REINHART, Peter

Patent Trials and Appeals Board

Mar 23, 2020

13232693 - (D) (P.T.A.B. Mar. 23, 2020)

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.
13/232,693 09/14/2011 Peter REINHART 080437.63642US 2800
23911 7590 03/23/2020
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
VANTERPOOL, LESTER L
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
03/23/2020 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):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER REINHART
Appeal 2018-008237
Application 13/232,693
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17, which constitute all the claims
pending in this application. See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on March 4, 2020.
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Bayerische Motoren
Werke Aktiengesellshaft, as documented in an assignment recorded on
November 7, 2011 at Reel/Frame 027181/0870. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a luggage container for fastening to a
vehicle, in particular to a motorcycle. Claim 1, reproduced below, is the sole
independent claim before us:
1. A luggage container fastenable to a vehicle, comprising:
a case;
a first locking device of the case having a release position
in which the luggage container is openable, and a locking
position in which the first locking device blocks opening of the
luggage container and the luggage container is not openable; and
a second locking device of the case having a locking
position in which the luggage container is locked against opening
and the luggage container is not openable even if the first locking
device is in the release position.
REFERENCES
The prior art relied upon by the Examiner is:
Reference Name Document ID Pub. Date
Nakashima U.S. 4,907,428 A Mar. 13, 1990
Thompson U.S. 2006/0112746 A1 June 1, 2006
REJECTIONS
Claims 1–4, 7, 12, 13, and 17 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Nakashima. Final Act. 2.
Claims 1–11 and 14–17 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Thompson. Final Act. 4.
OPINION
Nakashima
In rejecting claim 1 as anticipated by Nakashima the Examiner found
Nakashima to disclose, inter alia, “the second locking device (17B) of the
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container (2) capably having the locking position (i.e.[,] Resting not-
depressed position of Fig. 2) in which the luggage container (2) is locked
against opening.” Final Act. 2–3. Element 17b in Nakashima is a lever that
is “operable [] to unlock the terminal lock mechanisms 4 and 5 of the trunk
bag 2.” Nakashima col. 3, ll. 39–41. From this disclosure, which includes the
use of the words “unlock” and “lock mechanisms” it would initially seem
reasonable to regard element 17b of Nakashima as a “locking device”
capable of making the container, the trunk bag 2, “locked against opening”
according to claim 1. However, a closer review of the entirety of
Nakashima’s disclosure indicates that when Nakashima’s key cylinder, the
“first locking device” according to the Examiner’s rejection (Final Act. 2), is
in the “release position” B, “the trunk bag 2 [is] capable of opening at all
times, without operating the key, by operating each of the operating levers
17a, 17b, 17c with a single touch.” Nakashima col. 7, l. 65–col. 8, l. 1; App.
Br. 12. Being “capable of opening at all times, without operating the key”
cannot reasonably be regarded as “locked against opening and [] not
openable even if the first locking device is in the release position,” as
claimed.2 Accordingly, we do not sustain the rejection predicated on
Nakashima

Thompson
In rejecting the claims for lack of novelty based on Thompson, the
Examiner relies on the electronic system having wireless transmitter 32 and

2 It is noted that in Nakashima’s claims, Nakashima uses the word “latch” as
opposed to “lock” to describe this arrangement which seems more consistent
with ordinary and customary English-language terminology.
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switch 28 as the recited “first locking device” of claim 1. Final Act. 4.
According to the Examiner, the recited “release position” is satisfied when
switch 28 completes circuit 20 (Final Act. 4. citing Thompson para. 20), and
the recited “locking position” is satisfied when relay 36 receives a non-
conditioning signal to open circuit 20 (Final Act. 4. citing Thompson para.
19).
The Examiner relies on the lock assembly 2 as the recited “second
locking device” and indicates lock assembly 2 has a “manual lock position
94” that satisfies the “locked position” recitation because in the manual lock
position 94, the container is “locked against opening” and “not openable”
even if Thompson’s electronic locking device, the “first locking device,” is
in the release position. Final Act. 5 (citing Thompson paras. 3, 16, 18, 19, 35
and Figure 3).
Appellant argues that “the remote-actuation portions of Thompson
identified by the Examiner as the claimed ‘first locking device’ 10 cannot
prevent opening of the container – there is no first locking device ‘locking
position’ that ‘blocks opening’ of the container such that the container is not
openable.” App. Br. 16. However, the Examiner correctly points out that the
incomplete circuit 20, by virtue of the absence of current allowing spring 96
to maintain pushrods 97 and 98 in the extending position (Thompson paras.
25–26), effectively “blocks opening” within the broadest reasonable
meaning of that term because due to the pushrods’ position “lock pin 52
remains unrotatable” when key 4 is in remote position 8. Ans. 9; Thompson
para. 26.
Appellant asserts that Thompson’s container may be opened by
manually turning the lock cylinder (the second locking device according to
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the Examiner’s rejection) to alternate positions. App. Br. 16–17; see
Thompson paras. 20, 24. This is inapposite. The requirement that the first
locking device “blocks opening” is broadly recited without any qualification
as to what particular methods of opening must be blocked. Claim 1 does not
require, for example, that the first locking device block opening “by
actuating,” or “regardless of the position of,” the second locking device. If
anything, the existence of an express recitation that the locking position of
the second locking device maintains the locked state of the container “even
if the first locking device is in the release position” implies, due to the
absence of such a corresponding recitation pertaining to a locking position of
the first locking device, that the locking position of the first locking device
need not prevent opening specifically by the second locking device in any
way. The fact that there is a position in Thompson where the electronic
locking device prevents opening (circuit open, key in remote position 8)
suffices to satisfy the broadly recited “blocks opening” limitation with
regard to the first locking device because this limitation, in its present form,
is satisfied by blocking opening in any way (Thompson para. 26).
Appellant could have included additional language to indicate that,
consistent with the preferred embodiment, the first locking position of the
first locking device serves to block opening of the container by, or regardless
of the position of, the second locking device. See, e.g., Figure 2. However,
Appellant chose to incorporate a limitation similar in this regard with respect
to only the second locking device and not the first. Our reviewing court has
“cautioned against reading limitations into a claim from the preferred
embodiment described in the specification, even if it is the only embodiment
described, absent clear disclaimer in the specification.” In re American
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Academy of Science Tech Center, 367 F. 3d 1359, 1369 (Fed. Cir. 2004)
(quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir.
2004) (“Even when the specification describes only a single embodiment,
the claims of the patent will not be read restrictively unless the patentee has
demonstrated a clear intention to limit the claim scope using ‘words or
expressions of manifest exclusion or restriction.’”)). “‘[R]eading a claim in
light of the specification,’ to thereby interpret limitations explicitly recited in
the claim, is a quite different thing from ‘reading limitations of the
specification into a claim,’ to thereby narrow the scope of the claim by
implicitly adding disclosed limitations which have no express basis in the
claim.” In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969).
Contrary to Appellant’s argument (App. Br. 17–18), which does not
appear to find any support in Thompson’s disclosure, the manual lock
position 94 of Thompson’s cylinder, interpreted by the Examiner as the
recited “second locking device,” clearly has a position satisfying the claim
language calling for the container to be “locked against opening and [] not
openable even if the first locking device is in the release position.” See
Thompson paras. 19 (“Turning key 4 to the manual lock position 94 will
prevent the lock mechanism 2 from opening by preventing latch module 14
from being tripped even if there is a conditioning signal sent to relay switch
36”) and 35 (“This prevents electrical operation of the lock and provides
manual lock override of the device for additional security”).
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 1 predicated on Thompson and that of those claims not separately
argued under 37 C.F.R. § 41.37(c)(1)(iv).
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CONCLUSION
The Examiner’s rejections are AFFIRMED IN PART.
DECISION SUMMARY
Claims 35 U.S.C. § Basis/References Affirmed Reversed
1–4, 7, 12,
13, 17
102(b) Nakashima 1–4, 7, 12,
13, 17
1–11, 14–17 102(b) Thompson 1–11, 14–17
Overall
Outcome
1–11, 14–17 12, 13

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART