Harald Krieger et al.

Patent Trials and Appeals Board

Nov 8, 2019

14773812 - (D) (P.T.A.B. Nov. 8, 2019)

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.
14/773,812 09/09/2015 Harald KRIEGER 32860-002430-US-NP 2401
30596 7590 11/08/2019
HARNESS, DICKEY & PIERCE, P.L.C.
P.O.BOX 8910
RESTON, VA 20195
EXAMINER
BARRETT, SUZANNE LALE DINO
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
11/08/2019 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):
dcmailroom@hdp.com
jhill@hdp.com
siemensgroup@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HARALD KRIEGER and
EKKEHARD PLECHINGER
____________________

Appeal 2018-009045
Application 14/773,812
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “SIEMENS
AKTIENGESELLSCHAFT.” Appeal Br. 3.
Appeal 2018-009045
Application 14/773,812
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According to Appellant, the invention “relates to a lock insert for a
cylinder lock for locking an electric switch.” Spec. ¶ 2. Below, we
reproduce independent claim 1 as illustrative of the claims on appeal.
1. A lock insert for a cylinder lock for locking an
electric switch, comprising:
a main part including a receiving opening for receiving the
cylinder lock,
an inner wall of the receiving opening being designed to
contact an outer wall of the cylinder lock at least in sections, at
least one groove being formed in the inner wall to allow freedom
of radial movement of locking elements of the cylinder lock, and
a position of the at least one groove corresponding to a locked
position of the cylinder lock, and
a remainder of the inner wall corresponding to a key
retention position of the locking elements.

REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1, 3, 5, 9, and 10 under 35 U.S.C. § 102(a)(1) or (a)(2)
as anticipated by Myers (US 5,479,800, iss. Jan. 2, 1996);
II. Claims 7, 8, and 15 under 35 U.S.C. § 103 as unpatentable over
Myers;
III. Claim 6 under 35 U.S.C. § 103 as unpatentable over Myers and
Fancher (US 4,987,756, iss. Jan. 29, 1991); and
IV. Claims 2, 4, 11–14, and 16–20 under 35 U.S.C. § 103 as
unpatentable over Myers and Krause (US 4,890,467, iss. Jan. 2,
1990).

Appeal 2018-009045
Application 14/773,812
3
ANALYSIS
Rejection I—Anticipation rejection of claims 1, 3, 5, 9, and 10
As set forth above, independent claim 1 recites, in relevant part,
an inner wall of the receiving opening being designed to
contact an outer wall of the cylinder lock at least in sections, at
least one groove being formed in the inner wall to allow freedom
of radial movement of locking elements of the cylinder lock, and
a position of the at least one groove corresponding to a locked
position of the cylinder lock, and
a remainder of the inner wall corresponding to a key
retention position of the locking elements.
Appeal Br., Claims App. (emphases added). Appellant’s Specification
describes a key retention position as a position that prevents removal of the
key from the lock. See, e.g., Spec. ¶ 31.
To support independent claim 1’s rejection, with reference to Myers’s
figures, the Examiner finds that Myers discloses
at least one groove ([see] Fig[ure]s 4, 5) . . . formed in the inner
wall to allow freedom of radial movement of locking
elements (40) of the cylinder lock, and a position of the at least
one groove corresponding to a locked position of the cylinder
lock ([see] Fig[ure] 4), and a remainder of the inner wall
corresponding to a key retention position of the locking elements
([see] Fig[ure] 5).
Final Action 3.
Appellant argues that the Examiner’s rejection is in error, because the
Examiner does not identify the “key retention position” (Appeal Br. 12), and
that as Myers’s Figures 4 and 5 only illustrate a portion of the inner wall, “it
cannot be determined whether the remainder of an inner wall corresponds to
a ‘key retention position’ of the locking elements analogous to the presently
claimed subject matter[,] because the Examiner never identified the key
retention position in Myers or the inner wall in Myers” (id. at 14).
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Application 14/773,812
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In response, the Examiner finds that Myers only discloses one groove,
and determines that
[s]ince there is no other groove disclosed or shown by
Myers to receive the locking element, there can be no other
position in which the locking element can pivot out of the key
recess to release the key, therefore, the remainder of the inner
wall necessarily will retain the key and correspond to [the
claimed] “key retention position.”
Answer 3 (emphases added). That is, the Examiner relies on inherency to
show that Myers discloses the “key retention position” as claimed, because
the Examiner says “the remainder of the inner wall necessarily will retain
the key.” Id. (emphasis added); see also id. at 5 (“In further conventional
cylinder locks, such as Myers, some locking elements/tumblers are engaged
in a key recess to retain the key such as taught by Myers drawings figures
and specification. It is respectfully submitted that this old and well known
technology and structure [are] inherent to cylinder locks”).
We do not sustain the rejection, however, because the Examiner does
not support adequately that, in fact, the remainder of the inner wall
corresponds to a key retention position, as recited in claim 1. The fact that a
certain result or characteristic may occur or be present in the prior art is not
sufficient to establish the inherency of that result or characteristic. In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (rejection reversed because
alleged inherency was based on what would result due to optimization of
conditions, not what was necessarily present in the prior art); see also, In re
Oelrich, 666 F.2d 578, 581-82 (CCPA 1981).
To establish inherency, the extrinsic evidence must make
clear that the missing descriptive matter is necessarily present
in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Inherency, however,
may not be established by probabilities or possibilities. The
Appeal 2018-009045
Application 14/773,812
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mere fact that a certain thing may result from a given set of
circumstances is not sufficient.
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotations omitted). In relying upon the theory of inherency, the Examiner
must provide a basis in fact and/or technical reasoning to support reasonably
the determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461,
1464 (Bd. Pat. App. & Inter. 1990).
Here, it appears that the Examiner only speculates that when Myers’s
lock plug 10 turns so that it is not aligned with the slot, the lock plug will
retain the key to prevent removal of the key from the lock plug. Figures 1,
2, 4, and 5 of Myers do not show whether the key is or is not retained when
the lock plug is in any particular position. Columns 3 and 4 of Myers are the
only other portions of Myers upon which the Examiner relies in claim 1’s
rejection (see Answer 3), but we discern no discussion there of whether the
key may or may not be removed when the lock plug is in any specific
position. The Examiner provides no further evidence or reasoning to
support the determination that Myers’s device necessarily retains the key in
the lock plug when the lock plug is in certain positions and not in other
positions. Thus, it is possible that Myers does not retain the key in the lock
in any position, or retains the key in certain positions but allows removal of
the key in other positions other than when the lock plug is aligned with the
groove. This is because we are not aware of, and the Examiner does not
direct us to, any disclosed structure in Myers that is described as retaining
the key in the lock plug.
Therefore, based on the foregoing, the Examiner does not support
adequately the finding that Myers discloses, expressly or inherently, that the
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Application 14/773,812
6
“remainder of the inner wall correspond[s] to a key retention position of the
locking elements,” as claimed. Accordingly, we do not sustain the
Examiner’s anticipation rejection of independent claim 1. We also do not
sustain the anticipation rejection of claims 3, 5, 9, and 10 that incorporate
the recitations of, and which the Examiner rejects with, claim 1.
Rejections II–IV—Obviousness rejections of claims 2, 4, 6–8,
and 11–20
The Examiner does not rely on either Fancher, Krause, or an obvious
variation of Myers to disclose anything that would remedy the above-
discussed deficiency in independent claim 1’s rejection as anticipated by
Meyers. We thus do not sustain the obviousness rejections of claims 2, 4, 6–
8, and 11–20 that incorporate the recitations of claim 1.
CONCLUSION
We REVERSE the Examiner’s anticipation rejection of claims 1, 3, 5,
9, and 10.
We REVERSE the obviousness rejections of claims 2, 4, 6–8, and 11–
20.

Appeal 2018-009045
Application 14/773,812
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In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3, 5, 9, 10 102(a)(1) Myers 1, 3, 5, 9, 10
7, 8, 15 103 Myers 7, 8, 15
6 103 Myers,
Fancher
6
2, 4, 11–14,
16–20
103 Myers,
Krause
2, 4, 11–14,
16–20
Overall Outcome 1–20

REVERSED