Ex Parte Owens et al

Board of Patent Appeals and Interferences

Jan 12, 2009

10661157 (B.P.A.I. Jan. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MITCHELL S. OWENS and MICHAEL T. WYMAN
____________

Appeal 2008-4654
Application 10/661,157
Technology Center 3700
____________

Decided: January 12, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Mitchell S. Owens and Michael T. Wyman (Appellants) seek our
review under 35 U.S.C. § 134 of the non-final rejection1 of claims 1, 2, 4, 6,

1The claims on appeal have been twice rejected. As such, we have
jurisdiction to address the case on the merits. Ex parte Lemoine, 46
USPQ2d 1432, 1434 (Bd. Pat. App. & Int. 1995).
Appeal 2008-4654
Application 10/661,157

2
and 8-13. We have jurisdiction under 35 U.S.C. § 6(b) (2002). The
Examiner indicated that claims 15-20 are allowed, and that claims 5, 7, and
14 contain allowable subject matter, but are objected to as being dependent
on a rejected base claim. Claim 3 has been withdrawn from consideration.

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants’ claimed invention is to a security enclosure for a control
apparatus having a base and a cage configured to connect to the base and
encompass the control apparatus. The security enclosure further has a
mounting member comprising a mounting shank and a mounting strap
joined to the mounting shank, the mounting shank being embedded within
the base, and the mounting strap being partially embedded within the base.
A lock device configured to secure the cage to the mounting strap is also
provided. (Appeal Br., Claims Appendix, claim 1).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A security enclosure for a control apparatus,
said enclosure comprising:

a base;

a cage configured to connect to said base and
encompass said apparatus;

a mounting member comprising:

Appeal 2008-4654
Application 10/661,157

3
a mounting shank embedded within said
base; and

a mounting strap partially embedded within
said base and joined to said mounting shank,
and configured to extend inside said cage
substantially perpendicular to said base
when said cage is connected to said base;
and

a lock device configured to secure said cage to said
mounting strap when said cage is connected to said
base.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Davenport US 4,890,638 Jan. 2, 1990
Clements US 6,203,591 B1 Mar. 20, 2001
Guardshack Product Line Brochure (Backflow Prevention Device
InnClosures, Phoenix, Az., 2000) (hereafter “Guardshack”).
The Examiner maintains the following rejections:
Claims 1, 2, 4, and 6 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Davenport.
Claims 8-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davenport in view of Guardshack.
Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davenport in view of Guardshack and Clements.
Appellants omitted from the “Grounds of Rejection to be Reviewed
on Appeal” the Examiner’s rejection of claims 8-11 and of claims 12 and 13
under 35 U.S.C. § 103(a). (Appeal Br. 8). Appellants, however, appear to
be seeking a reversal of these rejections. See e.g., Appeal Br. 4 (stating that
Appeal 2008-4654
Application 10/661,157

4
“[C]laims 1-2, and 4-14 are on appeal.”); Appeal Br. 22 (stating that
“…Appellants believe claims 2 and 4 through 14 to be allowable by reason
of dependency.”); Appeal Br. 22, (“Conclusion” section summarizing that
the appeal is directed to claims 1-2 and 4-20).
It thus does not appear that Appellants intended to withdraw claims 8-
13 from the appeal. As such, Ex parte Ghuman, No. 2008-2642, 2008 WL
4768098, (BPAI Oct. 31, 2008), does not apply, and we will not remand the
case to the Examiner for cancellation of these claims. Rather, we understand
Appellants to be seeking reversal of the rejection of claims 8-13 for the same
reasons as argued for claim 1, from which they depend. Because no separate
arguments were presented for patentability of claims 8-13, we will treat
these dependent claims in accordance with our treatment of independent
claim 1.

ISSUES
The Examiner contends that the Davenport patent discloses a
mounting shank (central anchor hook 112) embedded within a base, a
mounting strap (portion of frame 107 and lateral anchor hook 112) partially
embedded within the base, and a lock device (fastener bolt 115) to secure a
cage to the mounting strap.
Appellants urge that Davenport does not disclose a lock device as
defined by Appellants, and that the Examiner has improperly and
erroneously read the disclosure of Davenport on claim 1, specifically that it
is improper to regard one anchor hook as corresponding to the mounting
shank and another anchor hook as a component of a mounting strap.
The issues joined in this appeal are: whether the claimed lock device
Appeal 2008-4654
Application 10/661,157

5
excludes from its scope a fastener bolt, and whether the Examiner has
improperly interpreted the Davenport disclosure in finding that Davenport
teaches the provision of a mounting shank and a mounting strap, as set forth
in claim 1?

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The Davenport patent discloses the use of fastener bolts 115
that are used to secure a cage 90 to a mounting strip (perpendicularly-
extending portions 106, 107) when the cage is positioned on and connected
to base 22. (Davenport, Fig. 10; Col. 6, ll. 44-58).

PRINCIPLES OF LAW
Anticipation (unpatentability under 35 U.S.C. § 102) is established
only when a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed invention.
RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444 (Fed.
Cir. 1984).
During prosecution of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Care must be taken to not
read a particular embodiment appearing in the written description into the
Appeal 2008-4654
Application 10/661,157

6
claim if the claim language is broader than the embodiment. See Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).

ANALYSIS
Appellants assign error only to the ground of rejection under 35
U.S.C. § 102(b), and present arguments only with respect to claim 1.
Appellants assert that claims 2 and 4-14 are allowable by reason of their
being dependent from claim 1.
Appellants contend that the Davenport patent, when properly
construed, does not disclose a mounting shank, a mounting strap, or a lock
device. Taking this last claim element first, Appellants argue that the
fastener bolts 115 in Davenport, identified by the Examiner as corresponding
to the claimed lock device, can not be construed as such. (Reply Br. 14).
Specifically, Appellants contend that fastener bolts do not fall within the
term “lock device”, as defined in the Specification, in that the term “lock
device” clearly intends to exclude common fasteners, and further that a
“lock device” is not comparable to a “locking device”. (Reply Br. 12-13;
Appeal Br. 18-20).
Appellants attempt to invoke their right to be their own lexicographer,
asserting that “lock device” is a coined term, and is defined in the
Specification as “consisting of a lock rod 76 and a lock tab 78.”
(Specification [0063]; Appeal Br. 18-19; Reply Br. 12-13). The cited
passage in the Specification is not, however, definitional in nature, but is
simply a description of a preferred embodiment of Appellants’ claimed
“lock device”. Appellants are thus, in reality, seeking to have limitations
from the Specification read into claim 1, in order to exclude fasteners such
Appeal 2008-4654
Application 10/661,157

7
as bolts from the scope of that claim element. We are not persuaded that
such a limited interpretation is appropriate or warranted, given our charge to
construe the claim in its broadest reasonable construction, and given the lack
of a definition of the term in the Specification and/or any structural
limitations imposed on the “lock device” in the language of claim 1.
Appellants, further invoking “the rules of English grammar”, also
contend that the claimed “lock device” is to be interpreted in a restrictive
manner as being “a device for use with a lock”. (Reply Br. 13). This,
according to Appellants, is to be contrasted with a “locking device”, or “a
device that locks”. (Id.). Appellants assert that they intentionally chose the
term “lock device” instead of the term “locking device”, seemingly to
buttress their position that the term used in the claim should be read
restrictively. Appellants apparently would place fastener bolts into the
category of “locking device[s]”, and not “lock device[s]”, although they do
not explicitly state this.
The distinction and proposed restrictive interpretation advanced by
Appellants find no supporting evidence in the Specification or drawings as
filed. The position advanced appears to be little more than a post hoc
grammatical exercise concocted by Appellants to attempt to distinguish the
claim term from the prior art, without actually more specifically defining the
term in the claim itself. The claim element must be given its broadest
reasonable interpretation, and there is no evidence that persons of ordinary
skill in the art would regard the term “lock device” as limited only to devices
that are for use with a lock, notwithstanding the possibility that a broader
interpretation might not be perfectly in compliance with “the rules of
English grammar”.
Appeal 2008-4654
Application 10/661,157

8
The claimed “lock device” is not the subject of any special or limiting
definition, and is completely devoid of structural features, with the claim
merely reciting functional requirements for the device. Those requirements
are met by the fastener bolts of Davenport (FF 1), a point which is not
disputed by Appellants. Accordingly, the Examiner’s position that the
fastener bolts of Davenport read on the claimed “lock device” is not in error.
Appellants further contend that the Davenport patent, if properly
interpreted, does not disclose the claimed mounting shank and mounting
strap. Appellants’ principal contention is that it is improper and illogical to
consider, as has the Examiner, one of the anchor hooks 112 of Davenport as
meeting the claim limitation directed to the mounting shank, and to further
consider another of the anchor hooks as constituting a component of the
claimed mounting strap. (Appeal Br. 11-14; Reply Br. 6-7). Appellants
contend that either the collection of anchor hooks of Davenport correspond
to the claimed mounting shank, and thus the Davenport mounting strap has
no portion partially embedded in the base, or, alternatively, if the anchor
hooks are collectively considered to be components of the mounting strap,
then the Davenport structure has no structure corresponding to the mounting
shank (i.e., a component embedded in the base). (Appeal Br. 12-13).
Appellants denigrate the Examiner’s position as being illogical (see,
e.g., Appeal Br. 11), and impermissibly based on the use of hindsight.
(Reply Br. 7-9). Appellants’ attack based on the alleged use of hindsight is
not well taken, in that the rejection here is one based on anticipation under
35 U.S.C. § 102, whereas an inquiry into the possibility that a rejection
improperly uses hindsight reconstruction is pertinent only where the
rejection is one grounded in obviousness, under 35 U.S.C. § 103. The
Appeal 2008-4654
Application 10/661,157

9
Examiner here has, in any event, not reconstructed the claimed invention
from a variety of teachings, rather the Examiner has identified structure in
the Davenport patent that structurally and functionally corresponds to the
various elements as claimed.
Neither is the Examiner’s reading of the structure of Davenport on the
claimed mounting shank and mounting strap illogical. As was the case with
the claimed “lock device” addressed above, the claimed “mounting shank”
and “mounting strap” are not further structurally defined, other than by their
orientation or position relative to a base and cage, and that the mounting
strap is joined to the mounting shank. (Appeal Br., Claims Appendix, Claim
1).
The Examiner asserts that the central anchor hook 112 of the
Davenport mounting member comprises a mounting shank embedded within
base 22. (Answer 3). The claimed mounting shank has no recited
configurational or structural features that would exclude the disclosed
anchor hook. The Examiner further asserts that one of the flanking anchor
hooks (the one located below reference numeral 108 in Fig. 9 of Davenport),
together with angle members 106, 108, 110 of the angle frame 105 constitute
a mounting strap that is joined to the mounting shank 112 and that is
partially embedded within the base. (Answer 3, 4). The claimed mounting
strap has no recited configurational or structural features that would exclude
these components of Davenport from meeting the limitations of the claimed
mounting strap.
Appellants argue that this interpretation of Davenport is illogical
because persons of ordinary skill in the art would not view the several
anchor hooks of Davenport as serving different purposes or different
Appeal 2008-4654
Application 10/661,157

10
functions. (Reply Br. 7). Appellants urge that the claimed mounting shank
and mounting strap, in contrast, serve two different functions, as evidenced
by the fact that they are separately claimed elements. (Id.).
These arguments miss the mark. The Examiner must find structural
correspondence between the claim elements and the prior art device relied
upon in order to establish anticipation. That, the Examiner has done. To the
extent that functional aspects of the claimed elements might be relevant,
Appellants have pointed to no functional claim language that differentiates
the mounting shank or the mounting strap from the portions of the
Davenport structure cited by the Examiner. Appellants here, as with the
majority of their arguments, fail to maintain focus on the claim as written,
and its broadest reasonable interpretation.
A further illustrative example is that Appellants argue that the
Davenport anchor hooks are common fasteners, whereas the claimed
mounting shank and mounting strap are “anything but common fasteners.”
(Appeal Br. 16). However, neither the claim language itself nor the
Specification or drawings provide evidence that would require the claim to
be read in this or any other particular restrictive manner relative to the
construction or configuration of the mounting shank or mounting strap.
Appellants do mount one attack based on language that is actually
present in claim 1. Appellants contend that the anchor hook that is cited as
corresponding to the mounting shank is only partially embedded in the base,
because the anchor hook has a portion that is not embedded in the base.
(Appeal Br. 15). This appears to refer to the fact that the uppermost surface
of the anchor hook of Davenport is exposed at the top surface 23 of base 22,
Appeal 2008-4654
Application 10/661,157

11
notwithstanding that it is fully surrounded by the base material, and no part
of the anchor hook projects out of the base. (See, e.g., Fig. 12).
Aside from a further attempt at a post hoc grammatical contrasting of
terms, this time with “embedded” and “partially embedded”, Appellants
point to no evidence that the term “embedded” must be construed in such a
restrictive manner. Indeed, the common and ordinary meaning of “embed”
is inclusive of the Davenport anchor hook, in that the anchor hook is fixed
firmly in a surrounding mass, much like a post in concrete.2
Appellants have not persuasively argued that claim 1 contains claim
language that structurally or functionally defines the claimed mounting strap
over the angle members and flanking anchor hook of Davenport relied upon
by the Examiner. The same is true of the claimed mounting shank and the
central anchor hook of Davenport.
We are not persuaded that any factual or legal error was committed by
the Examiner in the rejection of claim 1 as anticipated by Davenport.
Claims 2, 4, and 6 are also rejected under 35 U.S.C. § 102(b) in view of
Davenport, but Appellants do not present any arguments as to the separate
patentability of any of these claims. Accordingly, we are not persuaded that
error was committed in rejecting these claims.
Claims 8-11 are rejected under 35 U.S.C. § 103(a) over Davenport in
view of Guardshack, and claims 12 and 13 are rejected under 35 U.S.C. §
103(a) over Davenport in view of Guardshack and Clements. Appellants
have not presented any arguments for patentability beyond those presented

2 embed: To fix firmly in a surrounding mass: embed a post in concrete;
fossils embedded in shale. The American Heritage® Dictionary of the
English Language (Fourth Edition; Copyright © 2006 by Houghton Mifflin
Company).
Appeal 2008-4654
Application 10/661,157

12
for claim 1. Appellants have thus not met their burden of showing error in
the Examiner’s rejections of these claims, and we will sustain those
rejections.

CONCLUSION
Appellants have not established that reversible error exists in the
rejection of claims 1, 2, 4, and 6 under 35 U.S.C. § 102(b) in view of
Davenport. Appellants have further not established that reversible error
exists in the rejection of claims 8-13 under 35 U.S.C. § 103(a) in view of
Davenport and Guardshack or Davenport, Guardshack, and Clements.

ORDER
The decision of the Examiner to reject claims 1, 2, 4, 6, and 8-13 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) (2007).

AFFIRMED

hh

MESCHKOW & GRESHAM, PLC
SUITE 409
5727 NORTH 7TH STREET
PHOENIZ, ARIZONA 85014