Ex Parte Lagerstedt et al

Patent Trials and Appeals Board

Jun 28, 2019

14416364 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/416,364
22442 7590
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
FILING DATE FIRST NAMED INVENTOR
01/22/2015 Stig Lagerstedt
07/02/2019
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5544-50-PUS 1200
EXAMINER
SYED, NAB IL H
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
07/02/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
e-docket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STIG LAGERSTEDT, DANIEL BERG, DANIEL BAILIN,
MARK ROBINTON, and MICHAEL LAWRENCE DA VIS
Appeal 2018-008198
Application 14/416,364 1
Technology Center 2600
Before ELENI MANTIS MERCADER, ERIC S. FRAHM, and
MICHAEL T. CYGAN, Administrative Patent Judges.
CYGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-16 and 18-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, ASSA ABLOY AB is the real party in interest.
App. Br. 2.
Appeal 2018-008198
Application 14/416,364
Disclosed Invention and Exemplary Claim
The disclosed invention relates to controlling access to in-room safes.
Spec. 1 :31-2:2. Specifically, a safe is configured to exchange
communications with one or more Near-Field Communications-enabled
devices, and make one or more access control decisions. Abstract.
Independent claim 1 below is exemplary of the disclosed invention,
and reads as follows:
An in-room safe, comprising:
a credential communication interface that facilitates
communications with credentials via a proximity-based
communication protocol;
a network interface; and
an access control module that exchanges communications
with a mobile communication device via both the credential
communication interface and the network interface, wherein the
access control module reads data from a credential via the
credential communication interface, and wherein the access
control module receives remote commands from the mobile
communication device via the network interface.
Independent claims 8 and 18 recite limitations commensurate with the
limitations recited in claim 1. Dependent claims 2-7, 9-16, and 20 each
incorporate the limitations of their respective independent claims.
Appellants separately argue the rejections of claims 7-9, 14, and 18. App.
Br. 4--7.
2
Appeal 2018-008198
Application 14/416,364
Examiner's Re} ections2
The Examiner rejects claims 1-3, 6, and 18-20 under pre-AIA 35
U.S.C. § I03(a) as being obvious over the combination of Alexander et al.
(US 2008/0089277 Al; published Apr. 17, 2008) (hereinafter, "Alexander"),
Ernst et al. (US 2002/0113695 Al; published Aug. 22, 2002) (hereinafter
"Ernst"), Friedman et al. (US 2012/0293301 Al; published Nov. 22, 2012)
(hereinafter "Friedman"), and Baird (US 2007/0289012 Al; published Dec.
13, 2007).
The Examiner rejects claims 4 and 5 under pre-AIA 35 U.S.C.
§ I03(a) as being obvious over the combination of Alexander, Ernst,
Friedman, and Baird, further in view of Adolfsson et al. (US
2013/0093563Al; published Apr. 18, 2013) (hereinafter "Adolfsson").
The Examiner rejects claims 8-13, 15, and 16 under pre-AIA 3 5
U.S.C. § I03(a) as being obvious over the combination of Alexander, Ernst,
and Friedman, further in view of Ono et al. (US 2007 /0078782 Al;
published Apr. 5, 2007) (hereinafter "Ono").
The Examiner rejects claim 7 under pre-AIA 35 U.S.C. § I03(a) as
being obvious over the combination of Alexander, Ernst, Friedman, and
Baird further in view of Nakagawa et al. (US 2009/0058594 Al; published
Mar. 5, 2009) (hereinafter "Nakagawa").
The Examiner rejects claim 14 under pre-AIA 35 U.S.C. § I03(a) as
being obvious over the combination of Alexander, Ernst, Friedman, and
Ono, further in view of Nakagawa.
2 Claim 17 has been cancelled during prosecution; claim 21 is objected to as
being dependent on a rejected base claim. See App. Br. 2.
3
Appeal 2018-008198
Application 14/416,364
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 2-11) in light
of Appellants' contentions that the Examiner has erred (App. Br. 5-14).
Further, we have reviewed the Examiner's response to Appellants'
contentions. Ans. 2-10. We have also reviewed the Appellants' Reply
Brief.
With respect to claim 1, Appellants contend that the claim limitation
of an in-room safe having an access control module that exchanges
communications "with a mobile communication device" is neither taught nor
suggested by the combination of references. App. Br. 6-8. Specifically,
Appellants contend that the Ernst reference does not teach or suggest a
mobile communication device as claimed. Id.
The Examiner cites to Alexander as teaching an access control module
in an in-room safe that exchanges communications "with [a] mobile device."
Final Act. 3, citing Alexander ,r 46 ("assets that may be protected by an
access end device 124 and accessed with an access credential 204 include ..
. a safe"), ,r 4 7 ("The access credential 204 may comprise ... [a] cellular
phone ... [and] may communicate with the access end device 124 via using
Radio Frequency (RF) signals ... [and additionally] may use the Near Field
Communication (NFC) protocol"). The Examiner further cites to Ernst for
teaching or suggesting remote commands from a control computer to
wirelessly enable or disable a safe from a remote location through an RF
signal, and to Friedman for PDAs and portable devices having software
applications to control locks. Id. at 4; Ans. 3. The Examiner further cites to
Baird for teaching or suggesting a locking device having both a network-
based interface and a direct communication interface to receive locking
4
Appeal 2018-008198
Application 14/416,364
communications from a mobile device. Ans. 4. The Examiner determines
that it would have been obvious to one having ordinary skill in the art at the
time the invention was made to combine these teachings or suggestions to
include the functionality of using a communication device to locally and
remotely control a locking device. Ans. 3.
Appellants characterize the Ernst reference as having a control
computer 104 that the Examiner equates to the claimed mobile device. App.
Br. at 6. Appellants argue that Ernst's control computer 104 is connected by
wired communication links to a radio transmitter. Id. Appellants argue that
Ernst therefore does not teach or suggest the control computer being a
mobile device. Id. Appellants further argue that the Examiner has not
provided a rationale for a person of ordinary skill in the art to modify the
system of Alexander with the teachings of Ernst. Reply Br. 2.
We are not persuaded by Appellants' arguments. The Examiner has
relied upon Alexander, not Ernst, to provide a teaching of a mobile device.
Final Act. 3. The Examiner refers to paragraph 47 of Alexander, which
states that "the access credential [ may comprise] ... a cellular phone, PDA,
portable computer or the like," and communicate by radiofrequency and by
near-field communications. The Examiner combines this teaching or
suggestion of Alexander with Ernst's teaching or suggestion of using a
radiofrequency source to remotely communicate with the radiofrequency
receiver of a safe to remotely open a safe. Final Act. 4. Accordingly, we
determine that the record supports the Examiner's finding that the
combination of references teaches or suggests performing communications
with a mobile device to open a safe either through a near-field interface or a
remote radiofrequency network interface.
5
Appeal 2018-008198
Application 14/416,364
With respect to the rationale for combining references to reach the
claimed invention, Appellants argue that Ernst's control computer could not
be a mobile device because Ernst is "specific in its discussion ... and ...
cannot simply be any type of device" because it is wire connected. App. Br.
7. However, the test for obviousness is "what the combined teachings of the
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413,425 (CCPA 1981) (citations omitted). The Examiner
has further provided a rationale for combining the teachings of Alexander
and Ernst, i.e., that it would provide the ability to remotely control the in-
room safe from a mobile communications device, so as to allow hotel
operators and customers to remotely operate the safe. Final Act. 4.
Accordingly, we are not persuaded that the Examiner erred in determining
that the applied combination of references taught or suggested the limitation
at issue to one having ordinary skill in the art.
Further with respect to claim 1, Appellants contend that the claim
limitation of "communications ... via both the credential communication
interface and the network interface" requires two interfaces to perform
communication with the in-room safe. App. Br. 8. Appellants argue that the
Ernst reference communicates only through antenna 136, i.e., via only a
single interface. Id. at 8-9. Appellants further argue that one having
ordinary skill in the art would not modify the control computer of Ernst to
have two interfaces because Ernst is connected by cables. Id. at 8.
We are not persuaded by Appellants' arguments. As discussed supra,
the test for obviousness is what the combined teachings of the references
would have suggested to one having ordinary skill in the art, and not what
Ernst teaches by itself, or whether the features of Ernst may be bodily
6
Appeal 2018-008198
Application 14/416,364
incorporated into the structure of Alexander (or vice versa). The Examiner
has relied upon Alexander for communication via wired and wireless
communication technologies, and relied upon Baird for teaching or
suggesting both a direct interface and a remote, server-based interface. Final
Act. 5. The Examiner provides a reasoned rationale for combining the
references, stating "it would have been obvious to one having ordinary skill
in the art at the time the invention was made to modify the combination of
Alexander and Ernst to include the functionality of allowing access using
two interfaces in case one of the interface is not functioning." Id. at 6.
Petitioner has not mounted a persuasive argument why the combination of
references relied upon by the Examiner would not have suggested the
claimed invention to one having ordinary skill in the art. Accordingly, we
are not persuaded that the Examiner erred in determining that the applied
combination of references taught or suggested the limitation at issue to one
having ordinary skill in the art.
With respect to claims 8 and 18, Appellants contend that the
combination of applied references does not teach or suggest that the second
access control device is responsive to remote controls received from an
access credential, even where the access credential is not located in the hotel
room. App. Br. 9, 11-12. As discussed for claim 1, the Examiner has
found, and we concur, that Ernst teaches or suggests control of the hotel
room safe from a location outside the hotel room, and that it would have
been obvious to modify the system of Alexander to include the functionality
of remotely actuating the hotel lock as taught or suggested by Ernst,
including using a portable device having a lock-controlling application that
may be used outside of a room as taught or suggested by Friedman, so as to
7
Appeal 2018-008198
Application 14/416,364
permit hotel operators and customers to remotely control the status of the
safe. Ans. 9--10. Accordingly, we are not persuaded by Appellants'
arguments of error in the Examiner's rejection of claim 8. 3
With further respect to claim 18, the Examiner points out, and we
concur, that Alexander teaches a first access control device positioned in
proximity to a hotel room door. Ans. 9, citing Alexander ,r 38 ("A number
of wireless end devices 124 may be employed ... [such as] a safe ... [and] a
door switch.") For these reasons, we are not persuaded of error in the
Examiner's rejection of claim 18.
With respect to claims 2, 3, 6, 10-13, 15, 16, 19, and 20, Appellants
argue patentability only on the arguments presented for independent claims
1, 8, and 18. Appellants have not argued the patentability of claims 4 and 5.
Accordingly, these claims stand or fall with claims 1, 8, and 18. For the
reasons set forth above, Appellants have not persuasively shown error in the
Examiner's rejections of these claims.
With respect to claims 7 and 14, Appellants contend that the applied
combination of references does not teach or suggest that the access control
module writes an access log to the mobile communication device such that
the log describes events associated with the safe, as set forth in the claim.
App. Br. 14. The Examiner has relied upon Nakagawa for teaching or
suggesting writing access control log information back to the
communication device to indicate the device was allowed admission to the
3 Although claim 8 is rejected using Ono, rather than Baird, in combination
with Alexander, Ernst, and Friedman, Appellants' arguments against the
rejection of claim 8 focus on alleged defects in the combination of the
teachings and suggestions of Alexander and Ernst as applied by the
Examiner in the same manner as argued against the rejection of claim 1.
8
Appeal 2018-008198
Application 14/416,364
in-room safe. Final Act. 9--10. The Examiner's rationale for combining the
teachings or suggestions of Nakagawa with those of Alexander, Ernst, and
Ono is to provide the ability to keep track of the user's access history. Id. at
11.
Appellants contend that Nakagawa's log does not include use
information such as access history, but instead management numbers,
random numbers, and other predetermined numbers. App. Br. 14.
Appellants contend that although the Examiner points to Nakagawa as
storing an access event in the form of a single instance of use, that
information is not the same as a log describing plural events associated with
the safe. Reply Br. 4.
Appellants are not persuasive as to error in the Examiner's rejection
of claims 7 and 14. In the Appeal Brief, Appellants do not contest that at
least one instance of access information is stored in the log. Reply Br. 4.
The Examiner's rejection states that the combination of references would
result in keeping track of the user's access history; i.e., including all of the
access events. The Examiner's combination clearly contemplates multiple
access events, and is not limited to a single event as argued by Appellants.
The Examiner's reliance on Nakagawa for logging multiple use events in the
form of an access history is supported by Nakagawa. See, e.g., Nakagawa
,r 19. Accordingly, we are not persuaded of error in the Examiner's rejection
of claims 7 and 14.
With respect to claim 9, the limitation at issue is "the communication
device having permissions to access the in-room safe, wherein the
permissions include having data that was encoded onto the communication
device by the in-room safe." The Examiner finds that Ono teaches a
9
Appeal 2018-008198
Application 14/416,364
communication device has access to a lockable gate, wherein the gate
encodes permissions onto the communication device, including having data
encoded onto the communication device by the gate. Ans. 8.
Appellants contend that Ono does not disclose an in-room safe
encoding data onto a communication device, but instead only demonstrates
that a communication device's IC card can interact with a gate apparatus.
App. Br. 12. Appellants argue that this is not what is recited in claim 9.
We do not find Appellants' argument persuasive. One cannot show
nonobviousness by attacking references individually where the rejections are
based upon combinations of references. In re Keller, 642 F .2d at 426; In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants
here argue only that Ono, considered by itself, does not disclose activity
pertaining to an in-room safe. App. Br. 12. However, the Examiner's
rejection is based on combining the teachings or suggestions of Ono with the
teachings and suggestions of Alexander, Ernst, and Friedman, of which there
is no dispute that at least Alexander and Ernst teach or suggest an in-room
safe. Appellants have not provided a persuasive explanation as to why the
combination of Alexander, Ernst, Friedman, and Ono would not teach or
suggest the claimed communication device having to access the in-room
safe, wherein the permissions include having data that was encoded onto the
communication device by the in-room safe, in the manner set forth by the
Examiner's rejection. Ans. 9. Accordingly, we are not persuaded of error in
the Examiner's rejection of claim 9.
10
Appeal 2018-008198
Application 14/416,364
CONCLUSIONS
We conclude that Appellants have not shown that the Examiner has
erred in rejecting independent claim 1, independent claim 18 that recites
limitations commensurate with the limitations recited in claim 1, and
dependent claims 2, 3, 6, 19, and 20 under 35 U.S.C. § 103 as being obvious
over the base combination of Alexander, Ernst, Friedman, and Baird. We
further conclude that Appellants have shown error in the Examiner's
rejection of claims 4, 5, and 7 over the base combination of Alexander,
Ernst, Friedman, and Baird, further in view of either Adolfsson or
Nakagawa.
We further conclude that Appellants have not shown that the
Examiner has erred in rejecting independent claim 8 and dependent claims
9--13, 15, and 16 under 35 U.S.C. § 103 as being obvious over the base
combination of Alexander, Ernst, Friedman, and Ono. We further conclude
that Appellants have shown error in the Examiner's rejection of claim 14 in
view of the base combination of Alexander, Ernst, Friedman, and Ono,
further in view of Nakagawa. In view of the foregoing, we affirm the
Examiner's obviousness rejections of claims 1-16 and 18-20.
DECISION
We affirm the Examiner's rejections of claims 1-16 and 18-20 under
pre-AIA 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
11