Ex Parte Smith

Board of Patent Appeals and Interferences

Feb 11, 2009

10917567 (B.P.A.I. Feb. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MIKE SMITH
__________

Appeal 2008-4769
Application 10/917,567
Technology Center 3600
__________

Decided:1 February 11, 2009
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

1 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 2008-4769
Application 10/917,567
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-24. We have jurisdiction under 35
U.S.C. § 6(b).

STATEMENT OF THE CASE
The claims are directed to a safe. Claim 1, 17, and 21 are
representative of the claims on appeal, and read as follows:
1. A safe, the safe comprising:
a slide plate;
an electric lock mounted on the slide plate such that the electric lock
moves with movement of the slide plate, the electric lock configured to lock
a door of the safe if the slide plate is in the locked position; and
a mechanical lock in communication with the slide plate and
configured to move the slide plate to a released position in which the electric
lock is unable to lock the safe door if the mechanical lock is unlocked.

17. A manual override system for a safe having an electric lock that
permits the safe to be repeatedly unlocked and locked if an electrical failure
prohibits unlocking the electric lock, the system comprising:
a slide plate on which the electric lock is mounted such that the
electric lock moves with movement of the slide plate; and
a mechanical lock in communication with the slide plate to move the
slide plate between a locked position and an unlocked position, the locked
position positioning the electric lock to obstruct a locking mechanism used
to lock the safe so as to prevent unlocking of the safe if the mechanical lock
is locked, the unlocked position positioning the electric lock to not obstruct
the locking mechanism so as to permit unlocking of the safe if the
mechanical lock is unlocked, wherein the mechanical lock can be repeatedly
unlocked and locked to permit locking and unlocking of the safe even if the
electrical failure prohibits unlocking the electric lock.
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21. A safe, the safe comprising:
an electric lock having an electronic actuator for electronically
actuating a locking feature used to lock a door of the safe;
a slide plate configured to secure the electric lock; and
a mechanical lock in communication with the slide plate and
configured to move the slide plate to a released position in which the electric
lock is unable to lock the safe door, the slide plate causing both the
electronic actuator and locking feature to move.

The Examiner relies on the following evidence:
Hardesty US 1,833,572 Sept. 21, 1925
Meilink US 2,028,464 Jan. 21, 1936
Schlage US 3,751,088 Aug. 07, 1973
Nolin US 4,418,552 Dec. 06, 1983
Gartner US 4,910,981 Mar. 27, 1990
Schwartz US 5,010,751 Apr. 30, 1991
James US 5,094,483 Mar. 10, 1992
Lin US 5,325,687 Jul. 5, 1994
Otto, III US 5,487,289 Jan. 30, 1996

The Examiner makes the following grounds of rejection:
I. Claims 1-5, 17, and 21 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Schwartz;
II. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Schwartz and Schlage;
III. Claims 8, 12, 13, 16, and 18 stand rejected under 35 U.S.C. §
103(a) as being obvious over the combination of Schwartz and Nolin;
IV. Claims 1-5, 17, and 21 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Schwartz and Hardesty;
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V. Claims 6, 7, and 22 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Schwartz and Hardesty, as further
combined with Schlage;
VI. Claims 8, 12, 13, 16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Schwartz and Hardesty,
as further combined with Nolin;
VII. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Schwartz, Hardesty, and Nolin, as further
combined with James;
VIII. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Schwartz, Hardesty, Nolin and
James, as further combined with Gartner;
IX. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Schwartz, Hardesty, Nolin, as further
combined with Otto and Lin;
X. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Schwartz, Hardesty, Nolin, Otto, and Lin,
as further combined with Meilink;
XI. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
being over Schwartz, Hardesty, and Nolin, as further combined with James
and Gartner;
XII. Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Schwartz and Hardesty as further combined
with James; and
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XIII. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Schwartz, Hardesty, and James as further
combined with Gartner.

We reverse rejections I-III, but affirm the remainder of the rejections.

ISSUE (Schwartz)
The Examiner finds that claims 1-5, 17, and 21 are anticipated by
Schwartz; and further concludes that claims 6 and 7 are obvious over the
combination of Schwartz and Schlage; and that claims 8, 12, 13, 16, and 18
are obvious over the combination of Schwartz and Nolin.
Appellant contends that the eccentric lock of Schwartz is only a
fastener, and thus does not read on the mechanical lock of claim 1.
Thus, the issue on Appeal is: Does the eccentric fastener of Schwartz
meet the limitation of a mechanical lock as required by independent claims
1, 17, and 21?

FINDINGS OF FACT
FF1 The Specification teaches that a “problem with electric locks is that
the electric lock automatically locks if power or other electrical failures or
faults occur in the system,” and thus the contents remain locked in the safe
until the problem is fixed or the safe is drilled open (Spec. 1). Moreover,
drilling requires subsequent repair of the portion of the safe drilled through
(id.).
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FF2 The present invention relates “to systems for use with [electric] safes
that permit manually overriding the electrical lock, such as if an electrical
failure prohibits unlocking the electric lock.” (Id.)
FF3 The manual override system of the present invention includes “a slide
plate mounted to the safe, an electric lock mounted on the slide plate such
that the electric lock moves with movement of the slide plate, and a
mechanical lock in communication with the slide plate and configured to
move the slide plate to a released position in which the electric lock is
unable to lock the safe door if the mechanical lock is unlocked.” (Id. at 2.)
FF4 In the only disclosed embodiment, the mechanical lock may be a dial
combination lock (id. at 3).
FF5 The Examiner rejects claims 1-5, 17, and 21 under 35 U.S.C. § 102(b)
as being anticipated by Schwartz (Ans. 3).
FF6 Schwartz is cited for teaching a safe having a mechanical override
system (id.). The safe of Schwarz includes a slide plate having an electric
lock thereon, wherein the electric lock locks the “by abutment with portion
40 of the locking bolt.” (Id.)
FF7 The Examiner finds that when the bolt is retracted to unlock the door,
“the electric lock moves with the slide plate vertically, wherein bolt 46
extends within slots 44 of the slide plate and a mechanical lock 49, 51 moves
the slide plate to a downward released position in which the electric lock 31,
37 is unable to lock the safe door when the mechanical lock is unlocked.”
(Id. at 3-4.)
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FF8 The Examiner further finds that to release the mechanical lock of
Schwartz, the eccentric 49, needs to be rotated with the appropriately sized
and shaped tool, and that the appropriately sized and shaped tool thus
functions as a key (id. at 9).
FF9 Schwartz discloses safes and mechanisms for operating them, and
relates particularly to safes that are intended to be used for short periods of
time by a number of people, such as safes found in hotel rooms (Schwartz
col. 1, ll. 7-12).
FF10 Specifically, Schwartz teaches:
According to a further preferred embodiment of the
invention, the safe is provided with an improved emergency
unlocking mechanism, which comprises, in combination with a
support fixed to a structural element of the safe, generally the
safe door, and a base plate, on which the electric lock is
mounted and which is slidably mounted on said structural
element for limited rectilinear displacement between the
forward and the rear position of the electric lock, an eccentric
rotatably mounted on said support and engaging an element of
said base plate, whereby rotation of said eccentric will cause
said rectilinear displacement of said base plate, said eccentric
being so mounted that it may freely rotate in such a direction as
to displace said base plate from the rear to the forward position
and may additionally rotate only by a small angle in the same
direction.

(Schwartz Col. 2, ll. 45-61.)
FF11 Figure 8 of Schwartz is reproduced below:
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Figure 8 shows in enlarged scale a portion of the lock of the safe of
Schwartz (id. at col. 3, ll. 10-21).
FF12 As taught by Schwartz:
Now, if the safe opening mechanism fails for any reason
and it is desired to open the safe, the safe door will be
perforated at the position in which shank 95, as seen in FIG. 8,
is located. This will uncover a bore 105 in the eccentric 94
(FIG. 8) and a coaxial polygonal opening 102 in said shank, and
by inserting a matching key in said polygonal opening, the
shank 95 and the eccentric 94 can be rotated in the direction
opposite to the arrow in FIG. 6, viz., in a counterclockwise
direction looking at FIG. 6 and a clockwise direction, looking at
FIG. 8. This will initially cause the base plate 71 to shift very
slightly forward, viz., to further urge tongue 77 into seat 80, and
in order to permit this, a slight play must be provided between
the end of said tongue and the bottom of said seat, if said seat is
not open. Thereafter, continued rotation of eccentric 94 will
cause successively larger radii thereof to come into contact with
side 103 of opening 99 and said base plate will be displaced
rearwardly, viz., in the direction of the arrow in FIG. 7, until the
eccentric comes to dead center with respect to side 103, viz.,
contacts said side with its largest radius, and the base plate is in
its rearmost position. In this position tongue 77 will have
become disengaged with seat 80, although said tongue has not
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been actuated by the kinematism driven by motor 70 and has
remained in the forward, locking position with respect to base
plate 71. The resulting condition of the lock is illustrated in
FIGS. 5 and 7. Opposite rotation of eccentric 94 will bring the
base plate and the electric lock back to the position of FIGS. 4
and 6, whenever the failure in the actuating mechanism has
been repaired.

(Id. at col. 7, ll. 28-59.)
FF13 The Examiner rejects claims 6 and 7 under 35 U.S.C. § 103(a) as
being obvious over the combination of Schwartz and Schlage (Ans. 4).
FF14 The Examiner cites Schlage for teaching “an electric lock of the
swing-bolt type . . . for dogging a locking bolt.” (Id.)
FF15 The Examiner concludes that it “would have been obvious to modify
the bolt . . . of Schwartz such that it swings, in view of the teaching of
Schlage [ ], since it is well known in the lock/latch art that sliding and
swinging bolts are interchangeable.” (Id.)
FF16 The Examiner rejects claims 8, 12, 13, 16, and 18 under 35 U.S.C. §
103(a) as being obvious over the combination of Schwartz and Nolin (Id. at
4).
FF17 The Examiner cites Nolin for teaching “that it is well known to
provide a tensioning member 42 to provide downward bias on a slideable,
slotted locking plate.” (Id.)
FF18 The Examiner concludes that it would have been obvious to provide a
tensioning member as taught by Nolin with the slotted slide plate of
Schwartz, with the “motivation being to prevent unwanted jamming of the
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slide plate in the upper release position, to allow the slide plate to properly
resume its lower locking position.” (Id.)

PRINCIPLES OF LAW
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).

ANALYSIS
As to claims 1-5, Appellant argues that the “eccentric fastener 49 of
the Schwartz patent fails to anticipate the mechanical lock recited in claim
1.” (App. Br. 8.) Appellant argues that the ordinary artisan, in light of the
Specification, would interpret the claimed mechanical lock as a “that
provides security against being easily unlocked, such as a key lock or a
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mechanical combination lock which requires unique features or
combinations to unlock the lock.” (Id.) According to Appellant, the
eccentric lock of Schwartz is only a fastener, and thus is not a lock.
We agree with Appellant. In view of the Specification, wherein
Appellant’s only embodiment of a mechanical lock is a combination lock
(FF4), we conclude that the ordinary artisan would interpret “mechanical
lock” as requiring a lock that provides some level of security, such as a key
lock or a combination lock that would then require some level of unique
features or combinations to unlock the door. As can be seen from Figure 8
of Schwartz (FF11), the eccentric lock of that reference may be disengaged
by a tool that fits in the coaxial polygonal opening 102 (FF12). Thus, we
find that Schwartz fails to anticipate a mechanical lock as required by
independent claims 1, 17, and 21.
Moreover, we conclude that the remaining rejections as set forth by
the Examiner (see FF13 and FF16) fail to remedy that deficiency of
Schwartz.

CONCLUSIONS OF LAW
Thus, we conclude that the eccentric fastener of Schwartz does not
meet the limitation of a mechanical lock as required by independent claims
1, 17, and 21.
The rejections of:
Claims 1-5, 17, and 21 under 35 U.S.C. § 102(b) as being anticipated
by Schwartz;
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Claims 6 and 7 under 35 U.S.C. § 103(a) as being obvious over the
combination of Schwartz and Schlage; and
Claims 8, 12, 13, 16, and 18 under 35 U.S.C. § 103(a) as being
obvious over the combination of Schwartz and Nolin;
are therefore reversed.

ISSUE (Schwartz and Hardesty)
The Examiner concludes that claims 1-24 are obvious over the
combination of Schwartz and Hardesty alone, or as combined with the other
cited prior art references.
Appellant contends that there is no reason as to why the ordinary
artisan would combine Schwartz with Hardesty to arrive at the safe of claim
1, nor would the ordinary artisan combine the other cited references with
Schwartz, and Hardesty to arrive at the claimed subject matter.
Thus, the issue on Appeal is: Has Appellant demonstrated that the
ordinary artisan would not combine the cited prior art references in the
manner suggested by the Examiner?

FINDINGS OF FACT
FF19 The Examiner rejects claims 1-5, 17, and 21 under 35 U.S.C. § 103(a)
as being obvious over the combination of Schwartz and Hardesty (Ans. 5).
FF20 Schwartz is relied upon as above (id.).
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FF21 Hardesty is cited for teaching a “[m]echanical key lock 41 which
allows an electric lock 25, 30 to be retracted in the event of a power failure.”
(Id.)
FF22 The Examiner concludes that, arguendo, if Schwartz does not teach a
mechanical lock, it “would have been obvious to provide a key lock for the
lock . . . of Schwartz [ ] in view of the teaching of Hardesty, the motivation
being to restrict unlocking to only those who possess the proper key to the
key operated barrel.” (Id.)
FF23 The Examiner further concludes that “providing a key lock on the
door of Schwartz [ ] for the eccentric, would allow the lock to be unlocked
without having to drill through the door of Schwartz [ ].” (Id. at 11-12).
FF24 The Examiner then rejects claims 6, 7, and 22 as being obvious over
the combination of Schwartz and Hardesty, as further combined with
Schlage (id. at 5).
FF25 The Examiner cites Schlage for teaching “an electric lock of the
swing-bolt type . . . for dogging a locking bolt.” (Id.)
FF26 The Examiner concludes that it “would have been obvious to modify
the bolt . . . of Schwartz such that it swings, in view of the teaching of
Schlage [ ], since it is well known in the lock/latch art that sliding and
swinging bolts are interchangeable.” (Id.)
FF27 The Examiner rejects claims 8, 12, 13, 16, and 18 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Schwartz and Hardesty,
as further combined with Nolin (id.).
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FF28 The Examiner cites Nolin for teaching “that it is well known to
provide a tensioning member 42 to provide downward bias on a slideable,
slotted locking plate.” (Id.)
FF29 The Examiner concludes that it would have been obvious to provide a
tensioning member as taught by Nolin with the slotted slide plate of
Schwartz, with the “motivation being to prevent unwanted jamming of the
slide plate in the upper release position, to allow the slide plate to properly
resume its lower locking position.” (Id. at 5-6)
FF30 The Examiner rejects claim 9 as being obvious over the combination
of Schwartz, Hardesty, and Nolin, as further combined with James (id. at 6).
FF31 James is cited for teaching that it is well known that a key lock is
interchangeable with a combination lock (id. (citing James Col. 4, ll. 42-
43)).
FF32 The Examiner concludes that it would have been obvious to use a
combination lock instead of a key lock as taught by Schwartz and Hardesty,
with the “motivation being to avoid the potential loss of a key.” (Ans. 6.)
FF33 The Examiner rejects claims 10 and 11 as being obvious over the
combination of Schwartz, Hardesty, Nolin and James, as further combined
with Gartner (id.).
FF34 The Examiner cites Gartner for teaching “a dial combination lock
which overcomes a bias spring 54 to allow the slide plate 50 to remain in a
released position until the dial is released.” (Id.)
FF35 The Examiner concludes that it would have been obvious to bias the
slide plate “back to its locking position after the dial is released, in view of
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the teaching of Gartner, the motivation being to prevent the slide plate from
being inadvertently left in its upper released position.” (Id.)
FF36 The Examiner rejects claim 14 as being obvious over the combination
of Schwartz, Hardesty, Nolin, as further combined with Otto and Lin (id.).
FF37 Otto is cited for teaching “four corner fasteners 82 received in slots
80.” (Id. at 7)
FF38 Lin is cited for teaching “a central fastener 41 for a bias spring for the
slide plate 4.” (Id.)
FF39 The Examiner concludes that it would have been obvious to include
four corner fasteners and a central fastener for the bias spring of the spring
biased slide plate, in order to securely attach the spring to the slide plate
(id.).
FF40 The Examiner rejects claim 15 as being obvious over the combination
of Schwartz, Hardesty, Nolin, Otto, and Lin, as further combined with
Meilink (id.).
FF41 Meilink is cited for teaching “that it is well known to mount a bias
spring to a fastener 42 which extends through a slot 43 of a slide plate.”
(Id.)
FF42 The Examiner concludes that it would have been obvious to mount the
bias spring to one of the corner fasteners to securely hold the spring in its
proper position (id.).
FF43 The Examiner rejects claims 19 and 20 as being over Schwartz,
Hardesty, and Nolin, as further combined with James and Gartner (id.).
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FF44 James and Gartner are relied upon as set forth above (see FF31 and
FF34). (Ans. 7.)
FF45 The Examiner concludes that it would have been obvious to use a
combination lock in order to avoid the loss of a key, and that it would have
been obvious to modify the dial combination lock such that that the slide
plate is biased back to its locking position after the dial is released in order
to prevent the slide plate from being inadvertently left in its upper released
position (id. at 7-8).
FF46 The Examiner rejects claim 23 as being obvious over the combination
of Schwartz and Hardesty as further combined with James (id. at 8).
FF47 James is relied upon as above (see FF31) (Ans. 8).
FF48 The Examiner concludes that it would have been obvious to substitute
a combination lock for the key lock in order to avoid the potential loss of a
key (id.).
FF49 Finally, the Examiner rejects claim 24 as being obvious over the
combination of Schwartz, Hardesty, and James as further combined with
Gartner (id.).
FF50 Gartner is relied upon as above (see FF34) (Ans. 8).
FF51 The Examiner concludes that it would have been obvious to modify
the combination lock such that the slide plate is biased back to its locking
position after the dial is released, in order to prevent the slide plate from
being inadvertently left in its upper released position (id.).

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PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 1739. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982). Moreover,
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.

KSR, 127 S. Ct. at 1740. Finally, as noted by the Court in KSR, “[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton.”
Id. at 1742.
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ANALYSIS
As to claims 1-5, Appellant argues that there is no motivation to
combine Schwartz with Hardesty, as Schwartz relates to safes and Hardesty
relates to vehicle doors (App. Br. 13). According to Appellant, “[o]ne
endeavoring to solve problems associated with securing items within a safe
would not logically avail themselves of the Hardesty patent as the Hardesty
patent has nothing to do with storing items in a safe.” (Id.)
Moreover, Appellant asserts, while Hardesty may teach overriding an
electrical lock with a mechanical lock, Hardesty does not “disclose using the
key lock for moving a slide plate on which the electric lock is mounted such
that the movement of the slide plate prevents the electric lock from locking a
safe door.” (Id. at 14).
Appellant reiterates the above arguments as to claim 21 (App. Br. 16);
as well as to the rejection of claims 6, 7, and 22 as being obvious over the
combination of Schwartz, Hardesty and Schlage (id.); the rejection of claims
10 and 11 as being obvious over the combination of Schwartz, Hardesty,
Nolan, James, and Gartner (id. at 18); the rejection of claim 14 over the
combination of Schwartz, Hardesty, Nolan, Otto, and Lin (id.); the rejection
of claim 15 over the combination of Schwartz, Hardesty, Nolin, Otto, Lin,
and Meilink (id. at 19); and the rejection of claim 24 over the combination of
Schwartz, Hardesty, James, and Gartner (id. at 20). Thus, those claims stand
or fall with claim 1.
We agree with the Examiner, and find that claim 1 is rendered
obvious by the combination of Schwartz and Hardesty. Schwartz teaches all
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of the limitations of claim 1, including the use of a mechanical fastener (the
eccentric) that may be used to override the electric lock (FF6-FF8, FF10,
and FF11). Moreover, Schwartz teaches that the eccentric may be rotated by
inserting a “matching key” in the polygonal opening (FF12). Thus,
Schwartz merely fails to teach the use of a mechanical override wherein the
override may only disengage the lock through the use of a more secure
system, such as a key having features unique to the mechanical override of
the electric lock.
Hardesty demonstrates that it was known in the art to override an
electric lock with a keyed lock (FF21). We thus agree with the Examiner
and conclude that it would have been obvious to use a keyed mechanical
lock for the eccentric of Schwartz in order to provide more security to the
system (see e.g., FF22). Moreover, Schwartz is drawn to a safe that is used
by multiple people, such as a hotel safe (FF9). Thus, we also agree with the
Examiner that using a keyed lock would allow the mechanical override to
the electric lock to be accessed without drilling into the door (see, e.g.,
FF23).
We acknowledge that Hardesty is drawn to a vehicle lock, while
Schwartz is drawn to a safe lock. Both patents, however, deal with
mechanical overrides for electric locks, thus we conclude that the ordinary
artisan would have looked to Hardesty to modify Schwartz, because “if a
technique has been used to improve one device, and a person of ordinary
skill would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
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her skill,” KSR, 127 S. Ct. at 1740, and Appellant has not demonstrated that
it would be beyond the level of skill of the ordinary artisan to substitute a
keyed lock for the eccentric of Schwartz.
As to claim 17, Appellant argues that the claim includes the additional
limitation that the “mechanical lock be[ ] configured to facilitate repeatedly
unlocking and locking the safe even if an electrical failure prohibits
unlocking the electric lock.” (App. Br. 9.) Appellant asserts that the
“eccentric fastener of the Schwartz patent is unable to repeatedly lock and
unlock the safe.” (Id.) According to Appellant, once the hole is drilled in
the safe door of Schwartz, “anyone having access to commonly available
hexagonal screw drivers can easily access the safe and the contents therein.”
(Id.) Appellant argues that Hardesty does not make up the deficiencies of
Schwartz as the “key lock of the Hardesty patent is unable to lock the
vehicle door in the event that power is lost to the electrical locking system.”
The eccentric of Schwartz, once exposed, would be able to repeatedly
lock and unlock the safe. Moreover, as noted above, using a keyed lock for
the eccentric would allow the mechanical override to the electric lock to be
accessed without drilling into the door, and it is well known to the ordinary
artisan that a keyed lock may be used repeatedly.
As to the rejection of claims 8, 12, 13, 16, and 18 over the
combination of Schwartz, Hardesty, and Nolin, Appellant argues that those
claims all require a “tensioning member configured to bias the slide plate
from the unlocked to the locked position,” thus automatically biasing the
slide plate without manual operation (App. Br. 11; see also App. Br. 17).
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According to Appellant, the manual operation taught by the Schwartz patent
teaches away from incorporating “an automatically operable tensioning
member.” (Id.) Appellant argues further that the spring plate of Nolin
would “add no benefit to the operation of Schwartz.” (Id. at 12.)
Again, Appellant’s arguments are not convincing. Nolin teaches that
it is well known to provide a tensioning member to provide downward bias
on a slideable, slotted locking plate (FF28), and we can find no error in the
Examiner’s conclusion that it would have been obvious to use a tensioning
member as taught by Nolin in order “to prevent unwanted jamming of the
slide plate in the upper release position, and to allow the slide plate to
properly resume its lower locking position.” (FF29.) The fact that Schwratz
teaches manual operation does not teach away from using a tensioning plate,
they are just different alternatives known to the ordinary artisan.
As to the rejection of claim 9, Appellant argues that while it “may be
well known to use a combination lock in place of a key lock, . . . it is not
well known to use a combination lock to move a slide plate.” (App. Br. 17.)
None of the cited references, Appellant asserts, teaches “moving a slide plate
with actuation of a combination lock.” (Id. at 18.)
As acknowledged by Appellant, key locks and combination locks are
used interchangeably in the art. Although Appellant argues that it is not well
known to use a combination plate to move a slide plate, Appellant provides
no evidence to that affect, and arguments of counsel cannot take the place of
evidence in the record. In re Scarbrough, 500 F.2d 560, 566 (CCPA 1974).
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Application 10/917,567
As to the rejection of claims 19 and 20 over the combination of
Schwartz, Hardesty, Nolin, James, and Gartner, Appellant reiterates the
arguments made with respect to claim 17 and claim 9 (App. Br. 19). Those
arguments are not found to be convincing for the reasons set forth supra.
As to the rejection of claim 23 over the combination of Schwartz,
Hardesty and James, Appellant reiterates the arguments made as to claim 21
(i.e., claim 1) and claim 9. Again, those arguments are not found to be
convincing for the reasons set forth supra.

CONCLUSIONS OF LAW
We thus conclude that Appellant has not demonstrated that the
ordinary artisan would not combine the cited prior art references in the
manner suggested by the Examiner.
Therefore, the rejections of:
Claims 1-5, 17, and 21 under 35 U.S.C. § 103(a) as being obvious
over the combination of Schwartz and Hardesty;
Claims 6, 7, and 22 under 35 U.S.C. § 103(a) as being obvious over
the combination of Schwartz and Hardesty, as further combined with
Schlage;
Claims 8, 12, 13, 16, and 18 under 35 U.S.C. § 103(a) as being
obvious over the combination of Schwartz and Hardesty, as further
combined with Nolin;
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Appeal 2008-4769
Application 10/917,567
Claim 9 under 35 U.S.C. § 103(a) as being obvious over the
combination of Schwartz, Hardesty, and Nolin, as further combined with
James;
Claims 10 and 11 under 35 U.S.C. § 103(a) as being obvious over the
combination of Schwartz, Hardesty, Nolin and James, as further combined
with Gartner;
Claim 14 under 35 U.S.C. § 103(a) as being obvious over the
combination of Schwartz, Hardesty, Nolin, as further combined with Otto
and Lin;
Claim 15 under 35 U.S.C. § 103(a) as being obvious over the
combination of Schwartz, Hardesty, Nolin, Otto, and Lin, as further
combined with Meilink;
Claims 19 and 20 under 35 U.S.C. § 103(a) as being over Schwartz,
Hardesty, and Nolin, as further combined with James and Gartner;
Claim 23 under 35 U.S.C. § 103(a) as being obvious over the
combination of Schwartz and Hardesty as further combined with James; and
Claim 24 under 35 U.S.C. § 103(a) as being obvious over the
combination of Schwartz, Hardesty, and James as further combined with
Gartner;
are all affirmed.

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Appeal 2008-4769
Application 10/917,567
TIME LIMITS
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

dm

BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075

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