Ex parte MURRAY et al.

Board of Patent Appeals and Interferences

Aug 19, 1998

08138634 - (D) (B.P.A.I. Aug. 19, 1998)

Application for patent filed October 15, 1993. According to1
appellants, this application is a continuation-in-part of application
08/042,851, filed April 5, 1993, which is a continuation of application
07/824,964, filed January 24, 1992, and a continuation-in-part of application
08/006,311, filed January 19, 1993.
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not binding precedent of the Board.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. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM R. MURRAY, JR.,
STEWART R. CARL and ARTHUR H. ZARNOWITZ
_____________
Appeal No. 96-4097
Application 08/138,6341
______________
ON BRIEF
_______________
Before CALVERT, MEISTER and McQUADE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 56
to 63, all of the claims remaining in the application.
Appeal No. 96-4097
Application 08/138,634
Our understanding of the Lalanne and Rimanek references is derived from2
translations thereof prepared for the PTO, copies of which are forwarded
herewith to appellants. References in this decision to pages and lines of
Lalanne or Rimanek are to pages and lines of the translations.
2
The invention in issue concerns apparatus for inhibiting
the theft of portable equipment, such as computers. The
appealed claims are reproduced in the appendix to appellants'
brief, except that claim 59 therein does not include the
additions made by the amendment filed April 26, 1996 (Paper
No. 24).
The references applied in rejecting the appealed claims
are:2
Wilson 5,082,232 Jan. 21, 1992
Lalanne FR 2,636,686 Mar. 23, 1990
(French patent)
Rimanek DE 3,824,393 Jul. 27, 1989
(German Patent)
The claims on appeal stand rejected as follows:
(1) Claims 56 to 63, unpatentable over Wilson in view of
Lalanne under 35 USC § 103;
(2) Claims 59, 61 and 62, anticipated by Rimanek, under
35 USC § 102(b).
Rejection (1)
Appeal No. 96-4097
Application 08/138,634
3
The examiner's position with regard to this rejection is,
in essence, that it would have been obvious to modify the
Wilson
apparatus to use a fastener as disclosed by Lalanne instead of
Wilson's conventional fastener (screw) 20.
Appellants argue that Lalanne is not relevant, i.e.,
nonanalogous, prior art. It is unnecessary to resolve this
question, however, for even if Lalanne is assumed to be
analogous art, we do not consider that the claimed subject
matter would have been obvious over the combination of Wilson
and Lalanne.
If the fastener disclosed by Lalanne were substituted for
the connector 20 of Wilson by one of ordinary skill in the
art, the resulting structure would not, in our view, meet the
limitations of the appealed claims. Looking first at the
device disclosed by Wilson, the apertured members 16, 26, do
not physically coact with the screw 20 to prevent it from
being rotated, but simply block access to the screw head, so
that the screw cannot be removed. Thus element 16 is fixed to
the device (object) 14 by the screw 20, and element 26 is a
Appeal No. 96-4097
Application 08/138,634
4
cover which fits over 16 and along with blocker 24, prevents
removal of the screw. This is unlike the claimed
apparatus, in which the apertures are formed in the slot
engagement member and in the housing carrying the pin, which
also extends into the slot and
coacts with the slot engagement member to prevent its removal
from the slot.
The fastener disclosed by Lalanne has a shaft 1 carrying
at its end a bar 3 which is passed through slot 10 and is
turned 90 degrees to prevent removal (Fig. 2). A member 5 is
rotatably mounted on shaft 1 and has a pin 9 which fits the
slot 10. If one of ordinary skill were to substitute
Lalanne's fastener for Wilson's screw connector 20, the lower
end of member 16 might be modified to include pin 9 of
Lalanne. However, in accordance with Wilson's disclosure, the
aperture alignable with the aperture in member 16 would still
be the aperture in cover 26, there being no teaching or
suggestion in either reference of providing an aperture in the
connector per se which would be alignable with the aperture 22
Appeal No. 96-4097
Application 08/138,634
5
of Wilson to prevent rotation of the connector. While Lalanne
does disclose an aperture 15 in the lug 14 by which the bar 3
is turned, the purpose of this aperture is not disclosed, and
it is evidently simply a hole for attaching a device to be
supported by the fastener (see page 6, last three lines). We
find no suggestion in either reference of providing apertures
in the slot engagement member and in the housing
carrying the pin, such that the apertures would be coaxial
(claim 56) or aligned (claim 59) when the pin extends into the
slot. The conceptual figures on page 5 of the examiner's
answer appear to be based on impermissible hindsight gleaned
from appellants' disclosure, rather than on the knowledge
available in the prior art.
Accordingly, rejection (1) will not be sustained.
Rejection (2)
In order to anticipate a claim, "a prior art reference
must disclose every limitation of the claimed invention,
either explicitly or inherently". In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). In the
Appeal No. 96-4097
Application 08/138,634
6
present case, the examiner explains on pages 7 and 8 of the
supplemental answer how she considers that claim 59 reads on
Rimanek, and we are generally in agreement with her analysis.
Appellants argue that Rimanek does not disclose all the
elements recited in claim 59 because (supplemental reply
brief, page 2):
Claim 59 requires the engagement of the inner
surface of an external wall inhibits removal of the
slot engaging member. By contrast, in Rimanek, it
is clamp piece 4 that directly prevents locking
element 5 from being removed rather than engagement
to the inner surface of an external wall.
We do not agree. The engagement of the end 6 of
Rimanek's slot engagement member 5 with the wall, as shown in
Fig. 2, clearly inhibits its removal from the slot, as recited
in claim 59; otherwise, the device could be removed from the
slot even when pin 4 was in the Fig. 2 position.
Appellants further argue that element 4 of Rimanek does
not correspond to the pin recited in claim 59 because it does
not inhibit the slot engaging member from returning to its
first position wherein it is aligned with the slot. This
argument is not well taken. As shown in Rimanek's Fig. 3 and
disclosed at page 3, lines 18 to 20, element 4 maintains the
Appeal No. 96-4097
Application 08/138,634
7
member 5 in its misaligned position engaged with the inner
wall surface, inhib-iting it from returning to its first
position, shown in Fig. 1, where it is aligned with the slot.
Element 4 of Rimanek therefore corresponds to the pin as
defined in claim 59.
Since Rimanek discloses every limitation of claim 59, and
appellants do not argue that claims 61 and 62 are separately
patentable, rejection (2) will be sustained.
Conclusion
The examiner's decision to reject claims 56 to 63 under
35 USC § 103 is reversed, and to reject claims 59, 61 and 62
under 35 USC § 102(b) is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
Appeal No. 96-4097
Application 08/138,634
8
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-4097
Application 08/138,634
9
Michael E. Woods
Townsend, Townsend & Crew, LLP
Two Embarcadero Center, 8th Floor
San Francisco, CA 94111-3834