Ex Parte Fitzgibbon et al

Patent Trial and Appeal Board

May 31, 2013

10715988 (P.T.A.B. May. 31, 2013)

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.
10/715,988 11/18/2003 James J. Fitzgibbon 5569/79076 (03-31) 4889
22242 7590 05/31/2013
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
HOLLOWAY III, EDWIN C
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
05/31/2013 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 JAMES J. FITZGIBBON, NEIL R. PEPLINSKI, and
ERIC A. TEMPLETON
____________________

Appeal 2010-009628
Application 10/715,988
Technology Center 2600
____________________

Before DAVID M. KOHUT, JASON V. MORGAN, and
BRYAN F. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009628
Application 10/715,988

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4, 7, 11, 12, 14, 17, 18, and 21. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

The claims are directed a method and apparatus for authorizing entry
into a controlled area and in particular to a method and apparatus for
enabling access to an area for delivery and pickup of commercial goods.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An entry control system for permitting authorized users
to access a controlled area by moving a barrier, comprising:
a close button, the close button producing a close signal
whenever the close button is actuated by a user;
an entry request device for accepting a user authorization
code;
a controller operably and wirelessly coupled to the entry
request device and the close button and having an output,
such that the controller receives and authenticates the
user authorization code and wherein the close button and the
entry request device are disposed in a housing, and the receipt
of the close signal from the close button automatically causes
the controller to issue a close barrier signal at the output in
order to close the barrier without the need to authenticate any
user authorization code and without consideration of a length of
time of actuation of the close button to effect closure of the
barrier.

Appeal 2010-009628
Application 10/715,988

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REFERENCES
Kaplan US 4,408,251 Oct. 4, 1983
Heitschel US 5,576,701 Nov. 19, 1996
Michel US 5,656,900 Aug. 12, 1997

REJECTIONS
Claims 1-2, 4, 11-12, 14, 17-18 and 21 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Ans. 3-4.
Claims 1-2, 4, 11-12, and 14 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kaplan and Michel. Ans. 4-7.
Claims 1-2, 4, 11-12, and 14 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kaplan and Heitschel. Ans. 7-10.

Issues
Appellants present the issues of whether the recitation of “the receipt
of the close signal from the close button automatically causes the controller
to issue a close barrier signal at the output in order to close the barrier ...
without consideration of a length of time of actuation of the close button to
effect closure of the barrier” in claim 1, has adequate written description in
the Specification.
Appellants also present issues of whether Kaplan and Michel are
properly combined and whether Kaplan and Heitschel are properly
combined.

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Application 10/715,988

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Analysis
35 U.S.C. § 112, first paragraph
The Examiner finds the recitation of “the receipt of the close signal
from the close button automatically causes the controller to issue a close
barrier signal at the output in order to close the barrier ... without
consideration of a length of time of actuation of the close button to effect
closure of the barrier” in claim 1, does not have adequate written description
in the Specification. The Specification contains general references that the
fact that a close only button “causes” the garage door to close. Spec. 6:2-3;
10:1-2. Appellants argue that “[t]here is no recitation in the application
regarding a specific length of time that the button must be pressed to result
in generation of a close signal or that the button is otherwise sensitive in
these regards.” Br. 11. Thus, according to Appellants, the close signal is
generated without consideration of the length of time the close button is
actuated. Id. Appellants also note that:
while the application does teach that time plays a part in
changing the current functionality of a multifunction button or
in delaying execution of a command, neither of these have
anything to do with creating a close signal without
consideration of length of time of actuation of a close button.
Br. 12. Thus, Appellants assert that any reference to timing regarding a
multifunction button is not relevant to a “close only” button.
We agree with the Examiner that the fact the Specification is silent on
whether how long “close only” needs to be actuated is not evidence that the
Specification supports the limitation to “without consideration of a length of
time of actuation of the close button to effect closure of the barrier.”
“Negative claim limitations are adequately supported when the specification
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Application 10/715,988

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describes a reason to exclude the relevant limitation. Such written
description support need not rise to the level of disclaimer. In fact, it is
possible for the patentee to support both the inclusion and exclusion of the
same material.” See Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d
1344, 1351 (Fed. Cir. 2012). Appellants do not direct our attention to a
disclosure in the Specification of any reason to ignore the length of time that
the close only button is actuated. Thus, this argument is not persuasive of
Examiner error.
Appellants do not make substantive arguments regarding claims 2, 4,
7, 11, 12, 14, 17, 18, and 21, thus they fall with claim 1. Thus, for the
reasons above, we sustain the Examiner’s decision to reject claims 1, 2, 4, 7,
11, 12, 14, 17, 18, and 21.

35 U.S.C. § 103(a) - Kaplan and Michel; and
Appellants argue the teaching of the benefit of using a two wire
connection between the keypad and controller to enter specific key
sequences “teaches specifically and directly away from providing wireless
communication between the keypad of a security system and a controller for
a barrier of the system,” (Br. 17) and therefore one of ordinary skill in the art
would not be motivated to combine Kaplan with Heitschel or Michel. Br.
17, 20. Appellants also argue that “Kaplan does not suggest that a wireless
connection is possible for its disclosed key pad.” Br. 18. This argument is
not persuasive of Examiner error.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, . . . would be led in a direction divergent
from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327,
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Application 10/715,988

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1335 (Fed. Cir. 2001) quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192
F.3d 1353, 1360 (Fed. Cir. 1999). A reference does not teach away,
however, if it merely expresses a general preference for an alternative
invention but does not “criticize, discredit, or otherwise discourage”
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Appellants point out that Kaplan failed to follow the path
of a wireless connection between keypad and controller (Br. 17) but do not
point to any disclosure in Kaplan that would discourage a person of ordinary
skill in the art at the time of the invention from following the path of a
wireless connection. In fact, as the Examiner finds, Kaplan describes a
shortcoming of two wire connection being that it is susceptible to tampering.
Ans. 11-12 (citing Kaplan, 1:38-57). Kaplan uses a coded signal sequence to
deter tampering. Ans. 12. Thus, Kaplan does not discourage the use of a
wireless connection, but rather teaches an alternative to an uncoded two wire
connection.
Additionally, Appellants argue that “modification of the Kaplan
system to operate wirelessly between the keypad of a security system and a
controller for a barrier of the system would result in a fundamental change in
the operation of the device taught by Kaplan.” Br. 17. This argument is not
persuasive of Examiner error. We agree with the Examiner that Kaplan’s
disclosure of a specific pattern of resistances to represent codes does not
preclude the use of a wireless link to transmit those codes. Ans. 13-14. For
example, we agree that Kaplan suggests that other circuit elements besides
resistors may be used which allows for the possibility of circuit elements
related to sending wireless signals. Id. (citing Kaplan, 6:35-43). Thus, we
find that this is not a fundamental change in the operation of the Kaplan
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device. Also, to the extent that Appellants are arguing that Kaplan and
Michel (or Heitschel) cannot be physically combined, the Examiner is not
required to demonstrate how to bodily incorporate a reference’s features into
another reference to establish obviousness. See In re Keller, 642 F.2d 413,
425 (CCPA 1981). Additionally, since Kaplan discloses a wireless link as
part of its operation, the addition of a wireless link does not change the
fundamental operation of Kaplan. Ans. 13-14 (citing Kaplan, 5:27-37).
Appellants argue that the cited references are silent regarding the “full
closure” of the garage door. Br. 19. This argument is not commensurate with
the scope of the claims. The claims do not require “full” closure of the
garage door nor do they distinguish between a full or partial closure of the
door. Thus, this argument is not persuasive of Examiner error.
Appellants argue that timing requirements in the cited references
prevent the cited references from meeting the limitation to “without
consideration of a length of time of actuation of the close button to effect
closure of the barrier.” We agree with the Examiner that “the limitation
would have been obvious in view of Kaplan disclosing closing the door in
response to one match of key depression of a push button switch of the
momentary action type.” Ans. 14-15 (citing Kaplan 10:56-63). In other
words, Kaplan teaches a one button push operation that is without regard to
a length of actuation or timing of a pattern of actuation. Id.
Appellants do not make substantive arguments regarding claims 2, 4,
11-12, and 14; thus, we sustain the Examiner’s decision to reject those
claims 1, 2, 4, 11-12, and 14 under 35 U.S.C. § 103(a) as being unpatentable
over Kaplan and Michel for the same reasons stated above.
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35 U.S.C. § 103(a) - Kaplan and Heitschel
Appellant’s arguments regarding Heitschel rely on teaching away in
Kaplan rather than a lack of teaching in Heitschel (Br. 20), therefore, we
sustain the rejection of claims 1, 2, 4, 11-12, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Kaplan and Heitschel for the reasons
stated above.

DECISION
The decision of the Examiner to reject claims 1, 2, 4, 11-12, 14, 17-18
and 21 under 35 U.S.C. § 112, first paragraph and 35 U.S.C. § 103(a) 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

ELD