Harald Krieger et al.Download PDFPatent Trials and Appeals BoardNov 8, 201914773812 - (D) (P.T.A.B. Nov. 8, 2019) Copy Citation 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 2 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). Appeal 2018-009045 Application 14/773,812 4 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 5 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 Appeal 2018-009045 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 7 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 Copy with citationCopy as parenthetical citation