LOCKHEED MARTIN CORPORATIONDownload PDFPatent Trials and Appeals BoardMar 27, 202014959677 - (D) (P.T.A.B. Mar. 27, 2020) Copy Citation 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. 14/959,677 12/04/2015 Eugene J. Urda FS-10238 1050 50818 7590 03/27/2020 Roberts Calderon Safran & Cole, P.C. Intellectual Property Department P.O. Box 10064 MCLEAN, VA 22102-8064 EXAMINER CHAO, MICHAEL W ART UNIT PAPER NUMBER 2492 NOTIFICATION DATE DELIVERY MODE 03/27/2020 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): docketing@rmsc2.com lgallaugher@rmsc2.com secretaries@rmsc2.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EUGENE J. URDA and CHARLES H. DANDO III Appeal 2019-000180 Application 14/959,677 Technology Center 2400 Before ROBERT E. NAPPI, DENISE M. POTHER, and JASON MORGAN, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject all pending claims 1–8, 10–15, 17, 18, and 23–27. Appeal Br. 1, 43–46 (Claims App.).2 We have jurisdiction under 35 U.S.C. § 6(b) and heard this appeal on March 10, 2020. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Lockheed Martin Corp. Appeal Br. 2. 2 Throughout this opinion, we refer to the Final Action (Final Act.) mailed October 6, 2017, the Advisory Action (Advisory) mailed December 27, 2017, the Appeal Brief (Appeal Br.) filed March 8, 2018, the Examiner’s Appeal 2019-000180 Application 14/959,677 2 We AFFIRM. STATEMENT OF THE CASE The invention relates to an anti-tamper device. Spec. ¶ 2. Specifically, the claims are directed to “the systems and methods . . . configured . . . to neutralize (e.g., destroy) electronic and/or software related components of an existing system so that they cannot be used, stolen or reverse engineered.” Id. ¶ 10; see id. ¶¶ 1, 11–13. A modular system is shown below in the Specification’s Figure 1. Figure 1 Showing the Modular System Id. ¶¶ 8, 14. Modular system 100, shown above as Figure 1, includes component 15 mounted on board 10, hermetically sealed space 20 provided by cover 25 hermetically sealed to board 10, monitoring component 40, and countermeasure component 45. Id. ¶¶ 14, 16, 19. Space 20 can be filled with a controlled amount of air, gas, or perfume provided through an injection hole, by components 15, 40, or 45, or by an additional component. Id. ¶ 15. The Specification also states “a vacuum can be created within the enclosed space.” Id. ¶ 23. Answer (Ans.) mailed August 3, 2018, and the Reply Brief (Reply Br.) filed October 3, 2018. Appeal 2019-000180 Application 14/959,677 3 Claim 1, below, recites the claimed subject matter: 1. A system, comprising: a component provided within a hermetically sealable enclosure, which discharges a substance into the hermetically sealable enclosure; a measurement component provided within the hermetically sealable enclosure, which measures environmental conditions comprising at least the substance within the hermetically sealable enclosure; and a countermeasure component provided within the hermetically sealable enclosure, which renders inoperative at least one electronic or software component within the hermetically sealable enclosure when the measurement component detects that the environmental conditions within the hermetically sealable enclosure have changed beyond a predetermined amount, wherein the system is configured to cause the component to discharge the substance into the hermetically sealable enclosure in response to at least one of: the hermetically sealable enclosure being hermetically sealed, a predetermined period of time elapsing, and a software command. Appeal Br. 43 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Smolker US 3,882,324 May 6, 1975 Little US 5,998,858 Dec. 7, 1999 Maloney US 6,262,664 B1 July 17, 2001 Wandel US 2008/0252450 A1 Oct. 16, 2008 Bertoni US 2013/0249691 A1 Sept. 26, 2013 Piccolo US 2015/0310732 A1 Oct. 29, 2015 Appeal 2019-000180 Application 14/959,677 4 WITHDRAWN REJECTIONS The Examiner entered the Amendment After-Final Rejection Under 37 C.F.R. § 1.116 submitted December 6, 2017. Advisory 2. As a result, the Examiner withdrew (1) the rejection of claims 3, 8, 15, 24, and 26 under 35 U.S.C. § 112(a), (2) the rejection of claim 253 under 35 U.S.C. § 112(b), and (3) the rejections of claims 17–18 under 35 U.S.C. § 102(a)(2) based on Bertoni and Epstein. See Advisory 2; Ans. 3–4, 12–13. The Examiner maintained the remaining rejections but changed the bases for the art rejections under 35 U.S.C. § 103 due the claim amendments. See Advisory 2; see Ans. 3–4. OUTSTANDING REJECTIONS The rejections stand as follows: (1) Claims 3, 8, 18, and 24 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention. Ans. 3. (2) Claims 1–8, 10, 17, 18, and 23–264 are rejected under 35 U.S.C. § 103 over Bertoni, Wandel, and Piccolo. Id. at 3–8. 3 The Final Action further discusses claim 25 for this ground. Final Act. 5. The Examiner, however, does not include or repeat this discussion in the Answer. Ans. 3, 13–16. For purposes of this Decision, we presume the indefiniteness rejection for claim 25 has been withdrawn. Also, the Examiner states the rejection of claim 18 under this ground was withdrawn (Ans. 13) but then further discusses claim 18 (id. at 13–15). For purposes of this Decision, we presume the indefiniteness rejection for claim 18 has been maintained. 4 Claim 27 depends from independent claim 11, not independent claim 1 or 17. Appeal Br. 46 (Claims App.). For purposes of this Decision, we Appeal 2019-000180 Application 14/959,677 5 (3) Claims 25 and 26 are also rejected under 35 U.S.C. § 103 over Bertoni, Wandel, Piccolo, and Maloney. Id. at 3, 12. (4) Claims 11–15 and 27 are rejected under 35 U.S.C. § 103 over Bertoni, Smolker, Wandel, and Piccolo. Id. at 3, 8–12. (5) Claims 1–8, 10, 17, 18, and 23–26 are also rejected under 35 U.S.C. § 103 over Little, Wandel, and Piccolo. Id. at 4, 12. (6) Claims 25 and 26 are also rejected under 35 U.S.C. § 103 over Little, Wandel, Piccolo, and Maloney. Id. (7) Claims 11–15 and 27 are also rejected under 35 U.S.C. § 103 over Little, Smolker, Wandel, and Piccolo. Id. Arguments which Appellant could have made, but did not make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Except to the extent indicated below, we adopt as our own the findings and reasons set forth in the rejections from which the appeal is taken and in the Examiner’s Answer. INDEFINITESS REJECTION Claims 3, 8, 18, and 24 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Ans. 3, 13–16. Claims 3, 18, and 24 For claims 3 and 24, the Examiner asserts the recited “substance” that is discharged includes a vacuum and a vacuum is “the opposite of a presume the Examiner intended to group claim 27 with the rejections for claim 11 rather than claims 1 and 17. Appeal 2019-000180 Application 14/959,677 6 substance,” rendering these claims ambiguous. Final Act. 5; Ans. 14–15. Regarding claim 3, the Examiner further states detecting a “vacuum leak” is ambiguous since this “requires the prior existence of a vacuum.” Ans. 14. Regarding claim 24, the Examiner argues no vacuum was created in claims 1 or 23, rendering the recited “vacuum no longer being in existence” in claim 24 ambiguous and confusing. Id. at 15. For claim 18, the Examiner states claim 18 “contemplates a vacuum” (Final Act. 5), while claim 17, from which claim 18 depends, recites monitoring an environmental condition by detecting a substance (Ans. 14). According to the Examiner, these limitations are opposites, rendering the claim confusing. Id. at 14–15. As for claims 3, 18, and 24, Appellant contends for each of these claims that “a vacuum may be complete or partial,” such as after releasing a substance, and therefore releasing a substance and having a vacuum are not mutually exclusive. Appeal Br. 10–11; Reply Br. 2–3. Appellant further contends “[n]othing in the specification indicates that the existence of a vacuum and the discharge of a substance are mutually exclusive.” Appeal Br. 11. As for claims 3 and 24, Appellant further emphasizes these claims recite a component that detects a vacuum leak (claim 3) or a substance loss in response to a vacuum no longer being in existence in the enclosure (claim 24). Id. at 10. Appellant adds claims 3 and 24 do not require “the action of detecting to be performed.” Id. at 11; Reply Br. 3. As for claim 18, Appellant argues “the claim does not require an absolute or perfect vacuum,” and “[n]othing in the specification would contradict this interpretation.” Reply Br. 4. Appeal 2019-000180 Application 14/959,677 7 Principles of Law “[T]he statutory language of ‘particular[ity]’ and ‘distinct[ness]’ [in 35 U.S.C. § 112] indicates, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). “A decision on whether a claim is [indefinite] under § 112, [second paragraph (pre-AIA)], requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Issues The issue before us is whether the following recitations are ambiguous when read in light of the disclosure: (1) “the measurement component detects one of air pressure, gas, an odor and vacuum leak within the hermetically sealable enclosure” as claim 3 recites; (2) “the environmental condition is one of air pressure, presence of a gas, an odor and a vacuum” as claim 18 recites; and (3) “the measurement component is configured to detect the loss of the substance in response to . . . (iii) a vacuum no longer being in existence in the hermetically sealable enclosure” as claim 24 recites? Analysis Initially, we note that the Examiner rejected claims 3 and 24 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement because “no description could be found that would support discharging a substance and maintaining a vacuum.” Final Act. 4; id. at 3–4. Appeal 2019-000180 Application 14/959,677 8 This rejection has been withdrawn. Ans. 12–13. Thus, the issue of whether the Specification describes the subject matter in claims 3 and 24 in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention is not before us. (1) Claim 3 Claim 3 depends from claim 1, which recites “a component provided within a hermetically sealable enclosure, which discharges a substance into the hermetically sealable enclosure.” Appeal Br. 32 (Claims App.). Claim 3 further limits the “measurement component,” reciting “the measurement component detects one of air pressure, gas, an odor and vacuum leak within the hermetically sealable enclosure.”5 Id. At first blush, these limitation seem contradictory in that claim 1 recites discharging a substance within a hermetically sealable enclosure and claim 3 recites detecting a vacuum leak within the enclosure, suggesting the enclosure has a vacuum. However, as broadly recited in claim 3, the hermetically sealable enclosure may have contained a vacuum prior to the substance being discharged and thus, the claimed “measurement component” would still be capable of detecting the recited “vacuum leak within the hermetically sealable enclosure” by measuring a discharged substance. Likewise, Appellant explains “[a]fter a substance has been discharged into an enclosure, a partial vacuum may exist, and vacuum leak may be measurable, 5 Although claim 3 recites the component “discharges” and the measurement component “detects,” claim 3 is a “system” claim, which merely requires the “component” to be configured discharge a substance and the “measurement component” to detect one or air pressure, gas, an odor, and a vacuum leak. Appeal Br. 43 (Claims App.); see id. at 11 (stating “[c]laims 3 and 24 do not require the action of detecting to be performed.”) Appeal 2019-000180 Application 14/959,677 9 for example, by the claimed measurement component.” Appeal Br. 11. Both the Examiner and Appellant also agree that a vacuum may be partial. Advisory 2; Appeal Br. 10. Given the above understanding, one skilled in the art would understand what claim 3 is reciting. When addressing claim 24, the Examiner contends “[a]s no vacuum is ever established in claim 1 or 23, . . . it would be ambiguous and confusing to a reader when or how the vacuum was established when the claim appears to create the opposite of a vacuum by adding a substance in claim 1.” Ans. 15. But, breadth of claim does not render it indefinite. See In re Gardner, 427 F.2d 786, 788 (CCPA 1970). Also, as explained above, an ordinarily skilled artisan would be able to understand what is being claimed. We also turn to the Specification to determine whether those skilled in the art would understand what is recited in claim 3. The Specification discusses “detect[ing] a vacuum leak” in paragraph 17. Spec. ¶ 17. Specifically, the disclosure states “the measurement and/or monitoring component 40 can measure the controlled amount of air pressure, or gas, such as CO2, or detect an odor of the perfume.” Id. Moreover, an ordinary artisan would understand the controlled substance discussed in Paragraph 17 is provided within the enclosed space 20. See id. ¶¶ 16–17, Fig. 1. Paragraph 17 further states “[i]n additional embodiments, the measurement and/or monitoring component 40 can detect a vacuum leak (or other environmental conditions within the enclosure), which would be indicative of a tampering event.” Id. ¶ 17, Fig. 1. Because the Specification describes detecting a vacuum leak as “additional embodiments,” an ordinary artisan would understand the vacuum leak as an additional feature to the previously described embodiments. Thus, when reading claim 3’s limitations in light of Appeal 2019-000180 Application 14/959,677 10 the disclosure, we determine an ordinarily skilled artisan would understand what claim 3 is reciting. Accordingly, Appellant has persuaded us of error in the rejection of claim 3. (2) Claim 18 Clam 18 depends from independent claim 17, which is a method comprising “discharging, by a component within a hermetically sealable enclosure, a substance into the hermetically sealable enclosure” and “monitoring an environmental condition within the hermetically sealable enclosure including at least detecting the substance.” Appeal Br. 45 (Claims App.). Claim 18 further recites “the environmental condition is one of air pressure, presence of a gas, an odor and a vacuum.” Id. Although this claim may appear contradictory, we refer to our above explanation related to claim 3. As explained when addressing claim 3, the enclosure in claim 18 similarly may have contained a vacuum (e.g., an environmental condition) prior to discharging the substance and then monitor the “vacuum” condition by detecting a certain amount of the discharged substance. As an example, the Specification further describes “the measurement and/or monitoring component 40 will detect that the environmental condition within the enclosure 20 has changed by a certain predetermined amount.” Spec. ¶ 17; see id. ¶ 23 (discussing examples of a predetermined amount). As such, when reading claim 18’s limitations in light of the disclosure, we determine an ordinarily skilled artisan would understand what claim 18 is reciting. Accordingly, Appellant has persuaded us of error in the rejection of claim 18. Appeal 2019-000180 Application 14/959,677 11 (3) Claim 24 Claim 24 depends from claim 23, and claim 23 depends from claim 1. Claim 23 recites “the measurement component is configured to detect a loss of the substance,” and claim 24 further recites “the measurement component is configured to detect the loss of the substance in response to . . . (iii) a vacuum no longer being in existence in the hermetically sealable enclosure.” Appeal Br. 45–46 (Claims App.). Although detecting a substance’s loss in response to a vacuum no longer existing may be seem contradictory, such a phenomena can exist. For example, the loss of a discharged substance can be detected once the enclosure’s hermetically seal is broken and the pressure inside the enclosure matches atmosphere. The Specification also covers such a phenomena. See Spec. ¶ 23 (discussing detecting losses beyond a predetermined amount). Thus, when reading claim 24’s limitations in light of the disclosure, we determine an ordinarily skilled artisan would understand what is claimed. Appellant has therefore persuaded us of error in the rejection of claim 24. Claim 8 In contrast, we do not find the Examiner erred in rejecting claim 8. The Examiner contends this claim requires “a temporary injection hole” while claim 1 requires “the alternate embodiment of a component within the enclosure that discharges a substance.” Final Act. 5. For this reason, the Examiner contends the scope of claim 8, which recites the injection hole is plugged or sealed “after injection of the substance” is unclear and ambiguous. Ans. 16; Final Act. 5. Appeal 2019-000180 Application 14/959,677 12 Appellant argues the claim does not require using the injection hole to inject the substance (Appeal Br. 11) and the claim “merely requires that the cover is structured to include the temporary injection hole or valve” (id. at 12). Appellant further contends “there is nothing about the claimed temporary injection hole or valve which is plugged or sealed that would be incompatible with the presence of a component provided within a hermetically sealable enclosure, which discharges a substance into the hermetically sealable enclosure.” Id. We disagree with Appellant. Claim 1 requires “a component . . . discharges a substance into the hermetically sealable enclosure” and “the system is configured to cause the component to discharge the substance into the hermetically sealable enclosure in response to . . . the hermetically sealable enclosure being hermetically sealed.” Appeal Br. 43 (Claims App.) (emphases added). Claim 6 depends from claim 1 and further recites “the hermetically sealable enclosure is hermetically sealed.” Appeal Br. 44 (Claims App.). Clam 8 ultimately depends from claim 6 and even further recites “the cover [forming the hermetically sealed enclosure] includes a temporary injection hole or valve which is plugged or sealed, respectively, after injection of the substance.” Id. (emphasis added). As emphasized above, the claim 8 recites both a discharged substance being discharged into a hermetically sealable enclosure and in response to the enclosure being hermetically sealed as well as an injection hole or valve being plugged or sealed after injection (e.g., discharged) of the same substance. Upon reading this claim, an ordinarily skilled artisan would not understand whether the claim includes a hermetically sealed enclosure because the claimed “temporary injection hole or valve” is further recited as Appeal 2019-000180 Application 14/959,677 13 plugged or sealed after injection of the discharged substance, which is discharged in response to the enclosure being hermetically sealed. Id. at 43–44 (Claims App.). Also, although claim 8 recites a “system” claim such that the “injection hole or valve” need not perform the recited “plugged or sealed” action (see id. at 12; Reply Br. 6), the claim still needs to have the ability to perform the claimed function. Appellant has not persuasively demonstrated that an ordinary would not understand what structure performs the recited cover’s “temporary injection hole or valve which is plugged or sealed, respectively, after injection of the substance” in claim 8, which is discharged after an enclosure is sealed hermetically as required by claims from which claim 8 depends. Appellant argues for the first time in the Reply Brief that claim 7, from which claim 8 depends, requires the cover to be hermetically sealed to the board but does not require the cover to seal the enclosure hermetically. Reply Br. 6. Although this argument has been waived, we note claim 7 recites “the hermetically sealed enclosure formed by a cover which is hermetically sealed to the board.” Appeal Br. 44 (Claims App.) (emphasis added). Moreover, claim 6 recites the enclosure is hermetically sealed. Id. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of claim 8. OBVIOUSNESS REJECTION OVER BERTONI, WANDEL, AND PICCOLO Claims 1–8, 10, 17, 18, and 23–26 are rejected under 35 U.S.C. § 103 over Bertoni, Wandel, and Piccolo. Ans. 3–8; Final Act. 8–11, 13, 15.6 6 Based on the entered amendments presented after the Final Office Action, claims 1 and 17 include the subject matter of canceled claims 6, 21, and 22. Appeal 2019-000180 Application 14/959,677 14 Claims 1–8, 10, and 23–26 For purposes of discussion, we select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner found Bertoni teaches most of claim 1’s limitations, including the recited enclosure is a “hermetically sealed enclosure.” Final Act. 8–9, 11 (citing Bertoni ¶¶ 26–27, 47, Figs. 1, 4); Ans. 4–5. However, the Examiner determined Bertoni does not disclose the recited “component provided within a[n] . . . enclosure, which discharges a substance into the . . . enclosure” “in response to the enclosure being hermetically sealed,” turning to Wandel in combination with Bertoni for these features. Final Act. 9–10 (citing Wandel ¶¶ 16–17, 26, 34, 52, Abstract), 13 (citing Wandel ¶ 52); Ans. 5–6 (same). Additionally, the Examiner turned to Piccolo in combination with the Bertoni/Wandel system to teach the recited “system is configured to cause the component to discharge the substance into the enclosure in response to . . . a predetermined period of time elapsing” or “a software command.” Final Act. 15 (citing Wandel ¶ 52; Piccolo, Abstract); Ans. 6–7 (citing Piccolo ¶¶ 8, 57, 68, Abstract). Appellant presents several arguments, mainly asserting that Bertoni, Wandel, and Piccolo do not teach or suggest “a component provided within a hermetically sealable enclosure, which discharges a substance into the hermetically sealable enclosure” and “the system is configured to cause the component to discharge the substance into the hermetically sealable enclosure in response to at least one of: the hermetically sealable enclosure being hermetically sealed, a predetermined period of time elapsing, and a software command” recited in claim 1. Appeal Br. 13–19. Appeal 2019-000180 Application 14/959,677 15 ANALYSIS Based on the record before us, we do not find error in the Examiner’s rejection of independent claim 1. “[A] component provided within a hermetically sealable enclosure, which discharges a substance into the hermetically sealable enclosure” For this limitation, Appellant asserts Bertoni does not teach a component with a hermetically sealed enclosure that discharges a substance into the disclosure, Wandel does not cure this deficiency or discharge a substance in response the recited options, and Piccolo does not teach cure the noted deficiencies. Id. at 15–18. We are not persuaded. As indicated above, the Examiner found Bertoni teaches most of claim 1’s limitations. Final Act. 8–9, 11 (citing Bertoni ¶¶ 26–27, 47, Figs. 1, 4); Ans. 4–5. More specifically, the Examiner found Bertoni teaches the recited “a hermetically sealed enclosure,” mapping housing 2 to the enclosure. Final Act. 9 (citing Bertoni, Fig. 1), 11 (citing Bertoni ¶¶ 26, 47); Ans. 18 (citing Bertoni ¶ 47). Bertoni discloses “the housing could be of a hermetic type, with sealed walls . . . .” Bertoni ¶ 47. We thus disagree with Appellant (Appeal Br. 15) that Bertoni does not teach or suggests “a hermetically sealable enclosure” as claim 1 recites or that Wandel (id. at 17) or Piccolo (id. at 18) need to cure this purported deficiency. Regarding the limitation “a component provided within [the] hermetically sealable enclosure, which discharges a substance into the hermetically sealable enclosure” in claim 1 (Appeal Br. 43 (Claims App.) (emphasis added)), the Examiner found Bertoni does not disclose this feature and turned to Wandel when combined with Bertoni to teach this feature. Final Act. 9–10 (citing Wandel ¶¶ 16–17, 34, 52, Abstract; Bertoni ¶ 26); Ans. 5–6. In particular, like Bertoni (Bertoni, Abstract), Wandel teaches a Appeal 2019-000180 Application 14/959,677 16 device that detects intrusion or tampering with an enclosure’s contents (Wandel, Abstract). Wandel teaches its anti-tampering device involves dispensing a substance (e.g., gas, liquid, or aerosol) into a container’s interior before or after the container is sealed. Id. ¶¶ 16–17, 52. Appellant does not dispute this finding but rather argues that Wandel does not discharge the substance in response to the hermetically sealable enclosure being hermetically sealed in the last limitation of claim 1. Appeal Br. 16– 17. Thus, on the record, combining Wandel’s teaching with Bertoni’s hermetically sealable enclosure would predictably result in “a component provided within a hermetically sealable enclosure, which discharges a substance into the hermetically sealable enclosure” as claim 1 recites. “the system is configured to cause the component to discharge the substance into the hermetically sealable enclosure in response to at least one of: the hermetically sealable enclosure being hermetically sealed, a predetermined period of time elapsing, and a software command” As discussed above, the Examiner found that Bertoni does not teach the “discharge” feature and turned to Wandel to teach this feature. Final Act. 9–10, 13; Ans. 5–6. Additionally, the Examiner turned to Piccolo to teach the “in response to . . . a predetermined period of time elapsing, and a software command” as claim 1 recites. Final Act. 15; Ans. 6–7. Thus, Appellant’s argument that Bertoni fails to teach the “in response” to feature does not consider the rejection as proposed. Appeal Br. 15–16. As for Wandel’s teachings, Appellant argues this reference does not teach discharging the substance in response to an enclosure being sealed. Id. at 16. Instead, Appellant asserts Wandel does not indicate the canister is Appeal 2019-000180 Application 14/959,677 17 broken upon the pouch7 being sealed but “merely appears to provide an instruction indicating that the pouch should be in a sealed state when the small canister is broken.” Id. (citing Wandel ¶ 52). We are not persuaded. First, we note the phrase “in response to” in claim 1 when construed broadly but reasonably in light of the disclosure (Spec. ¶ 15) does not require an immediate or direct response between the enclosure being sealed and the substance discharging into the enclosure as Appellant appears to argue (Appeal Br. 16–17). See Ans. 17 (citing Spec. ¶ 15) (stating “[t]here is no particular time limit on the release of a substance after it is sealed”). Wandel teaches “trace gas is provided through a small canister that is . . . broken when the po[u]ch has been sealed.” Wandel ¶ 52 (emphasis added), quoted in Final Act. 13. This statement in Wandel teaches that a gas (e.g., a “substance”) is provided (e.g., “discharged”) when (e.g., “in response to”) a pouch or container (e.g., an “enclosure”) is sealed. Id. Wandel also relates the discharging the gas to the pouch being sealed by using the term “when,” suggesting to one skilled in the art that there is an intended relationship between the sealed enclosure and releasing the gas. See id. We therefore determine Wandel when combined with Bertoni, at least suggests to an ordinarily skilled artisan the recited “system is configured to cause the component to discharge the substance into the hermetically sealable enclosure in response to . . . the hermetically sealable enclosure being hermetically sealed” as claim 1 recites. 7 Wandel uses the word “poach.” Wandel ¶ 52. For purposes of this Decision, we presume this is a typographical error, intending to use the term “pouch.” Appeal 2019-000180 Application 14/959,677 18 In the Reply Brief, Appellant newly discusses Wandel’s paragraphs 12–14 and contends Wandel “is contrary to the claimed invention.” Reply Br. 7–8. This argument is waived. See 37 C.F.R. § 41.41(b)(2) (stating “[a]ny argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). In any event, the newly cited paragraphs discuss detecting a break in container’s seal to detect intrusion (Wandel ¶¶ 12–14) and is not contradictory to the purpose for which the Examiner relied upon Wandel—using a component to discharge a gas within a sealed container or enclosure (see Ans. 5–6; see Final Act. 9–10). Additionally, if claim 1 is construed to require the substance to discharge into the enclosure in direct response to the enclosure being sealed and Wandel is viewed as not teaching this alleged direct relationship, we further note that claim 1 recites “in response to at least one of: the hermetically sealable enclosure being hermetically sealed, a predetermined period of time elapsing, and a software command.” Id. (emphasis added). Thus, the prior art need only teach one of these causal relationships. See Ans. 17–18 (noting “the alternate embodiment implicated in the alternate limitations of claim 1”). The rejection further relies on Piccolo, when combined with Bertoni and Wandel, to teach discharging a substance in response to “a predetermined period of time elapsing” or “a software command.” Final Act. 15 (citing Piccolo, Abstract); Ans. 6–7 (citing Piccolo ¶¶ 8, 57, 68, Abstract). Appellant does not challenge that the combination of Bertoni, Wandel, and Piccolo fails to teach or suggest discharging a gas in response Appeal 2019-000180 Application 14/959,677 19 to a software command but rather asserts that Piccolo fails to teach or suggest a hermetically sealed enclosure and a component within the enclosure discharging a substance into a hermetically sealed enclosure as recited in claim 1. See Appeal Br. 18. Yet, Bertoni and Wandel were relied upon for these features (Final Act. 9–11 (citing Bertoni ¶¶ 26, 47; Wandel ¶¶ 16–17, 34, 52); Ans. 5–6 (citing Wandel ¶¶ 16–17, 34, 50, 52)), and one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Lastly, Appellant contests modifying Bertoni in view of Piccolo as proposed would render it unsatisfactory for its intended purpose. Appeal Br. 18–19. Appellant states that the modification “would defeat the ability of the system disclosed by Bertoni to detect tampering.” Id. at 19; Ans. 9. Essentially, Appellant argues Piccolo teaches discharging a substance into an enclosure that is not hermetically sealed and thus modifying Bertoni would result in an enclosure that is not hermetically sealed and unable to detect tampering. Appeal Br. 18–19. We are not persuaded because this argument fails to consider the rejection as proposed. Final Act. 8–11, 13, 15; Ans. 6–7. Namely, Bertoni teaches a hermetically sealed enclosure (Final Act. 11), Wandel teaches including a component within the enclosure that discharges a substance (id. at 9–10), and the modification does not proposed to remove these features from the Bertoni/Wandel system but rather to add Piccolo’s feature of discharging a substance in response to a software command to the combined Bertoni/Wandel hermetically sealed enclosure. Id. at 15 (stating “[a] person of ordinary skill in the art . . . would have modified Bertoni in view of Wandel with Piccolo by utilizing the Appeal 2019-000180 Application 14/959,677 20 software triggered canister of Piccolo.”); see Ans. 6–7, 20 (stating “[c]hanging how a substance is released from a cartridge or canister does not change the principle of operation of the system of Bertoni in view of Wandel.”) For the foregoing reasons, Appellant has not persuaded us of error in the rejection of independent claim 1 and claims 2–8, 10, and 23–26, which ultimately depend from claim 1 and are not argued separately. See Appeal Br. 24. Claims 17 and 18 Appellant separately argues independent claim 17. Appeal Br. 19–24. The arguments are similar to those presented for claim 1, including Bertoni does not teach a hermetically sealable enclosure or a component within the enclosure discharging a substance into the enclosure, Wandel does not teach or suggest discharging a substance in response to the enclosure being hermetically sealed, and Piccolo does not teach or suggest a hermetically sealable enclosure and therefore discharging a substance into the enclosure as recited in claim 17. Compare id., with id. at 13–19. We are not persuaded and sustain the rejection of claim 17 and dependent claim 18, which is not separately argued (id. at 24), for reasons similar to those discussed for claim 1. ALTERNATIVE OBVIOUSNESS REJECTION OVER BERTONI, WANDEL, PICCOLO, AND MALONEY Claims 25 and 26 are alternatively rejected under 35 U.S.C. § 103 based on Bertoni, Wandel, Piccolo, and Maloney. Ans. 3, 12; Final Act. 16. Appellant contends claims 25 and 26 are in condition for allowance by Appeal 2019-000180 Application 14/959,677 21 virtue of their dependency to claim 1. Appeal Br. 24–25. We are not persuaded for the reasons discussed related to claim 1. Appellant separately contends “[t]hese claims also include allowable subject matter on their own merits.” Id. at 25. However, Appellant provides no explanation related to how the prior art fails to teach or suggest a specific limitation in claims 25 and 26. Id. We therefore sustain the rejection of claims 25 and 26 for reasons similar to those discussed for claim 1. OBVIOUSNESS REJECTION OVER BERTONI, SMOLKER, WANDEL, AND PICCOLO Claims 11–15 and 278 are rejected under 35 U.S.C. § 103 over Bertoni, Smolker, Wandel, and Piccolo. Ans. 3, 8–12; Final Act. 16–19, 9– 11 (addressing the “fourth” component, including “providing the environmental condition in response to at least one of: the hermetically sealable enclosure being hermetically sealed”), 15 (addressing “in response to at least one of: . . . a predetermined period of time elapsing, and a software command”), 14–15 (addressing claim 27). We select independent claim 11 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant presents arguments for independent claim 11. Appeal Br. 26–31. The arguments are similar to those presented for claim 1, including Bertoni does not teach a hermetically sealable enclosure or a component that discharges a substance into the enclosure, Wandel does not teach or suggest discharging a substance in response to the enclosure being hermetically sealed, and Piccolo does not teach or suggest a hermetically sealable 8 As previously noted, claim 27 depends from independent claim 11, and we accordingly grouped this claim with the rejection of claim 11. Appeal 2019-000180 Application 14/959,677 22 enclosure and therefore discharging a substance into the enclosure as recited. Compare id., with id. at 13–19. We are not persuaded for the reasons stated above when addressing claim 1. Appellant additionally contends Smolker does not teach (1) a component within an enclosure that provides an environmental condition or (2) the enclosure provides an environmental condition in response to: sealing the enclosure, a predetermined time period elapsing, or a software command. Id. at 28. These arguments, however, do not consider fully the rejection’s combination as proposed, which relies on Wandel in combination with Bertoni and Smolker to teach the recited “fourth component which provides the environmental condition within the enclosure in response to at least one of: the enclosure being hermetically sealed” (Ans. 9–10; Final Act. 19, 9– 11) and Piccolo in combination with Bertoni, Smolker, and Wandel (Ans. 11–12; see Final Act. 15) to teach providing the environmental condition within the enclosure in response to at least one of a predetermined time period elapsing or a software command as recited. Smolker is cited for a limited purpose to teach using a countermeasure component to disable or destroy a component (e.g., circuitry) by providing an explosion or electromagnetic pulse is known. Ans. 9; see Final Act. 17–18. Accordingly, we sustain the rejection of claim 11 and dependent claims 12–15, which are not separately argued (Appeal Br. 31), for reasons the above-stated reasons. Appeal 2019-000180 Application 14/959,677 23 OBVIOUSNESS REJECTION OVER LITTLE, WANDEL, AND PICCOLO Claims 1–8, 10, 17, 18, and 23–26 are also rejected under 35 U.S.C. § 103 over Little, Wandel, and Piccolo. Ans. 4, 12; Final Act. 20–28.9 Claims 1–8, 10, and 23–26 For purposes of discussion, we select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). For this rejection, similar to the rejection based on Bertoni, Appellant asserts that Little, Wandel, and Piccolo do not teach or suggest “a component provided within a hermetically sealable enclosure, which discharges a substance into the hermetically sealable enclosure” and “the system is configured to cause the component to discharge the substance into the hermetically sealable enclosure in response to at least one of: the hermetically sealable enclosure being hermetically sealed, a predetermined period of time elapsing, and a software command” recited in claim 1. Appeal Br. 32–33. Appellant presents argument similar to those above when addressing claim 1 and the Bertoni, Wandel, and Piccolo rejection, including Wandel fails to teach discharging the substance in response to an enclosure being hermetically sealed and Piccolo does not teach a hermetically sealed enclosure or discharging, by a component, within a hermetically sealable enclosure. Id. The arguments for this rejection thus are similar to those presented for claim 1 when addressing the obviousness rejection based on Bertoni, Wandel, and Piccolo. Compare id., with id. at 13–19. We sustain the 9 As previously mentioned, claims 1 and 17 currently include the subject matter of claims 6, 21, and 22 based on the entered After-Final Amendment. Appeal 2019-000180 Application 14/959,677 24 rejection of claim 1 and dependent claims 2–8, 10, and 23–26, which are not separately argued (id. at 34–35), for reasons similar to those previously discussed. Claims 17 and 18 Appellant separately argues independent claim 17. Appeal Br. 33–34. However, the arguments are similar to those presented for claim 1, including Wandel does not teach or suggest discharging a substance in response to the enclosure being hermetically sealed and Piccolo does not teach or suggest a hermetically sealable enclosure and therefore discharging a substance into the enclosure as recited. Compare id., with id. at 32–33. We are not persuaded and sustain the rejection of claim 17 and dependent claim 18, which is not separately argued (id. at 34–35), for reasons similar to those discussed for claim 1. ALTERNATIVE OBVIOUSNESS REJECTION OVER LITTLE, WANDEL, PICCOLO, AND MALONEY Claims 25 and 26 are alternatively rejected under 35 U.S.C. § 103 based on Little, Wandel, Piccolo, and Maloney. Ans. 4, 12; Final Act. 28– 29. Appellant contends claims 25 and 26 are in condition for allowance by virtue of their dependency to claim 1. Appeal Br. 35. We are not persuaded for the reasons discussed related to claim 1. Appellant separately contends “[t]hese claims also include allowable subject matter on their own merits.” Id. However, Appellant provides no explanation related to how the prior art fails to teach or suggest a specific limitation in claims 25 and 26. Id. We therefore sustain the rejection of claims 25 and 26 for reasons similar to those discussed for claim 1. Appeal 2019-000180 Application 14/959,677 25 OBVIOUSNESS REJECTION OVER LITTLE, SMOLKER, WANDEL, AND PICCOLO Claims 11–15 and 27 are also rejected under 35 U.S.C. § 103 over Little, Smolker, Wandel, and Piccolo. Ans. 4, 12; Final Act. 29–31, 26–27 (addressing claim 27 and the “fourth” component, including “providing the environmental condition in response to at least one of: the hermetically sealable enclosure being hermetically sealed”), 27–28 (addressing “in response to at least one of: . . . a predetermined period of time elapsing, and a software command”). Appellant presents arguments for independent claim 11. Appeal Br. 36–38. However, the arguments are similar to those presented for claim 1, including (1) Smolker does not teach a component within an enclosure that provides an environmental condition in response to sealing the enclosure, a predetermined time period elapsing, or a software command, (2) Wandel fails to teach discharging the substance in response to an enclosure being hermetically sealed and (3) Piccolo does not teach a hermetically sealed enclosure or discharging, by a component, within a hermetically sealable enclosure as recited. Compare id., with id. at 32–33. We are not persuaded for the reasons stated above when addressing claim 1. Accordingly, we sustain the rejection of claim 11 and dependent claims 12–15, which is not separately argued (Appeal Br. 38), for the above-stated reasons. Appeal 2019-000180 Application 14/959,677 26 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 3, 8, 18, 24 112(b) Indefiniteness 8 3, 18, 24 1–8, 10, 17, 18, 23–26 103 Bertoni, Wandel, Piccolo 1–8, 10, 17, 18, 23–26 25, 26 103 Bertoni, Wandel, Piccolo, Maloney 25, 26 11–15, 27 103 Bertoni, Smolker, Wandel, Piccolo 11–15, 27 1–8, 10, 17, 18, 23–26 103 Little, Wandel, Piccolo 1–8, 10, 17, 18, 23–26 25, 26 103 Little, Wandel, Piccolo, Maloney 25, 26 11–15, 27 103 Little, Smolker, Wandel, Piccolo 11–15, 27 Overall Outcome 1–8, 10–15, 17, 18, 23– 27 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation