Ex Parte STEVENS

Patent Trial and Appeal Board

Sep 26, 2017

13088744 (P.T.A.B. Sep. 26, 2017)

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
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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
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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.
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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
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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.
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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
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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
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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.
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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
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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.
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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
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