Ex Parte Siqueiros

Patent Trial and Appeal BoardAug 29, 2017

12976953 (P.T.A.B. Aug. 29, 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. RAR924.01 8397 EXAMINER BARRETT, SUZANNE LALE DINO ART UNIT PAPER NUMBER 3673 MAIL DATE DELIVERY MODE 12/976,953 12/22/2010 29762 7590 08/29/2017 RICHARD A. RYAN ATTORNEY AT LAW 401 W. EAT 1 .BROOK AVENUE SUITE 101 FRESNO, CA 93711 Ignacio J. Siqueiros 08/29/2017 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 IGNACIO J. SIQUEIROS Appeal 2016-001228 Application 12/976,953 Technology Center 3600 Before LINDA E. HORNER, THOMAS F. SMEGAL, and NATHAN A. ENGELS, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2016-001228 Application 12/976,953 ILLUSTRATIVE CLAIM Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A double-lock deadbolt lock, comprising: a lock body; a keyed cylinder disposed inside said lock body, said keyed cylinder operatively connected to a deadbolt lock mechanism configured to move said deadbolt lock between an unlocked position and a locked position; a bolt operatively connected to said deadbolt lock mechanism to extend outwardly therefrom when said deadbolt lock is placed in said locked condition and to retract inwardly when said deadbolt lock is placed in said unlocked position; a faceplate fixedly connected to said lock body so as to be disposed in opposite facing and spaced apart relation to said lock body, said faceplate having a lever cavity defined by an aperture therein, said aperture having one or more edges, said aperture of said lever cavity positioned on said faceplate so as to be open in opposite facing direction from where said key is removably received in said keyed cylinder; and a thumb lever adjacent said faceplate, said thumb lever operatively connected to said deadbolt lock mechanism and configured to rotate relative to said faceplate so as to move said deadbolt lock between said unlocked position and said locked position, said lever cavity sized and configured to at least partially receive said thumb lever inside said lever cavity so as to prevent rotation of said thumb lever and movement of said deadbolt lock to said unlocked position. THE REJECTION Claims 1—12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Appellant’s Admitted Prior Art (“AAPA”) and Hauber (US 4,966,018; Oct. 30, 1990). 2 Appeal 2016-001228 Application 12/976,953 ANALYSIS The Supreme Court has explained that “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. AgPro, Inc., 425 U.S. 273, 282 (1976)). In the rejection of claims 1—12, the Examiner finds the claimed invention is a combination of known elements with each performing its known function. Specifically, the Examiner cites a known deadbolt assembly disclosed in Appellant’s Specification as admitted prior art (the “AAPA”) for the majority of the claimed invention, in combination with Hauber, which the Examiner cites for its teaching of a faceplate having a lever cavity defined by an aperture therein. See Final Act. 3^4; Ans. 13. Consistent with the Examiner’s findings, Appellant’s Specification states the claimed invention “generally comprises [] the same components as a prior art deadbolt lock” (Spec. 9,11. 2—3) but further comprises “a faceplate . . . that is modified to have an aperture . . . that defines a lever cavity . . . therein” (Spec. 16,11. 15—16). In this Appeal, Appellant does not identify any claim limitations missing from the prior art. See Appeal Br. 14 (summarizing the Examiner’s findings). Appellant instead contends, addressing claims 1—12 collectively, that the Examiner erred in combining Hauber with the AAPA. Id. (after summarizing the Examiner’s findings, stating “[Appellant] respectfully disagrees with the Examiner’s conclusion of obviousness”); see also id. at 10-18; Reply Br. 5—6. 3 Appeal 2016-001228 Application 12/976,953 In particular, Appellant argues Hauber discloses a low-profile camper shell latch, not a deadbolt lock, and Appellant identifies a number of differences between Hauber’s device and the claimed invention. Appeal Br. 14—17; Reply Br. 5. The test for obviousness, however, “is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; . . . the test 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). The Examiner’s rejection cites Hauber only for its teaching of a “faceplate cavity with a spring ejection bias to receive a rotatable handle,” with “[t]he remainder of the claimed invention . . . taught by AAPA.” Ans. 14. Without substantively addressing what a person of ordinary skill would have understood from the combined teachings of the AAPA and Hauber, Appellant’s arguments attack Hauber individually and are therefore unpersuasive. See Keller, 642 F.2d at 425. Appellant additionally argues nothing in the cited prior art teaches or suggests combining the references to achieve the advantages of Appellant’s invention. Appeal Br. 11—12. Further, Appellant argues there would have been no reason to combine the cited prior art absent impermissible hindsight. Appeal Br. 16—18; Reply Br. 5—6. The Examiner’s rejection, on the other hand, explains that it would have been obvious to modify the deadbolt lock assembly faceplate of the AAPA with the teachings of Hauber “to prevent rotation of the handle in the locked position” and “make it more secure.” Final Act. 10; Ans. 12, 17. Contrary to Appellant’s arguments, though, the Supreme Court has explained that an obviousness analysis “need not seek out precise teachings 4 Appeal 2016-001228 Application 12/976,953 directed to the specific subject matter of [a] challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Further, the Court explained that an obviousness analysis must consider whether a claimed invention “is more than the predictable use of prior art elements according to their established functions.” Id. Here, as noted above, the prior art evidences that each element of Appellant’s claimed invention was known, and we agree with the Examiner that the claimed invention applies a combination of known elements with each element performing its known function to yield predictable results. Accordingly, having considered the Examiner’s rejection in light of each of Appellant’s arguments, we disagree with Appellant and agree with the Examiner that claims 1—12 would have been obvious to a person of ordinary skill in the art. We adopt as our own the Examiner’s findings, conclusions, and reasons consistent with this Decision, and we sustain the Examiner’s rejection of claims 1—12. DECISION For the above reasons, we affirm the Examiner’s rejection of claims 1-12. No time period for taking any subsequent action in connection with this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 5