Ex Parte Frantz

Patent Trial and Appeal Board

Mar 28, 2017

12670279 (P.T.A.B. Mar. 28, 2017)

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.
12/670,279 01/22/2010 Donald R. Frantz 12972.99110 1333
24382 7590 03/
JOSEPH S. HEINO, ESQ.
DAVIS & KUELTHAU, S.C.
111 E. KILBOURN
SUITE 1400
MILWAUKEE, WI 53202-6613
EXAMINER
GALL, LLOYD A
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
j heino @ dkattorney s. com
jlowe@dkattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD R. FRANTZ
Appeal 2015-005384
Application 12/670,279
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Donald R. Frantz (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 15—18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-005384
Application 12/670,279
THE CLAIMED SUBJECT MATTER
Claim 15, reproduced below, is illustrative of the claimed subject
matter.
15. A universal lock for use with an electronics device, the
electronics device including a threaded aperture defined in the
electronics device for receiving a like-threaded fastener and a
bracket, the bracket having at least a first leg and at least one
aperture in the first leg such that the bracket can be secured to
the device by passing a like-threaded fastener through the bracket
aperture and into the threaded aperture of the electronics device,
the electronics device and bracket being provided by an original
equipment manufacturer, or OEM, the lock comprising:
a threaded fastener that matches the threaded aperture of
the electronics device, the fastener comprising a threaded portion
and a head;
a substantially hollow and cup-shaped inner cylinder, the
inner cylinder comprising a cylindrically-shaped side wall, the
cylindrically-shaped side wall comprising a cylindrical outer
surface, an outer diameter and an end with a centrally disposed
aperture defined in it, the aperture of the inner cylinder being
configured to permit the threaded portion of the fastener to pass
therethrough such that the inner cylinder is securable to the first
leg of the bracket, the centrally disposed aperture being sized so
as [to] contain the head of the fastener within the inner cylinder,
the inner cylinder further comprising a circumferentially-defmed
ridge formed within the inner cylinder, said ridge extending
inwardly of the inner cylindrically-shaped side wall of the inner
cylinder and forming a ridge shoulder;
a substantially hollow and cup-shaped outer cylinder, the
outer cylinder comprising a cylindrically-shaped inner side wall
and a cylindrically-shaped outer side wall and further comprising
a first end and a second end, the second end of the outer cylinder
including an aperture, the substantially hollow and cup-shaped
outer cylinder having an inner diameter being slightly larger in
diameter than the outer diameter of the inner cylinder such that
the cylindrically-shaped inner side wall of the outer cylinder
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slidingly overlaps all of the cylindrically-shaped side wall outer
surface of the inner cylinder; and
a lock cylinder assembly disposed centrally within the
outer cylinder, the lock cylinder assembly comprising a lock
cylinder, the lock cylinder comprising a first end and a second
end, the first end of the lock cylinder being mountable at the
second end of the outer cylinder, and the lock cylinder further
comprising an outwardly-movable latch, the outwardly-movable
latch being designed to engage with the ridge shoulder of the
inner cylinder in the locked position for securing the cup-shaped
inner cylinder in any circumferential position relative to the cup­
shaped outer cylinder such that the outer cylinder cannot be
removed from the inner cylinder but can rotate freely relative to
the inner cylinder in that locked position such that the fastener is
rendered inaccessible and wherein the outer cylinder and lock
cylinder assembly is removable from the inner cylinder when the
lock cylinder assembly is in the unlocked position so as to access
the head of the fastener by actuation of the lock cylinder
assembly to withdraw the outwardly-movable latch and
disengage it from the ridge shoulder of the inner cylinder;
wherein the leg of the bracket is captured between the
electronics device and the end wall of the inner cylinder with no
clearance between the leg of the bracket and the end wall of the
inner cylinder and with no clearance between the leg of the
bracket and the end wall of the inner cylinder when the outer
cylinder is locked to the inner cylinder such that the fastener and
its head are rendered inaccessible.
REJECTIONS1
I. Claims 15, 16, and 18 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
1 Appellant also addresses the Examiner’s objections to the Specification
and claim 17. See Appeal Br. 5—6; see also Final Act. 2. The propriety of
these objections is reviewable by petition under 37 C.F.R § 1.181, and is not
appealable. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (stating
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II. Claims 15—18 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
III. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Loynes (US 4,065,946, iss. Jan. 3, 1978) and
Churchman (US 2,322,347, iss. June 22, 1943).
IV. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Loynes, Churchman, and Wilson
(US 5,184,798, iss. Feb. 9, 1993).
V. Claims 15—18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Churchman, Loynes, Wilson, and Singer
(US 3,859,826, iss. Jan. 14, 1975).
DISCUSSION
Rejection I— Written Description
The basis for the Examiner’s rejection of claims 15, 16, and 18 under
35 U.S.C. § 112, first paragraph, is that the Specification does not provide
adequate written description support for one or more of the electronic
device, bracket, and fastener elements being provided by an original
equipment manufacturer (OEM). See Final Act. 3. Appellant argues that the
Examiner erred because “it [is] clear that the device of the present invention
is intended to complement the electronics device and bracketry of an OEM
that there are many kinds of decisions made by examiners that are not
appealable to the Board when they are not directly connected with the merits
of issues involving rejections of claims (citing In re Hengehold, 440 F.2d
1395, 1403 (CCPA 1971))). The bases of the Examiner’s objections do not
relate to matters involved in the rejections under 35 U.S.C. § 112 before us
in this appeal. Thus, we do not review the objections.
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Application 12/670,279
and that the device of the present invention can use one component of that
OEM device — specifically, a fastener that is provided by the OEM.” Appeal
Br. 8; see also id. at 7—8 (quoting Spec. 1—2). We are not persuaded by
Appellant’s argument.
In the portions of the Specification quoted by Appellant, the
Specification describes that “many types of electronic instruments . . . are
designed to be installed onto a bracket by use of one or more fasteners.”
Spec. 1. The Specification describes that electronic instruments are
“typically configured with threaded holes in opposed sides of the body of the
instrument, such holes aligning with those of the bracket,” and “[t]he
fasteners are typically threaded to match . . . threaded holes of the
instrument.” Id. The Specification also describes a lock intended to be
“universally applicable to the types of electronics and bracketry that exists in
the marketplace.” Id. at 2 (emphasis added). However, these disclosures in
the Specification do not specify that the bracket, fastener, or electronic
instrument with which the lock is used necessarily is provided by an OEM,
because aftermarket sources for parts also exist in the marketplace. In other
words, brackets, fasteners, and electronic instruments provided by non-OEM
sources could also work with a particular lock so long as the dimensions and
threading of the fastener match the mounting holes of the electronic
instrument. In this regard, although the Specification provides support for a
lock that is compatible with brackets, fasteners, and electronics devices
existing in the marketplace, Appellant does not point to any disclosure in the
Specification that would convey to persons of ordinary skill in the art that
the bracket or electronics device used with the claimed universal lock is
necessarily provided by an OEM.
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‘IT]he test for sufficiency [with the written description requirement of
35 U.S.C. § 112, first paragraph,] is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing
In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). For the reasons
discussed above, Appellant does not apprise us of error in the Examiner’s
finding that the disclosure of the present application fails to convey to those
skilled in the art that Appellant had possession of the identified subject
matter of claims 15, 16, and 18 as of the filing date of the present
application. Accordingly, we sustain the rejection of claims 15, 16, and 18
under 35 U.S.C. § 112, first paragraph.
Rejection II—Indefiniteness
Appellant does not present any substantive arguments contesting the
Examiner’s determination that claims 15—18 are indefinite. See Appeal Br. 6
(Appellant only generally stating that the claims are not indefinite). Rather,
Appellant explains that “the indefiniteness rejections were previously and
expressly addressed with proposed amendments.” Reply Br. 2 (underlining
omitted) (referring to the Pre-Appeal Brief Request for Review, dated Aug.
14, 2014). Our review of the record indicates that Appellant did not file an
amendment in accordance with USPTO regulations. See 37 C.F.R. §§ 1.116
(providing for amendments subsequent to the final rejection, but on or
before filing an appeal), 41.33 (providing for amendments after appeal).
The Pre-Appeal Brief Request for Review merely discusses how Appellant
would amend the claims to address the indefiniteness issues identified in the
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Final Action, but Appellant did not submit a claims amendment in the
manner required by 37 C.F.R. § 1.121(e).
Appellant argues that a proposed amendment to the claims submitted
as “Exhibit A” with the Appeal Brief is “drawn more to form and not
substance and, as such, should be entered for purposes of Appellant’s
appeal.” Reply Br. 2—3. However, decisions within the primary examiner’s
discretion, such as whether or not to enter an amendment after final
rejection, are not subject to our review. See MPEP § 1201 (the Board will
not ordinarily hear a question that is reviewable by petition); In re Mindick,
371 F.2d 892, 894 (CCPA 1967) (holding that the refusal of an examiner to
enter an amendment of claims is reviewable by petition under 37 C.F.R.
§ 1.181, and not by appeal to the Board); see also 37 C.F.R. § 41.37(c)(2).
Thus, the version of the claims before us on appeal is reflected by the
Amendment filed January 27, 2014.
As noted above, Appellant does not present any substantive arguments
contesting the propriety of the indefmiteness rejection. Consequently,
Appellant has waived any argument of error, and we summarily sustain the
rejection of claims 15—18 under 35 U.S.C. § 112, second paragraph. See In
re Berger, 279 F.3d at 984, 985 (holding that the Board did not err in
sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
appellant failed to contest the rejection on appeal); see also 37 C.F.R.
§ 41.31(c) (“An appeal, when taken, is presumed to be taken from the
rejection of all claims under rejection unless cancelled by an amendment
filed by the applicant and entered by the Office.”).
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Rejection III— Obviousness over Loynes and Churchman
Appellant argues for patentability of claims 15 and 16 subject to this
ground of rejection as a group. Appeal Br. 17—20; Reply Br. 3—5. We select
claim 15 as representative of this group, and claim 16 stands or falls with
claim 15. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Loynes discloses a universal lock
comprising, inter alia, “an inner cylinder 14b, 15 as shown in fig. 4 for
receiving the head 40 of the fastener 17a to prevent access thereto.” Final
Act. 5. The Examiner acknowledged that Loynes does not disclose “an
outer cylinder over an inner cylinder, with a lock cylinder having a latch for
engaging a circumferential ridge of the inner cylinder,” and relied on
Churchman for disclosing this feature. Id. at 5—6. The Examiner determined
that it would have been obvious to modify the inner cylinder of Loynes
“such that it is cylindrical in shape, and includes an inwardly directed ridge,
and an outer cylinder having a key lock and an outwardly movable latch for
engagement with the ridge, wherein the outer cylinder overlaps all of the
side wall of the inner cylinder.” Id. at 6. According to the Examiner, such a
modification would “provide expected locking and unlocking results, and
. . . maximize the security against access to the fastener head of Loynes.” Id.
Appellant argues that the Examiner’s proposed modification of
Loynes is based upon impermissible hindsight, there is no motivation for the
proposed modification, and the references teach away from one another. See
Appeal Br. 18—20; Reply Br. 4—5. According to Appellant, “[t]he ‘mounting
bolt cover’ 14b, 15 of Loynes would need to be modified to include a cavity
that would accommodate a circumferential ridge and a portion of a lock
cylinder,” and “the ‘cavity’ within the mounting bolt cover of Loynes
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provides barely enough clearance for the head 40 of the bolt 17a and the
plug 16, which is clearly intended to be press-fit into the cover such that it
‘cannot be pried loose.’” Appeal Br. 18—19. We do not find these
arguments persuasive. To the extent that Appellant appears to insist upon an
explicit motivation in the prior art to establish obviousness, the Supreme
Court has stated that a rigid insistence on teaching, suggestion, or motivation
is incompatible with its precedent concerning obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007). The Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for [an examiner] can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. Instead, the relevant inquiry is whether
the Examiner has set forth “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), cited with approval in KSR, 550 U.S. at
418.
Here, the Examiner articulates adequate reasoning based on rational
underpinnings as to why it would have been obvious to modify the bolt
cover of Foynes to have a cylindrical body with a circumferential ridge and
a keyed locking outer cylinder, as taught by Churchman. See Ans. 12 (the
Examiner explaining that the “[t]he key lock of Churchman provides
additional security against tampering with the fastener 12, but allows
authorized access to the fastener 12 by one having the appropriate key for
the key lock”). Appellant does not specifically address the Examiner’s
articulated reasoning for the proposed combination of teachings or explain
why the reasoning is in error. The modification proposed by the Examiner is
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nothing more than the mere application of a known technique to a piece of
prior art ready for the improvement. See KSR, 550 U.S. at 417 (“if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill”). To the extent that the proposed modification of
Loynes’s bolt cover may require removing plug 16 or expanding body 15 to
provide clearance for a circumferential ridge, Appellant does not assert,
much less present any evidence or technical reasoning to show, that such
modifications would have been beyond the technical grasp of a person
having ordinary7 skill in the art. “A person of ordinary7 skill is also a person
of ordinary creativity, not an automaton,” Id. at 421.
Moreover, Appellant does not identify, nor do we discern, any
knowledge relied upon by the Examiner that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971) (“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 [Appellant’s] disclosure, such a reconstruction
is proper.”). Thus, we do not agree with Appellant’s contention that the
claims have been “used as a template and elements from wholly unrelated
prior art references are cited in an attempt to ‘fill the gaps.’” Appeal Br. 20.
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Appellant also argues that the secondary considerations detailed in the
Declaration of Donald R. Frantz2 (hereinafter “Declaration”) demonstrate
non-obviousness of the claimed subject matter. See Appeal Br. 21—22; see
also Decl., paras. 6-48 (averring long-felt need, commercial success, and
industry praise). In particular, Appellant asserts that the Declaration
“demonstrates that the claimed invention has broad acceptance in the
marketplace; that the claimed invention has enjoyed commercial success;
that the claimed invention has displaced competing products; and that the
Appellant’s rights in the claimed invention are recognized and respected by
the industry involved.” Appeal Br. 22.
According to the Declaration, the claimed invention “satisfies the
long-felt need of providing a universal lock for virtually any piece of marine
electronic equipment.” Deck, para. 22. However, the Declaration fails to
sufficiently evidence a long-felt need in the lock industry. Establishing
long-felt need requires objective evidence that an art-recognized problem
existed in the art for a long period of time without solution. In particular, the
evidence must show that the need was a persistent one that was recognized
by those of ordinary skill in the art. In re Gershon, 372 F.2d 535, 538
(CCPA 1967). Here, the Declaration identifies a need for a universal lock
that can be used with many different marine electronic devices, and states
that the need was persistent and recognized by others without a solution.
See Deck, paras. 6, 14. However, the Declaration provides no supporting
objective evidence that such a need was persistent and recognized by others
in the field without solution. “[L]ong-felt need is analyzed as of the date of
2 Declarant Donald R. Frantz is the named inventor in the present
application. See Deck, para. 1.
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an articulated identified problem and evidence of efforts to solve that
problem.” Texas Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d
1165, 1178 (Fed. Cir. 1993). Although the Declaration points to an increase
in cost of marine electronics as evidence of a long-felt need (see Decl.,
paras. 28—31), this cost increase merely reflects the evolution in technology
and sophistication of the electronics devices, and does not establish a long-
felt need for a universal lock as claimed. Moreover, to the extent that the
increased cost for these devices may make them more susceptible to theft,
this correlation at most evidences a need for some type of lock or theft-
deterrent, but does not establish that there was a recognized long-felt and
unmet need for a universal marine electronics lock. As such, we find that
Appellant has failed to set forth sufficient evidence to establish long-felt
need.
With respect to commercial success, the Declaration states that “2012
sales of the [DuraSafe E-Lock®] increased 166% over 2011 sales.” Deck,
para. 32. According to the Declaration, “[i]n 2012, the Lock was introduced
to the market in a ‘keyed-alike’ set, packaged with a compatible lock,” and
“[a]dded sales doubled production for the combined set and 2013 sales to
date on the keyed-alike sets [were] up 67% from the same sales period [in
2012].” Id., para. 33. The Declaration adds that “2013 sales of the Lock
[were] up 60% from the same sales period [in 2012].” Id., para. 34.
Evidence of commercial success “is only significant if there is a nexus
between the claimed invention and the commercial success.” Ormco Corp.
v. Align Tech., Inc., 463 F.3d 1299, 1311—12 (Fed. Cir. 2006). To establish
a proper nexus between a claimed invention and alleged commercial success
of a product, an appellant must offer “proof that the sales [of the allegedly
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successful product] were a direct result of the unique characteristics of the
claimed invention—as opposed to other economic and commercial factors
unrelated to the quality of the patented subject matter.” In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996); see also In re Kao, 639 F.3d 1057, 1070
(Fed. Cir. 2011) (requiring a determination of “whether the commercial
success of the embodying product resulted from the merits of the claimed
invention as opposed to the prior art or other extrinsic factors”).
Here, Appellant has not established a sufficient nexus between the
claimed universal lock and the alleged commercial success of the E-Lock®.
The Declaration does not provide any analysis of how the E-Lock® is
specifically tied to the elements recited in the claims. The Declaration only
states that the E-Lock® is “a lock of the type that is disclosed and claimed in
the instant application (the ‘Lock’).” Decl., para. 6. The Declaration also
does not explain in any detail why it was the unique characteristics of the
claimed universal lock that necessarily drove an increase in sales of the E-
Lock®. Rather, the Declaration states that “a good deal for the success of the
Lock in the Lock Industry is due to the change in the market of marine
electronics and the fact that the Lock is targeted to protect against the theft
of electronics that can cost up to $3,000.” Id., para. 31. In other words, the
Declaration appears to attribute success of the E-Lock® to economic and
commercial factors unrelated to any unique attributes of the claimed subject
matter. See In re Huang, 100 F.3d at 140. Accordingly, the alleged
commercial success of the E-Lock® is not sufficiently tied to the claimed
subject matter.
We further note that the Declaration fails to adequately establish how
sales of the E-Lock® relate to the overall lock market. A consideration in
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demonstrating actual commercial success is whether sales of the claimed
invention have captured a substantial share of the marketplace. See In re
Huang, 100 F.3d at 140. Here, the Declaration states that “[tjhere has not
been, nor is there currently, a lock available in the Lock Industry that
competes with the Lock” (Decl., para. 25), and “[i]t is my view that
DuraSafe owns 100% of the market share for the Lock in the Lock Industry”
{id., para. 26). However, the Declaration does not provide any hard
evidence or objective data regarding market share for the E-Lock®. As
noted by our reviewing court, “the PTO lacks the means or resources to
gather evidence which supports or refutes the applicant’s assertion that the
sales constitute commercial success.” In re Huang, 100 F.3d at 139. Thus,
the court noted that the PTO must rely upon the applicant to provide hard
evidence of commercial success. Id. at 140. Here, the Declaration merely
offers an opinion as to market share without any supporting hard evidence.
The Declaration also identifies various magazine articles and website
pages pertaining to the E-Lock®. See Deck, paras. 36-48 (Items 4—18). To
the extent that these articles appear to be relied upon as evidence of industry
praise, we note that, as with commercial success, evidence of industry praise
is only relevant when it is directed to the merits of the invention claimed.
See Ormco, 463 F.3d at 1311—12. For reasons similar to those discussed
supra regarding commercial success, Appellant has not established a
sufficient nexus between general praise of the E-Lock® and the claimed
universal lock, such that the examples of industry praise provided in the
Declaration do not demonstrate that the praise is sufficiently tied to the
claimed subject matter.
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The mentions of the DuraSafe Lock or E-Lock® in these publications
appear to be the result of product reviews of these products introduced into
the marine products market in 2012 and 2013. Because the E-Lock® was
newly introduced to this market at the time of these product reviews, it is not
surprising that the E-Lock® was discussed and reviewed in the literature in
the field. The media coverage of the E-Lock® is weak evidence of industry
praise.
Having considered all the evidence presented by Appellant against
obviousness and weighing all the evidence, both of obviousness and of
nonobviousness, it is our conclusion that the evidence of obviousness
outweighs the evidence of nonobviousness of the subject matter of claim 15.
See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (agreeing that “given the strength of the prima facie obviousness
showing, the evidence on secondary considerations was inadequate to
overcome a final conclusion that [the claimed subject matter] would have
been obvious”). Accordingly, we sustain the rejection of claim 15, and of
claim 16 falling therewith, as unpatentable over Loynes and Churchman.
Rejection IV— Obviousness over Loynes, Churchman, and Wilson
Appellant argues for patentability of claims 17 and 18 subject to this
ground of rejection as a group. Appeal Br. 20—21. We select claim 17 as
representative of this group, and claim 18 stands or falls with claim 17. See
37 C.F.R. §41.37(c)(l)(iv).
Appellant argues that “the proposed combination of Wilson with
Loynes and Churchman is improper because it changes the principle of
operation of the latter two references.” Appeal Br. 20. In particular,
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Appellant asserts that, “[t]o add a lock cylinder to the second element 26 [of
Wilson] would impair the passage of the cable 12 through apparatus, and
almost certainly require removal of the blocker ball 24 that is positioned
between the cable 12 and the head of the connector 20.” Id. at 20-21; see
Reply Br. 7.
Appellant’s argument is not persuasive because it is not directed to the
modification proposed by the Examiner in the rejection. The Examiner did
not propose to modify the device of Wilson to add a lock cylinder as
Appellant’s argument asserts. Rather, the Examiner determined that “[i]t
would have been obvious to modify the inner cylinder of Loynes ... as
modified by Churchman such that the inner cylinder includes a rounded
shoulder, in view of the teaching of Wilson, to provide expected locking and
unlocking and security results.” Final Act. 7—8. Appellant does not
specifically address the Examiner’s articulated reasoning for making the
modifications of Loynes based on the specific teachings of Churchman and
Wilson, or point out why this reasoning is in error. See id. Additionally, we
are not persuaded by Appellant’s argument that the proposed modification
based on the disclosure of Wilson would change the principle of operation of
Loynes and Churchman (Appeal Br. 20). Although further modifying the
device of Loynes and Churchman to include a rounded shoulder on the inner
cylinder may change the shape of the inner cylinder, we find no evidence in
the record before us that the device would no longer operate satisfactorily as
a lock for a bolt.
After reviewing all of the evidence before us, including the evidence
of secondary considerations discussed supra, we conclude that, on balance,
the evidence of obviousness outweighs the evidence of nonobviousness of
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the subject matter of claim 17, Accordingly, we sustain the rejection of
claim 17, and of claim 18 falling therewith, as unpatentable over Loynes,
Churchman, and Wilson.
Rejection V— Obviousness over Churchman, Loynes, Wilson, and Singer
Appellant argues for patentability of claims 15—18 subject to this
ground of rejection as a group. Appeal Br. 21; Reply Br. 6—7. We select
claim 15 as representative of this group, and claims 16—18 stand or fall with
claim 15. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that “Singer fails to teach or suggest any type of
protective rotatable outer cylinder.” Appeal Br. 21. In particular, Appellant
asserts that Singer’s block 68 is retained in position by screws 82, and, thus,
“any outer cylinder that would use the teachings of Singer would not be
rotatable.” Id. (citing Singer, Fig. 4).
Appellant’s argument against Singer is not persuasive of error because
it is not responsive to the rejection articulated by the Examiner. Namely, the
Examiner did not rely on Singer for disclosing a rotatable outer cylinder, but
instead relied on Churchman for disclosing this feature. See Final Act. 8.
The Examiner relied on Singer only for disclosing “a one-piece inner
cylinder 94a surrounding the head of a fastener 82a, and an outer cylinder 96
having a key lock 96a, whereby the outer cylinder 96 slidingly overlaps the
entire outer side wall of the inner cylinder 94a.” Id. at 9. Nonobviousness
cannot be established by attacking references individually when the rejection
is predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d413,
425 (CCPA 1981)). Moreover, Appellant’s argument appears to rely on
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Application 12/670,279
bodily incorporation of specific structural details of the overall invention
disclosed by Singer (i.e., block 68 and screws 82) into Churchman, which is
not the standard for an obviousness rejection. See In re Keller, 642 F.2d at
425 (stating “[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference”).
Appellant also argues that the proposed modification based on the
disclosure of Singer would change the principle of operation of Wilson,
Loynes, and Churchman. See Appeal Br. 21; Reply Br. 6. This argument is
not convincing because Appellant does not offer any evidence or persuasive
technical reasoning to explain why the proposed modifications of
Churchman based on the teachings of Loynes, Wilson, and Singer would
change the principle of operation of Churchman such that it would no longer
function as a locking device. Additionally, Appellant does not specifically
address the Examiner’s reasoning articulated in support of the proposed
modifications of Churchman. See Final Act. 8—9.
After reviewing all of the evidence before us, including the evidence
of secondary considerations discussed supra, we conclude that, on balance,
the evidence of obviousness outweighs the evidence of nonobviousness of
the subject matter of claim 15. Accordingly, we sustain the rejection of
claim 15, and of claims 16—18 falling therewith, as unpatentable over
Churchman, Loynes, Wilson, and Singer.
DECISION
The Examiner’s decision rejecting claims 15—18 is affirmed.
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Appeal 2015-005384
Application 12/670,279
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)(l)(iv).
AFFIRMED
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