Ex Parte Armstrong et al

Patent Trials and Appeals Board

Jun 27, 2013

12174025 - (D) (P.T.A.B. Jun. 27, 2013)

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.
12/174,025 07/16/2008 Steven Armstrong 5738-03-C/B &D0012.CON2 7916
41891 7590 06/27/2013
RONALD K. AUST, P.C.
12029 E. WASHINGTON STREET
INDIANAPOLIS, IN 46229
EXAMINER
GALL, LLOYD A
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
06/27/2013 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 STEVEN ARMSTRONG and GERALD B. CHONG
____________________

Appeal 2011-004674
Application 12/174,025
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
NEIL A. SMITH, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004674
Application 12/174,025
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STATEMENT OF CASE
Steven Armstrong and Gerald B. Chong (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s rejection of claims 1-9. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claims are directed generally to a kit for a master keying
system and a keying method. Claims 1 and 2, reproduced below with
emphasis added, are illustrative of the claimed subject matter:
1. A kit for a master keying system, comprising:
a plurality of replacement master racks;
a rack removal key for insertion into a keyway, the rack
removal key having a first cut defining a first lift amount; and
a rack removal tool for insertion into the keyway, the
rack removal tool having a second cut defining a second lift
amount, the second lift amount being greater than the first lift
amount.
2. The kit of claim 1, wherein each of the rack
removal key and the rack removal tool is configured to
facilitate removal of a first plurality of racks, carried by a rack
carrier of a lock cylinder to be keyed, for replacement by the
plurality of replacement master racks.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Widen
Myers
Loreti
US 4,393,673
US 5,088,305
US 6,119,495
Jul. 19, 1983
Feb. 18, 1992
Sep. 19, 2000
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Application 12/174,025
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THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
Claims 1-3 and 5-7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Loreti. Ans. 3.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Loreti in view of Myers. Ans. 4.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Loreti and Widen. Ans. 5.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Loreti, Myers, and Widen. Ans. 5.

ANALYSIS
Claim Construction
As a threshold matter, a majority of this case rests with disagreement
over the proper interpretation of several terms relating to the
replacement/removal aspects of the claims. Appellants argue at length
regarding the proper scope of terms such as “replacement master racks,”
“rack removal key,” “rack removal tool,” and “configured to facilitate
removal.” See, e.g., App. Br. 15-19, Reply Br. 5-8. The Examiner contends,
and we agree, that these terms, when properly construed, result in certain
claims being unpatentable over the cited art.
i) replacement master racks
Appellants assert that “nothing in Loreti discloses, teaches or suggests
any structure or method or kit for or relating to the replacing of any rack.”
App. Br. 15. Appellants also argue that the Examiner’s finding of Loreti’s
follower 16 or locking pin 20 as a replacement rack “is unfounded with
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Application 12/174,025
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respect to any disclosure provided by Loreti.” Id. As the Examiner
explains, however, “claiming of the racks in claim 1 as being ‘replacement’
master racks provides no additional structure to the racks which is not taught
by the racks of the Loreti reference.” Ans. 5-6. The Examiner further points
out that “replacement” amounts only to “a label, providing no patentable
distinction over the Loreti reference.” Ans. 6. We agree.
In certain circumstances functional language may be used to add
limitations to an apparatus claim. See K-2 Corp. v. Salomon S.A., 191 F.3d
1356, 1363 (Fed. Cir. 1999); Wright Med. Tech., Inc. v. Osteonics Corp.,
122 F.3d 1440, 1443-44 (Fed. Cir. 1997). In cases in which functional
language adds a structural limitation to an apparatus claim, however, it does
so because the language describes something about the structure of the
apparatus rather than merely listing its intended or preferred uses. See, e.g.,
K-2, 191 F.3d at 1363 (“[T]he functional language tells us something about
the structural requirements of the attachment between the bootie and the
base [of an inline skate] . . . .”). In this case, there is nothing about the term
“replacement” that dictates any structural feature for the claimed limitation.
In fact, in order to replace an original portion of a device, it follows that the
“replacement” item is identical or very similar to the original. Accordingly,
we are not persuaded of error in the Examiner’s finding that the racks in
Loreti meet the claim language at issue.
ii) rack removal key/tool
As with “replacement racks,” the terms “removal key” and “removal
tool” amount to mere labels that define no structural difference over the
elements found in Loreti asserted by the Examiner to meet these limitations.
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Application 12/174,025
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iii) configured to facilitate removal
Lastly, Appellants repeatedly argue that Loreti’s disclosure is
insufficient because, e.g., it “simply does not discuss or imply rack
replacement, and thus cannot disclose a key and tool used to facilitate rack
replacement, i.e., a rack removal key and a rack removal tool.” App. Br. 16.
As the Examiner points out, “the keys/tools of Loreti also ‘facilitate’
actuation and removal of components by actuating the tumblers and rotating
the carrier.” Ans. 6. Nothing in Appellants’ claims actually requires
removal or replacement. As noted above the recited terms merely amount to
labels that add no structural significance to the claims. The Examiner has
interpreted the claims such that actuating the tumblers is sufficient to be
considered facilitating removal. For the claim language at issue, we agree
with the Examiner’s application of the art to, e.g., claims 2 and 8.
Appellants’ arguments on this point throughout the briefs, therefore,
are not commensurate with the scope of the claims. This is so because the
claims, as in claim 2, require only facilitation of removal, not actual
removal. Accordingly, Appellants’ arguments do not demonstrate error in
the Examiner’s rejection of, e.g., claims 2 and 8. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be
relied upon for patentability).
Claim 1
Appellants arguments with respect to claim 1 deal solely with the
issues mentioned above regarding construction of terms relating to removal
of racks and thus, for the reasons stated above, we agree with the Examiner
and sustain the rejection of claim 1 as anticipated by Loreti.
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Application 12/174,025
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Claim 2
As with claim 1, Appellants rely on arguments that are not
commensurate with the scope of claim 2 and for the reasons stated above,
we sustain the Examiner’s rejection of claim 2.
Claim 3
Appellants assert that Loreti does not teach the claimed kit because it
does not teach “a master key, in addition to the rack removal key, the rack
removal tool, and the plurality of replacement master racks.” App. Br. 19;
Reply Br. 8. As the Examiner points out, however, “Loreti disclose[s] that
the lock may include at least one master key.” Ans. 8 (citing Loreti col. 4, l.
64 and col. 7, ll. 53-62). Accordingly, we are not apprised of error in this
rejection and sustain the Examiner’s decision to reject claim 3.
Claim 4
Appellants argue that “that which is shown in Widen Figs. 9 and 10
are key blanks to be machined into keys, and thus as such are not inserted
into a keyway as a key or as a tool.” App. Br. 25. As the Examiner states,
“[w]hether the keys of Widen are inserted as is into the lock of Widen to
unlock the lock is not regarded as being persuasive” because of the nature of
the claims being a kit. Ans. 9. Appellants merely point out that Widen does
not specifically teach that the blanks are to be inserted, but provide no
evidence that such blanks, which clearly otherwise meet the claimed
structural limitations, cannot be inserted into a lock. As such, we are not
persuaded of error in the Examiner’s determination regarding the
applicability of Widen’s key blanks to claim 4 and sustain the rejection.
Claims 5-7
Appellants argue that “[w]hile one of the keys of Loreti does move the
carrier (rotor 9) rotationally, it does not move the carrier longitudinally” as
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claimed. App. Br. 20. The Examiner’s only response to this is to point out
that “claim 5 is not positively claiming a carrier or a lock, nor a carrier that
moves in a longitudinal direction.” Ans. 8. The Examiner then goes on to
state that Loreti teaches the “rack carrier moving tool, even though the
carrier 9 of Loreti is moved rotationally by the keys/tools of Loreti.” Id.
Regardless of whether claim 5 requires a carrier capable of
longitudinal movement, claim 5 does require a removal tool “configured to
move the rack carrier in a longitudinal direction.” The Examiner finds that
the master key is capable of moving the carrier rotationally, but never makes
a finding that it is capable of moving the carrier longitudinally. While the
recitation in claim 5 may be functional, it is a limitation of structural
significance that, nonetheless, must be met and the Examiner has made no
such finding. Accordingly, this lack of finding as to a specifically recited
aspect of claim 5 is reversible error and we, therefore, do not sustain the
Examiner’s decision to reject claim 5. Claims 6 and 7 depend from claim 5
and we likewise do not sustain the rejections of claims 6 and 7.
Claim 8
As with claim 2, claim 8 merely requires “a rack removal tool to
facilitate removal of the first plurality of racks.” Because we agree that
facilitation does not equate to actual removal/replacement as Appellants
repeatedly argue (see App. Br. 26-29, Reply Br. 12-14), we also agree with
the Examiner that Loreti sufficiently teaches such facilitation as discussed
above.
Appellants further assert that there is no motivation to combine Loreti
with Myers. App. Br. 29. As the Examiner states, however, “Myers
teaches…that it is well known to replace tumblers/racks of a lock cylinder”
and that it “would have been obvious to replace the tumblers/racks of Loreti,
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Application 12/174,025
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in view of the teaching of Myers, the motivation being to allow the lock to
be rekeyed, when desired.” Ans. 5 (citing Myers col. 1, ll. 40-43 and col. 2,
ll. 1-2). We find this to be an articulated reasoning with a rational
underpinning sufficient to support the legal conclusion of obviousness. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As such we are not
apprised of error in the Examiner’s rejection of claim 8 and sustain the
rejection.
Claim 9
Claim 9 recites limitations similar to those found in claim 4, but in
method form. For the reasons stated above with respect to the rejection of
claim 4, we sustain the Examiner’s decision to reject claim 9.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 5-7 and AFFIRM the Examiner’s decision to reject claims 1-4,
8, and 9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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