Ex Parte 7913526 et al

Patent Trial and Appeal Board

Aug 31, 2016

90013190 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/013, 190 03/25/2014
20694 7590 09/01/2016
Chiesa Shahinian & Giantomasi PC
ONE BOLAND DRIVE
WEST ORANGE, NJ 07052
FIRST NAMED INVENTOR
7913526
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.
LOUG3001RX/JS 3816
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAILDATE DELIVERY MODE
09/01/2016 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 STANTON CONCEPTS, L.L.C.
Patent Owner and Appellant
Appeal2016-003384
Reexamination Control 90/013, 190
Patent US 7,913,526 B2 1
Technology Center 3900
Before STEVEN D.A. McCARTHY, DANIELS. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Issued to Loughlin et al. on March 29, 2011 (the '526 patent).
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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from
the Examiner's final rejection of claims 1-21. We have jurisdiction under
35 U.S.C. §§ 134(b) and 306.
We are informed that the '526 patent is involved in the following
litigations:
Fullyear-Brother Enterprise Co. Ltd. v. Stanton
Concepts, LLC, Civil Action No. 1: 13-cv-01364-ABJ in the
U.S. District Court for the District of Columbia, and
Stanton Concepts, L.L. C. v. Brookstone, Inc. et. al., Civil
Action No. 1:14-cv-00626-UNA in the U.S. District Court of
the District of Delaware.
App. Br. 3.
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a "multiple function lock using key, keyless
(combination), alternative mechanisms or tamper indicative seals, singly or
in combination, to provide for secure control of the opening and closing of
the lock." Spec. col. 2, 11. 43-46. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A lock, comprising:
a body;
a shackle having a toe and a heel, the heel being retained
by the body and able to rotate within the body;
a first and a second locking mechanism to lock the shackle,
each of the locking mechanisms being enabled to independently
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unlock the shackle, wherein the toe, in a locked position of the
second locking mechanism, is positioned between a first level
defined by a top surface of the body and a second level defined
by a bottom surface of the body, and the toe, in an unlocked
position of the second locking mechanism, is not positioned
between the first level defined by the top surface of the body and
the second level defined by the bottom surface of the body;
a retaining structure having a walled section and a non-
walled section, the retaining structure being movable between a
first position and a second position by the first locking
mechanism; and
wherein when the second locking mechanism is in the
locked position, when the shackle is aligned with the body and
when the retaining structure is in the first position, a first part of
a perimeter of the toe is surrounded by the walled section of the
retaining structure and a second part of the perimeter of the toe
is surrounded by the body; and
wherein when the second locking mechanism is in the
locked position, when the shackle is aligned with the body, and
when the retaining structure is in the second position, the first
part of the perimeter of the toe is not surrounded by the walled
section and the shackle is free to rotate about the heel.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
CN 2041340U (CN '340)
TW 330526 (TW '526)
July 19, 1989
Apr. 21, 1998
Adventure Gear Columbia Sportswear Company Catalog, Fall
2003/Spring 2004 (Columbia).
REJECTIONS
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over CN '340 and either of Columbia and TW '526. Ans. 2-3.
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OPINION
The only issue before us is whether the Examiner properly combined
CN '340 with either of Columbia and TW '526.2 App. Br. 7-10. The
Examiner finds that CN '340 teaches all the claimed elements, but fails to
teach "the relative levels of the toe/body surfaces (cl. 1 ), and for the body to
partially surround the toe (elms. 1, 14)." Ans. 2. The Examiner then
combines CN '340 with either of Columbia and TW '526 to supply the
missing limitations. Ans. 2, 3. The Examiner goes on to conclude, in both
instances, that the reason to combine is "in order to better protect the locking
mechanism." Ans. 3, 4. The Examiner further elaborates in response to the
Patent Owner that "to better protect" means "the mechanism would be
protected from dirt, debris, etc., by being surrounded by the body (at least
partially)." Ans. 3, 6.
The Patent Owner argues that "the Examiner's new grounds for
rejection is a mere conclusory assertion" and that the submitted evidence, in
the form of the Nesbit Declaration,3 "directly contradicts the new rejection
found in the Final Office Action." App. Br. 8. The Federal Circuit has
stated that "rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
2 The Patent Owner also asserts that the Examiner erred in changing the
motivation in the Final Office Action, thus necessitating a new ground of
rejection and withdrawal of the finality. App. Br. 10-11. This issue is
petitionable, not appealable, so it is not properly before us.
3 Declaration of Steven Nesbit, Ph.D., dated September 14, 2014.
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obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Here, the Patent Owner does not merely state a concurrent
disadvantage of the proposed modification that may be outweighed by other
advantages, but provides expert testimony that is in direct contradiction to
the Examiner's rationale for combining the references. Dr. Nesbit states,
regarding the proposed modification, "such a design would result in
additional crevices between the lock body and the retaining structure that
would collect dirt and impede the operation of the lock." Nesbit Deel.
,-r 55. Indeed, common sense appears to support Dr. Nesbit's statement,
while undermining the Examiner's assertion. As such, protection from dirt
and debris, as stated by the Examiner, cannot be a reasonable basis with
rational underpinnings to support the rejection. The Examiner uses this
basis for both proposed combinations and provides no other motivation for
the combinations. Accordingly, we reverse the Examiner's rejections of
claims 1-21 as unpatentable over CN '340 and either of Columbia and
TW '526.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1-21.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(±).
REVERSED
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PATENT OWNER:
CHIESA SHAHINIAN & GIANTOMASI PC
One Boland Drive
West Orange, NJ 07052
THIRD PARTY REQUESTOR:
BACON & THOMAS, PLLC
625 Slaters Lane
4th Floor
Alexandria, VA 223 14-1176
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