Ex Parte Berger

Patent Trial and Appeal Board

Dec 1, 2014

11804303 (P.T.A.B. Dec. 1, 2014)

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.
11/804,303 05/16/2007 Mark J. Berger 208,190 8384
38137 7590 12/01/2014
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
LUGO, CARLOS
ART UNIT PAPER NUMBER
3675
MAIL DATE DELIVERY MODE
12/01/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MARK J. BERGER
________________

Appeal 2012-008476
Application 11/804,303
Technology Center 3600
________________

Before NEAL E. ABRAMS, MICHAEL L. HOELTER,
and LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Mark J. Berger (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1, 2, 4–9, 12–17, and 21–26.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a multi-point exit door lock.
Claim 1 is illustrative of the claims on appeal and is reproduced below:
1. A multi-paint lock installable on an exit door that
Is mountable on a door frame and is moveable between closed
and open positions, said multi-point lock comprising:
a. a main lock module comprising a main housing
mountable on said exit door, a main lock bolt carried by said
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main housing and movable between its locked position where it
engages said door frame and its unlocked position for allowing
said exit door to open, and main drive means on said main
housing for moving said main lock bolt between its locked
position and Its unlocked position,
b. a remote lock module comprising a remote housing
mountable on said exit door at a location vertically displaced
from said main lock module, a remote lock bolt carried by said
remote housing and movable between its locked position where
it engages said door frame and its unlocked position for
allowing said exit door to open/and a remote drive, means on
said remote housing for moving said remote lock bolt between
Its locked position and its locked position,
c. a push panic bar that is coupled to said main drive
means, mountable on said exit door and moveable from Its
closed to Its opened position which activates said main drive
means to drive said main lock bolt to its open position, and
d. a flexible pull cable having opposite near and remote
ends permanently fixed to said main and remote drive means
respectively, said cable having predetermined length such that
there will be a corresponding predetermined distance between
said main and remote housings when said cable is extended to
be generally straight, said main and remote lock modules thus
being mountable on said door at a predetermined distance
between them without requiring any measurement between
them, and
e. whereby said push bar, when moved from its dosed to
its opened position, drives said main drive means to move said
main lock bolt to Its unlocked position and at the same time,
pulls said pull cable whose remote end pulls and thereby drives
said remote drive means to move said remote lock bolt to its
unlocked position, so that said exit door can be opened.
Appeal Br. 18-19, Claims Appendix (emphasis added).

REFERENCES RELIED ON BY THE EXAMINER

Hermon US 1,006,211 Oct. 17, 1911
Cocker US 4,387,917 Jun. 14, 1983

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Nilsson US 4,466,676 Aug. 21, 1984
Fleming US 2007/0080541 A1 Apr. 12, 2007

THE REJECTIONS ON APPEAL
Claims 1, 2, 4, 5, 8, 9, 13, 14, 16, 17, and 21–26 are rejected under
35 U.S.C. 103(a) as obvious over Fleming, Hermon, and Nilsson.
Claims 6, 7, 12, and 15 are rejected under 35 U.S.C. 103(a) as obvious
over Fleming, Hermon, Nilsson, and Cocker.
Claims 1, 2, 4–9, 12–17, and 21–26 are rejected under 35 U.S.C.
103(a) as obvious over Hermon, Fleming, Nilsson, and Cocker.
ANALYSIS
The rejection of claims 1, 2, 4, 5, 8, 9, 13, 14, 16, 17, and 21–26 as obvious
over Fleming, Hermon, and Nilsson
As noted by the emphasis in claim 1 above, the recited lock includes a
flexible pull cable having opposite near and remote ends permanently fixed
to the main and remote drive means, respectively.
The Examiner rejects claim 1 as obvious over Fleming, Hermon, and
Nilsson and relies on Nilsson for the recited flexible pull cable stating:
Nilsson teaches that it is well known in the art to provide
a similar device using cables (39) to move bolts (17 and 18).
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to provide the
connection described by Fleming '541 as a cable connection, as
taught by Nilsson, since it would be considered as a design
consideration within the art that will not affect the movement of
the remote lock bolts.
Ans. 5–6. In the Response to Arguments, the Examiner re-addresses
Nilsson, stating:
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Nilsson teaches a latch arrangement having cables (39
and 40) having one end fixed to a remote latch module (17 and
18 respectively) and an opposed end connected to a main
module (41).
Ans. 8.
Appellant traverses the Examiner’s obviousness rejection, stating,
“Nilsson, which employs a cable to connect lock components, has no
teaching, suggestion or motivation…b) for using a cable whose ends are
fixed to the main and remote lock modules before installation of said lock
modules to a door.” Appeal Br. 12. Appellant further states, “[I]n contrast
to the prior art, the present invention provides to pre-measure and
pre-assemble in a permanent manner these elements before they even leave
the factory.” Reply Br. 7.
We see no finding in the Examiner’s discussion of Nilsson regarding
whether the cable in Nilsson provides opposite near and remote ends
permanently fixed to the main and remote drive means. All words in a
claim must be considered in judging the patentability of a claim against the
prior art. In re Wilson, 424 F.2d 1382 (CCPA 1970). Although the
Examiner determined that the ends of the cable in Nilsson were “fixed” to
the respective lock modules, the location of “permanently” before “fixed” in
claim 1 indicates that more is required of the ends than only that they be
“fixed” to the lock modules. Accordingly, as the Examiner’s rejection has
not addressed all the limitations recited in independent claim 1, we reverse
the obviousness rejection of claim 1 and claims 2, 4, 5, 8, and 21–24
depending therefrom based on Fleming, Hermon, and Nilsson. Independent
claim 9 also recites cable ends “permanently fixed” to respective drives, we
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reverse the rejection of claim 9 and claims 13, 14, 16, and 17 depending
therefrom as obvious over Fleming, Hermon, and Nilsson.
Claim 25
Unlike claims independent claims 1 and 9, independent claim 25 does
not recite cable(s) with “permanently fixed” ends. Accordingly, we address
Appellant’s other arguments for claim 25.
Claim 25 recites, “[a] multi-paint lock kit for use with an exit door
that is mountable on a door frame and is moveable between closed and open
positions, said multi-paint lock kit comprising… a main lock module
comprising a main housing mountable on said exit door.” Emphasis added.
Claim 25 further recites, “a flexible pull cable having opposite near and
remote ends, and fixed to said main and remote drive means respectively,
said cable having pre-determined length whereby said first cable, when
extended axially, establishes a pre-determine distance between said main
and first remote housings.”
The Examiner cites Nilsson for the cable recited in claim 25 and states
“[a]t the instant, Nilsson teaches the components of the claimed latch
assembly. Therefore, Nilsson cable is capable of having a predetermined
length and is also capable of being fixed to the modules prior to installation
in order to have a quick installation.” Ans. 8. Additionally, the Examiner
found “[t]he structure is capable of being pre-assembled in another place
(like a store or factory) before being used. Furthermore, none of the
references cited teaches that they cannot be pre-assembled somewhere else
so that the worker could use less installation time.” Id. As for rationale for
pre-assembly of the cable and modules before installation on a door, the
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Examiner states, “[t]herefore, all the references, in combination, are capable
of being pre-assembled so as [to] reduce the installation time.” Id. at 8–9.
In defense of claim 25, Appellant states “[i]t is submitted that no
combination of Fleming, Harmon, and Nilsson could produce a kit of
preassembled main and remote lock modules including cables of fixed
predetermined length and a push panic bar.” Appeal Br. 13 (emphasis
added). Appellant further asserts, “[n]one of [the] cited references …
discloses any awareness of the problems addressed by the present invention,
namely that persons who install multi-point lock systems must expend
extensive costly time for measuring distances and hole patterns on a vertical
door.” Appeal Br. 12. The Examiner does not traverse this assertion. In the
discussion of claim 25, Appellant refers to ¶ [59] of the Specification, which
states, in part, “[a] key aspect of the new lock is the pre-assembly of main
and remote lock modules 14, 16, 18 with cables 16A, 18A of predetermined
fixed lengths, with ends of cables 16A, 18A secured to the various lock
modules at the time of manufacture.” Appellant explains that the purpose of
this is “so that the installer receives a lock assembly of main and remote lock
modules that requires no finding, analyzing and assembling of principal
components.” Id.
The Examiner does not dispute that claim 25 requires a kit that is
pre-assembled. Further, the preamble of claim 25 recites a “kit,” which
supports a construction of claim 25 requiring the recited arrangement to exist
prior to installation, and we accept Appellant’s assertion that claim 25
requires such pre-assembly and connection of the recited cable.
Although the Examiner found that the cited references are capable of
the required pre-assembly, the Examiner’s rationale for partially
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pre-assembling the recited kit, e.g., fixing the cable ends to two different
drive means, appears to be a reiteration of Appellant’s stated objective.
(Ans. 8–9, cf. Spec ¶ [8] and Appeal Br. 12). The cited references do not
disclose “a flexible pull cable having opposite near and remote ends, and
fixed to [a] main and remote drive means respectively, said cable having
pre-determined length,” in a pre-assembled state. Therefore, a modification
of Fleming, Hermon, and Nilsson beyond a mere combination is required
before all the limitations of claim 25 are addressed, i.e., certain features of
the references must be in an assembled state before installation on a door.
That the references are capable of being modified to be pre-assembled is not
sufficient, by itself, to establish that this arrangement would have been
obvious at the time the claimed invention was made. The Examiner states
“it must be recognized that any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning. But so long as
it takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made, and does not include
knowledge gleaned only from the applicant's disclosure, such a
reconstruction is proper.” Ans. 9 (paraphrasing In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971). However, “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). Aside from referring to the same reasoning Appellant’s Specification
provides for pre-assembling the cable and drive means, the Examiner has not
provided rational undepinnings for modifying the combination of Fleming,
Hermon, and Nilsson to include such pre-assembly. Based on the record
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presented, the Examiner’s rationale for further modifying the asserted
combination of Fleming, Harmon and Nilsson to provide a pre-assembled kit
appears to be based on knowledge gleaned only from Appellant’s disclosure.
Accordingly, we do not sustain the rejection of independent claim 25 or
claim 26 depending therefrom, as obvious over Fleming, Hermon, and
Nilsson.
The rejection of claims 6, 7, 12, and 15 as obvious over Fleming,
Hermon, Nilsson, and Cocker
Each of claims 6, 7, 12, and 15 depends from one of claims 1 or 9, and
we reverse the rejection of these claims as obvious over Fleming, Hermon,
Nilsson, and Cocker for the reason discussed above regarding the rejection
of claim 1.
The rejection of claims 1, 2, 4–9, 12–17, and 21–26 as obvious over
Hermon, Fleming, Nilsson, and Cocker
The rejection of claims 1 and 9 over Hermon, Fleming, Nilsson, and
Cocker relies on Nilsson for cable ends permanently fixed to the main and
remote drive means. Accordingly, we reverse the rejection of independent
claims 1 and 9 and dependent claims 2, 4–8, 12–17, and 21–24 for the
reasons discussed above regarding the rejection of claims 1 and 9 based on
over Fleming, Hermon, and Nilsson. We also reverse the rejection of claims
25 and 26 over Hermon, Fleming, Nilsson, and Cocker for the same reasons
we reverse the rejection of claims 25 and 26 over Fleming, Hermon, and
Nilsson.
DECISION
The rejection of claims 1, 2, 4, 5, 8, 9, 13, 14, 16, 17, and 21–26 as
obvious over Fleming, Hermon, and Nilsson is reversed.
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The rejection of claims 6, 7, 12, and 15 as obvious over Fleming,
Hermon, Nilsson, and Cocker is reversed.
The rejection of claims 1, 2, 4–9, 12–17, and 21–26 as obvious over
Hermon, Fleming, Nilsson, and Cocker is reversed.

REVERSED

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