12606416 (P.T.A.B. Apr. 6, 2017)

Ex Parte Weinraub

Patent Trial and Appeal BoardApr 6, 2017

12606416 (P.T.A.B. Apr. 6, 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. 12/606,416 10/27/2009 Adam S. Weinraub 2193 2726 52207 7590 04/07/2017 LAW OFFICES OF LARRY K. ROBERTS, INC. 2603 Main Street 9th Floor Irvine, CA 92614-6232 EXAMINER FULTON, KRISTINA ROSE ART UNIT PAPER NUMBER 3675 MAIL DATE DELIVERY MODE 04/07/2017 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ADAM S. WEINRAUB ____________________ Appeal 2014-000175 Application 12/606,416 Technology Center 3600 ____________________ Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Adam S. Weinraub (Appellant) appeals under 35 U.S.C. § 134 from the rejection of claims 1–141 under 35 U.S.C. § 103(a) as unpatentable Zarzycki (US 6,406,076 B1, iss. June 18, 2002) and Priola (US 4,861,082, iss. Aug. 29, 1989). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Although the Office Action Summary (PTOL-326) indicates that claim 14 is withdrawn from consideration, claim 14 is pending and rejected. See Final Act. 2; Appeal Br. 8. Appeal 2014-000175 Application 12/606,416 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A door latch protector system for protecting a latch of an outswinging door mounted in a door frame and allowing adjustment of a latch protector plate in a direction transverse to the plane of the door, comprising: a latch protector plate including a door overlapping portion and a frame overlapping portion, the door overlapping portion having a first planar surface configured to contact the exterior door surface in an installed configuration, the frame overlapping portion configured to overlap a portion of the door frame; at least one spacer plate configured to be positioned between the door overlapping portion and the exterior door surface of the door to allow adjustment of a position of the latch protector plate relative to the plane of the door and thereby spacing the frame overlapping portion away from the door frame by a spacer distance equal to a thickness of the at least one spacer plate, the at least one spacer plate including opposed first and second planar spacer surfaces, the first planar surface configured to contact the first planar surface of the latch protector plate in the installed configuration, the second planar surface configured to contact the exterior door surface, and wherein the at least one spacer plate has an external peripheral profile matching a corresponding external profile of the door overlapping portion of the latch protector plate to eliminate gaps between said corresponding external profile of the door overlapping portion allowing the introduction of burglary tools. DISCUSSION Independent claim 1 requires a “spacer plate [that] has an external peripheral profile matching a corresponding external profile of the door overlapping portion of the latch protector plate.” Appeal Br. 19. Independent claim 8 similarly requires a “spacer plate [that] has an external Appeal 2014-000175 Application 12/606,416 3 peripheral profile substantially matching a corresponding external profile of the door overlapping portion of the latch protector plate.” Id. at 21. The Examiner finds, inter alia, that “Priola shows a latch protector plate with a spacer plate (column 3, lines 39-45)[, wherein] . . . the spacer plate has an external peripheral profile matching a corresponding external profile of the door overlapping portion of the latch protector plate.” Final Act. 3. The Examiner explains that “the spacer would have to be the same shape as the latch protector at least on the edge in order to eliminate interference with the door latch.” Id. Thus, the rejection relies on inherency to meet the limitations pertaining to the peripheral profile of the spacer plate. Appellant contends that “there is no teaching or suggestion in Priola regarding the feature that the at least one spacer plate has an external peripheral profile matching a corresponding external profile of the door overlapping portion of the latch protector plate.” Appeal Br. 15. In support of this contention, Appellant argues that “there is no reason that even one edge [of the shim] would have to have the same shape, since the shim could be smaller than the component, recessed inside an edge, and still perform a shim function.” Id. Priola states: The component may be also installed using a spacer or shim to compensate for the distance between the door and doorjamb, if necessary. Similarly, shims or spacers may also be used in mounting the door component, but, where such us is desired, it will usually be preferable to use with the doorjamb component. Priola 3:39–45. Priola does not address the shape of the optional shim or spacer. See id. As noted by Appellant, it is not necessary for Priola’s space plate to have a peripheral profile that matches the external profile of the door overlapping portion of the latch protector plate. Thus, the Examiner’s Appeal 2014-000175 Application 12/606,416 4 finding that Priola’s spacer has “an external peripheral profile matching a corresponding external profile of the door overlapping portion of the latch protector plate” is in error. Final Act. 3. Moreover, the Examiner does not explain why it would have been obvious to make Priola’s spacer with such a peripheral profile or why it would have been obvious to modify Zarzycki’s device to use a spacer with such a peripheral profile. Thus, to the extent that the rejection is relying on reasoning for making such a modification, this reasoning lacks rational underpinning. We do not sustain the Examiner’s decision rejecting independent claims 1 and 8, and claims 2–7 and 9–14, which depend from either claim 1 or claim 8. DECISION The Examiner’s rejection of claims 1–14 is REVERSED. REVERSED