Ian J. Forster et al.

Patent Trials and Appeals BoardNov 8, 2019

13014806 - (D) (P.T.A.B. Nov. 8, 2019)

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. 13/014,806 01/27/2011 Ian J. FORSTER 4874-US-1 1422 63721 7590 11/08/2019 Avery Dennison Corporation Michael C. Maier 8080 Norton Parkway, 22D Mentor, OH 44060 EXAMINER ELCHANTI, TAREK ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 11/08/2019 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): rbis_patentdocket@averydennison.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte IAN J. FORSTER, DAVID WELCH, HAOCHUAN WANG, SRIRAM VENKATASANTHANAM, and STEVEN R. CHAPMAN ____________ Appeal 2018-004866 Application 13/014,806 Technology Center 3600 ____________ Before ROBERT E. NAPPI, CATHERINE SHIANG, and MICHAEL T. CYGAN, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 11–16 and 20–33, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Avery Dennison Corp. as the real party in interest. App. Br. 3. Appeal 2018-004866 Application 13/014,806 2 STATEMENT OF THE CASE Introduction The present invention relates to “the art of graphic displays and/or signage.” Spec. ¶ 2. Claim 11 is exemplary: 11. A method of using an advertising system, comprising the steps of: providing a frame having a backlighting illumination source, an RFID reader and a controller connected to the RFID reader; producing a replaceable graphic medium, the graphic medium having at least one of advertising and marketing information provided on a surface thereof; and an RFID inlay, the RFID inlay having a chip encoded with product information and illumination instructions; wherein the replaceable graphic medium is transparent, semitransparent, or translucent; affixing the replaceable graphic medium to the frame; sensing an individual near the frame; varying the output of the illumination source with the controller in connection with the illumination instructions provided on the chip; detecting a mobile communication device near the fame; uploading at least a portion of the information encoded on the chip on the RFID inlay to the mobile communication device; and displaying information on the mobile communication device; wherein the controller shuts off the light source if the RFID reader does not detect valid authentication data on the chip. Appeal 2018-004866 Application 13/014,806 3 References and Rejections2 Claims 11, 12, 14, 20, and 27–30 are rejected under pre-AIA 35 U.S.C.103(a) as being unpatentable over Reynolds (US 2003/0115096 A1; June 19, 2003), Hines (US 2008/0276507 A1; Nov. 13, 2008), Selgrath (US 2009/0212919 A1; Aug. 27, 2009), and Michaelis (US 2008/0262928 A1; Oct. 23, 2008). Final Act. 4–10.3 Claim 13 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reynolds, Hines, Selgrath, Michaelis, JP 02002162918A (June 7, 2002), and JP 02007034362A (Feb. 8, 2007). Final Act. 10–11. Claims 15, 25, and 26 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reynolds, Hines, Selgrath, Michaelis, and Shin (US 2002/0154633 A1; Oct. 24, 2002). Final Act. 11–12. Claim 16 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reynolds, Hines, Selgrath, Michaelis, and Ribi (US 2007/0273951 A1; Nov. 29, 2007). Final Act. 12–13. Claims 21–24 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reynolds, Hines, Selgrath, Michaelis, and JP 02002162918A. Final Act. 13–15. Claim 31 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reynolds, Hines, Selgrath, Michaelis, and Hassenbuerger (US 2006/0266824 A1; Nov. 30, 2006). Final Act. 15–16. 2 Throughout this opinion, we refer to the (1) Final Office Action dated Oct. 6, 2016 (“Final Act.”); (2) Appeal Brief dated July 28, 2017 (“App. Br.”); (3) Examiner’s Answer dated Feb. 5, 2018 (“Ans.”); and (4) Reply Brief dated April 16, 2018(“Reply Br.”). 3 The Examiner lists claims 17–19 (Final Act. 4), but those claims have been cancelled (Final Act. 1; App. Br. 5). Appeal 2018-004866 Application 13/014,806 4 Claims 32 and 33 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reynolds, Hines, Selgrath, Michaelis, Hassenbuerger, and Reiter (US 2011/0047759 A1; Mar. 3, 2011). Final Act. 17–18. ANALYSIS4 We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contentions that the Examiner erred in finding the cited portions of Reynolds teach “wherein the controller shuts off the light source if the RFID reader does not detect valid authentication data on the chip,” as recited in each of independent claims 11, 20, and 21. See App. Br. 18–19; Reply Br. 13–14. The Examiner finds: wherein the controller shuts off the light source if the RFID reader does not detect valid authentication data on the chip; (paragraph 0066), and (paragraph 0035-0036). Final Act. 5. Appellant argues The Examiner cited Reynolds’ disclosures at paragraphs [0035], [0036], and [0066] as allegedly teaching this feature. However, paragraphs [0035] and [0036] merely refer to the use of a motion detector to selectively illuminate a display if motion is detected along the aisle. Furthermore, paragraph [0066] merely discloses an inventory detection and updating flow chart. Reynolds completely fails to disclose or suggest using a controller to shut off the light source if an RFID reader does not detect valid authentication data on a chip. The recited claim feature provides advantages over the prior art by preventing counterfeiting and the unauthorized 4 Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not need to reach the additional arguments. Appeal 2018-004866 Application 13/014,806 5 removal/installation of media. See paragraph [0028] of the present specification. App. Br. 18. The Examiner does not respond to that argument. We have reviewed the cited Reynolds portions, and agree with Appellant that they do not discuss “the controller shuts off the light source if the RFID reader does not detect valid authentication data on the chip,” as required by the claims. See App. Br. 18. Absent further explanation from the Examiner, we do not see how the cited Reynolds portions teach the disputed claim limitation. Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner’s rejection of independent claims 11, 20, and 21. We also reverse the Examiner’s rejection of corresponding dependent claims 12–16 and 22–33. Although the Examiner cites additional references for rejecting some dependent claims, the Examiner has not shown the additional references overcome the deficiency discussed above in the rejection of independent claims 11, 20, and 21. CONCLUSION We reverse the Examiner’s decision rejecting claims 11–16 and 20–33 under 35 U.S.C. § 103. In summary: Appeal 2018-004866 Application 13/014,806 6 Claims Rejected 35 U.S.C. § References Affirmed Reversed 11, 12, 14, 20, 27–30 103 Reynolds, Hines, Selgrath, Michaelis 11, 12, 14, 20, 27–30 13 103 Reynolds, Hines, Selgrath, Michaelis, JP 02002162918A, JP 02007034362A 13 15, 25, 26 103 Reynolds, Hines, Selgrath, Michaelis, Shin 15, 25, 26 16 103 Reynolds, Hines, Selgrath, Michaelis, Ribi 16 21–24 103 Reynolds, Hines, Selgrath, Michaelis, JP 02002162918A 21–24 31 103 Reynolds, Hines, Selgrath, Michaelis, Hassenbuerger 31 32, 33 103 Reynolds, Hines, Selgrath, Michaelis, Hassenbuerger, Reiter 32, 33 Overall Outcome 11–16, 20–33 REVERSED