Ex Parte Yang

Patent Trials and Appeals BoardMar 21, 2019

13452324 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/452,324 04/20/2012 26882 7590 03/21/2019 ROBERT R. WATERS, ESQ. WATERS LAW OFFICE, PLLC 633 SEVENTH STREET HUNTINGTON, WV 25701 FIRST NAMED INVENTOR Xiao Hui Yang 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 380PA3511 3760 EXAMINER ST CYR, DANIEL ART UNIT PAPER NUMBER 2876 MAIL DATE DELIVERY MODE 03/21/2019 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 XIAO HUI YANG Appeal2017-005829 Application 13/452,324 Technology Center 2800 Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and SHELDON M. McGEE, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 seeks review under 35 U.S.C. Â§ 134 from the Examiner's maintained rejections under 35 U.S.C. Â§ 103(a) of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6. We reverse. 1 We refer to the Specification filed April 20, 2012 ("Spec."), the Final Office Action dated April 14, 2016 ("Final Act."), the Appeal Brief filed September 14, 2016 ("Appeal Br."), the Examiner's Answer dated December 9, 2016 ("Ans."), and the Reply Brief filed February 9, 2017 ("Reply Br."). 2 Appellant identifies WG Security Products, Inc. as the real party in interest. Appeal Br. 1. Appeal2017-005829 Application 13/452,324 THE INVENTION The subject matter of the claims on appeal "relate[ s] to electronic article surveillance (EAS) tags that are attached to objects to be monitored." Spec. ,r 2. The Specification discloses that "[g]enerally speaking, an EAS system will begin with a tag, ... which is affixed to the article to be detected in such a way that it cannot be easily removed by a customer in the store" and that "[i]n the event that an EAS tag is not removed from a protected article prior to exiting the store, an alarm or other signal is activated." Spec. ,r 3. Claims 1 and 16--the independent claims-are representative. 1. An electronic article surveillance (EAS) tag comprising: a shackle, said shackle having a first end and a second end; a housing enclosing electronic article surveillance (EAS) electronics and a releasable clutch, said housing comprising an aperture and a shackle receiver, said aperture allowing said first end of said shackle to be inserted through said aperture into said releasable clutch and said shackle receiver receiving said second end of said shackle. 16. An electronic article surveillance (EAS) tag comprising: a shackle, said shackle having a first end and a second end; a releasable clutch, said releasable clutch having a shackle aperture; electronic article surveillance (EAS) electronics, said EAS electronics transmitting a wireless EAS signal from said EAS tag; and a housing enclosing said EAS electronics and said releasable clutch, said housing comprising a clutch aperture and a shackle receiver, said shackle aperture of said releasable clutch aligning with said clutch aperture of said housing; 2 Appeal2017-005829 Application 13/452,324 said first end of said shackle inserting through said clutch aperture of said housing and into said shackle aperture of said releasable clutch; said shackle receiver receiving said second end of said shackle when said first end of said shackle inserts into said shackle aperture of said releasable clutch. Appeal Br. 54, 57. THE REJECTIONS The Examiner maintains the rejections of: Claims 1-3 and 6-10 under 35 U.S.C. Â§ 102(e) over Marcelle3; Claims 4 and 5 under 35 U.S.C. Â§ 103(a) over Marcelle; Claims 7, 9, and 16-18 under 35 U.S.C. Â§ 103(a) over Marcelle in view of Fisher4; Claim 11 under 35 U.S.C. Â§ 103(a) over Marcelle in view of Swartz5; Claims 14 and 15 under 35 U.S.C. Â§ 103(a) over Marcelle in view of Yang6; and Claims 19 and 20 under 35 U.S.C. Â§ 103(a) over Marcelle in view of Fisher and Yang. DISCUSSION On this record, having reviewed the maintained grounds of rejection set forth by the Examiner, Appellant's arguments, and the Examiner's response, we are persuaded that the Examiner has failed to establish the 3 Marcelle et al., US 7,948,359 B2, issued May 24, 2011. 4 Fisher, US 7,999,656 B2, issued August 16, 2011. 5 Swartz et al., US 5,594,228, issued January 14, 1997. 6 Yang et al., US 7,400,254 B2, issued July 15, 2008. 3 Appeal2017-005829 Application 13/452,324 unpatentability of the claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he [E]xaminer bears the initial burden ... of presenting a prima facie case ofunpatentability."). We add the following. We begin our analysis by determining the meaning of the claims, giving terms the broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. See, e.g., In re Suitco Swface, Inc., 603 F.3d 1255, 1259---60 (Fed. Cir. 2010). The "broadest reasonable interpretation ... is an interpretation that is 'consistent with the specification."' In re Smith Int'!, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017). Specifically, we determine that the phrases "[a]n electronic article surveillance (EAS) tag" and "electronic article surveillance (EAS) electronics" recited in both independent claims require electronics included in the claimed tag to provide a detectable signal or indication, as this is consistent with the Specification's disclosure. See, e.g., Spec. ,r 3 ("Generally speaking, an EAS system will begin with a tag, ... which is affixed to the article to be detected in such a way that it cannot be easily removed by a customer in the store .... In the event that an EAS tag is not removed from a protected article prior to exiting the store, an alarm or other signal is activated."). Thus, the electronic article surveillance (EAS) electronics would reasonably be understood to emit an alarm or other signal upon exiting a location. Suitco Surface, 603 F.3d at 1259-60. Appellant's argument is also consistent with this interpretation. See, e.g., Appeal Br. 17-18 ("[E]lectronic article surveillance systems ... require[] signals emanating from the object, which is accomplished by placing an EAS device, or tag, that emanates a signal that the larger EAS system can receive and interpret."). 4 Appeal2017-005829 Application 13/452,324 The Examiner relies on a much broader ( and incorrect) interpretation of EAS tag. See generally Final Act.; Ans. The Examiner maintains that "[i]n general EAS tags are electronic methods for preventing removal of properties from office buildings" and on the reasoning that "[ a ]n EAS tag can be used to secure items." Ans. 8-9 (citing Spec. 14), 10. In the Examiner's view, "EAS tags do not require transmission of signals, monitoring, and/or tracking." Id. at 9. The Examiner's rejection of independent claim 1 as anticipated by Marcelle is grounded on the Examiner's incorrect interpretation of EAS tag. Ans. 2-3. Marcelle is directed to an electronically operated lock that includes electronics that function as a receiver for inputted authorization codes and instructions for the lock's operation. Marcelle, col. 1, 11. 15-17, Abstract. The Examiner relies on Marcelle's electronically operated lock as "an electronic security device" and on its disclosed controller 22, IR detector 24 (for receiving an IR signal), and memory 26 as the enclosed EAS electronics recited in the claims. Ans. 2. In response to arguments as to the rejection of claims as anticipated by Marcelle, the Examiner maintains that "[t]he electronic lock of Marcelle ... is an EAS tag." Id. at 7. The Examiner likewise relies on Marcelle as disclosing an EAS tag in the rejections of claims for obviousness over Marcelle alone (id. at 3--4), and in view of further references, i.e., Fisher (id. at 4--5), Swartz (id. at 5), Yang (id. at 5---6), and Fisher and Yang (id. at 6-7). Recognizing that the electronic lock in Marcelle does not disclose transmitting signals, the Examiner relies on Fisher for this feature, including for the rejection of independent claim 16. Independent claim 16 recites that "said EAS electronics transmit[] a wireless EAS signal from said EAS tag." 5 Appeal2017-005829 Application 13/452,324 Fisher is directed to an electronic lock box for storing keys. Fisher, Abstract. The Examiner relies on Fisher as "disclos[ing] an electronic lock box with key presence sensing comprising: an electronic lock box 5 having a microcontroller 16 periodically sending a short RF communication." Ans. 4 ( citing Fisher, col. 11, 1. 17 +, Fig. 7); see also id. at 10-11. In addition to identifying the lock of Marcelle as an EAS tag, the Examiner maintains that "both the prior arts [sic] and the invention disclose electronic padlocks that can be attached to articles" and highlights that a prior art reference must either be in the field of applicant's endeavor or be reasonably pertinent to the particular problem to be solved to properly be the basis of a rejection. Id. at 11-12 (citing In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992)). Specifically, the Examiner maintains that "[t]he appellant teaches an electronic padlock that can be attached to articles and both Marcelle ... and Fisher also teach electronic padlocks for attaching to articles." Id. at 11. Appellant contends that Marcelle and Fisher is not analogous art and, thus, cannot support an obviousness rejection. Appeal Br. 29-32. Appellant contends both that the cited prior art is not in the same field of endeavor and that it is not reasonably pertinent to the problem addressed by the inventor. Id. at 30-31 (citing In re Bigio, 381 F.3d 1325, 1325 (Fed. Cir. 2004)). Appellant argues that the fields of endeavor differ because that of the invention is electronic article surveillance using an EAS tag, that of Marcelle is electronically controlled locks, and that of Fisher is electronic lock boxes for storing keys. Id. at 31-32 ( citing Marcelle, col. 1, 11. 14--17, 21-24; Fisher, col. 1, 11. 28-31 ). Appellant contends, thus, that the Examiner's reliance on the present application, Marcelle, and Fisher all being directed to 6 Appeal2017-005829 Application 13/452,324 electronic padlocks to establish that Marcelle and Fisher are analogous art is reversible error. Reply Br. 16-17. On this record, the Examiner has established neither that the cited prior art-Marcelle and Fisher-is in the same field of endeavor as the claimed invention, nor that it is reasonably pertinent to the problem addressed by the inventor. See, e.g., In re Bigio, 381 F.3d at 1325. Marcelle and Fisher have not been shown, accordingly, to be analogous art. Id. And it follows, where the Examiner has relied on Marcelle and Fisher for disclosing the recited EAS tags, that the Examiner has failed to establish the unpatentability of the claims. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) ("A reference qualifies as prior art for an obviousness determination under Â§ 103 only when it is analogous to the claimed invention." ( emphasis added)). For these reasons, we reverse the Examiner's rejections of all claims. DECISION The Examiner's decision rejecting claims 1-20 is REVERSED. REVERSED 7