Ex Parte Avganim

Patent Trial and Appeal Board

Nov 7, 2018

14267064 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/267,064 05/01/2014 Meir Avganim
2352 7590 11/09/2018
OSTROLENK FABER LLP
845 THIRD A VENUE
NEW YORK, NY 10022
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.
P/4222-87 5706
EXAMINER
BARRETT, SUZANNE LALE DINO
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEIR A VGANIM
Appeal2017-010129 1
Application 14/267,0642
Technology Center 3600
Before ANTON W. PETTING, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 2-8, 13-20, and 22-25. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Our decision references the Appeal Brief ("Br.," filed Apr. 28, 2016), the
Examiner's Answer ("Ans.," mailed Dec. 20, 2016), and the Final Office
Action ("Final Act.," mailed Nov. 24, 2015).
2 According to Appellant, the real party in interest is Meir A vganim. Br. 1.
Appeal2017-010129
Application 14/267 ,064
BACKGROUND
According to Appellant, "[ t ]he present invention is generally directed
to locking devices and, more particularly, to locks that are electronically
operable and controllable by mobile devices such as telephones, PCs, tablets
and the like." Spec. ,r 2.
Br. 9.
ILLUSTRATIVE CLAIM
Claim 17 is the only independent claim on appeal and recites:
1 7. A locking system for a device or structure requiring
locking, comprising:
a lock body including a locking element and said locking
body being configured to be physically attached to said device or
structure with said locking element penetrating into a portion of
said device or structure,
a moving mechanism coupled to and configured to operate
the locking element,
an electrical controller configured to control the moving
mechanism,
the lock body further comprising a facility for receiving
electrical commands for the electrical controller;
a separate mobile cell phone device, physically separated
from said device or structure and configured to communicate
directly with said electrical controller and to provide to said
electrical controller said electrical commands to direct the
electrical controller to at least control the moving mechanism to
move the locking element into an unlocked position, based solely
on said electrical commands from said mobile device, and
wherein said lock body is without any internal electrical
power source to operate said moving mechanism and without any
connection to an external DC and/or AC power source and is
configured to receive electrical power to temporarily power and
operate said electrical controller and said moving mechanism
solely from said mobile cell phone device.
2
Appeal2017-010129
Application 14/267 ,064
REJECTI0NS 3
1. The Examiner rejects claims 2-8, 13-20, and 22-25 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.
2. The Examiner rejects claims 3, 8, 17, 18, and 22-24 under 35 U.S.C.
§ 102( a)( 1) as anticipated by Buzhardt. 4
3. The Examiner rejects claims 2, 3, 5-8, 14, 17, 18, and 22-24 under 35
U.S.C. § 103 as unpatentable over Tamura5 in view of Buzhardt.
4. The Examiner rejects claims 2, 3, 5-8, 14, 17, 18, and 22-24 under 35
U.S.C. § 103 as unpatentable over Tamura in view of Buzhardt.
5. The Examiner rejects claims 4, 19, and 25 under 35 U.S.C. § 103 as
unpatentable over Tamura in view of Buzhardt and Mette 6 or over
Buzhardt in view of Mette.
6. The Examiner reject claims 13 under 35 U.S.C. § 103 as unpatentable
over Tamura in view of Buzhardt and Lu. 7
7. The Examiner rejects claims 15 and 16 under 35 U.S.C. § 103 as
unpatentable over Tamura in view of Buzhardt and Koshimizu8 or over
Buzhardt in view of Koshimizu.
3 The Examiner has withdrawn the rejection of claim 20 under 35 U.S.C.
§ 112(a). See Ans. 13. Rejections of claims 21 and 26 are moot because
those claims have been cancelled. Id.
4 Buzhardt, US 2014/0250954 Al, pub. Sept. 11, 2014.
5 Tamura, US 2007/0144225 Al, pub. June 28, 2007.
6 Mette et al., US 8,534,101 B2, iss. Sept. 17, 2013.
7 Lu, US 2008/0034816 Al, pub. Feb. 14, 2008.
8 Koshimizu et al., US 5,566,012, iss. Oct. 15, 1996.
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Appeal2017-010129
Application 14/267 ,064
DISCUSSION
New Ground of Rejection under 35 US. C. § l l 2(b)
Claims 2-8, 13-20, and 22-25 are rejected under 35 U.S.C. § 112(b).
The text of 35 U.S.C. § 112(b ), requires "[t]he 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." "As the statutory language of 'particular[ ity]' and
'distinct[ ness]' 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). Claims are in compliance with 35 U.S.C. § 112(b) if"the
claims, read in light of the specification, reasonably apprise those skilled in
the art both of the utilization and scope of the invention, and if the language
is as precise as the subject matter permits." Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof
Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)).
Thus, the test for determining the question of indefiniteness may be
formulated as whether the claims "set out and circumscribe a particular area
with a reasonable degree of precision and particularity." In re Moore, 439
F.2d 1232, 1235 (CCPA 1971). With regard to the reasonableness standard,
one must consider the language in the context of the circumstances.
Packard, 751 F.3d at 1313. Language is an imprecise method of drawing
boundaries delineating patent rights, thus unreasonable precision cannot be
demanded. Id. On the other hand, the claims must notify the public of what
they are excluded from making and using. Id. For this reason, while exact
precision is not required, an applicant is required to use language as precise
as the subject matter reasonably permits. Id.
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Appeal2017-010129
Application 14/267 ,064
Independent claim 1 7 requires a lock body that "is without any
internal electrical power source to operate said moving mechanism and
without any connection to an external DC and/or AC power source and is
configured to receive electrical power to temporarily power and operate said
electrical controller and said moving mechanisms from said mobile cell
phone device." When read in light of the Specification, we determine that
there is a lack of clarity in this phrase such that one of ordinary skill in the
art is not reasonably apprised of both the utilization and scope of the
invention in a manner that is as precise as the subject matter permits.
Regarding the claim language by itself, we find the claimed phrase
confusing in scope insofar as it excludes any connection between the lock
body and an external power source and yet requires that the mobile cell
phone device provide power to the lock body. Although one might interpret
the claim such that the claim language merely excludes a physical
connection, the Specification specifically indicates that connections may be
wired or wireless. See, e.g., Spec. 8. We also find a lack of clarity in the
claim language, when read in light of the Specification, regarding the
requirement that the lock body is without any internal electric power source.
Appellant argues that the claim language does not preclude the use of a
temporary power source in the form of a capacitor. See Appeal Br. 4.
However, the Specification unequivocally describes such a capacitor as a
power source. See Spec. ,r 26 ( describing the lock body as including "an
internal power storage device 56 that may be a battery or a capacitor that can
hold power for an extended period, or even a short period on the order of a
minute or two. The power is then provided to a controller 58."). Thus, we
determine that the claim phrase at issue is internally inconsistent when read
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Appeal2017-010129
Application 14/267 ,064
in light of the Specification. Specifically, the claim requires that the lock
body is not connected to any internal or external power source, and yet the
lock body is powered temporarily by a mobile cell phone device, which
would necessarily require some form of connection between the cell phone
and the lock body and/or must necessarily include an internal means to
temporarily power the lock. In short, the claim lacks the degree of precision
required to determine the full scope of what is and what is not included
within the lock body and how it is connected to any power source to operate
the claimed moving mechanism.
For the foregoing reasons, the scope of the claimed invention cannot
be determined. Accordingly, on this record, claims 2-8, 13-20, and 22-25
are indefinite for the reasons given above.
Rejections 1-7
Having determined that the subject matter of claims 2-8, 13-20, and
22-25 is indefinite, we are unable to determine the propriety of the
rejections set forth by the Examiner as the propriety depends on the
limitation considered indefinite. The review of these rejections would
require considerable speculation as to the scope of the claims. Such
speculation would not be appropriate. In re Steele, 305 F.2d 859, 862
(CCPA 1962).
We, therefore, reverse proforma the Examiner's rejections of claims
2-8, 13-20, and 22-25. We emphasize that this is a technical reversal of
these rejections, and not a reversal based upon the merits of the rejections.
CONCLUSION
We REVERSE the rejections of claims 2-8, 13-20, and 22-25 under
35 U.S.C. §§ 102(a)(l), 103, and 112(a).
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Appeal2017-010129
Application 14/267 ,064
A NEW GROUND OF REJECTION has been entered for claims 2-8,
13-20, and 22-25 under 35 U.S.C. § 112, second paragraph, as indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 4I.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be reheard under§
41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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