Ex Parte Young

Board of Patent Appeals and Interferences

May 29, 2012

11418022 (B.P.A.I. May. 29, 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.
11/418,022 05/04/2006 John S. Young 05 - 001 w 9477
64817 7590 05/30/2012
BLACK-E, LLC
6908 WILDERNESS ROAD
RALEIGH, NC 27613
EXAMINER
PATEL, KIRAN B
ART UNIT PAPER NUMBER
3612
MAIL DATE DELIVERY MODE
05/30/2012 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 JOHN S. YOUNG
____________________

Appeal 2010-007558
Application 11/418,022
Technology Center 3600
____________________

Before JAMESON LEE, SALLY C. MEDLEY, and JOSIAH C. COCKS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007558
Application 11/418,022

2
A. STATEMENT OF THE CASE
This is a decision on appeal by an Appellant under 35 U.S.C. § 134(a)
from a final rejection of claims 1 and 4. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
References Relied on by the Examiner
Ginn 5,123,691 Jun. 23, 1992
The Rejections on Appeal
The Examiner rejected claims 1 and 4 under 35 U.S.C. § 102(b) as
anticipated by Ginn.
The Examiner rejected claims 1 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Ginn and ordinary skill in the art.
The Invention
The invention relates to a pickup truck toolbox having a keyless entry
system. (Spec., p. 2, ll. 14-23.)
Claims 1 and 4 are reproduced below (App. Br. p. 10):
1. A keyless entry pickup truck toolbox, comprising

a main body and at least one lid,

at least one latch attached to the main body, movable between a
latched position, wherein the latch engages the lid so as to prevent the
lid from opening, and an unlatched position, wherein the latch is
disengaged from the lid so as to allow the lid to be opened,

at least one lock, movable between an engaged position and a
disengaged position, wherein the engaged position secures the lid to
the main body such that the lid may not be opened merely by
operation of the latch,
Appeal 2010-007558
Application 11/418,022

3

at least one actuator mechanically connected to the lock and
electrically connected to a keyless entry system.

4. The toolbox of claim 1, wherein the at least one lock of the
toolbox is keyed to allow operation of the lock independently of
operation of the actuator.
B. ISSUES
1. Does the record adequately support the Examiner’s finding that
Ginn discloses a “keyless entry system” for its disclosed toolbox?
2. Even assuming that Ginn does not disclose a “keyless entry
system,” did the Examiner correctly determine that one with ordinary skill in
the art would have recognized that a keyless entry system was a known and
viable option for implementation as a locking assembly component onto
Ginn’s tool box?
C. FINDINGS AND ANALYSIS
The Examiner rejected claims 1 and 4 as anticipated by Ginn and
alternatively as obvious in view of Ginn.
Anticipation
The dispute in connection with the Examiner’s rejection centers on the
feature in claim 1 of a “keyless entry system” forming part of the toolbox.
The Examiner found that Ginn discloses a toolbox with a keyless entry
system. (Ans., p. 4.) The Appellant challenges that finding on the theory
that the Examiner has mistakenly equated Ginn’s “power door lock” with the
required “keyless entry system.” (App. Br., pp. 6-7.) The Appellant asserts
that one with ordinary skill in the art would have viewed a power door lock
Appeal 2010-007558
Application 11/418,022

4
as a distinct component from a keyless entry system, citing to a variety of
U.S. Patents and a Columbia Encyclopedia entry titled “lock and key” as
evidence in support of that assertion. (Id.) The Appellant concludes that
there is no component of Ginn’s invention which constitutes the required
“keyless entry system.” (Id. at p. 7, ll. 3-4.)
We do not agree with the Appellant. Ginn discloses an electric lock
apparatus for a vehicular tool box located, for instance, in the bed of a pick-
up truck. (Ginn, 1:6-14.) Ginn describes that prior art toolboxes were
locked and unlocked using only keys and explains that such a scenario is
inconvenient as a driver must necessarily keep track of a set of toolbox keys.
(Id. at 1:19-24.) Ginn’s invention is thus focused on providing a mechanism
for unlocking lids of a vehicle toolbox that need not incorporate a key and is
an alternative to a keyed entry system. To that end, Ginn discloses an
“electric lock apparatus 31” as a supplemental device to a traditional key and
lock assembly. (Id. at 3:3-8.) With respect to configuration and operation of
the electric lock apparatus, Ginn explains (id.):
The electric lock apparatus 31 of the present invention permits an
operator to unlock the lids 23 to the tool box remotely from the truck
cab 13. The electric lock apparatus 31 includes latch means 33, 77 a
push button release 35, a lock cylinder 37, a motor 39 and switch
means 41.

Ginn further describes that the electric lock apparatus is electrically
connected to the conventional powered door lock system in the passenger
compartment of a vehicle and allows locking control of the toolbox via
manipulation of a door lock switch associated with that door lock system.
(Id. at 4:32-5:7.)
Appeal 2010-007558
Application 11/418,022

5
We have reviewed the evidence submitted by the Appellant in
connection with the meaning in the art of the terms “keyless entry system”
and “power door locks.” We observe that, as is urged by the Appellant, the
evidence sets forth that the above-quoted terms designate separate
components in connection with the locking and unlocking operations for a
particular vehicle door. The evidence, however, although providing various
examples or types of “keyless entry systems,” does not establish that such
systems must necessarily assume any particular structural configuration and
are instead generally characterized by the omission of a “key” as a part of an
entry system. Furthermore, while the terms “power door lock” and “keyless
entry system” may designate different components that take part in the
locking and unlocking of a given vehicle door, the proffered evidence does
not preclude a power door lock from forming a part of any given “keyless
entry system.” That is, the record does not establish that a portion of a
power door lock cannot constitute part of a “keyless entry system” operable
to manipulate a locking mechanism for some other device that is separate
from a car door, such as an external toolbox.
Indeed, it is the above-discussed situation which is set forth in Ginn
and which forms the basis for the Examiner’s rejection. In particular, Ginn’s
electric lock apparatus for its toolbox is manipulated via the operation of the
switch of a power door lock assembly of a vehicle. Thus, the electric lock
apparatus of a toolbox located in the bed of a truck is remotely controlled by
toggling the power door lock within the vehicle without need or use of a key.
In other words, the power door lock constitutes a non-key input device for
manipulating the external toolbox’s electric lock. In our view, the
Examiner’s finding that Ginn’s electric lock apparatus which is controlled
Appeal 2010-007558
Application 11/418,022

6
via a remote electric switch, i.e., the power door lock of a vehicle,
constitutes a “keyless entry system” for the toolbox is reasonable and neither
inconsistent with, nor excluded by, the evidence of record.
We have considered the Appellant’s arguments but are not persuaded
that they demonstrate a mistake in the Examiner’s anticipation rejection of
claims 1 and 4 based on Ginn. Accordingly, we sustain the rejection.
Obviousness
The Examiner alternatively rejected claims 1 and 4 as obvious based
on Ginn. In the alternative basis for rejection, the Examiner explained that
even if Ginn does itself lack disclosure of a “keyless entry system,” such
systems were known to those of ordinary in the art. The Examiner reasoned
that a skilled artisan would have appreciated that a keyless entry system may
be incorporated into Ginn’s toolbox for locking and unlocking that toolbox.
(Ans., pp. 6-7.)
The Appellant does not dispute the Examiner’s finding that keyless
entry systems were known. Indeed, the Appellant’s own specification
characterizes such systems as “typically found in commercially available
motor vehicles.” (Spec., p. 6, ll. 1-2.) The evidence on which the Appellant
relies in challenging the rejections also establishes that those of ordinary
skill in the art at the time of the Appellant’s invention knew of the existence
of keyless entry systems. Rather, the Appellant’s arguments as to non-
obviousness are as follows: (1) the prior art does not show a toolbox with a
keyless entry system; and (2) a skilled artisan would not have had adequate
motivation to apply a keyless entry system to Ginn’s toolbox. (App. Br., pp.
8-9.)
Appeal 2010-007558
Application 11/418,022

7
The Appellant’s arguments are unpersuasive. The inquiry into
obviousness does not require that the prior art include precise teachings
directed to the specific subject matter claimed, because inferences and
creative steps that a person of ordinary skill in the art would employ can be
taken into account. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Indeed, the obviousness evaluation can, and should, consider the background
knowledge, creativity, and common sense of a person of ordinary skill.
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324. 1329 (Fed. Cir.
2009).
Even assuming that Ginn’s mechanism for opening the tool box by
manipulating the power door lock does not constitute a keyless entry system,
that does not end the obviousness analysis. Ginn itself sets forth that there
was a recognized need in the art to implement locking systems onto vehicle
toolboxes where the locking system specifically does not require a key. The
record also demonstrates that one of ordinary skill in the art would have
known that “keyless entry systems” were available devices for allowing
entry into a locked assembly, such as a car door. In light of the record
before us, we conclude that even if Ginn does not disclose a “keyless entry
system,” a person of ordinary skill and creativity in the art would have
reasonably and readily recognized that such a system is a viable and suitable
option for controlling locking assemblies, such as the lock of Ginn’s
toolbox, for which there is a desire to omit the necessity of a key. See KSR
Int’l Co., 550 U.S. at 417 (“If a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”)
Appeal 2010-007558
Application 11/418,022

8
We have considered the Appellant’s arguments to the contrary, but
they do not properly take into account what a person of ordinary skill in the
art would have understood from the teachings of the prior art. The
Appellant essentially discounts the background knowledge and ordinary
creativity of a person of ordinary skill in the art in deriving solutions to the
problem identified in the prior art of forming toolbox locking assemblies that
do not require the use of keys.
For the foregoing reasons, we are not persuaded of error in the
Examiner’s obviousness rejection of claims 1 and 4 based on Ginn.
Accordingly, we sustain the rejection.
D. CONCLUSION
1. The record adequately supports the Examiner’s finding that
Ginn discloses a “keyless entry system” for its disclosed toolbox.
2. Even assuming that Ginn does not disclose a “keyless entry
system,” the Examiner correctly determined that one with ordinary skill in
the art would have recognized that a keyless entry system was a known and
viable option for implementation as a locking assembly component onto
Ginn’s tool box.
E. ORDER
The rejection of claims 1 and 4 under 35 U.S.C. § 102(b) as
anticipated by Ginn is affirmed.
The rejection of claims 1 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Ginn and ordinary skill in the art 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).
Appeal 2010-007558
Application 11/418,022

9

AFFIRMED