11087633 (B.P.A.I. Apr. 30, 2009)

Ex Parte Bosin

Board of Patent Appeals and InterferencesApr 30, 2009

11087633 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte SANFORD BOSIN __________ Appeal 2008-62551 Application 11/087,633 Technology Center 3600 __________ Decided:2 April 30, 2009 __________ Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES, Administrative Patent Judges. SCHEINER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1-20, all the claims pending. We have jurisdiction under 35 U.S.C. § 6(b). 1 Heard April 21, 2009. 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-6255 Application 11/087,633 STATEMENT OF THE CASE “One major drawback of prior and existing locks . . . is that a user may forget to lock the lock” (Spec. ¶ 4). The present invention is directed to “a lock that includes an indicator that informs the user when the lock is left open or unlocked” (id.). Independent claims 1 and 20 are representative of the subject matter on appeal: 1. A lock comprising: a locking mechanism; and an indicator, said indicator being activated when said locking mechanism is unlocked, and said indicator being deactivated when said locking mechanism is locked, wherein a user of said lock is alerted to the unlocked status of said locking mechanism by a signal from said indicator, and wherein the continued unlocked status of said locking mechanism causes generation, by said indicator, of a second signal. 20. A method for securing an object for a user comprising: locking said object using a lock, said lock including an indicator; alerting said user, by a first signal from said indicator upon said lock being unlocked, of the unlocked status of said lock, said indicator being disabled upon said lock then being locked, wherein the user of said object is alerted to the unlocked status of the object by said first signal from said indicator; and further alerting said user, by a second signal from said indicator after said first signal, of the unlocked status of said object. The Examiner relies on the following evidence: Masoncup et al. US 4,556,872 Dec. 3, 1985 Masoncup et al. US 4,811,578 Mar. 14, 1989 Chang US 5,598,725 Feb. 4, 1997 Ibey et al. US 5,877,686 Mar. 2, 1999 Markegard et al. US 6,199,415 B1 Mar. 13, 2001 Hsu US 6,348,857 B1 Feb. 19, 2002 Winner US 6,734,788 B1 May 11, 2004 2 Appeal 2008-6255 Application 11/087,633 The claims stand rejected as follows: • Claims 1-3, 6, and 19 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872 and Markegard. • Claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872, Markegard, and Winner. • Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872, Markegard, and Chang. • Claims 9-11, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872, Markegard, and Masoncup ’578. • Claims 12-14 and 17 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872, Markegard, Masoncup ’578, and Chang. • Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872, Markegard, and Ibey. • Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Hsu and Markegard. We reverse. THE ISSUES There are six separate obviousness rejections of claims 1-19, as set forth above in the Statement of the Rejection, but each of the rejections is based on the teachings of Masoncup ’872 and Markegard, and the issue raised by each of these rejections on appeal is the same: Has the Examiner established that a lock with an indicator that generates a first signal when the lock is unlocked, and a second signal when the lock remains unlocked, would have been obvious over the combined teachings of Masoncup ’872 and Markegard? 3 Appeal 2008-6255 Application 11/087,633 The issue raised by the rejection of claim 20 is: Has the Examiner established that a method of securing an object using a lock with an indicator that generates a first signal when the lock is unlocked, and a second signal when the lock remains unlocked, would have been obvious over the combined teachings of Hsu and Markegard? FINDINGS OF FACT FF1 Masoncup ’872 describes “a padlock with a tamper alarm” that “comprises structure for actuating the alarm whenever an attempt is made to remove the battery without first unlocking the shackle in an authorized manner” (Masoncup ’872, col. 2, ll. 1-17), or “when an attempt is made forcibly to raise or to sever the shackle” (id. at col. 2, ll. 20-23). FF2 In addition, “each time the shackle is moved between its open and closed positions in an authorized manner, the alarm is actuated momentarily, giving a short test beep or sound . . . [thus] one need not remember intentionally to test the alarm” (Masoncup ’872, col. 2, ll. 6-12). That is, each time the padlock is unlocked normally, a short test beep or sound is generated, but no additional or secondary signal is generated until the padlock is re-locked. FF3 Markegard describes a steering wheel lock comprising “a multi- layer security system . . . including a first mechanical layer to prevent theft of the car . . . a second electronic motion detector siren level, a third motion detector strobe light level, a fourth power backup level, and a fifth level of lock activated L.E.D. warning lights” (Markegard, col. 2, ll. 9-14). FF4 When Markegard’s system is installed on a steering wheel, and locked with a key, “[t]he L.E.D. array is visible from outside the locked car 4 Appeal 2008-6255 Application 11/087,633 to show moving lights, thereby indicating an armed alarm system is on” (id. at col. 4, ll. 31-34). The system can be set to “an allowable tamper tolerance” (id. at col. 5, l. 1). If that tamper tolerance is exceeded by someone attempting to remove the wheel lock by force, both the siren and the strobe light are activated for 30 seconds. After 30 seconds, the siren and alarm are shut off, and the system is re-armed (id. at col. 5, ll. 2-15). No signal or alarm is generated when the system is unlocked. FF5 Hsu describes an audible alarm for a car that is triggered if someone attempts to jimmy the door locks, whether or not the attempt is successful (Hsu, col. 2, ll. 9-18). The alarm will not sound if the car is opened with a key. PRINCIPLES OF LAW “In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). A rejection based on section 103 clearly must rest on a factual basis . . . In making this evaluation, all facts must be considered. The Patent Office has the initial duty of supplying the factual basis for its rejection. . . . To the extent the Patent Office rulings are so supported, there is no basis for resolving doubts against their correctness. Likewise, we may not resolve doubts in favor of the Patent Office determination when there are deficiencies in the record as to the necessary factual bases supporting its legal conclusion of obviousness. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “Often, it will be necessary . . . to look to interrelated teachings of multiple [references] . . . and the background knowledge possessed by a 5 Appeal 2008-6255 Application 11/087,633 person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), taking into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. “[T]his analysis should be made explicit,” id., and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. ANALYSIS Claims 1-19 The Examiner rejected claims 1-3, 6, and 19 as unpatentable over the combined teachings of Masoncup ’872 and Markegard, and claims 4, 5, and 7-18 over the teachings of Masoncup ’872 and Markegard, together with one or more additional references. The Examiner concluded that it would have been obvious to provide Masoncup ’872 “with a second indicator signal and a plurality of lights as taught by Markegaard [sic] to be advantageous in alerting the user to the status of the lock for an extended period of time” (Ans. 3-4). Appellant contends that Masoncup ’872 and Markegard “are directed to anti-theft or tamper-resistant devices designed to ward off intrusion. Only when the lock is forced does the alarm activate, although the mechanism may be tested by the user and a test signal employed to verify operativeness” (App. Br. 7). Appellant contends that neither reference describes a device in which “the continued unlocked status of the locking mechanism causes 6 Appeal 2008-6255 Application 11/087,633 generation, by the indicator, of a second signal,” as neither reference is concerned with alerting a user to the unlocked status of the device (id.). Appellant’s argument is persuasive. Masoncup ’872 describes a locking, tamper-resistant device with an indicator that is momentarily activated when the device is unlocked (i.e., the “short test beep or sound”) (FF1, FF2), while Markegard describes a locking/security device with an indicator that is continuously activated when the device is locked and armed (FF3, FF4). Given the fact that neither Masoncup ’872 nor Markegard describes a system in which “the continued unlocked status of said locking mechanism causes generation, by said indicator, of a second signal,” as required by claims 1-19, we agree with Appellant that the Examiner has not established that “the teachings of the references . . . clearly provide motivation for providing a lock mechanism with a secondary indicator means to show continued unlocked status” (Ans. 6). Claim 20 The Examiner rejected claim 20 as unpatentable over the combined teachings of Hsu and Markegard. The Examiner concluded that “[i]t would have been obvious to provide the . . . [audible] indicator of Hsu with a second indicator signal and a plurality of sirens as taught by Markegaard [sic] to be advantageous in alerting the user to the status of the lock for an extended period of time” (Ans. 6). Appellant contends that “these references are directed to anti-theft or tamper-resistant devices designed to ward off intrusion. Only when the lock is forced does the alarm activate, although the mechanism may be tested by the user and a test signal employed to verify operativeness of the device” 7 Appeal 2008-6255 Application 11/087,633 (App. Br. 11). Appellant contends that neither reference describes a locking mechanism capable of “alerting a user, by a first signal . . . of the unlocked status of the lock, . . . and further alerting the user, by a second signal . . . after the first signal, of the unlocked status of the object” (id.). Appellant’s argument is persuasive. Hsu describes an audible car alarm that is triggered by an attempt to jimmy the door locks (FF5), while Markegard describes a locking/security device with an indicator that is continuously activated when the device is locked and armed (FF3, FF4). Given the fact that neither Hsu nor Markegard describes a system capable of “alerting said user, by a first signal from said indicator upon said lock being unlocked, of the unlocked status of said lock, said indicator being disabled upon said lock then being locked, . . . and further alerting said user, by a second signal from said indicator after said first signal, of the unlocked status of said object,” as required by claim 20, we agree with Appellant that “the Examiner fails to provide support for a prima facie case of obviousness of claim 20” (App. Br. 11). CONCLUSIONS OF LAW The Examiner has not established that a lock with an indicator that generates a first signal when the lock is unlocked, and a second signal when the lock remains unlocked, would have been obvious over the combined teachings of Masoncup ’872 and Markegard. Nor has the Examiner established that a method of securing an object using a lock with an indicator that generates a first signal when the lock is unlocked, and a second signal when the lock remains unlocked, would have been obvious over the combined teachings of Hsu and Markegard. 8 Appeal 2008-6255 Application 11/087,633 SUMMARY • The rejection of claims 1-3, 6, and 19 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872 and Markegard is reversed. • The rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872, Markegard, and Winner is reversed. • The rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872, Markegard, and Chang is reversed. • The rejection of claims 9-11, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872, Markegard, and Masoncup ’578 is reversed. • The rejection of claims 12-14 and 17 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872, Markegard, Masoncup ’578, and Chang is reversed. • The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over Masoncup ’872, Markegard, and Ibey is reversed. • The rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Hsu and Markegard is reversed. REVERSED dm MERCHANT & GOULD PC 9 Appeal 2008-6255 Application 11/087,633 P.O. BOX 2903 MINNEAPOLIS MN 55402-0903 10