Rejected As Unpatentable Over Ott I and Leyden 1995 (Rejection 3) Claim 4 Appellant groups claim 4 and 35 together but advances an argument that is only relevant to claim 35. (See Appeal Br. 23-24.) As such, Appellant does not apprise us of any error in the rejection of claim 4. Hence, we sustain the decision to reject claim 4. Claim 35 Claim 35 requires, in relevant part, “a second surface facing oppositely to the mounting surface and the control unit is connected to the body at the second surface.” (Emphasis added.) The Examiner acknowledges that Ott I does not specifically disclose that the control unit is connected to the body at the second surface (i.e., the bottom wall 12). (Answer 15.) The Examiner found, however, that: it would have been obvious to a person of ordinary skill in the art to connect the control unit already disclosed by Ott I to the second surface opposite of the mounting surface in the system described by Ott I in view of Leyden 19953 as engineering design choice of a location for the disclosed connection on the body in order to place the body in positions other than shown in Figure 1 to display different articles to their best advantage to customers. (Answer 15-16.) Appellant counters that the Examiner has used hindsight to arrive at the claimed invention. (Appeal Br. 24.) We are not persuaded by Appellant’s argument. There are a limited number of surfaces for locating 3 Leyden 1995 is cited for disclosing another limitation not argued by Appellant, namely that “the mounting and second surfaces are formed from a single piece.” (Answer 14-15.) Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 14 the connection to the sensor housing of Ott I. Indeed, there are effectively only three design choices: (1) locate the connection on one of the four side surfaces that are perpendicular to the mounting surface as Ott I discloses, (2) locate the connection on the “second surface facing oppositely to the mounting surface” as claim 35 requires, or (3) locate the connection on the mounting surface itself (note that this last option is not practical without further modification since the entire mounting surface in Ott 1 is intended to abut the article to be secured). A finding of obviousness “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 this case, due to the limited number of practical options, we find that it would take very little creativity by a person of ordinary skill in the art to locate the connection on the “second surface facing oppositely to the mounting surface.” Changing the location of the connection is merely a predictable variation of the sensor housing already disclosed in Ott I. See id. at 417 (“If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.”). Hence, we sustain the decision to reject claim 35. Claims 6 and 19 Rejected As Unpatentable Over Ott I and Leyden 1992 (Rejection 4) Appellant argues against the rejection of claims 6 and 19 only on the basis that they ultimately depend from claim 1. As we are sustaining the decision to reject claim 1, we also sustain the decision to reject claims 6 and 19. Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 15 Claims 32-34 and 53-56 Rejected As Unpatentable Over Ott I and Keifer (Rejection 5) Claim 32 requires, in relevant part, “a mounting pin fixedly attached to the body and projecting in cantilever fashion from the body, wherein the mounting pin projects away from the portable article to which the body is attached.” (Emphasis added.) The Examiner found that Ott I teaches all of the limitations of claim 32 except for a mounting pin that meets the specific configurations of claim 32. (Answer 17-18, 30.) In particular, the Examiner found that “Ott I generally discloses a mounting pin fixedly attached to the body in the form of positioning pin 62 (Figure 2) but does not specifically disclose a mounting pin projecting away from the portable article to which the body is attached.” (Answer 18.) The Examiner further found, however, that claim 32 would have been obvious over Ott I in view of Kiefer, which does disclose “a mounting pin [that] projects away from the portable article.” (Answer 18.) The Examiner concluded that “it would have been obvious to a person of ordinary skill in the art to include a mounting pin projecting away from the portable article and a pedestal as taught by Keifer in the system disclosed by Ott I in order to attractively support and display the cameras for customers.” (Answer 19.) Appellant points out that in Keifer, the sensor 37 (i.e., body) and mounting pin 17 are separate from one another, and, thus, a person of ordinary skill in the art, if modifying Ott I in view of Keifer, would locate the pin separate from the Ott I sensor. Thus, Appellant argues that Keifer teaches away from “a mounting pin fixedly attached to the body” and that Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 16 the combination of the references would result in an apparatus not meeting this requirement of claim 32. (Appeal Br. 25; Reply Br. 10.) In determining obviousness, a reference “must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner found, and Appellant has not disputed, that Ott I teaches a mounting pin fixedly attached to the body in the form of positioning pin 62 (Figure 2). (Answer 18.) We agree with that finding and additionally find that the positioning pin 62 projects in cantilever fashion from the body (sensor housing 10). (See Ott I Fig. 2.) The only aspect missing from Ott I is the requirement of claim 32 that the mounting pin also project away from the portable article. This aspect is taught by Keifer. (See Fig. 1 ref. 17.) Appellant cannot establish non-obviousness by attacking Keifer for not disclosing the mounting pin fixedly attached to the body where that aspect is taught by Ott I. See In re Merck & Co., 800 F.2d at 1097 (“Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Similarly, Appellant cannot establish non-obviousness by attacking Keifer for mere disclosure of an alternative design in which the mounting pin is not fixedly attached to the body. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed). Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 17 For the foregoing reasons, we sustain the decision to reject claim 32. For the same reasons, we sustain the decision to reject claims 33 and 34, which were argued by Appellant only on the basis that they depend from claim 32. (Appeal Br. 28.) We also sustain the decision to reject dependent claim 53, which was argued by Appellant only the basis that it depends from claim 16, the rejection of which we are sustaining as discussed above. (Appeal Br. 28.) We also sustain the decision to reject claims 54-56, which were argued by Appellant only the bases that (1) they depend from claim 16; and (2) Appellant’s arguments with respect to claim 32 apply to claims 54-56 -- arguments that we find unpersuasive. (Appeal Br. 28.) Claims 12 and 14 Rejected As Anticipated By Ott II (Rejection 2) Claim 12 Claim 12 requires, in relevant part, “a connector on the body capable of releasably connecting to a connector on a second elongate cord to allow the second elongate cord to establish a conductive path between the at least one conductor and a control unit for monitoring the state of the first sensor.” (Emphasis added). The Examiner found this limitation disclosed by the electrical connection cable 162 shown in Figure 9 of Ott II. (Answer 13.) The Examiner additionally relies on the disclosure by Ott II of “plug elements” and “electrical plug connections” as disclosure of a connector capable of releasably connecting to another connector. (Appeal Br. 13; Ott II translation col. 18, lines 9-13.) Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 18 Ott II is in German, and the Examiner relied on U.S. Patent 5,910,768 (Ott II translation) as an English-language equivalent. (Answer 12.) Appellant does not contest that the Ott II translation is an English-language equivalent to the German-language Ott II. Appellant does, however, argue that “[t]ranslation from German to English is not a precise exercise, and the use of the word ‘plug’, absent some further explanation or disclosure through drawings in Ott II, cannot be dissected by assuming that the German word from which ‘plug’ is translated has an identical counterpart in the English language.” (Appeal Br. 20.) This argument is not persuasive. We will not speculate that the German word from which ‘plug’ was translated means something different than plug. Appellant has not offered an alternative translation of Ott II in this Appeal or any evidence to support its speculation that the German word from which ‘plug’ was translated may mean something else or that such something else would not disclose a releasable connection. Citing a dictionary definition from thefreedictionary.com, Appellant argues that the phrase “plug into” merely conveys that a connection is made (e.g. a “computer [that] plugs into a data bank”) and “does not additionally require that an element is physically moved from a separated state into an engaged state to effect the connection.” (Appeal Br. 21.) This argument is also not persuasive, as the Examiner does not rely on prior art that discloses the action “plug into.” The Examiner relies on prior art that discloses physical “plug elements” and “electrical plug connections,” which are nouns, not verbs. (See Ott II translation col. 18, lines 9-13.) Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 19 Appellant also argues that a plug is not necessarily releasable and, once plugged into a corresponding connector, could result in a permanent connection. (Appeal Br. 22.) Notably, the evidence on which Appellant’s argument relies refers to such plugs as “a fixed plug connection” and “fixed connection plugs.” (Appeal Br. 22.) In contrast, Ott II does not qualify its plug elements and connections as “fixed.” Thus, we find this argument also not persuasive. In sum, we find that Ott II’s disclosure of “plug elements” and “electrical plug connections” discloses “a connector . . . capable of releasably connecting to a connector,” as required by claim 12. As such, we sustain the decision to reject claim 12. Claim 14 Claim 14 requires, in relevant part, “a second elongate cord and cooperating connectors on the body and second elongate cord which can be coupled by press fitting to establish a conductive path through the second cord between the at least one conductor and a control unit for monitoring the state of the first sensor.” (Emphasis added). Appellant argues against the rejection of claim 14 largely on the same unpersuasive grounds that it argues with respect to claim 12. Appellant’s additional argument is that “even if it is argued that the end user, or the like, is capable of making the end connections for the cable 112 in Ott II, ‘press fitting’ is not the only way that such connections can be made.” (Appeal Br. 23.) Aside from the conclusory nature of that argument, we observe that the Appellant makes no contention that, even if other plug connection types exist, press fitting is a type which was unknown or would have been Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 20 perceived as not viable. We have considered the Appellant’s arguments but are not persuaded of error in the Examiner’s rejection. Claim 13 Rejected As Unpatentable Over Ott II and Israel (Rejection 6) Claim 13 requires, in relevant part, that “the connector on the body comprises a phone jack.” Appellant argues that a specific type of releasable connection such as a phone jack would be not obvious since, as Appellant asserts, Ott II lacks disclosure of a releasable connection. (Appeal Br. 28.) As already discussed above with respect to claim 12, however, Ott II does disclose a releasable connection. As this is Appellant’s only argument with respect to claim 13, it has failed to apprise us of any error in the rejection of it. Hence, we sustain the decision to reject claim 13. Claims 36-39 and 42-45 Rejected As Unpatentable Over Ott II (Rejection 7) Claim 36 requires, in relevant part, that “the body has a mounting surface to engage an article to be monitored with the body attached to the article to be monitored, and an oppositely facing second surface and the connector on the body is at the second surface.” (Emphasis added.) The Examiner found that Ott II discloses all the limitations of claim 36 except that it does not specifically disclose the connector at the second surface. (Answer 21.) Instead, Ott II appears to show the connector (where cable 162 and body 152 meet) located along one of the four perpendicular side walls extending between the mounting surface and second surface of the body 152. (See Fig. 9, ref. 162.) The Examiner further found that “it would Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 21 be well understood in the art that the cable may be connected to locations on the body other than the particular side wall shown in Figure 9.” (Answer 21.) We agree with the Examiner’s findings, for the reasons already discussed above with respect to claim 35 – i.e., there are a limited number of design choices for locating the connection and changing that location is merely a predictable variation of the prior art. See KSR, 550 U.S. at 417, 418. Appellant points out that the Examiner identifies the corresponding second surface as the surface on component 152 that faces the television 154 in Ott II. (See Answer 21 (referring to “oppositely facing second surface (i.e., the rear surface of first securing part 152 facing television 154 in Figure 9)”.) Therefore, as Appellant argues, it is not practical to locate a connector on that surface since it is abutted directly to the television. (Appeal Br. 29.) The Examiner’s identification of the asserted “second surface” in Ott II as the mounting surface that engages the television is harmless error and perhaps inadvertent. The corresponding “second surface” of body 152 is clearly the surface opposite the mounting surface that engages the television. (See claim 36 (“the body has a mounting surface to engage an article to be monitored with the body attached to the article to be monitored, and an oppositely facing second surface”).) Thus, Appellant has not apprised us of any error in the rejection of claim 36 that would warrant reversal. Accordingly, we sustain the decision to reject claim 36. Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 22 Claims 37-39 (which ultimately depend from claim 36) are not separately argued from claim 36. (Appeal Br. 29.) Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii)(2008), we select claim 36 as representative of the group and treat those claims as falling with representative claim 36. Hence, we also sustain the decision to reject claims 37-39. Appellants argue against the rejection of claims 42-45 only on the basis that “[t]he arguments advanced relative to the allowability of claims 36-39 apply equally to claims 42-45.” (Answer 29.) Hence, as with claims 36-39, we sustain the decision to reject claims 42-45. DECISION The Examiner’s decision to reject claims 1-3, 5, 7, 8, 10, 11, 16-18, 20, and 24-26 as anticipated by Ott I is AFFIRMED. The Examiner’s decision to reject 27-31, 48-52, 69-73, and 74-78 as anticipated by Ott I is REVERSED. The Examiner’s decision to reject claims 4 and 35 as unpatentable over Ott I and Leyden 1995 is AFFIRMED. The Examiner’s decision to reject claims 6 and 19 as unpatentable over Ott I and Leyden 1992 is AFFIRMED. The Examiner’s decision to reject claims 32-34 and 53-56 as unpatentable over Ott I and Keifer is AFFIRMED. The Examiner’s decision to reject claims 12 and 14 as anticipated by Ott II is AFFIRMED. The Examiner’s decision to reject claim 13 as unpatentable over Ott II and Israel is AFFIRMED. Appeal 2013-000729 Reexamination Control Nos. 90/009,635 and 90/011,404 Patent 5,861,807 23 The Examiner’s decision to reject claims 36-39 and 42-45 as unpatentable over Ott II is AFFIRMED. No time period for taking action in connection with this appeal may be extended under 37 C.F.R. § 1.135(a)(1)(iv)(2010). AFFIRMED-IN-PART ack cc: Patent Owner: WOOD, PHILLIPS, VAN SANTEN, CLARK & MORTIMER 500 West Madison Street Suite 3800 Chicago, IL 60661 Third Party Requesters: STEPHEN T. SCHERRER, ESQ. C/O PATENTS & TMS, P.C. 2849 W. ARMITAGE AVE. CHICAGO, IL 60647 and CHRISTOPER C. DREMANN, P.C. 15015 LANCASTER HIGHWAY CHARLOTTE, NC 28277