DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 248, 250, 254, and 258. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
In regards to claim 1, the body of the claim recites that the lockable security element and its components cooperate with an item, such that their operation is defined within the claim, however, the preamble of the claim only recites a security assembly, which only includes the housing and the lockable security element. Consequently, it cannot be determined whether applicant intends to claim the subcombination of the security assembly or the security assembly in combination with the item and its structure. In formulating an evaluation on the merits, the examiner is considering that the claims are drawn to the combination and the claims will be rejected accordingly. Furthermore, claim 1 and its dependents must refer to the combination since claim 1 and at least dependent claim 2 require the structure of the item and its cooperation with the security assembly to define the claimed invention. If applicant indicates by amendment that the combination claim is the intention, the language of the preamble should be made consistent with the language of the body of the claims. If the intent is to claim the subcombination, then the body of the claim and the dependent claims must be amended to remove positive recitations of the combination. Applicant’s intention in regards to the scope of the claim must be clearly established by the claim language. The examiner has set forth language in the claim objections below to show the apparent intent to have the claims drawn to the combination. See claim objections below for suggested language.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
In regards to claim 1, line 1, the phrase “A security assembly comprising” should be changed to “A security assembly in combination with an item, the combination comprising,” in line 2, a comma should be inserted after the phrase “a rear panel,” in line 4, the phrase “an item” should be changed to “the item,” in lines 4 and 5, the phrase “rear panel and two side panels defining” should be changed to “the rear panel, and the two side panels define,” in line 7, the phrase “a pin having a tip, in use, a part of said item being clamped” should be changed to “a pin having a tip, such that a part of said item is clamped,” in line 8, the phrase “when the items is received in the space defined by the housing” should be inserted after the phrase “between the first and second parts of the lockable security element,” in line 10, a comma should be inserted after the phrase “a first position,” in line 11, commas should be inserted before and after the phrase “to a second position,” and in line 12, the phrase “into the first part so as to, in use, extend through” should be changed to “into the first part, so as to extend through.”
In regards to claim 2, line 1, the phrase “The security assembly” should be changed to “The combination” and the phrase “in which” should be changed to “wherein,” in lines 2-4, each instance of the phrase “the security element” should be changed to “the lockable security element,” in line 4, the phrase “an item” should be changed to “the item,” and in line 6, a comma should be inserted after the phrase “in the closed position.”
In regards to claim 3, line 1, the phrase “The security assembly” should be changed to “The combination,” and in lines 1 and 2, the phrase “in which” should be changed to “wherein.”
In regards to claim 4, line 1, the phrase “The security assembly” should be changed to “The combination,” and in line 2, the phrase “in which” should be changed to “wherein.”
In regards to claim 5, the claim should read as follows: “The combination according to claim 4, wherein the first part of the lockable security element is secured to a surface of the rear panel such that the part of the housing, formed as a part of the rear panel, is disposed between the first and second parts of the lockable security element.”
In regards to claim 6, line 1, the phrase “The security assembly” should be changed to “The combination,” and in lines 2 and 3, each instance of the phrase “in which” should be changed to “wherein.”
In regards to claim 7, the claim should read as follows: “The combination according to claim 6, wherein the first part of the lockable security element is secured to a surface of the rail such that the part of the housing, formed as a part of the rail, is disposed between the first and second parts of the lockable security element.”
In regards to claim 8, line 1, the phrase “The security assembly” should be changed to “The combination,” and in line 2, the phrase “in which” should be changed to “wherein.”
In regards to claim 9, line 1, the phrase “The security assembly” should be changed to “The combination,” and in line 2, the phrase “in which” should be changed to “wherein.”
In regards to claim 10, line 1, the phrase “The security assembly” should be changed to “The combination,” and in line 2, the phrase “in which” should be changed to “wherein.”
In regards to claim 11, line 1, the phrase “The security assembly” should be changed to “The combination,” and in line 2, the phrase “in which” should be changed to “wherein.”
In regards to claim 12, line 1, the phrase “The security assembly” should be changed to “The combination,” in line 2, the phrase “in which” should be changed to “wherein,” and in line 4, the phrase “the lateral portions” should be changed to “the first and second lateral portions.”
In regards to claim 13, line 1, the phrase “The security assembly” should be changed to “The combination,” in line 2, the phrase “in which” should be changed to “wherein,” and in line 4, the phrase “the lateral portions” should be changed to “the first and second lateral portions.”
In regards to claim 14, line 1, the phrase “The security assembly” should be changed to “The combination,” and in line 2, the phrase “in which” should be changed to “wherein.”
In regards to claim 15, the claim should read as follows: “The combination according to claim 1, wherein the item received in the space is a hang tab box, wherein the hang tab box is seated in the housing when received in the space and a header of the hang tab box is disposed between the first and second parts of the lockable security element.”
In regards to claim 16, line 2, a comma should be inserted after the phrase “a rear panel,” in line 3, the word “extending” should be changed to “extends,” and in line 4, the word “including” should be changed to “includes.”
In regards to claim 17, the claim should read as follows: “A method of securing the security assembly in combination with the item according to claim 1, wherein the item is a hang tab box, the method comprising: seating the hang tab box in the housing of the security assembly; and moving the pin from the first position into the second position, so that the pin extends through a header of the hang tab box and the hole of the part of the housing, such that the pin is releasably retained by the latch mechanism.”
In regards to claim 18, line 2, the phrase “the method further comprising” should be changed to “further comprising,” in line 4, the phrase “in the open position” should be changed to “in an open position of the second part,” in lines 5 and 6, the phrase “into the closed position so that a part of a header” should be changed to “into a closed position, so that a part of the header.”
In regards to claim 19, the claim should read as follows: “The method according to claim 18, wherein the hang tab box is seated in the housing, such that the header is disposed adjacent the rear panel of the housing, and the second part of the lockable security element is moved into the closed position, so that the part of the header and the part of the housing disposed between the fit and second parts of the lockable security element, formed as part of the rear panel, are clamped between the first and second parts of the lockable security element.”
In regards to claim 20, the claim should read as follows: “The method according to claim 18, wherein the housing comprises a rail extending between the side panels, and wherein the hang tab box is seated in the housing, such that the header is disposed adjacent the rail, and wherein the second part of the lockable security element is moved into the closed position, so that the part of the header and the part of the housing disposed between the first and second parts of the lockable security element, formed as part of the rail, are clamped between the first and second parts of the lockable security element.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In regards to claim 1, it is unclear whether the limitations following each instance of the phrase “in use” is part of the claimed invention. Based on the dependent claims, it is understood that the limitations following each of the phrases “in use” must be positively recited, and will be examined as such. See claim objections above.
In regards to claim 2, the relationship between the “item” recited in claim 2 and the “item” recited in claim 1 is unclear from the claim language. It is understood from the specification that the “item” of claim 2 is equivalent to the “item” of claim 1, and will be examined as such. See claim objections above.
In regards to claim 5, the relationship between the “part of the rear panel” recited in claim 5 and the “part of the housing disposed between the first and second parts of the lockable security element” recited in claim 1 is unclear from the claim language. It is understood from the specification that the “part of the rear panel” of claim 5 is equivalent to the “part of the housing disposed between the first and second parts of the lockable security element” of claim 1, and will be examined as such. See claim objections above.
In regards to claim 7, the relationship between the “part of the rail” recited in claim 7 and the “part of the housing disposed between the first and second parts of the lockable security element” recited in claim 1 is unclear from the claim language. It is understood from the specification that the “part of the rail” of claim 7 is equivalent to the “part of the housing disposed between the first and second parts of the lockable security element” of claim 1, and will be examined as such. See claim objections above.
In regards to claim 15, the relationship between the “hang tab box” recited in claim 15 and the “item” recited in claim 1 is unclear from the claim language. Since claim 1 positively recites the item, and therefore, claim 1 is drawn to the combination of the security assembly and the item, then it is understood, in light of the specification, that the “hang tab box” of claim 15 is equivalent to the “item” of claim 1 and will be examined as such. See claim objections above.
In regards to claim 17, the relationship between the “hang tab box” recited in claim 17 and the “item” recited in claim 1 is unclear from the claim language. Since claim 1 positively recites the item, and therefore, claim 1 is drawn to the combination of the security assembly and the item, then it is understood, in light of the specification, that the “hang tab box” of claim 17 is equivalent to the “item” of claim 1 and will be examined as such. See claim objections above.
Claim 17 recites the limitation "the header" in line 6. There is insufficient antecedent basis for this limitation in the claim. See claim objections above.
In regards to claim 17, the relationship between the pin being “engaged in the latch mechanism,” as recited in claim 17, and the pin being “releasably retained by the latch mechanism,” as recited in claim 1, is unclear from the claim language. It is understood that the “engagement” recited in claim 17 is equivalent to the “releasable retaining” recited in claim 1, and will be examined as such. The claims should use consistent terminology. See claim objections above.
In regards to claim 18, the relationship between the “header” of claim 18 and the “header” of claim 17 is unclear from the claim language. It is understood from the specification that the “header” of claim 18 is equivalent to the “header” of claim 17, and will be examined as such. See claim objections above.
Claim 18 recites the limitation "the open position" in line 4 and the limitation “the closed position” in line 5. There is insufficient antecedent basis for these limitations in the claim. See claim objections above.
In regards to claim 19, the relationship between the “part of the header” of claim 19 and the “part of the header” of claim 18 is unclear from the claim language. It is understood from the specification that the “part of the header” of claim 19 is equivalent to the “part of the header” of claim 18, and will be examined as such. See claim objections above.
In regards to claim 19, the relationship between the “part of the rear panel clamped between the first and second parts of the lockable security element” of claim 19 and the “part of the housing disposed between the first and second parts of the lockable security element” of claim 1 is unclear from the claim language. It is understood from the specification that the “part of the rear panel clamped between the first and second parts of the lockable security element” of claim 19 is equivalent to the “part of the housing disposed between the first and second parts of the lockable security element” of claim 1, and will be examined as such. See claim objections above.
In regards to claim 20, the relationship between the “part of the header” of claim 20 and the “part of the header” of claim 18 is unclear from the claim language. It is understood from the specification that the “part of the header” of claim 20 is equivalent to the “part of the header” of claim 18, and will be examined as such. See claim objections above.
In regards to claim 20, the relationship between the “part of the rail clamped between the first and second parts of the lockable security element” of claim 20 and the “part of the housing disposed between the first and second parts of the lockable security element” of claim 1 is unclear from the claim language. It is understood from the specification that the “part of the rail clamped between the first and second parts of the lockable security element” of claim 20 is equivalent to the “part of the housing disposed between the first and second parts of the lockable security element” of claim 1, and will be examined as such. See claim objections above.
In regards to claims 3, 4, 6, and 8-14, these claims are rejected under 35 U.S.C. 112(b) because they depend from claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-11 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bouan (WO 2019/162588 A1) in view of Napthine (US Pub. No. 2020/0242905 A1).
In regards to claim 1, Bouan discloses a security assembly 100, 200 in combination with an item 300, the combination comprising: a housing (210, 220 and the portion of component 120 having opening 121 and component 123, Figure 2) including a base panel 206, a front panel 202, a rear panel (220 and portion of component 120 having opening 121 and component 123, Figure 2), and two side panels 203 and 204, each side panel extending between the front panel and the rear panel (extending between the front panel and the rear panel when the housing is closed around the item, Figure 4), the housing defining a space for receiving the item (Figures 1 and 4), and edges of the front panel, the rear panel, and the two side panels defining an opening 207 of the housing; a lockable security element 100 having a first part (back part of portion 120 located at the indicator line for reference character 124 and including the latch mechanism at the rear of 120, Paragraph 39 of the Computer Generated Translation), comprising a latch mechanism (Paragraph 39 of the Computer Generated Translation) and a second part 110 comprising a pin having a tip (needle, Paragraph 39 of the Computer Generated Translation), such that a part of said item is clamped between the first and second parts of the lockable security element (Figures 2 and 4); wherein, the pin is moveable from a first position, in which the tip of the pin is within the second part, to a second position, in which the pin extends from the second part into the first part, so as to extend through a portion 301 of said item clamped between the first and second parts (Paragraph 39 of the Computer Generated Translation), and the latch mechanism being configured to releasably retain the tip of the pin when the pin is in the second position (Paragraph 39 of the Computer Generated Translation), and wherein a part of the housing is disposed between the first and second parts of the lockable security element (the part of the housing having hole 121, Paragraph 39 of the Computer Generated Translation), said part of the housing including a hole 121 aligned with the latch mechanism through which the pin extends when the pin is in the second position (Paragraph 39 of the Computer Generated Translation).
Bouan fails to disclose an EAS sensor. Napthine teaches a security assembly or device having an EAS sensor (left hand sensor 12 in Figure 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s invention to include an EAS sensor, with reasonable expectation of success, such that removable of the security assembly from a retail store can be detected and trigger an alarm, thereby, enhancing the security of the device.
In regards to claim 2, Bouan discloses that the first part of the lockable security element is secured to the housing in a fixed position relative to the housing and adjacent the opening of the housing (Figure 1), and the second part of the lockable security element is moveable relative to the first part between an open position (position in which the second part is pivoted downwardly to the position in Figure 1 and the housing portion 210 is closed onto housing portion 220, Figure 4 and Paragraphs 39-44 of the Computer Generated Translation), in which the item is insertable into the housing, and a closed position (Figure 1), in which the second part obstructs the opening and, wherein, in the closed position, the pin is moveable from the first position to the second position (Paragraph 42 of the Computer Generated Translation).
In regards to claim 3, Bouan discloses that the first part of the lockable security element is permanently secured to the housing (Paragraph 49 of the Computer Generated Translation).
In regards to claim 4, Bouan discloses that the first part of the lockable security element is secured to the rear panel of the housing (Figure 1).
In regards to claim 5, Bouan discloses that the first part of the lockable security element is secured to a surface of the rear panel such that the part of the housing, formed as a part of the rear panel, is disposed between the first and second parts of the lockable security element (at least a portion of component 120, such as the section at reference character 123, forming a part of the rear panel when assembled to the rear panel, is disposed between the first and second parts, Figure 2).
In regards to claim 6, Bouan discloses that the housing comprises a rail (portions of the rear panel having openings 208 and 209, Figure 3), and wherein the first part of the lockable security element is secured to the rail (Figure 4).
In regards to claim 7, Bouan discloses that the first part of the lockable security element is secured to a surface of the rail such that the part of the housing, formed as a part of the rail, is disposed between the first and second parts of the lockable security element (the rail including elements 250 and 260 that have at least a dimension that extends between the first and second parts of the lockable security element, such that the lockable security element is secured to the housing).
In regards to claim 8, Bouan discloses that the first and second parts of the lockable security element are hingedly connected (Figure 2).
In regards to claim 9, Bouan discloses that the latch mechanism is magnetically releasable (Paragraph 35 of the Computer Generated Translation).
In regards to claim 10, Napthine teaches that the EAS sensor is housing in a first part 14 of an element 10, and it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s invention to include the EAS sensor in the first part of the lockable security element of Bouan, since the first part of the lockable security element is secured to the housing.
In regards to claim 11, Napthine teaches a second EAS sensor (right hand sensor 12 in Figure 3), and since Napthine teaches both EAS sensors located in the same part of the device (Figure 3), then it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s invention to include both EAS sensors in the first part of the lockable security element of Bouan, with reasonable expectation of success, since the first part of the lockable security element is secured to the housing.
In regards to claim 14, Bouan discloses that the housing is made of a transparent or translucent polymeric material (Paragraph 36 of the Computer Generated Translation).
In regards to claim 15, Bouan discloses that the item received in the space is a hang tab box (Paragraphs 6-10 of the Computer Generated Translation), wherein the hang tab box is seated in the housing when received in the space (Figures 1 and 4) and a header of the hang tab box is disposed between the first and second parts of the lockable security element (header having opening 301, Figures 1 and 2).
In regards to claim 16, Bouan discloses an assembly comprising: a housing (210, 220 and the portion of component 120 having opening 121 and component 123, Figure 2) including a base panel 206, a front panel 202, a rear panel (220 and portion of component 120 having opening 121 and component 123, Figure 2), and two side panels 203 and 204, each side panel extending between the front panel and the rear panel (extending between the front panel and the rear panel when the housing is closed around the item, Figure 4), and the rear panel includes a hole 121; a hang tab box 300 (Paragraphs 6-10 of the Computer Generated Translation) seated in the housing (Figures 1 and 4) with a header of the hang tab box disposed adjacent the rear panel of the housing (header having opening 301, Figures 1 and 2); and a lockable security element 100 having a first part (back part of portion 120 located at the indicator line for reference character 124 and including the latch mechanism at the rear of 120, Paragraph 39 of the Computer Generated Translation) comprising a latch mechanism (Paragraph 39 of the Computer Generated Translation) and a second part 110 comprising a pin having a tip (needle, Paragraph 39 of the Computer Generated Translation), the header of the hang tab box and the rear panel of the housing disposed between the first and second parts of the lockable security element (the part of the housing having hole 121, Paragraph 39 of the Computer Generated Translation and Figure 1), the pin extending through the header and the hole in the rear panel, and the latch mechanism releasably retaining the tip of the pin (Paragraph 39 of the Computer Generated Translation). Bouan fails to disclose an EAS sensor. Napthine teaches a security assembly or device having an EAS sensor (left hand sensor 12 in Figure 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s invention to include an EAS sensor, with reasonable expectation of success, such that removable of the security assembly from a retail store can be detected and trigger an alarm, thereby, enhancing the security of the device.
In regards to claim 17, Bouan discloses a method of securing the security assembly in combination with the item according to claim 1, wherein the item is a hang tab box (Paragraphs 6-10 of the Computer Generated Translation), the method comprising: seating the hang tab box in the housing of the security assembly (Figure 1); and moving the pin from the first position into the second position, so that the pin extends through a header of the hang tab box (portion having opening 301, Figure 2) and the hole of the part of the housing, such that the pin is releasably retained by the latch mechanism (Paragraph 39 of the Computer Generated Translation).
In regards to claim 18, Bouan discloses that the method further comprises: seating the hand tab box in the housing with the second part of the lockable security element in an open position of the second part (Figure 2); and moving the second part of the lockable security element into a closed position (Figure 1), so that a part of the header of the hang tab box is disposed between the first and second parts of the lockable security element before moving the pin from the first position to the second position (Figure 1 and Paragraph 39 of the Computer Generated Translation).
In regards to claim 19, Bouan discloses that the hang tab box is seated in the housing, such that the header is disposed adjacent the rear panel of the housing, and the second part of the lockable security element is moved into the closed position, so that the part of the header and the part of the housing disposed between the fit and second parts of the lockable security element, formed as part of the rear panel, are clamped between the first and second parts of the lockable security element (Figure 1 and Paragraph 39 of the Computer Generated Translation).
In regards to claim 20, Bouan discloses that the housing comprises a rail extending between the side panels (rail including portions of the rear panel having openings 208 and 209, Figure 3), and wherein the hang tab box is seated in the housing, such that the header is disposed adjacent the rail (Figures 1, 3, and 4), and wherein the second part of the lockable security element is moved into the closed position, so that the part of the header and the part of the housing disposed between the first and second parts of the lockable security element, formed as part of the rail, are clamped between the first and second parts of the lockable security element (the rail including elements 250 and 260 that have at least a dimension that extends between the first and second parts of the lockable security element, such that the lockable security element is secured to the housing).
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bouan (WO 2019/162588 A1) in view of Napthine (US Pub. No. 2020/0242905 A1) as applied to claims 1-11 and 14-20 above, and further in view of Chalberg et al. (US-5417319).
In regards to claim 12, Bouan fails to disclose that the rear panel comprises a first lateral portion and a second lateral portion and there is a gap between the first and second lateral portions defined by a distance between inner edges of the first and second lateral portions. Chalberg et al. teaches a housing 10 having a rear panel (see Figure 1 below) comprising a first lateral portion and a second lateral portion (see Figure 1 below) and there is a gap between the first and second lateral portions defined by a distance between inner edges of the first and second lateral portions (see Figure 1 below, with the inner edge of the second lateral portion being located opposite the inner edge of the first lateral portion, as apparent from Figure 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s invention to include an opening or gap defined between first and second lateral portions of the rear panel, with reasonable expectation of success, in order to allow the housing to accommodate differently shaped items.
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In regards to claim 13, Bouan fails to disclose that the front panel comprises a first lateral portion and a second lateral portion and there is a gap between the first and second lateral portions defined by a distance between inner edges of the first and second lateral portions. Chalberg et al. teaches a housing 10 having a front panel (see Figure 1 on Page 20 of the current Office Action) comprising a first lateral portion and a second lateral portion (see Figure 1 on Page 20 of the current Office Action) and there is a gap between the first and second lateral portions defined by a distance between inner edges of the first and second lateral portions (see Figure 1 on Page 20 of the current Office Action). It would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s invention to include an opening or gap defined between first and second lateral portions of the front panel, with reasonable expectation of success, in order to allow the housing to accommodate differently shaped items.
Conclusion
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/ALYSON M MERLINO/Primary Examiner, Art Unit 3675 January 20, 2026