Ex parte JULIEN

Board of Patent Appeals and Interferences

Jul 16, 1998

08069544 (B.P.A.I. Jul. 16, 1998)

Application for patent filed June 1, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GERALD J. JULIEN
_____________
Appeal No. 97-1475
Application 08/069,544 1
______________
ON BRIEF
_______________
Before MEISTER, FRANKFORT and CRAWFORD, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to
allow claims 11 through 30 as amended subsequent to the final
rejection in papers filed October 30, 1995, February 28, 1996,
April 23, 1996 and September 9, 1996 (Paper Nos. 10, 19, 23
Appeal No. 97-1475
Application 08/069,544
2
and 26). Claims 11 through 30 are all of the claims remaining in
this application. Claims 1 through 10 have been canceled.
Appellant's invention relates to a method of releasably
securing a hasp (claim 11), a method of locking (claims 21 and
25), and a method of preventing access to an automobile steering
column ignition lock (claim 18). As explained on page 2 of the
specification, in the "Summary of the Invention," it was
appellant's intention to
Provide a lock that cannot be cut or broken by ordinary
tools.
Another object of the invention is to provide a method
of securing valuable assets such that they are more
secure from theft by thieves using ordinary tools.
Yet another object of the invention is to provide a
lock that offers real protection against theft by being
resistant to every known common form of breaking or
cutting heretofore used to defeat locks.
A further object of the invention is to provide an automo-
bile ignition lock cover that effectively deters auto theft.
Another object of the invention is to provide a padlock
that can be made smaller than conventional padlocks and
which is light weight, corrosion resistant, is highly
resistant to breaking, cutting, and even burning with a
torch.
These an other objects of the invention are attained in
a lock having a shackle and a body for securing across
Appeal No. 97-1475
Application 08/069,544
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the ends of the shackle with a latching device that can
be released by a key or by a combination. The shackle
and the catch of the latch are made of a shape memory
alloy such as Nitinol. Another embodiment includes a
cover that can be placed over the ignition lock of a
vehicle and secured in place when the vehicle is left
unattended. The cover is hardened steel and the lock
which secures it in place includes a shackle and a
catch made of a shape memory alloy, preferably Nitinol,
that is impossible to break or cut with ordinary tools.
On pages 4 through 6 of the specification, it is emphasized
why the shackle (30) and the catch or locking pin (46) of the
lock are to be made of Nitinol, for example, "Type 55 Nitinol."
These pages of the specification also discuss advantageous
properties or characteristics of Nitinol that make the lock
components made of such material "uniquely resistant to attack by
thieves and other persons intent on cutting or breaking the lock"
(specification, page 5).
Claims 11, 18, 21 and 25 are representative of the subject
matter on appeal and a copy of those claims may be found in the
Appendix to the reply brief (Paper No. 27, filed September 9,
1996).
The prior art references of record relied upon by the
examiner are:

Appeal No. 97-1475
Application 08/069,544
As indicated in the supplemental examiner's answer mailed November 25,2
1996 (Paper No. 28), the rejection of claim 24 under 35 U.S.C. § 112, second
paragraph, as stated in the final rejection and examiner's answer has been
overcome. In addition, it is indicated that the rejection of claim 17 under
35 U.S.C. § 112, second paragraph, and the objection to claim 18 set forth on
pages 6 and 7 of the examiner's answer have been obviated by the amendment
filed September 9, 1996.
4
Dutton 2,407,406 Sep. 10, 1946
Goldstein 4,561,272 Dec. 31, 1985
Freeman 4,598,562 Jul. 08, 1986
Dalby 4,753,465 Jun. 28, 1988
THE REJECTIONS 2
Claims 11 through 30 stand rejected under 35 U.S.C. § 112,
first paragraph, as being directed to a specification which, as
originally filed, does not support the invention as now claimed.
According to the examiner (answer, page 6), the recitation in
claims 11, 18, 21 and 25 of "primarily solid monolithic" Nitinol
has no support in the original specification.
Claims 11, 12 and 21 through 24 stand rejected under 35
U.S.C. § 103 as being unpatentable over Dutton in view of
Goldstein.
Claims 13 through 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Dutton in view of Goldstein as applied to
claims 11 and 12 above, and further in view of Dalby.
Appeal No. 97-1475
Application 08/069,544
5
Claims 18 through 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Freeman in view of Goldstein.
Claims 25, 28 and 30 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Goldstein in view of Dutton.
Claims 26 and 27 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Goldstein in view of Dutton as applied to
claim 25 above, and further in view of Freeman.
Claim 29 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Goldstein in view of Dutton and Dalby.
Rather than reiterate the examiner's statement of each of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant, we refer to the
examiner's answer (Paper No. 25) and supplemental examiner's
answer (Paper No. 28), and appellant's brief (Paper No. 24) and
reply brief (Paper No. 27) for the full exposition thereof.
OPINION
In arriving at our decision in this appeal, we have carefully
considered appellant's specification and claims (both as
Appeal No. 97-1475
Application 08/069,544
6
originally filed and as amended), the applied references, and the
respective positions of the examiner and appellant regarding the
various issues before us on appeal. As a consequence of our
review, we have made the determinations which follow.
Turning first to the examiner's rejection of claims 11
through 30 under 35 U.S.C. § 112, first paragraph, we note that
the test for determining compliance with the written description
requirement of the first paragraph of §112 is whether the
disclosure of the application as originally filed reasonablely
conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter. See In re Kaslow, 707
F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). In this
regard, it is important to additionally understand that the
claimed subject matter does not have to be expressed in ipsis
verbis in the specification in order to satisfy the description
requirement of §112 (See In re Wertheim 541 F.2d, 257, 265, 191
USPQ 90, 98 (CCPA 1976)) and that, under appropriate circum-
stances, the original drawings may also provide the required
"written description of the invention." See Vas-Cath Inc. v.
Mahurkar, 935, F.2d, 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991); In re Wolfensperger, 302 F.2d, 950, 956, 133 USPQ 537, 543
(CCPA 1962).
Appeal No. 97-1475
Application 08/069,544
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With this as our background, we turn to the examiner's
objection to the recitation in claim 11 of "primarily monolithic
Nitinol," in claims 18 and 25 of "primarily solid monolithic
Nitinol," and in claim 21 the recitation that the lock shackle is
made "primarily of solid monolithic Nitinol." The above language
was added to the enumerated independent claims subsequent to the
final rejection (see Paper Nos. 10, 19, 23 and 26). In Paper No.
19, the following paragraph was also added to page 6 of the
specification,
As shown in Figs 1-3, the shackle is made of primarily
solid monolithic Nitinol. The term "primarily solid
monolithic Nitinol shackle" is intended to mean that
the shackle is a single homogeneous undifferentiated
material throughout, and its primary protective
strength is provided by the solid Nitinol, although the
shackle could also be painted or have some other
decorative finish or non-structural elements common in
locks applied.
In the examiner's view, these additions to the specification and
claims constitute new matter. While the examiner is correct in
observing that appellant's original specification does not
expressly use the terminology "primarily solid monolithic
Nitinol," we must agree with appellant that the person of
ordinary skill in the art at the time of filing of the
Appeal No. 97-1475
Application 08/069,544
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application would have readily recognized from the depiction in
Figures 1 and 3 of the shackle (30) and locking pin (46), and
from the description in the original specification, that these
elements of the lock therein were made completely of Nitinol, for
example, of Type 55 Nitinol, or in appellant's terms that the
shackle and locking pin are made of "a single homogeneous
undifferentiated material throughout," with that material being
"solid monolithic Nitinol." Thus, when we give proper
consideration to the entire disclosure of appellant's application
as originally filed, as such would be viewed by the person of
ordinary skill in the art, we find that there is a reasonable
basis to conclude that the disclosure would have conveyed to the
artisan that the inventor had possession of the presently claimed
subject matter of claims 11 through 30 on appeal at the time of
filing of the application. The examiner's rejection of these
claims under 35 U.S.C. § 112, first paragraph, as lacking support
in the originally filed disclosure will therefore not be
sustained.
It follows from our determination above, regarding the
examiner's rejection under 35 U.S.C. § 112, first paragraph,
Appeal No. 97-1475
Application 08/069,544
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that we do not agree with the examiner's characterization of the
amendment to page 6 of the specification (made in Paper No. 19)
as being new matter. In our view, the person of ordinary skill
in the art would have reasonably recognized from the originally
filed disclosure that the shackle and locking pin or catch of the
padlock described therein were to be made completely of Nitinol,
so as to take advantage of the properties thereof as set forth on
pages 4 through 6 of the specification. In our opinion, the
questioned amendments merely clarify that which was already
reasonably apparent from the originally filed drawings and
specification of appellant's application. Thus, these amendments
do not constitute new matter and should be allowed to remain in
the application.
Next, we turn to the examiner's prior art rejections, and
proceed by first addressing the rejection of claims 11, 12 and 21
through 24 under 35 U.S.C. § 103 as being unpatentable over
Dutton in view of Goldstein. According to the examiner, Dutton
teaches the basic method of using a padlock shackle (28) to lock
a hasp and staple (62, 64), while Goldstein clearly teaches a
Nitinol shackle. The examiner concludes that it would have been
Appeal No. 97-1475
Application 08/069,544
10
obvious to one of ordinary skill in the art at the time of
appellant's invention to modify the method of Dutton by providing
a padlock shackle therein made of a Nitinol material.
In response to appellant's arguments that Goldstein teaches
a composite shackle (e.g., at column 2, lines 27-33 thereof) and
does not teach or suggest a "primarily monolithic Nitinol"
shackle as in independent claim 11 on appeal, or a shackle made
"primarily of solid monolithic Nitinol" as in independent claim
21 on appeal, the examiner has made the assertions (answer, page
10) that 1) the Nitinol composition as disclosed in Goldstein is
"clearly anticipatory with respect to the claimed Nitinol
shackle", 2) the instant claims do not preclude the use of a
matrix like that of Goldstein, and 3) the arguments made by
appellant are "moot since, the definition and supporting added
language is new matter."
We begin with the examiner's last assertion first, noting
that the Manual of Patent Examining Procedure (MPEP) in section
2163.06 (Rev. 3, July 1997), at page 2100-141, makes clear that
the examiner must still consider the subject matter added to the
claim or claims in making rejections based on prior art since the
new matter rejection may be overcome by appellant. See also,
Appeal No. 97-1475
Application 08/069,544
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section 2143.03 of the MPEP, last paragraph, wherein it is
expressly noted that when evaluating claims for obviousness under
35 U.S.C. § 103, all limitations of the claims must be considered
and given weight, including limitations which do not find support
in the specification as originally filed (i.e., new matter). In
addition, see Ex parte Pearson, 230 USPQ 711, 172 (Bd. App. 1985)
and Ex parte Grasselli, 231 USPQ 393, 394 (Bd. App. 1983).
Thus, it is clear that appellant's arguments regarding the
limitations of claims 11, 18, 21 and 25 concerning the newly
added language that the shackle is of "primarily monolithic
Nitinol" or "primarily solid monolithic Nitinol" are not moot as
the examiner urges. Moreover, when these limitations of the
claims on appeal are considered and given proper weight, it is
clear that the composite structure of the shackle of Goldstein is
not anticipatory of the claimed monolithic Nitinol shackle as the
examiner believes, and that contrary to the examiner's assertions
the language of the claims on appeal when properly construed does
in fact exclude the use of a composite matrix material of
tungsten carbide particles and nickel-titanium alloy like that
taught in Goldstein. For these reasons, we will not sustain the
Appeal No. 97-1475
Application 08/069,544
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examiner's rejection of claims 11, 12 and 21 through 24 under 35
U.S.C. § 103 as being unpatentable over Dutton in view of
Goldstein.
Turning now to the examiner's rejection of claims 13 through
17 under 35 U.S.C. § 103, we note that the addition of the
teachings of Dalby to those of Dutton and Goldstein does nothing
to supply that which we have indicated above to be lacking in the
combination of Dutton and Goldstein. Moreover, as urged by
appellant, it is highly unlikely that one of ordinary skill in
the art would have been led to modify the padlock of Dutton based
on the very specialized and diverse teachings of the space craft
launch lock mechanism of Dalby, absent appellant's own teachings
and the application by the examiner of impermissible hindsight.
Accordingly, the examiner's rejection of claims 13 through 17
under 35 U.S.C. § 103 will also not be sustained.
As for the examiner's rejection of claims 18 through 20
under 35 U.S.C. § 103 based on the combined teachings of Freeman
and Goldstein, we note that, in our opinion, neither of these
references teaches or suggests a method of "preventing access to
an automobile steering column ignition lock" as set forth in
Appeal No. 97-1475
Application 08/069,544
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independent claim 18 on appeal. Not only is there no teaching of
locking the cover of claim 18 in a closed position with a lock
"having a primarily solid monolithic Nitinol shackle" as required
in claim 18, but, as is clear from a reading of Freeman (at
column 2, lines 28-32), there is also no teaching in these
references of "covering said ignition lock with a cover" so as to
prevent access thereto as required in appellant's claim 18.
Freeman expressly indicates that the user therein can "freely
manipulate the ignition key in the ignition key housing without
interference from the jacket." Thus, the examiner's rejection of
method claims 18 through 20 under 35 U.S.C. § 103 will not be
sustained.
Regarding the rejection of claims 25 through 30 under 35
U.S.C. § 103 utilizing Goldstein as the primary reference, we
again note that neither Goldstein nor Dutton teaches or suggests
a lock shackle that is made of "primarily solid monolithic
Nitinol," as required in claim 25 on appeal. As for the
recitations of dependent claim 27, we again point to the
deficiencies of Freeman as noted above, observing that Freeman
does not teach or suggest a cover member "covering an automotive
key slot of a motor vehicle ignition lock tumbler," or an
Appeal No. 97-1475
Application 08/069,544
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arrangement wherein the lock which secures such a cover in
position "must be removed to gain access to said ignition lock
tumbler," as set forth in appellant's method claim 27 on appeal.
In addition, our comments supra with regard to Dalby are again
pertinent here. For these reasons, we will not sustain the
examiner's rejections of claims 25 through 30 under 35 U.S.C.
§ 103.
As is apparent from the foregoing, the examiner's rejection
of claims 11 through 30 under 35 U.S.C. § 112, first paragraph
has been reversed, as has each of the examiner's rejections of
claims 11 through 30 under 35 U.S.C. § 103.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-1475
Application 08/069,544
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John M. Neary
542 Southwest 298th Street
Federal Way, WA 98023