Ex Parte Morrow et al

Board of Patent Appeals and Interferences

Mar 23, 2012

11489657 (B.P.A.I. Mar. 23, 2012)

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.
11/489,657 07/18/2006 Carl R. Morrow MO79-001 1142
21567 7590 03/26/2012
Wells St. John P.S.
601 West First Avenue
Suite 1300
Spokane, WA 99201-3828
EXAMINER
MORTELL, JOHN F
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
03/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL R. MORROW and G. JEFF MAESTRETTI
____________

Appeal 2010-001608
Application 11/489,657
Technology Center 2600
____________

Before JOHN A. JEFFERY, CARLA M. KRIVAK, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001608
Application 11/489,657

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-34. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants’ lock system generates an alarm indicating the lock
system’s changing from a first locking configuration to a second removable
configuration. See generally Abstract. Claim 12 is illustrative with key
disputed limitations emphasized:
12. A lock tree comprising:
a lock system configurable into a first configuration to lock a device
to be secured, wherein the lock system is further configurable into a second
configuration to be removable from the device;
wherein the lock system is configured to receive at least one lock to
restrict an individual from changing the lock system from the first
configuration to the second configuration; and
circuitry configured to generate an alarm to indicate a change of the
configuration of the lock system from the first configuration to the second
configuration.
The Examiner relies on the following as evidence of unpatentability:
Reque US 3,667,259 June 6, 1972
Kinzie US 4,427,975 Jan. 24, 1984
Script US 6,215,396 B1 Apr. 10, 2001

THE REJECTIONS1
1. The Examiner rejected claims 1-25 and 27-34 under 35 U.S.C.
§ 103(a) as unpatentable over Reque and Script. Ans. 5-18.2, 3

1 Since the Examiner withdrew a rejection under § 112 (Ans. 4, 19), that
rejection is not before us.
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2. The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as
unpatentable over Reque, Script, and Kinzie. Ans. 18-19.

THE OBVIOUSNESS REJECTION OVER REQUE AND SCRIPT
The Examiner finds that Reque’s lock system has every recited feature
of representative claim 12 except circuitry for generating an alarm indicating
the lock system’s changing from a first locking configuration to a second
removable configuration, but cites Script as teaching this feature in
concluding that the claim would have been obvious. Ans. 9-11, 19-22.
Appellants argue that the Examiner’s proposed combination is flawed
since Script does not disclose a lock, but rather detects movements of
various generic objects such as windows, doors, gates, wall hangings,
paintings, etc. App. Br. 5-10; Reply Br. 1-7. As such, Appellants contend,
there is no reason to combine Script’s motion detection and alarm system
with Reque’s lock apart from impermissible hindsight. Id. Appellants make
similar arguments regarding independent claims 1 and 17. App. Br. 10-16;
Reply Br. 7-11. Appellants also argue limitations of claims 6, 20, and 27
noted in the issue statement below. The issues before us, then, are as
follows:

2 Throughout this opinion, we refer to (1) the Appeal Brief filed April 2,
2009; (2) the Examiner’s Answer mailed September 1, 2009; and (3) the
Reply Brief filed September 14, 2009.
3 Although the Examiner rejects some claims in the rejection separately over
Reque and Script (see Ans. 5, 9, 13), we nonetheless consolidate the
rejections here for clarity and brevity.
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Application 11/489,657

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ISSUES
1. Under § 103, has the Examiner erred by finding that Reque and
Script collectively would have taught or suggested:
(a) circuitry configured to generate an alarm indicating a lock
system’s changing from a first locking configuration to a second removable
configuration as recited in claim 12?
(b) the alarm generation is also responsive to movement of a lock
system’s attachment members as recited in claim 1?
(c) the circuitry is physically resident with the lock system as recited
in claim 6?
(d) generating the alarm signal at the location of the lock system as
recited in claim 20?
(e) circuitry for generating the alarm to indicate an unlocked device as
recited in claim 27?
2. Is the Examiner’s reason to combine the teachings of Reque and
Script supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
Claims 12-16 and 28-31
We begin by noting that the Examiner’s findings regarding Reque’s
locking system are undisputed, including lacking alarm generation circuitry.
Ans. 9-11. Indeed, Reque’s lock is a purely mechanical device with
structural features similar to the recited lock, but Reque has no electronics
whatsoever, let alone an alarm circuit as claimed. See Reque, Figs. 1-2. It is
also undisputed that Script’s alarm system responds to movement of a wide
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Application 11/489,657

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variety of objects, the variety of which Script broadly characterizes as
“countless.” Script, col. 2, ll. 59-64.
The question, then, is whether it would have been obvious to provide
this movement-responsive alarm to detect movement in Reque’s lock and
indicate the resulting locking configurations as the Examiner proposes. On
this record, we answer this question “yes” for the reasons indicated by the
Examiner. Ans. 9-11, 19-22. We add that such an enhancement merely
predictably uses prior art elements according to their established functions—
an obvious improvement. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). And where, as here, if a technique has been used to improve one
device (alarming responsive to detected movement of various objects), and
an ordinarily skilled artisan would recognize that it would improve similar
devices in the same way (provide an alarm responsive to movement of other
objects, including lock members), using the technique is obvious unless its
actual application is beyond his or her skill. Id. We reach this conclusion
noting that there is no evidence on this record proving that such a
combination is beyond the level of ordinary skill, or that that it would render
Reque or Script inoperable or otherwise unsuitable for their intended
purpose. Rather, the proposed combination merely arranges old elements
with each performing their known functions to yield predictable results—an
obvious improvement. Id.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 12, and claims 13-16 and 28-31 not separately argued
with particularity.

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Claims 17-19, 21-24, 32, and 33
For similar reasons and those indicated by the Examiner (Ans. 13-15,
22-24), we likewise sustain the Examiner’s rejection of representative claim
17 reciting generating an alarm signal indicating providing the lock system
in an open configuration. Appellants’ arguments (App. Br. 10-13; Reply Br.
7-9) are similar to those made previously and are therefore unavailing. We
are therefore not persuaded that the Examiner erred in rejecting
representative claim 17, and claims 18, 19, 21-24, 32, and 33 not separately
argued with particularity.

Claims 1-5, 7-11, and 25
For similar reasons and those indicated by the Examiner (Ans. 5-6),
we likewise sustain the Examiner’s rejection of representative claim 1
reciting circuitry configured to generate an alarm responsive to movement of
lock system attachment members when the lock system’s configuration
changes from a first locking configuration to a second configuration to be
attached or removed from the device. Appellants’ arguments (App. Br. 13-
16; Reply Br. 9-11) are similar to those made previously and are therefore
unavailing. We are therefore not persuaded that the Examiner erred in
rejecting representative claim 1, and claims 2-5, 7-11, and 25 not separately
argued with particularity.

Claim 6
For the reasons indicated by the Examiner (Ans. 7, 25-26), we also
sustain the Examiner’s rejection of claim 6 reciting that the circuitry is
physically resident with the lock system. Notably, nothing in the claim
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requires the circuitry and lock system to share a common housing or
otherwise specify a particular structural arrangement between these two
components. Nor does the claim require the circuitry to be physically
resident upon the lock system as Appellants seem to suggest.4 Rather, the
claim merely requires that the circuitry be physically resident with the lock
system—a feature fully met so long as they have some physical proximity to
each other.
Script amply teaches this proximity-based physical residence. First,
the moving objects (and their associated detectors) and the receiver’s alarm
circuitry are located in the same room as shown in Script’s Figure 2. See
Script, col. 4, ll. 59-65; Fig. 2. e Although the detectors and alarm may
wirelessly communicate with each other within this room, that does not
preclude their physical residence with each other as Appellants contend
(App. Br. 16-17; Reply Br. 12-13), since these components physically reside
in the same room. In any event, Script notes that the detectors and alarm can
also be co-located with each other (Script, col. 4, ll. 59-62)—an alternative
that certainly suggests their mutual physical residence. The Examiner’s
point in this regard is well taken. Ans. 25.
We are therefore not persuaded that the Examiner erred in rejecting
claim 6.

4 See Reply Br. 12 (“[T]wo apparatus may be co-located without being
physically resident upon one another. In particular, two apparatus may be
positioned near one another and co-located without being physically resident
upon one another.” (emphases added)).
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Claim 20
We likewise sustain the Examiner’s rejection of claim 20 reciting
generating the alarm signal at the location of the lock system essentially for
the reasons noted above and by the Examiner. Ans. 15-16, 26. Nothing in
the claim precludes generating an alarm in the same room (i.e., location) as
the object whose movement is detected (e.g., a lock system) as suggested by
Script. See Script, col. 4, ll. 59-65; Fig. 2. We are therefore not persuaded
that the Examiner erred in rejecting claim 20.

Claims 27, 29, and 34
We also sustain the Examiner’s rejection of claims 27, 29, and 34
reciting circuitry for generating the alarm to indicate an unlocked device
essentially for the reasons noted previously and by the Examiner. Ans. 12,
26-28. Appellants’ arguments (App. Br. 18; Reply Br. 14-15) are similar to
those made previously and are therefore unavailing.

THE OBVIOUSNESS REJECTION OVER REQUE, SCRIPT, AND KINZIE
Since Appellants presented no arguments pertaining to the Examiner’s
obviousness rejection of claim 26 (Ans. 18-19), we summarily sustain this
rejection. See MPEP § 1205.02 (8th ed., rev. 8, July 2010) (“If a ground of
rejection stated by the examiner is not addressed in the appellant’s brief, that
ground of rejection will be summarily sustained by the Board.”).

CONCLUSION
The Examiner did not err in rejecting claims 1-34 under § 103.

Appeal 2010-001608
Application 11/489,657

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ORDER
The Examiner’s decision rejecting claims 1-34 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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