Ex Parte Valiulis et al

Patent Trial and Appeal BoardMar 6, 2017

13591040 (P.T.A.B. Mar. 6, 2017)

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. 13/591,040 08/21/2012 Thomas E. Valiulis 509250 3823 53609 7590 03/08/2017 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER BLOUNT, ERIC ART UNIT PAPER NUMBER 2684 NOTIFICATION DATE DELIVERY MODE 03/08/2017 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS E. VALIULIS and CHAN CHOR MAN Appeal 2016-000171 Application 13/591,040 Technology Center 2600 Before JEAN R. HOMERE, JOHN A. EVANS, and DANIEL J. GALLIGAN, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 seek our review3 under 35 U.S.C. § 134(a) from the Non- Final Rejection of Claims 1, 2, 4—6, 8—12, 14, and 17—20 as obvious. Claims 3, 7, 13, 15, and 16 have been canceled. Claim Appx. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our Decision refers to Appellants’ Appeal Brief filed April 17, 2015 (“App. Br.”); Appellants’ Reply Brief filed September 28, 2015 (Reply Br.”); the Examiner’s Answer mailed July 29, 2015 (“Ans.”); and the Non- Final Office Action mailed November 17, 2014 (“Non-Final Act). 2 The real party in interest identified by Appellants is Southern Imperial, Inc. App. Br. 2. 3 We have considered in this Decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. §41.37(c)(l)(iv). Appeal 2016-000171 Application 13/591,040 STATEMENT OF THE CASE The claims relate to a theft detection system and method comprising a theft detection device coupled to products for sale whereupon sale of the product, the theft detection device may be deactivated when it receives an encoded signal from a deactivator and removed from the product. Spec. 122, Fig. 8. An understanding of the invention can be derived from a reading of exemplary Claim 1, which is reproduced below with disputed limitations italicized and some formatting added: 1. A theft detection system comprising: a theft detection device configured to be coupled to a product, the theft detection device including a receiver configured to receive a signal, and a controller; wherein the controller is configured to determine whether the signal received by the receiver includes a code; wherein the theft detection device has a first state and a second state; wherein the controller is configured to transition the theft detection device from the first state to the second state when the controller determines that the signal received by the receiver includes the predetermined code; further comprising an emitter configured to emit a signal including the code; wherein the emitter is a light emitter configured to emit a signal of visible light including the code by turning on and off a plurality of times. 2 Appeal 2016-000171 Application 13/591,040 References and Rejections The Examiner relies upon the prior art as follows: Yashina US 5,068,643 A Nov. 26, 1991 Knowles et al. US 6,761,317 B1 July 13, 2004 (“Knowles”) Lax et al. US 7,671,741 B2 Mar. 2, 2010 (“Lax”) The claims stand rejected as follows: 1. Claims 1, 2, 4, 5, 9-12, 14, and 17—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lax and Official Notice, evidenced by Knowles. Non-Linal Act. 3—9. 2. Claims 6 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lax, Official Notice, evidenced by Knowles, and Yashina. Non-Linal Act. 9—11. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. Claims 1,2,4,5,9-12,14, and 17-20 Appellants argue these claims as a group. App. Br. 6—8; Reply Br. 6— 8. Independent Claims 1,5, and 14 recite an emitter emitting a signal comprising visible light. App. Br. 6; Reply Br. 6. Appellants contend Lax teaches a system that can specifically detect ultraviolet (UV) and infrared 3 Appeal 2016-000171 Application 13/591,040 (IR) light, not visible light. App. Br. 7. Appellants argue that the Examiner mischaracterizes UV and IR light in Lax as choices. App. Br. 7. The Examiner finds Lax teaches that the optical removal wand may work in a broad spectrum of light. Ans. 2—3 (citing Lax col. 9,11. 8—22). Lax states, “Optical removal wand 502 may include one or more of an LED, an optical fiber, or any other suitable optical transmitter or conductor.” Lax, col. 9,11. 10—12. The Examiner explains that this teaching suggests various regions of the spectrum of light can be used. Ans. 2—3. The Examiner finds Lax teaches the use of UV and IR light as choices that may be preferred in some scenarios more than others. Ans. 3. The Examiner finds Lax neither precludes nor discourages the use of visible light. Ans. 3. The Examiner further explains that commonly known, ubiquitous visible bar code scanners can readily be used in the system of Lax to transmit an encoded signal to activate/deactivate a tag in close range in the same way as components based on UV and IR light. Ans. 4—5. The Examiner produces Knowles as evidence of the facts the Examiner previously relied upon Official Notice to teach. Ans. 6. Appellants do not dispute the teachings of Knowles. Reply Br. 7. Appellants’ arguments do not address any difference in function among using UV, visible, and IR light. App. Br. 7; Reply Br. 7— 8. Accordingly, we agree with the Examiner that the use of visible light would have been obvious in view of Lax’s non-limiting teachings of the use of light and the knowledge of an ordinarily skilled artisan that visible light is a suitable alternative. Appellants assert the Examiner has not provided motivation to combine the teachings of Lax with the evidentiary showing of well-known bar code scanners. App. Br. 7. Appellants further argue that the Examiner 4 Appeal 2016-000171 Application 13/591,040 relies on hindsight because the only disclosure of visible light is in Appellants’ Specification. App. Br. 8; Reply Br. 7—8. The Examiner finds motivation in that an ordinarily skilled artisan would have chosen to use a readily available visible light barcode scanner over UV or IR detection to accomplish the same objectives with predictable results. Non-Final Act. 5. We additionally disagree with Appellants that the Examiner relies upon Official Notice as the principal evidence for the rejection. App. Br. 7. The Examiner relies upon Lax to teach most of the subject matter of the claims and Official Notice to teach the visible light source. Ans. 5. We do not agree that the Examiner’s rejection is based on hindsight. The Examiner finds Lax teaches any suitable optical transmitter can be used. Ans. 5—6. Lax suggests use of a broad spectral region of light which includes UV, visible, and IR light. The Examiner explains that visible light has the same predictable result as UV and IR light. Ans. 6—7; see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Accordingly, we see no error in the Examiner’s motivation to combine. In view of the foregoing, we sustain the rejection of Claims 1, 2, 4, 5, 9-12, 14, and 17-20. Claims 6 and 8 Appellants argue the combination of Lax and Yashina does not teach “wherein the receiver of the theft detection device is a light sensor configured to sense a light level,” as recited in independent Claim 6 and dependent Claim 8. App. Br. 9; Reply Br. 8—9. Appellants contend that the 5 Appeal 2016-000171 Application 13/591,040 application of the light sensor in Yashina to detect whether the article incorporating the tag has been concealed in a potential theft event changes the principle of operation of Lax to activate/deactivate the tag. App. Br. 9; Reply Br. 9. We are not persuaded by Appellants’ arguments. The Examiner finds the light sensor of Yashina would have been reasonable to an ordinarily skilled artisan to detect the light level of the detected pulse to determine if the pulse was of the appropriate light level for activating or deactivating the theft device in Lax. Ans. 8—9. This teaching in Yashina does not change the principle of operation of Lax, but complements it so that pulses actually intended to activate or deactivate the theft device in Lax are more accurately detected with the light level technique of Yashina. Appellants additionally argue the combination of Lax and Yashina to teach the alarm emitter, motion sensor, and light sensor, as recited in dependent Claim 8, is without a rational underpinning. App. Br. 9—10. Specifically, Appellants assert that neither reference recognizes signal blocking material or other countermeasures used by a thief to thwart the theft detection device. App. Br. 10. Appellants further contend that there is no teaching in either reference of one light sensor capable of both activation/deactivation and light level detection. App. Br. 11. The Examiner finds motivation in Lax for additional measures to be used in theft detection. Ans. 10—11. The Examiner finds Lax recognizes signal blocking materials to defeat the theft detection system. Ans. 10 (citing Lax col. 2,11. 7—24). The Examiner additionally finds Lax recognizes a desire to maintain a tagged product within the premises of the store such that it is not removed without authorization. Ans. 10; see Lax col. 1,11. 49— 6 Appeal 2016-000171 Application 13/591,040 57, col. 2,11. 32—42. We agree with the Examiner that these needs recognized in Lax are satisfied by the concealment and movement detection taught in Yashina. Ans. 10—11. The concealment and movement detection taught in Yashina avoid the difficulty of video surveillance of the store and detection at the exit of the store addressed in Lax. See Lax col. 1,11. 49-57, col. 2,11. 32 42. The Examiner explains that the same sensor can be used to perform the activation/deactivation of the tag of Lax at setup and the detection of concealment and movement of Yashina during operation after setup. Ans. 11. Appellants do not persuade us that these complementary functions change the principle of operation in Lax. Reply Br. 9. The Examiner further explains that it would have been obvious to use an integrated component rather than separate components for a light sensor for activation/deactivation and light level detection. Ans. 11. Appellants do not rebut persuasively the Examiner’s reasoning. Reply Br. 9-10. Accordingly, we see no error in the Examiner’s rationale. In view of the foregoing, we sustain the rejection of Claims 6 and 8. DECISION The rejection of Claims 1, 2, 4—6, 8—12, 14, and 17—20 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)(1). See 37 C.F.R. § 1.136(a)(l)(iv) (2013). 7 Appeal 2016-000171 Application 13/591,040 AFFIRMED 8