Ex Parte Chong et al

Patent Trial and Appeal Board

Jun 25, 2013

11255616 (P.T.A.B. Jun. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GERALD B. CHONG and STEVEN ARMSTRONG
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Appeal 2011-005646
Application 11/255,616
Technology Center 3600
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Before: JOHN C. KERINS, WILLIAM A. CAPP and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 22-28 as unpatentable under 35 U.S.C. § 103(a) over
Hanneman (US 5,735,153, iss. Apr. 7, 1998) and Armstrong (US
2004/0060331 A1, pub. Apr. 1, 2004). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellants’ invention relates to rekeying a lock cylinder. Spec., para.
[005]. Claim 22, reproduced below, is illustrative of the subject matter on
appeal.
22. A method for resetting an inoperative lock cylinder
having a cylinder housing, a plug body disposed for rotation in
the cylinder housing, and a plurality of racks and a plurality of
pins disposed in the plug body, the method comprising the steps
of:
providing a reset fixture having a bracing bar and a reset
tool;
placing the inoperative lock cylinder housing and plug
body in the reset fixture;
moving the plurality of racks to a common alignment
while the inoperative lock cylinder housing and plug body are
in the reset fixture;
moving the bracing bar to retain the plurality of racks at
the common alignment; and
rotating the plug body in the cylinder housing to a
rekeying position.
OPINION
Unpatentability of Claims 22-25
Appellants argue claims 22-25 as a group. App. Br. 11-14. We select
claim 22 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Armstrong discloses all of the elements of
claim 22 except that it fails to show the step of placing the cylinder in a reset
fixture. Ans. 3. The Examiner relies on Hanneman as disclosing a reset
fixture where a cylinder, including a shell and plug, are placed in the fixture
for rekeying. Ans. 3-4. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
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include a reset fixture as taught by Hanneman for resetting the Armstrong
device. Ans. 4. According to the Examiner, a person of ordinary skill in the
art would do this to simplify the rekeying process. Id.
Appellants traverse the Examiner’s rejection by pointing out that
Armstrong’s racks are not designed to break as are Hanneman’s pins. App.
Br. 11. Appellants also argue that Armstrong does not provide a reset
fixture and that inserting Armstrong’s lock cylinder into Hanneman’s fixture
will not allow: (1) movement of a plurality of racks into common alignment
while the inoperative lock cylinder housing and plug body are in the reset
fixture; and (2) movement of the bracing bar to retain the plurality of racks
at the common alignment. Id. Appellants contend that Hanneman’s fixture
will not work as intended when combined with Armstrong’s lock. Id.
Appellants further argue that the combination of Armstrong and
Hanneman does not disclose certain teachings from paragraph 112 of the
Specification related to insertion of the lock cylinder into the reset fixture
such that projection 546 of the lock cylinder is aligned with channel 540 of
the reset tool, which ultimately facilitates pushing racks 250 into common
alignment. App. Br. 11-12. Appellants argue that one of ordinary skill in the
art would not read Hanneman as teaching aligning racks to a common
alignment. App. Br. 12.
The Examiner responds by pointing out that Armstrong is used to
teach the structure of the lock, the reset tool, and the bracing bar. Ans. 4-5.
The Examiner states that Hanneman is relied on solely to show that reset
fixtures are known in the art and that placing a lock cylinder in a reset
fixture is commonplace to assist in rekeying as lock cylinders tend to be
small and difficult to hold still while resetting. Id. The Examiner responds
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to Appellants’ argument based on paragraph 112 of the Specification by
pointing out that the language recited in the Specification is not claimed.
Ans. 5.
In Armstrong, the user holds the lock cylinder in his or her hand
during the rekeying operation. The primary difference between Armstrong
and the instant application is the use of a reset fixture to hold the lock
cylinder during the rekeying process.
An operator would have to hold the cylinder 210 with one hand
and then using the other hand insert the reset tool 310. While
maintaining the reset tool 310 in position, the operator would
use the bracing bar 360 to push the locking bar 252 inward. To
make this reset operation easier, a reset cradle or reset fixture
500 is provided.
Spec., para. [0108]. The issue before us then boils down to whether
Appellants’ have claimed a patentable improvement over Armstrong by
virtue of employing a reset fixture to hold the lock cylinder during the
rekeying process. After fully considering Appellants’ arguments, we find
that the preponderance of the evidence supports the Examiner’s position that
claim 22 is obvious.
Appellants do not challenge or otherwise rebut the Examiner’s
position that placing a lock cylinder in a reset fixture is commonplace in the
art. Ans. 5. Appellants’ argument that Hanneman’s reset fixture serves a
different purpose is not persuasive as prior art need not serve the same
purpose in order to support the conclusion that the claimed subject matter
would have been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA
1972). “A reference may be read for all that it teaches, including uses
beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir.
2012), citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418-21(2007).
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“It is common sense that familiar items may have obvious uses beyond their
primary purposes, and a person of ordinary skill often will be able to fit the
teachings of multiple patents together like pieces of a puzzle.” KSR, at 402.
We agree with the Examiner that a person of ordinary skill in the art would
have been able to adapt the teachings of Hanneman regarding a reset fixture
to the method of rekeying a lock cylinder as taught by Armstrong.
We sustain the Examiner’s unpatentability rejection of claims 22-25.
Unpatentability of Claims 26-28
Appellants argue claims 26-28 as a group. App. Br. 11-14. We select
independent claim 26 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Claim 26 is substantially similar in scope to claim 22, but claims an
apparatus instead of a method.
The Examiner rejected claim 26 as applied to claim 22, further finding
that Armstrong shows a locking bar in an aperture of the housing. Ans. 4.
The Examiner finds that Armstrong’s reset tool 310 satisfies the first mean-
plus-function limitation and that Armstrong’s bracing bar (paper clip 162)
satisfies the second means-plus-function limitation. Id.
Appellants traverse the rejection by arguing that Hanneman does not
teach or suggest the claimed first or second means. App. Br. 14. This
argument does not apprise us of error as the Examiner relied on Armstrong’s
reset tool and bracing bar as the first and second means. Ans. 4. Appellants
do not otherwise challenge the Examiner’s finding that Hanneman and
Armstrong are combinable references. In particular, Appellants offer neither
evidence nor argument that incorporating a bracing bar and reset tool into
the housing of a reset fixture exceeds the scope of ordinary creativity that
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would have been expected of a person of ordinary skill in the art. KSR, 550
U.S. at 421 (a person of ordinary skill in the art is a person of ordinary
creativity, not an automaton).
We sustain the rejection of claims 26-28.

DECISION
The decision of the Examiner to reject claims 22-28 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)(1)(iv).

AFFIRMED

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