Ex Parte Fan et al

Patent Trial and Appeal Board

Dec 19, 2016

12788700 (P.T.A.B. Dec. 19, 2016)

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.
12/788,700 05/27/2010 Wai Kuen Fan 7395-000136-US 7181
27572 7590 12/21/2016
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
BOSWELL, CHRISTOPHER J
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAI KUEN FAN and BERNHARD GARTHE
Appeal 2014-009211
Application 12/788,700
Technology Center 3600
Before ANNETTE R. REIMERS, LISA M. GUIJT, and PAUL J. KORNICZKY,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1—12, 14, and 16-21. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party of interest as Abus August Bremicker Sohne
KG. Appeal Br. 3.
2 Appeal is taken from the Non-Final Office Action dated January 10, 2014
(“Non-Final Act.”).
Appeal 2014-009211
Application 12/788,700
CLAIMED SUBJECT MATTER
Claims 1 and 19 are the independent claims on appeal. Claim 1, reproduced
below, is illustrative of the claimed subject matter on appeal, with the disputed
limitation italicized for emphasis.
1. A padlock comprising:
a lock body;
a shackle with two shanks each having a groove for the reception
of a part region of a corresponding locking element;
a pin operable to be acted on by a lock cylinder core to make a
rotational movement for moving the locking elements into a locked
position, the pin having a jacket surface that includes a pair of
oppositely disposed grooves as well as another groove having a depth
greater than the pair of oppositely disposed grooves, and at least one
engagement element configured to cooperate with at least one entrainer
formation of the lock cylinder core;
a spring biasing the pin into the locked position;
a blocking plate located between the pine and the lock cylinder
core that is fastened in the lock body and has an opening through which
the entrainer formation of the lock cylinder core projects into a plane of
the engagement element, with the opening being configured such that
rotational movement of the lock cylinder core is possible and such that
a marginal region of the opening forms an abutment that is engageable
with the entrainer formation for restricting rotational movement of the
lock cylinder core; and
a selectively removable bridge member inserted between the
engagement element and the entrainer formation, the bridge member
operable to be inserted through the opening in the blocking plate into
the plane of the engagement element;
wherein the pine is arranged entirely outside a plane defined by
the blocking plate,
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Application 12/788,700
a core play exists between the engagement element and the
entrainer formation that allows rotation of the lock cylinder core about
a specific angle without the pin co-rotating, and
the bridge member, when selectively inserted between the
engagement element and the entrainer formation, eliminated the play.
Appeal Br. 18, 19 (Claims App.).
REJECTIONS
I. The drawings are objected to under 37 C.F.R. § 1.83(a) as failing to
show every feature of the claimed invention. Non-Final Act. 2—3.
II. Claims 1—12, 14, and 16—21 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement. Non-Final
Act. 3^1.
III. Claims 1—12, 14, and 16—19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Watts (US 6,813,913 B2; iss. Nov. 9, 2004) and Meckbach
(US 5,363,678; iss. Nov. 15, 1994). Non-Final Act. ^U10.
IV. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Watts, Meckbach, and Borgmann (US 4,998,422; iss. Mar. 12,
1991). Non-Final Act. 10—11.
ANALYSIS
Objection I
The Examiner objects to the drawings under 37 C.F.R. § 1.83(a) for failing
to show every feature of the invention specified in the claims. Non-Final Act. 2.
In particular, the Examiner finds that “the pin being arranged entirely outside a
plane defined by the blocking plate must be shown or the feature(s) canceled from
the claim(s),” cautioning that “[n]o new matter should be entered.” Id. The
Examiner determines that the figures in the Specification do not show “the extents
of the pin and the extents of the blocking plate.” Ans. 2.
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Appeal 2014-009211
Application 12/788,700
Appellants argue that Figure 10 depicts the pin arranged entirely outside a
plane defined by the blocking plate. Appeal Br. 7—8. In support, Appellants
submit that paragraph 65 of the Specification discloses that “pin 24 also includes
engagement elements 28 and 28’” and that Figure 10 depicts that “engagement
element 28’ is hidden by a portion of blocking plate 36.” Id. Moreover,
Appellants submit that paragraph 83 of the Specification discloses that
“‘engagement element 28’ is located behind the region 42 of the blocking plate 36’
such that the pin 24 is arranged entirely outside a plane defined by the blocking
plate.” Id. Appellants conclude that “[bjecause engagement element 28 is hidden
by blocking plate 36, the pin 24 including engagement element 28 must be
arranged entirely outside a plane defined by the blocking plate, as claimed.” Id.
Appellants also rely on Figure 15 of the Specification, as depicting that “only one
of the engagement elements (no reference number) of the pin 24 is visible through
the aperture of the blocking plate 36 because the other ‘engagement element’ is
hidden by the pie-shaped piece of the blocking plate 36[,]” concluding that “this
oblique view clearly shows that the ‘pin [24] is arranged entirely outside a plane
defined by the blocking plate [36].” Reply Br. 4 (also citing Spec., Fig. 15).
Ordinarily, an objection is reviewable by petition under 37 C.F.R. § 1.181
and a rejection is appealable to the Patent Trial and Appeal Board. When the issue
of new matter presented is the subject of both an objection and a rejection, the
issue is appealable. See MPEP § 608.04(c) (providing that “where the alleged new
matter is introduced into or affects the claims, thus necessitating their rejection on
this ground, the question becomes an appealable one, and should not be considered
on petition even though that new matter has been introduced into the specification
also”). To the extent that the objection to the drawings in the Non-Final Rejection
turns on the same issues as the rejection under 35 U.S.C. § 112, first paragraph, our
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Appeal 2014-009211
Application 12/788,700
decision with respect to the rejection is dispositive as to the corresponding
objection, supplemented by the analysis below.
Figure 10 from Appellants’ Specification is reproduced below.
Figure 10 depicts a bottom view of lock body 2, including engagement element 28
of ball pin 24 and blocking plate 36. Figures 14 and 15 of Appellants’
Specification are also reproduced below.
Fig. 14 Fig. 15
Figures 14 and 15 depict sectioned views of a padlock, with tool 70 in first and
second positions, respectively.
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Appeal 2014-009211
Application 12/788,700
We determine that a preponderance of the evidence supports that Figures 10,
14, and 15 depict pin 24, including engagement elements 28, 28’, as being
arranged entirely outside a plane defined by blocking plate 36, as recited in claims
1 and 19. The description of pin 24 and blocking plate 36 in the Specification is
consistent with this interpretation of the figures. The Specification describes
entrainer formations 54, 54’ of cylinder core 50 “extending through the opening
40” of the blocking plate, such that entrainer formations 54, 54’ “lie at least partly
in the same plane” as engagement elements 28, 28’ of ball pin 24 and abut
engagement elements 28, 28’ to transmit rotational movement of cylinder core 50
to ball pin 24. See Spec. 175 (emphasis added). The Specification also discloses
that surfaces 62, 64 of blocking plate 36 abut entrainment member 52, so that
blocking plate 36 restricts movement of entrainment member 52. See id. 179
(citing Fig.6). The Specification does not disclose that engagement elements 28,
28’ of pin 24 extend through opening 40 of the blocking plate to abut entrainer
formations 54, 54’ or that engagement elements 28, 28’ of pin 24 abut surfaces 62,
64 of blocking plate 36, and thus, functionally, there is no support for the
conclusion that engagement elements 28, 28’ are arranged to intersect a plane
defined by blocking plate 36. Moreover, as submitted by Appellants, the
Specification describes that, during certain operations, “engagement element 28’ is
located behind the region 42 of the blocking plate 36,” which would not be
possible if engagement element 28 was in the same plane as blocking plate 36. Id.
1 83. Notably, none of the figures of the Specification depicts pin 24, including
engagement elements 28, 28’, extending into the plane of blocking plate 36; rather,
the Specification expressly discloses that “[i]t is particularly preferred for padlocks
in which replacement of the shackle is possible if the pin is arranged completely
outside the plane of the blocking plate in accordance with the invention.” Id. 133.
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Application 12/788,700
Accordingly, we do not sustain the Examiner’s objection to the drawings.
Rejection II
The Examiner rejects all of the pending claims as failing to comply with the
enablement requirement of 35 U.S.C. § 112, first paragraph, because “[t]he pin
being arranged entirely outside a plane defined by the blocking plate is not enabled
by the [Specification.” Non-Final Act. 3. In support, the Examiner determines
that the disclosure in paragraph 33 of the Specification, which states that
“replacement of the shackle is possible if the pin is arranged completely outside of
the blocking plate,” does not enable the recitation of this structure in the claim
because it is unclear to the Examiner whether the stated position applies to the
padlock in a completely assembled state, as claimed, or to the padlock in a
dissembled state wherein the shackle is removed. Id. The Examiner also
determines that paragraph 75 describes “the engagement elements of the pin
extending] through the opening of the blocking plate and lying at least partly in
the same plane so that rotational movement of the cylinder core can be transmitted
to the pin.” Id. at 3^4; see also Ans. 3 (“without proper punctuation [(in paragraph
75)] it is unclear ... if only the entrainer formations extend through the opening
. . . , or both the engagement elements and the entrainer formations extend through
the blocking plate.”). The Examiner further determines that paragraph 83 of the
Specification discloses that “the opening of the blocking plate is reduced
exclusively by an engagement element of the pin” (Non-Final Act. 4), and reasons
that “it is feasible . . . that the engagement elements are different in size, shape,
orientation, and/or function” (Ans. 4), such that “one can perceive that the other
engagement element 28’ is shorter than the engagement element 28, allowing for
the other engagement element to be hidden beneath the blocking plate” (Ans. 4).
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Application 12/788,700
Appellants submit that
only the entrainer formations 54 and 54’ are extending through the
opening 40 formed in the blocking plate 36. That is, the engagement
element 28’ is designed to engage with spiral spring 30. ... Blocking
plate is then inserted over pin 24 and spring 30. . . . Once locking
cylinder 20 is inserted into the lock body 2,... the entrainer formations
54 and 54’ of entrainer member 52 pass through opening 40 of blocking
plate 36 to engage with engagement elements 28 and 28’.
Appeal Br. 10-11 (citing Spec. 1 75, Figs. 4—6). Appellants further submit that
[bjecause Figures 4—6 illustrate contact between entrainer member 52
(including entrainer formations 54 and 54’) and engagement elements
28 and 28’, and because Figure 10 . . . clearly shows that engagement
element 28’ is hidden behind blocking palate 36, . . . only the entrainer
formations 54 and 54’ break a plane defined by the blocking plate 36.
Appeal Br. 11; see also Reply Br. 6—7. Regarding paragraph 83 of the
Specification, Appellants submit that
Figure 11 is a bottom-perspective view of the lock 2. When viewed
from this perspective, it can be seen that the opening 40 of blocking
plate 36 is ‘reduced’ by engagement element 28. The disclosure of
paragraph [0083], however, does not in any way convey that the
engagement element 28 breaks the plane defined by blocking plate 36.
Rather, the disclosure in paragraph [0083] merely describes the view
shown in Figure 11.
Appeal Br. 12; see also Reply Br. 5—6 (citing Figs. 14, 15). Thus, Appellants
submit that the Specification, including the written description and figures, “enable
one skilled in the art to recognize that the pin is arranged entirely outside a plane
defined by the blocking plate, as claimed.” Reply Br. 6; see also Appeal Br. 12.
When rejecting claims for lack of enablement “the PTO bears an initial
burden of setting forth a reasonable explanation as to why it believes that the scope
of protection provided by that claim is not adequately enabled by the description of
the invention provided in the specification of the application [.]” In re Wright,
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Appeal 2014-009211
Application 12/788,700
999 F.2d 1557, 1561-62 (Fed. Cir. 1993). The test for compliance with the
enablement requirement is whether the disclosure, as filed, is sufficiently complete
to enable one of ordinary skill in the art to make and use the claimed invention
without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Here, we determine that Appellants’ submissions supra are evidence that the
disclosure of pin 24, including engagement elements 28, 28’, is sufficiently
complete to enable one of ordinary skill in the art to make and use the claimed
invention without undue experimentation. Additionally, we do not agree with the
Examiner’s determination that paragraph 75 of the Specification discloses that
engagement elements 28, 28’ extend through the opening 40 of blocking plate 36,
but rather, that only entrainer formations 54, 54’ extend through the opening 40.
The Examiner’s evidence also relies on speculation, for example, with respect to a
possible difference in sizing of elements 28, 28’, rather than on what one of
ordinary skill i n the art would understand from the description and figures of the
Specification.
Accordingly, we do not sustain the Examiner’s rejection of claims 1—12, 14,
and 16—21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
Rejection III
Regarding independent claims 1 and 19, the Examiner finds, inter alia, that
Watts’s stop means 62 corresponds to the claimed blocking plate, and that Watts’s
member 25 corresponds to the claimed pin and includes at least one engagement
element in the form of drive portion 42. Non-Final Act. 4—5. The Examiner
further finds that “the body of the pin [25] is arranged entirely outside a plane
defined by the blocking plate [62].” Id. at 5 (citing Watts, Figs. 5, 6, 9).
Appellants argue that “Watts explicitly teaches that the alleged engagement
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Application 12/788,700
element [42] of the alleged pin 25 abuts portions of the alleged blocking plate 63,”3
and thus, “the alleged pin 25 of Watts is not ‘arranged entirely outside a plane
defined by the blocking plate,’” as recited by claims 1 and 19. Appeal Br. 14
(citing Watts 10:44—55); see also Reply Br. 7. The Examiner responds that “Watts
discloses separate elements 25 and 42 that are integral to allow for rotational
movement of the lock cylinder core to be transmitted to pin element 25,” and
therefore, Watts’s “pin element 25 resides entirely outside a plane defined by the
blocking plate 62.” Ans. 7 (citing Watts, Figs. 1, 4, 9, 12, 13, and 16). Noting that
the Examiner’s position is contrary to the Examiner’s interpretation of the claimed
pin 24 including engagement elements 28, 28’ (Reply Br. 7), Appellants submit
that Watts discloses that “alleged pin 25 and every portion thereof is not ‘arranged
entirely outside a plane defined by the blocking plate,’ as claimed” (id. at 8).
A preponderance of the evidence does not support the Examiner’s finding
that Watts discloses “[a] pin having ... at least one engagement element. . .
wherein the pin is arranged entirely outside a plane defined by the blocking plate,”
as required by independent claims 1 and 19. Appeal Br. 18, 19, 23 (Claims App.).
Rather, as correctly argued by Appellants, Watts discloses that member 62, 63 (the
blocking plate) has wedges 65, 66 that are located in drive recess 48, 49 of drive
portion 42 (the engagement element) of member 25 (the pin), and thus, member 25
including drive portion 42 is not entirely outside a plane defined by member 62, 63
as required by the independent claims. See Watts 9:23, 38, 42-44; 10:28—29.
Accordingly, we do not sustain the Examiner’s rejection of independent
claims 1 and 19, and claims 2—12, 14, and 16—18 depending therefrom.
Rejection IV
3 Watts discloses that stop means 62 comprises an annular member 63. Watts
10:28—29, see id., e.g., Figs. 3, 5, 6.
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Application 12/788,700
Claims 20 and 21 depend from independent claim 19. Because we do not
sustain the Examiner’s rejection of independent claim 19, and the Examiner’s
reliance on Borgmann does not cure the deficiency in the Examiner’s finding
regarding Watts as applied to claims 1 and 19, we also do not sustain the
Examiner’s rejection of claims 20 and 21 depending therefrom.
DECISION
We reverse the Examiner’s objection to the drawings under 37 C.F.R.
§ 1.83(a).
We reverse the Examiner’s rejection of claims 1—12, 14, and 16—21 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
We reverse the Examiner’s rejection of claims 1—12, 14, and 16—19 under
35 U.S.C. § 103(a) as being upatentable over Watts and Meckbach.
We reverse the Examiner’s rejection of claims 20 and 21 under 35 U.S.C.
§ 103(a) as being upatentable over Watts, Meckbach, and Borgmann.
REVERSED
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