Ex Parte Debrody et al

Patent Trial and Appeal BoardSep 19, 2014

12239869 (P.T.A.B. Sep. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/239,869 09/29/2008 Robert Debrody 202500-861 4284 27162 7590 09/19/2014 CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO 5 BECKER FARM ROAD ROSELAND, NJ 07068 EXAMINER MERLINO, ALYSON MARIE ART UNIT PAPER NUMBER 3675 MAIL DATE DELIVERY MODE 09/19/2014 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 ROBERT DEBRODY, DONALD RUTH, GEORGE LUNDBERG and RICHARD DREISBACH ____________ Appeal 2012-000773 Application 12/239,8691 Technology Center 2100 ____________ Before: JAMES T. MOORE, EDWARD A. BROWN, and BRETT C. MARTIN, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL The Appellants have appealed from the final rejection of claims 1, 2, 4, 5, 7–13, 21, and 24–27 under 35 U.S.C. §6(b). We have jurisdiction pursuant to 35 U.S.C. § 134. We AFFIRM. STATEMENT OF THE CASE Introduction Appellants’ invention relates to electronic security seals of the type including a bolt and a locking body for securing a hasp of a container or 1 According to Appellants, the real party in interest is E. J. Brooks Company d/b/a as TydenBrooks, Inc. (App. Br. 1). Appeal 2012-000773 Application 12/239,869 2 cargo area door. The seal includes electronics for sensing the locked state of the bolt and for transmitting the locked and tampered states. See Spec. ¶ 2. Claim 21 is illustrative of an embodiment and reads as follows: 21. A bolt for use with an electronic security seal module having a housing and an aperture in the housing for receiving the bolt inserted therethrough into an internal housing compartment, the received bolt for engagement with tamper evident sensing circuitry in the compartment, the bolt comprising: a head and a shank extending from the head to a tip portion distal the head, the shank being dimensioned to be inserted through the aperture into the compartment; electrical conductors coupled to the head for completing an electrical path to the circuitry along the shank and in the head; and a sealing arrangement attached to and encircling the shank for engagement with the module housing at the aperture for sealing the interface of the sealing arrangement with the module housing at the aperture wherein the shank has an outer peripheral surface, the sealing arrangement comprising a sealant material on the outer peripheral surface of the bolt tapering to a relatively narrow diameter in a direction from the bolt head to the tip portion engaged with said aperture. Claims 3, 6, and 14–20 are withdrawn from consideration and form no part of this appeal. Claim 23 has been cancelled. This appeal therefore concerns claims 1, 2, 4, 5, 7–13, 21, and 24–27. Figure 12 of the instant Specification is helpful in visualizing the claim language, and is reproduced below. The bolt 6 has a head 10 and a shank 12, which is cylindrical, but may be other shapes. The bolt has a tip portion 14 that protrudes through the housing of the module 4 and is locked to the locking device 8 via an annular groove 18 in the outer circumferential surface of the bolt tip portion. Specification ¶¶ 56 and 67. Appeal 2012-000773 Application 12/239,869 3 Figure 12 is a partially-in-section view of a bolt, an attached bolt locking device, and an electronic module Rejections Claims 21 and 24–27 stand rejected under 35 U.S.C. 102(b) as being anticipated by Brammall et al. (US 6,265,973 B1; iss. July 24, 2001). Claims 1, 2, 4, 5, 7, 8, and 11–13, stand rejected under 35 U.S.C. 103(a) as being unpatentable over Brammall and Thorne (US 6,747,558 B1; iss. June 8, 2004). Claims 9 and 10 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Brammall, Thorne, and Case (US 3,093,761; iss. June 11, 1963). App App being are d shan 202 hous mate relat eal 2012-0 lication 12 I. The re anticipat The Exa irected to Figure 1 Figure 1 The Exa k includes attached to ing at the rial 202 on ively narro 00773 /239,869 jection of ed by Bra miner foun figures 5, 7 of Bram 7 is a parti miner foun an outer p and encir aperture. the outer w diamete AN claims 21 mmall. d that Bra 17 and ass mall, is rep al cross se d, inter al eripheral cling the s The sealin periphera r. Specifi 4 ALYSIS and 24–2 mmall des ociated de roduced b ctional pe ia, that Br surface hav hank for e g arrangem l surface o cally, the 7 under 35 cribes a b scription. elow for e rspective v ammall de ing a seal ngagemen ent was f f the bolt t Examiner U.S.C. 10 olt as claim Final Act ase of ref iew of a b scribes tha ing arrang t with the ound to be apering to found that 2(b) as ed. We . 3. erence. olt. t the ement 187 module a sealant a taper , Appeal 2012-000773 Application 12/239,869 5 portion 187 is tapering to the diameter of the portion of the bolt between the taper 187 and the tip portion 195 (Figure 18) in a direction from the bolt head to the tip portion engaged with the aperture. Fin. Rej. 3, 4. The Appellants urge that there is no support in Brammall that the tapered exterior seal on the bolt is at and engaged with the aperture when the bolt is inserted and locked to the housing and locking mechanism for forming a seal therewith. App. Br. 22. The Examiner has found specifically that the claim does not require that the tapered portion of the sealant material be engaged with the aperture, only that the bolt has a sealing arrangement and that it taper and that the sealing arrangement is engaged with the aperture. The Examiner cites Brammall, column 11, lines 34–45; column 12, lines 13–20; as well as Figure 17. Ans. 17. The Appellants take exception to the tapering portions of these findings. According to counsel: “[p]lainly, this claim calls for the tapered sealing arrangement is for engaging the module housing at the aperture. The tapered region is engaged with the aperture.” App. Br. 24. The declaration of inventor Robert Debrody (“Dec.”) is of record in the prosecution. Mr. Debrody, is a Vice President of Engineering at the assignee. Dec. ¶ 1. He also is of the opinion that claim 21 requires the tapered portion of the outer bolt surface to be engaged with the aperture. Dec. ¶ 14. We revert to the pertinent language of claim 21: a sealing arrangement attached to and encircling the shank for engagement with the module housing at the aperture for sealing the interface of the sealing arrangement with the module housing at the aperture wherein the shank has an Appeal 2012-000773 Application 12/239,869 6 outer peripheral surface, the sealing arrangement comprising a sealant material on the outer peripheral surface of the bolt tapering to a relatively narrow diameter in a direction from the bolt head to the tip portion engaged with said aperture. Emphasis added. The problem here is one of claim language. The language of this claim can be read in different ways. One of ordinary skill in the art may regard the bolded words of this claim paragraph as defining the sealing arrangement, on the outer peripheral surface of the bolt, the bolt itself being further described by the underlined words. Or one of ordinary skill in the art may agree with the Appellants and read the claim language defining the sealing arrangement to continue to that in italics. We do have the benefit of the Specification to look to. In particular, paragraph 38 interests us. It reads as follows: [38] In a further embodiment, the sealant material on the outer peripheral surface of the bolt tapers to a relatively narrow diameter in a direction from the bolt head to the tip portion. Spec. 11. Figures 15 and 18 likewise are equally of interest to us, and are reproduced below. App App eal 2012-0 lication 12 Figure 1 Figure 1 00773 /239,869 5 is a part 8 is a parti ial cross s al cross se 7 ectional pe ctional pe rspective rspective v view of a iew of a b bolt. olt. Appeal 2012-000773 Application 12/239,869 8 The Specification and drawings give us a clearer indication of what it was that the Appellants intend to claim. Paragraph 79 describes the outer conical layer 46 of rubber or plastic layer 44 in Figure 15. One can visualize that conical section in Figure 15, and then in Figure 18, engaged with the aperture. We therefore agree with the Appellants’ claim interpretation. We read the claim language of claim 21 thusly (paragraphing and breaks added): …the sealing arrangement comprising a sealant material … on the outer peripheral surface of the bolt… tapering to a relatively narrow diameter in a direction from the bolt head to the tip portion … engaged with said aperture. As urged by the Appellants, we find that the sealing material must be itself tapered and engaged at the aperture. However, even with this claim interpretation, we agree with the Examiner’s finding that the description in Brammell anticipates. Note especially Brammell 11:34–37: The shank 198 and head 204 are coated with an electrically insulating thermoplastic layer 202 preferably about 0.031 inches (0.8 mm) thick. The layer 202 has a tapered region 187. This tapered region permits the bolt to be more easily inserted into a seal such as seal 4, FIG. 1. We therefore, affirm this rejection as it applies to Claim 21, and claims 24–27, which depend therefrom. Appeal 2012-000773 Application 12/239,869 9 II. The rejection of claims 1, 2, 4, 5, 7, 8, and 11–13 under 35 U.S.C. 103(a) as being unpatentable over Brammall and Thorne. Claim 1 is representative for this rejection and is reproduced below (App. Br. 28). 1. An electronic security bolt seal with a reusable electronics module for locking a hasp comprising: an electronics circuit having first and second portions; an electronics module comprising a housing having a cavity, the first portion of the electronics circuit being entirely in the cavity for sensing and transmitting a tamper state of the seal; a bolt having a head and an elongated shank engaged with the housing cavity, the bolt including the second portion of the electronics circuit engaged with the first portion of the electronics circuit for completing the electronics circuit and for engaging the hasp to be locked; and a bolt locking device engaged with and locked to the bolt external the module to secure the module to the bolt in the locked state, the electronics circuit for sensing the integrity of the engaged locked bolt manifesting the seal tamper state, the locked bolt having an exposed region external the module for selective severing of the bolt at the exposed region to interrupt the electronics circuit second portion while unlocking the seal from the hasp and release the module from the bolt for subsequent reuse of the module. The Examiner has found that Brammall describes an electronic security bolt seal with an electronics module with housing, a bolt, and an electronics circuit, with first and second portions, for sensing and transmitting a tamper state of the seal, the first portion of the electronics circuit being entirely in the cavity (Ans. 6, 7). The Examiner has found that Thorne describes the known use of an electronic security bolt seal with an electronics module with a bolt being received in apertures in the housing portion so the end of the bolt is external Appeal 2012-000773 Application 12/239,869 10 to the housing portion allowing the electronics module to be reusable. Ans. at 7. The Examiner then concluded that it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize a bolt locking device external to the module housing to further enhance the versatility of the device and allow the reusability of the module. Ans. 6. The Appellants, on the other hand, argue that the Thorne housing would not be used by one of ordinary skill with the Brammall circuitry. App. Br. 11. According to Appellants, the Examiner fails to state where there is motivation provided in Thorne to modify Brammall because “Thorne does not recognize that the internal locking device in Brammall is a problem and thus provides no motivation to one of skill to do something about it. Showing motivation is a requirement of a showing of obviousness.” App. Br. 10. This argument is legally unpersuasive. Rigid application of a motivation test was disavowed explicitly in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415, 419 (2007). The Appellants also urge that the Examiner’s rejection provides no rational underpinnings as to why one of skill would want to utilize a bolt locking device external to the electronics module to allow reusability. App. Br. 10. More specifically, it is urged that “[t]he Thorne housing would not be used by one of ordinary skill with the Brammall circuitry.” Id. at 11. According to the Appellants, Thorne is directed to a different circuit than that disclosed by Brammall. They assert that those of skill in this art familiar with the Brammall-type circuit are not motivated by Thorne nor Appeal 2012-000773 Application 12/239,869 11 taught to recognize the cost problem present in the Brammall structure. App. Br. 11, 12. See also Dec. ¶¶ 9–11. Moreover, the Thorne circuit is said to be so different from Brammall that it is not directed to the problem of costs associated with Brammall. App. Br. 12 Finally, the Appellants urge that they, and only they, discovered the source of the problem in Brammall, and once the problem became known, then the solution presented itself. But they note that the problem with the “Brammall device that [they] recognized [was not recognized] by Thorne and is part of the invention ‘as a whole’” that needs to be considered. Id. at 14. Additionally, the Appellants point out that the different types of circuits require different constructions and the Thorne circuit requires separate sections. App. Br. 17. As reasoned by the Examiner, it would have been obvious to one of ordinary skill in the art at the time the invention was made “to utilize a bolt locking device external to the module housing to further enhance the versatility of the device and allow the reusability of the module” because the inclusion of an aperture opposite the aperture described by Brammall to “allow the bolt to extend through the housing such the end of the bolt cooperates with a locking device taught by Thorne [] would not hinder the ability of the bolt to cooperate with the housing.” Ans. 7–8. We find that the evidence of record tends to support the Examiner on this point. Thorne is expressly concerned with reusable housings, which is the basis for the Examiner’s conclusion that one of ordinary skill in the art would make this combination. See, e.g. Thorne, 1:44, 45. Appeal 2012-000773 Application 12/239,869 12 Accordingly, we affirm this rejection as it relates to claims 1, 4, 5, 7, and 11–13. Appellants provide separate argument for claims 2 and 8. As regards claim 2, Appellants urge that it calls for a bolt dimensioned to pass through the housing and includes a tip portion protruding from the housing, the tip portion and the locking device being arranged to lock the locking device to the tip portion. App. Br. 25. According to the Appellants, Brammall does not disclose this structure — that there is no bolt tip portion shown protruding from the housing. Thorne is urged not to be relevant because it does not suggest the problem being solved. App. Br. 25. We disagree. Thorne is relevant and properly combinable as noted above. Moreover, Thorne describes a bolt protruding from the housing. Accordingly, we are unpersuaded of error. Claim 8 requires a bolt “dimensioned to pass through the housing and includes a tip portion protruding from the housing, the tip portion and the locking device being arranged to lock the locking device to the tip portion, further including a contamination sealing arrangement for sealing the module cavity from contamination from the external ambient region in cooperation with the bolt.” App. Br. 29. The Appellants urge that there is no contamination sealing arrangement disclosed or shown in either Bramall or in Thorne sealing a bolt tip portion to the housing as claimed in claim 8. App. Br. 26. Brammall is said not to have a bolt tip portion extending through the housing and Thorne is said not to disclose any sealing arrangement between the bolt and its housing, much less the housing with a cavity in which the Appeal 2012-000773 Application 12/239,869 13 entire circuit excluding the bolt portion of the circuit is located as in claim 1 from which claim 8 depends. App. Br. 26. First, we observe that this argument attacks the disclosures of each reference individually. As we have determined that this combination is proper based upon the Examiner’s stated rationale, they must be considered together. Brammall does disclose a sealing arrangement as discussed above, and Thorne describes a protruding bolt. We therefore remain unpersuaded of error in this regard. III. The rejection of claims 9 and 10 under 35 U.S.C. 103(a) as being unpatentable over Brammall, Thorne, and Case. Claims 9 and 10 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Brammall, Thorne, and Case. Specifically, the Examiner found that Case describes a housing 20, 21 and, 31 having an aperture with a grommet 24 cooperating with a shaft 12. The Examiner further found that the inclusion of a grommet at the second aperture would not hinder the ability of the bolt to cooperate with the housing, and then concluded that it would have been obvious to one of ordinary skill in the art at the time the invention was made to include a grommet at the second aperture to further protect the components of the housing from the elements. We have not found any persuasive argument in the Appeal Brief directed to this rejection. Accordingly, it stands as the final agency decision. Appeal 2012-000773 Application 12/239,869 14 DECISION The Examiner’s decision to reject claims 21 and 24–27 is affirmed. The Examiner’s decision to reject claims 1, 2, 4, 5, and 7–13 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). AFFIRMED rvb