Ex Parte STEVENSDownload PDFPatent Trial and Appeal BoardSep 26, 201713088744 (P.T.A.B. Sep. 26, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/088,744 04/18/2011 Stacy Joan STEVENS 032514-00003 9121 4372 7590 09/28/2017 ARENT FOX LLP 1717 K Street, NW WASHINGTON, DC 20006-5344 EXAMINER BARRETT, SUZANNE LALE DINO ART UNIT PAPER NUMBER 3673 NOTIFICATION DATE DELIVERY MODE 09/28/2017 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): patentdocket @ arentfox. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STACY JOAN STEVENS Appeal 2016-001146 Application 13/088,744 Technology Center 3600 Before STEFAN STAICOVICI, ERIC C. JESCHKE, and ANTHONY KNIGHT, Administrative Patent Judges. KNIGHT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant, Stacy Joan Stevens, appeals under 35 U.S.C. § 134(a) from the Examiner’s rejecting claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to “devices, methods, and systems for preventing access to keys, such as vehicle keys, by individuals having blood Appeal 2016-001146 Application 13/088,744 alcohol levels above predetermined limits, such as legal limits for driving.” Spec. 13. Claims 1, 15 and 17 are independent. Claims 1, 15, and 17, reproduced below, are representative of the claimed subject matter: 1. A device for enclosing and selectively releasing a key, the device comprising: a housing having a plurality of sides; a key retaining receptacle accessible via an opening in one of the plurality of sides, the receptacle being located within the housing and comprising a cavity, the key retaining receptacle being configured to receive the key; a slidable door positionable with regard to the opening in the key retaining receptacle in a first position to allow access to the cavity of the key retaining receptacle and in a second position to prevent access to the cavity, the door having a pin receiving opening; a pin engageable with the pin receiving opening so as to prevent access to the cavity when engaged with the door when the door is in the second position; a pin engaging device configured to selectively engage the pin with the pin receiving opening of the door; a sample sensor configured to sample and analyze a received sample and to output data relating to the analyzed sample; and a control mechanism configured to: receive the data output from the sample sensor; and upon the received data output meeting a predetermined condition, cause the pin engaging device to disengage the pin from the pin receiving opening of the door so as to allow access to the cavity via placement of the door in the first position. App. Br. 20. (Claims App.). 15. A system for enclosing and selectively releasing a plurality of keys, the system comprising: a key retaining bank, including: a housing having a plurality of sides; and 2 Appeal 2016-001146 Application 13/088,744 a plurality of key retaining mechanisms, each of the plurality of key retaining mechanisms including a plurality of slidable doors in at least one of the plurality of sides, each of the plurality of doors providing access to a receptacle to receive one of the plurality of keys, to place the received key in a fully enclosed condition within the receptacle, and each of the plurality of doors being selectively placeable in a key accessing condition; a breath sample sensor configured to sample and analyze a received breath sample and to output data relating to the analyzed sample; and a control mechanism configured to: receive the data output from the sample sensor; match the received data to one of the plurality of key retaining mechanisms; and upon the received data output meeting a predetermined condition corresponding to breath alcohol being lower than a predetermined level, place the matched one of the plurality of key retaining mechanisms in the key accessing condition via opening of the corresponding one of the plurality of doors. Id. at 22—23. (Claims App.). 17. A method for enclosing and selectively releasing a key via a device for enclosing and releasing the key, the device comprising: a housing having a plurality of sides; a key retaining mechanism that includes a slidable door in at least one of the plurality of sides and a cavity accessible via the door; a sample sensor; and a control mechanism, the method comprising: receiving the key in the key retaining receptacle via the door slid to an open position; placing the key in a retained condition within the receptacle, wherein the key is fully received within the cavity and the door is slid to a closed position; receiving a sample; the sample sensor sensing the sample and producing a sensor output; the control mechanism receiving the sensor output; and 3 Appeal 2016-001146 Application 13/088,744 if the sensor output meets a predetermined condition, the control mechanism causing the key retaining mechanism to be placed in a key releasing condition via sliding the door into an open position. Id. at 23—24. (Claims App.). REJECTIONS The Examiner made the following rejections: 1. Claim 15—17 stand rej ected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 18—20 of co-pending U.S. Application No. 13/088,782. 2. Claims 1—14 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Diefenbach (US 2,589,349, issued Mar. 18, 1952) and Aquila (US 2006/0182661 Al, published Aug. 17, 2006) 3. Claims 15 and 16 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Diefenbach, Aquila, and Crigger et al. (US 8,207,816 B2, issued June 26, 2012, hereinafter “Crigger”). OPINION Rejection 1 In the Office action, this rejection of claims 15—17 is based upon provisional obviousness-type double patenting over claims 18-20 of the ’782 application. See Non-Final Act. 4. Appellant has not contested this provisional rejection. See App. Br. 8. Further, according to USPTO records, the claims of the ’782 application were amended on July 27, 2015, and April 1, 2016, after issuance of the Office Action on appeal. 4 Appeal 2016-001146 Application 13/088,744 Furthermore, the ’782 application issued on August 2, 2016 as U.S. Patent No. 9,404,286 B2. Given the provisional nature of the rejection and the amendment of the claims in the ’782 application after issuance of the Office Action on appeal, we exercise our discretion and decline to rule on this rejection. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). We leave this issue for the Examiner to consider should further prosecution occur in the instant application on appeal. Rejection 2 Claim 1 Appellant argues that “The cited references, alone or in combination, fail to disclose or suggest at least the combination of ‘a key retaining receptacle accessible via an opening in one of the plurality of sides.’” App. Br. 15. Appellant argues that “[t]he shallow box 7 does not include any opening in one of the sides. Rather, the shallow box 7 has an entirely missing side.” Id. at 14. See also Reply Br. 4 (“First, claim 1 recites, ‘a housing having a plurality of sides; a key retaining receptacle accessible via an opening in one of the plurality of sides.’”). The Examiner responds to the Appeal Brief by stating that “[i]t is respectfully submitted that Appellant has not claimed a ‘wall’ or plurality of walls, but rather, merely ‘sides.’ Accordingly, it is maintained that Diefenbach clearly teaches a top side which happens to be completely open.” Ans. 5. Diefenbach discloses a housing with an open side. See Diefenbach Fig. 1. Having one side open does not change the fact that Diefenbach discloses a housing. Below is a depiction of the Board’s understanding of 5 Appeal 2016-001146 Application 13/088,744 the Examiner’s interpretation of Figure 1 of Diefenbach, showing the top side with an opening therein: Shown above is an annotated version of a portion of Figure 1 of Diefenbach, showing the side edges darkened to illustrate the thickness of the sides. As interpreted by the Examiner, the sides of the housing form part of the top side and the opening extends from one side of the housing to the other. Thus, the opening is in the side of the housing because the side has a thickness, as illustrated above. Appellant’s claims are not so limiting as to exclude the Examiner’s interpretation of the reference. Further, the Examiner states that Diefenbach teaches the “key retaining receptacle (9) [is] accessible via an opening in one of the sides.” Final Act. 5, 10. Diefenbach’s housing is a key retaining receptacle. See Diefenbach 1:11—14. (“Fig. 1 is a view in perspective showing an embodiment of the invention with a key disposed in a compartment which is illustrated with the cover partly open.”). Therefore, Appellant’s arguments regarding the opening in the side and lack of a key receptacle are not supported by the disclosure of Diefenbach. 6 Appeal 2016-001146 Application 13/088,744 Appellant further argues that the “cover 11 of Diefenbach does not include any pin receiving opening at 7.” App. Br. 14. In support of this position, Appellant further argues that “the pin arrangement of Aquila prevents the two halves of the container from pivoting apart. Accordingly, the pin arrangement of Aquila would not prevent the cover of Diefenbach, which does not include any pin receiving openings, from opening.” Id. at 16. In response, the Examiner states that “the cover (11) of Diefenbach is in fact a slidable door” and “Aquila clearly teaches the cover having pin openings (112) to receive the locking pins [(] 108) to engage the receptacle and lock the cover.” Ans. 6. Thus, the Examiner is not relying upon Diefenbach to teach a pin receiving opening because Aquila teaches this structure. We, thus, agree with the Examiner that combining the housing of Diefenbach with its slidable cover and the pins and pin receivable openings of Aquila would have been obvious to a person having ordinary skill in the art at the time of Appellant’s invention for the reason set forth by the Examiner, namely, “for preventing drunk driving.” See Non-Final Act. 6. Moreover, Appellant’s argument amounts to an attack on the references individually, rather than as combined in the rejection, and, thus, does not identify error in the rejection. Non-obviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck, 800 F.2d at 1097 (citing In re Keller, 642 F.2d at 425). See also KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). As the Examiner has correctly explained, a person having ordinary skill in the art would have 7 Appeal 2016-001146 Application 13/088,744 understood the rejection to rely on the combined teachings of both Diefenbach and Aquila to meet the limitation at issue. See Final Act. 6 (“It would have been obvious ... to modify the prior art key retaining receptacle of Diefenbach . . . with the pin arrangement, sample sensor and control mechanism as taught by Aquila to . . . [prevent] drunk driving.”). Below is an annotated portion of Aquila’s Figure 2: Aquila Figure 2, as annotated by the Board, shows spring loaded pins 108 that are contained within the housing, battery 193, solenoid 110, and hinge 106. Pins 108 move inwardly and outwardly in the direction of travel as indicated. Furthermore, pins 108 are received within pin receiving openings (112, not shown above) that are in the cover to lock the cover in place. See Aquila |32 (“When the pins 108A are located inside the pin receiving 8 Appeal 2016-001146 Application 13/088,744 apertures 112 of the upper half housing portion 102 of the lock box 100, the lock box 100 is locked and not capable of being opened.”). Diefenbach contemplates the use of the end walls to receive embossments 12 to secure the cover in place. See Ans. 7 (“[T]he slidable cover (11) of Diefenbach provides edge ‘openings’ along the end walls to receive the embossments 12, thus the concept of further securing the slidable cover to the receptacle beyond the interlocking flanges is contemplated by Diefenbach.”). Thus, when Diefenbach’s device is combined with Aquila’s pin mechanism, Diefenbach’s cover 11 would contain Aquila’s spring-biased pins and control mechanism with the pins engaging Diefenbach’s housing 7 when in the locked position to prevent access to the key retaining receptacle. See Non-Final Act. 8. (“It would have been obvious to one of ordinary skill in the art [at the time of Appellant’s invention] to modify the prior art key retaining receptacle of Diefenbach having a sliding cover (11) with the pin arrangement, sample sensor and control mechanism as taught by Aquila.”). The person having ordinary skill in the art is not an automaton and would be able to make the modification of Diefenbach and Aquila. See KSR supra. Thus, Appellant has not shown that modifying Diefenbach and Aquila as proposed by the Examiner would have been beyond the level of skill of one of ordinary skill in the art. Thus, Appellant has not apprised us of error. See Appeal Br. 16. Appellant further argues that “the proposed modifications to include the additional components of Aquila would have increased the size and weight of the magnetic key case, making it unsuitable for its intended purpose.” App. Br. 16—17, Reply Br. 5. The Examiner’s response, reproduced below, best addresses Appellant’s argument. 9 Appeal 2016-001146 Application 13/088,744 It is respectfully submitted that the claims do not specify any size for the locking pin and additional components. Furthermore, it is maintained that one of ordinary skill in the art would know how to minimize components to fit into the desired space and likewise into Diefenbach’s housing in order to enhance security as is desired in current times. In response to appellant’s argument, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Ans. 7—8. We adopt the Examiner’s reasoning as our own, and, thus, Appellant has not shown that the Examiner’s rejection is in error. Appellant is in essence arguing for a bodily incorporation of the references, which is not the test. The artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). In this case, a person of ordinary skill in the art would naturally know that adjustments would be required to the dimensions of Diefenbach’s key case in order to incorporate the elements of Aquila. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”) Accordingly, for the foregoing reasons, the rejection of claim 1 is sustained. Claims 2—14 and 17 10 Appeal 2016-001146 Application 13/088,744 Appellant does not separately argue claims 2—14, which depend from claim 1. App. Br. 17. Accordingly, we also sustain the rejection of claims 2-14. Regarding claim 17, Appellant argues that “[wjhile differing in scope, claim 17 recites similar subject matter to claim 1 and has been erroneously rejected for similar reasons.” App. Br. 17. As Appellant has not apprised us of error in the Examiner’s rejection for claim 1 (see supra Claim 1), we sustain the rejection of claim 17. Rejection 3 Claims 15 and 16 The rejection as stated by the Examiner is a combination of Diefenbach, Aquila, and Crigger. Non-Final Act. 8—9. Diefenbach and Aquila are relied upon to teach a key retaining mechanism as called for by claim 1 and Crigger is relied upon to teach a plurality of lockers forming a bank. As shown in Appellant’s Figure 4, a bank 300 is a series of lockers stacked one upon the other. See also Spec. 125 (describing Figure 4). Similarly, Crigger, Figure 9 teaches a plurality of banked lockers 68 for maintaining control over inventory with a centralized access control. See also Crigger, 4:46—51, 6:9-17, and 8:29-49. Appellant argues that “Crigger is silent as to ‘a plurality of key retaining mechanisms ... a plurality of slidable doors . . . providing access to a receptacle . . . and each of the plurality of doors being selectively placeable in a key accessing condition.’” App. Br. 18. 11 Appeal 2016-001146 Application 13/088,744 We are not persuaded by Appellant’s arguments because it is the combined teachings of the prior art references that are relied upon to teach the plurality of receptacles, with a plurality of slidable doors, providing access to the receptacles. As stated above, non-obviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck, 800 F.2d at 1097 (citing In re Keller, 642 F.2d at 425). Appellant has not shown error in the Examiner’s findings or reasoning. Accordingly, we sustain the rejection of claim 15 under 35 U.S.C. § 103(a). Appellant does not present a separate argument for the patentability of claim 16. Therefore, claim 16 falls with claim 15, from which it depends. DECISION The Examiner’s decision to reject claims 1—17 under 35 U.S.C. § 103 is affirmed. 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). AFFIRMED 12 Copy with citationCopy as parenthetical citation