Ex Parte Bistline

Board of Patent Appeals and Interferences

Apr 24, 2008

10685662 (B.P.A.I. Apr. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONALD A. BISTLINE
____________

Appeal 2007-4397
Application 10/685,662
Technology Center 3600
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Decided: April 24, 2008
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Before HUBERT C. LORIN, JENNIFER D. BAHR, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Donald A. Bistline (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-8. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).
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Application 10/685,662

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THE INVENTION
The Appellant’s invention is directed towards a security apparatus 100
for securing an object to a vehicle including a mounting bracket attached to
the vehicle and a mating unit removably attached to the mounting bracket
(Spec. 4, ¶ 36 and fig. 1). The mating unit 300 includes a mating portion
302, an adjustable shackle portion 304, a first locking mechanism 306 for
adjusting and locking the adjustable shackle portion 304, and a second
locking mechanism 310 having a retractable bolt that is pushed into an
aperture 208 of the mounting bracket 200 for removably securing the mating
portion 302 to the mounting bracket 200 (Spec. 5-6, ¶¶ 42, 44, and 45; figs.
2A and 3a).
Claim 1, the only independent claim, is representative of the claimed
invention and reads as follows:
1. An apparatus for securing an object to a vehicle,
comprising:
a mounting bracket;

a mating unit removably connected to the mounting
bracket, the mating unit comprising:

an adjustable shackle;

a mating portion, the mating portion being fixedly
secured to said adjustable shackle; and

a first locking mechanism, the first locking
mechanism operative to allow adjustment of said
shackle in an unlocked position and to prevent
adjustment of said shackle in a locked position;
and

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a second locking mechanism for removably
securing the mating portion to the mounting
bracket.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Mareydt US 4,261,496 Apr. 14, 1981
Wroble US 5,706,680 Jan. 13, 1998
Kemery US 6,263,709 B1 Jul. 24, 2001
Spry WO 01/60660 A1 Aug. 23, 2001

The following rejections are before us for review:
Claims 1-8 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-16 of
copending Application No. 10/613,896.1
Claims 1, 2, and 5-8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Spry.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Spry in view of Mareydt.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Spry in view of Wroble.

1 In the Brief, the Appellant has mischaracterized the obviousness-type
double patenting rejection as being applied to claims 1-7, 9, 11, and 12 over
claims 1-8 of copending Application U.S. Serial No. 10/613,896. (Br. 4 and
Ans. 2). See page 2 of the Final Office Action mailed on March 7, 2006 and
page 2 of the Examiner’s Answer, mailed on October 25, 2006.
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Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Spry in view of Kemery.2
The Examiner provides reasoning in support of the rejections in the
Answer (mailed October 25, 2006). The Appellant presents opposing
arguments in the Appeal Brief (filed August 14, 2006). A Reply Brief has
not been filed.

OPINION
The obviousness-type double patenting rejection of claims 1-8
In the Final Action dated March 7, 2006, claims 1-8 were
provisionally rejected under the judicially created doctrine of obviousness-
type double patenting over claims 1-16 of copending Application U.S. Serial
No. 10/613,896. The Appellant has not furnished any substantive arguments
against the Examiner’s obviousness-type double patenting rejection of
claims 1-16 of copending Application U.S. Serial No. 10/613,896.
Therefore, we summarily affirm the Examiner’s rejection of claims 1-8
under the judicially created doctrine of obviousness-type double patenting
over claims 1-16 of copending Application U.S. Serial No. 10/613,896.

2 As Appellant does not expressly indicate an election not to contest this
rejection, we, like the Examiner (Ans. 2-3), presume that Appellant’s
omission of this ground of rejection in the Brief is an inadvertent error and
that Appellant intends to rely on the arguments directed to the rejection of
claim 1 as anticipated by Spry in contesting the rejection of claim 8.
Accordingly, we shall address it below.
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The anticipation rejection based on Spry
Spry discloses a surfboard security locking system including a
mounting bracket (rectangular roof rack) and a mating unit (two U-shaped
brackets) (page 2, l. 25 through p. 3, l. 3; figs. 1, 2, and 8). The mating unit
includes an adjustable shackle (locking insert 3 and locking sleeve 7), a
mating portion (lower attachment sleeve 1), a first key lock 2 and a second
key lock 5 for adjusting the shackle, and cushions 12 and 13 (page 3, ll. 4-27
and fig. 1, 2). The mating unit is attached to the mounting bracket using
self-tapping screws 14, 15 and holes 10, 11 (page 2, l. 29 through page 3, l.
3; figs. 5, 6, and 8).
The Appellant argues that, “Spry fails to teach a second locking
mechanism for removably securing the mating portion to the mounting
bracket” (Br. 4) (underlining in original). According to the Appellant, “Spry
explicitly teaches the use of screws to secure the two brackets to the roof
rack, not a lock” (Br. 4). In response, the Examiner explains that “[t]he
second key lock 2 cooperates with the screw fasteners 14, 15 to define a
second locking mechanism 2, 14, 15” (Ans. 7 and 8).
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). The issue presented in this appeal is whether
Spry’s disclosed lock 2 in conjunction with the screws 14, 15 constitute a
“locking” mechanism “for removably securing the mating portion to the
mounting bracket.” According to the Examiner the lock 2 secures the
mating portion to the mounting bracket by operating in “cooperation” with
the screws 14, 15.
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When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)). In this case, we find that the key lock 2 of Spry is consistent with
the ordinary and customary definition of a “lock” as a “fastening (as for a
door) operated by a key or a combination” (Merriam Webster’s Collegiate
Dictionary 684 (Tenth Ed. 1997)). Specifically, Spry discloses that the key
lock 2 “is used to lock the right-side bracket into the left-side bracket” using
the lower locking holes 9 along the front side of the lower locking insert 8
(page 3, ll. 5-6 and 20-23). However, Spry further discloses that when the
right-side bracket slides into the left-side bracket, the right-side bracket
slides “over” the self-taping screws 14, 15 (page 3, ll. 18-20). Therefore, we
find that the key lock 2 cannot “cooperate” with the screws 14, 15 to secure
the mating portion to the mounting bracket, as required by claim 1, because
the right-side bracket slides “over” the screws 14, 15. According to Spry,
the key lock 2 and the screws 14, 15 are independent of each other and have
different functions. Specifically, the key lock 2 is used to attach the two U-
shaped brackets (adjustable shackles), whereas the screws 14, 15 are used to
attach the mating unit to the mounting bracket. In order for the key lock 2 of
Spry to function as the Examiner contends, the key lock 2 by itself would
have to secure the U-shaped brackets together and at the same time also
secure the mating unit to the mounting bracket. We do not find that Spry
discloses such an arrangement. In conclusion, we agree with the Appellant
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that Spry does not disclose all the limitations of claim 1. As such, the
rejection of claims 1, 2, and 5 through 8 is reversed.

The rejections based on Spry in view of Mareydt, Wroble, and Kemery,
respectively
Claims 3, 4, and 8 depend from independent claim 1, and as such
include all its limitations. We find that the Examiner’s application of the
additional teachings of Mareydt, Wroble, and Kemery does not make up for
the deficiencies in Spry as discussed above. Hence, the rejections of claim 3
as unpatentable over Spry in view of Mareydt, claim 4 as unpatentable over
Spry in view of Wroble, and claim 8 as unpatentable over Spry in view of
Kemery are also reversed.

SUMMARY
The decision of the Examiner to reject claims 1 through 8 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1-16 of copending Application No. 10/613,896 is
affirmed.
The decision of the Examiner to reject claims 1, 2, and 5-8 under 35
U.S.C. § 102(b) as anticipated by Spry is reversed.
The decision of the Examiner to reject claims 3, 4, and 8 under 35
U.S.C. § 103(a) as unpatentable over Spry in view of Mareydt, Wroble, and
Kemery, respectively, is reversed.
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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) (2007).

AFFIRMED

hh

THOMAS M. THIBAULT
2760 CYPRESS TRACE CIRCLE #2522
NAPLES, FLORIDA 34119