Ex Parte Dalton et al

Patent Trial and Appeal BoardSep 17, 2012

11805721 (P.T.A.B. Sep. 17, 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. 11/805,721 05/24/2007 Robert E. Dalton JR. CXP-108 3484 22827 7590 09/17/2012 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER BOSWELL, CHRISTOPHER J ART UNIT PAPER NUMBER 3673 MAIL DATE DELIVERY MODE 09/17/2012 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT E. DALTON, JR. and GLYN A. FINCH, JR. ____________________ Appeal 2010-009139 Application 11/805,721 Technology Center 3600 ____________________ Before: STEFAN STAICOVICI, MICHAEL C. ASTORINO, and BRADFORD E. KILE, Administrative Patent Judges. KILE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009139 Application 11/805,721 2 STATEMENT OF THE CASE Robert E. Dalton, Jr. and Glyn A. Finch, Jr. (Appellants) appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 4, 5, 7, 8, and 10-18. Claims 3, 6, and 9 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ invention is directed to “key operated pin tumbler locks and related methodology.” Spec. 1, ¶ [0002], ll. 10-11. Appellants’ Figure 1 is reproduced below: Figure 1 is a longitudinally oriented cross-sectional view of a pin tumbler lock core assembly, where an inner cylinder 1 is shown in engagement with a core 2 and a pass key 8 is inserted into the core 2. Spec. Appeal 2010-009139 Application 11/805,721 3 7, ¶ [0026] and Spec. 9, ¶ [0040]. The bitted contour of the key 8 serves to lift tumbler rods within a plurality of sequential holes A-D so that a sequence of operating tumblers are in alignment along a shear line 55. Spec. 9-10, ¶ [0043]; Reply Br. 3. Figure 4B is reproduced below: Figure 4B is an exploded mirror image of the lock shown in Figure 1. In this view it is clear that the cylinder 1 that received core 2 is composed of two portions. A first portion 20 includes a series of tumbler holes and a second portion 33 includes a single hole and a locking tab 3. As shown in Figure 1, when assembled, a second tumbler 4 has a division that lies on the shear line 55 when the normal lock operating key or pass key 8 is inserted into the core 2. This position is achieved when the tumbler 4 fully descends biased by spring 66 into the bottom of hole 44. Spec. 9, ¶ [0041]. In this position it will be noted that the bitted surface of the pass key is spaced from the bottom of the tumbler 4. Reply Br. 4, ll. 1-9. When a different type key, a control key, is inserted into the core 2, a bitted land at a distal end of the Appeal 2010-009139 Application 11/805,721 4 control key (not shown) engages the base of the tumbler 4 and lifts the tumbler upward so that tumbler 4 moves to an elevated shear line 55’. This elevated position permits limited rotation of retainer 33 relative to a surrounding outer cylinder 500 and disengagement of locking tab 3 with the outer cylinder so that the core and inner cylinder 1 can be pulled out of the lock assembly for replacement of the tumblers and operating key as necessary or desirable. Spec. 11, ¶ [0048]. Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A key operated removable core pin tumbler lock, comprising: a core configured to receive first and second key types, said core provided with a first plurality of holes configured to receive pin tumblers; a first cylinder configured to receive said core and provided with a second plurality of holes configured to receive pin tumblers, said second plurality of holes being equal in number and alignable with said first plurality of holes, said first cylinder comprising a first portion and a second portion, said second portion configured for limited rotation with respect to said first portion and provided with at least one hole of said second plurality of holes; a locking tab extending from a portion of the second portion of said first cylinder; at least one first tumbler positioned in selected of said plurality of holes in said first portion of said first cylinder, said at least one tumbler movable Appeal 2010-009139 Application 11/805,721 5 within its respective hole to a position establishing a first sheer line permitting unlocking of the lock; and at least one second tumbler positioned in said at least one hole of said plurality of holes in said second portion of said first cylinder; wherein said at least one hole of said plurality of holes in said second portion of said first cylinder is configured such that said at least one second tumbler is maintained at said first sheer line in the absence of a key of the second key type; and whereby insertion of said first key type permits unlocking of the lock, and insertion of said second key type permits rotation of said second portion of said first cylinder with respect to said first portion of said first cylinder. THE REJECTION Claims 1, 2, 4, 5, 7, 8, and 10-18 stand rejected as unpatentable under 35 U.S.C. § 102(b) as being anticipated by Toledano (US 4,953,373, iss. Sep. 4, 1990). OPINION The Toledano patent discloses a “key removable core body having two or more separate control elements.” Col. 1, ll. 9-10. Figures 5 and 6 of the Toledano patent are reproduced below: Appeal 2010-009139 Application 11/805,721 6 Figure 5 depicts a cylindrical plug housing 3 of a lock and an attached tumbler pin housing 5. Col. 2, ll. 39-43. In Figure 5 we find an operating key 200 is inserted into the cylindrical plug housing 3 and operably engages the base of all of the tumblers to hold the tumblers along an operating shear line “OSL.” This is the normal key operating configuration where the key 200 is operable to rotate the cylinder 31 of the lock. Col. 3, ll. 57-61. We further find that Figure 6 depicts the cylindrical plug housing 3 of a lock and an attached tumbler pin housing 5 as shown in Figure 5 but in Figure 6 a different key, a control key, 100 is inserted into the key hole and serves to lift control tumblers up to an elevated control shear line “CSL.” Appeal 2010-009139 Application 11/805,721 7 Col. 3, ll. 19-32. In this position the core body can be rotated to remove the core body from the surrounding housing. Col. 3, ll. 39-45. It is noted that regardless of the Toledano key used, control key 100 or operating key 200, a distal end of both keys fully contracts and operably engages with the corresponding tumbler at a distal location of the plug housing 3. As the Federal Circuit stated in one of the early cases of its own jurisprudence styled Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 780 (Fed. Cir. 1985): [A]nticipation under § 102 can be found only when the reference discloses exactly what is claimed and that where there are differences between the reference disclosure and the claim, the rejection must be based on § 103 which takes differences into account. [Emphasis added.] Appellants assert that claim 1 “requires . . . at least one hole provided in the second portion of the first cylinder that is configured such that a tumbler is maintained at a first sheer line in the absence of a key of the second key type.” App. Br. 9, ll. 21-23. The Examiner replies that “the claims recite at least one second tumbler is maintained at a first sheer line and not a retaining tumbler.” Ans. 9, ll. 11-12. (Emphasis added). Moreover, the Examiner points out that “the claims only recite the absence of the second key type.” Id., ll. 14-15. Appellants point out that the Examiner’s Answer is flawed as it “results from a misinterpretation of the claim language.” Reply Br. 3, ll. 1-2. We agree with Appellants. Appeal 2010-009139 Application 11/805,721 8 A consideration of the structure of claim 1 reveals that the claim states “wherein said at least one hole of said plurality of holes in said second portion of said first cylinder is configured such that said at least one second tumbler is maintained at said first sheer line in the absence of a key of the second key type.” As opposed to the conclusion of the Examiner, this clause is directed to a retaining tumbler. The clause recites “said second portion of said first cylinder is configured such that said at least one second tumbler.” The second portion of said first cylinder is defined in a prior portion of claim 1 as including “a locking tab [3] extending from a portion of the second portion [33] of said first cylinder.” (Reference characters added.) App. Br. 17, ll. 12-13. The locking tab 3 is associated with the retaining tumbler 4 therefore a proper construction of claim 1 is that “said at least one second tumbler” is a retaining tumbler and it is “maintained at said first sheer line in the absence of a key of the second key type” (an operating or pass key). This feature of claim 1 is not disclosed in the Toledano patent where the operating key 200 is fully and functionally engaged with the retaining tumblers at each location as shown in Figure 5 above. Since there is a structural difference between Appellants’ claim 1 and the Toledano patent disclosure the Toledano patent does not anticipate Appellants’ claim 1. Titanium Metals, supra. Claims 5 and 11 are also independent apparatus claims on appeal. Claim 5 recites “wherein said at least one hole of said plurality of mutually alignable pin tumbler receiving holes in said second portion of said first cylinder is configured such that said at least one second tumbler is maintained at said first sheer line in the absence of a key of the second key Appeal 2010-009139 Application 11/805,721 9 type” and claim 11 recites “wherein at least one hole of said first plurality of holes is formed to a predetermined depth selected such that the bottom of said corresponding pin tumbler is relatively displaced, so as to avoid contact of said corresponding pin tumbler with a key of a given type inserted into said lock.” App. Br. 19, ll. 11-14 and App. Br. 21, ll. 16-19 respectively. These features are not disclosed in the Toledano patent. Therefore claims 5 and 11 are also not anticipated by the Toledano patent disclosure. Claim 8 is an independent method claim and Appellants point out that claim 8 recites “configuring the at least one alignable hole in the lock core to maintain the second tumbler at a position permitting unlocking of the lock absent insertion of a key.” App. Br. 5, ll. 6-8 and App. Br. 11, ll. 13-14. For the same reasons as provided above, this feature is not disclosed in the Toledano patent. Thus, the Toledano patent does not anticipate claim 8. The remaining claims (viz. 2, 4, 7, 10, 12-18) are all directly or ultimately dependent from one of independent claims 1, 5, 8, or 11 that we find are not anticipated by the Toledano disclosure. Since a dependent claim by definition shall “contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed” (35 U.S.C. § 112 ¶ 4) if an independent claim is not anticipated a dependent claim cannot be anticipated. Accordingly, none of Appellants dependent claims are anticipated by the Toledano patent. Therefore, the rejection under 35 U.S.C. § 102(b) of claims 2, 4, 7, 10, and 12-18 over Toledano is not sustained. Appeal 2010-009139 Application 11/805,721 10 DECISION The decision of the Examiner to reject claims 1, 2, 4, 5, 7, 8, and 10- 18 is REVERSED. REVERSED hh