Ex parte BREE et al.

Board of Patent Appeals and Interferences

Sep 7, 2000

08076722 (B.P.A.I. Sep. 7, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

The opinion in support of the decision being entered today was
not written for publication in a law journal and is not binding
precedent of the Board.

Paper No. 25

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY D. BREE, MARK M. BERKLICH, and
LLOYD W. ROGERS, JR.
____________

Appeal No. 1996-1300
Application No. 08/076,7221
____________

ON BRIEF
____________

Before ABRAMS, McQUADE, and LAZARUS, Administrative Patent
Judges.

LAZARUS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 7-12, which are all of the claims pending
in this application.

We Reverse.

1 Application for patent filed June 14, 1993.
Appeal No. 1996-1300
Application No. 08/076,722

3
BACKGROUND
The appellant's invention relates to a deadbolt locking
actuator for a power door latch (specification, p. 1). A copy
of the claims under appeal is set forth in the appendix to the
appellants' brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Fukumoto et al. (Fukumoto) 5,169,186 Dec. 8, 1992
(filed Jan. 11, 1991)
Claims 7-12 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Fukumoto.2
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 15, mailed August 11, 1995) and the response to arguments
filed in the supplemental reply brief (Paper No. 22, filed
August 13, 1999) for the examiner's complete reasoning in
support of the rejections, and to the appellants' brief (Paper
No. 14, filed June 21, 1995), reply brief (Paper No. 16, filed
September 18, 1995) and supplemental reply brief (Paper No. 21

2 The rejection Claims 11-12 under 35 U.S.C. § 103 as being unpatentable over
Fukumoto has been withdrawn by the examiner (answer, page 3).
Appeal No. 1996-1300
Application No. 08/076,722

4
filed June 28, 1999) for the appellants' arguments
thereagainst.

OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
We cannot sustain the examiner's rejection of appellants'
claims 7-12 under 35 U.S.C. § 102(e).
At the outset, we note that the sole independent claim,
claim 7, is representative and reads as follows:
7. A locking actuator system for an automotive door
latch having a manual locking lever movable between
locked and unlocked positions, comprising:

(a) a housing;

(b) a reversible electric motor mounted in the housing
and having an output shaft;

(c) a worm mounted on the output shaft;

Appeal No. 1996-1300
Application No. 08/076,722

5
(d) a worm gear, mounted in the housing, meshing with
the worm;

(e) an extending pin coupled to the worm gear, wherein
rotational movement of the motor output shaft causes
arcuate movement of the extending pin between at
least two operating positions;

(f) a link having a first end and a second end, wherein
the first end is pivotably coupled to the manual
locking lever;

(g) a slot in the second end of the link, the slot
having two slot ends connected by two parallel
sides, wherein the slot engages the extending pin
and allows limited relative substantially linear
movement of the link with respect to the pin and
wherein the combination of the slot and the pin
constrain the link to at least some linear movement
in response to arcuate movement of the extending
pin,

wherein, in at least one of the operating positions, the
combination of the link, slot, extending pin, worm gear and
worm hold the manual locking lever in the locked position so
that external force on the manual locking lever does not move
the manual locking lever from the locked position.

The examiner's rejection of claim 7 states that "Fukumoto
et al. '186 teaches all the elements of the claimed invention
including reversible motor with worm 26, worm gear 18, housing
2, rotary arm with extending pin 9 mounted exterior of the
housing, link with slot allowing some linear movement 5 and
having two operating positions (Figures 3 and 4)" (answer,
page 3).
Appeal No. 1996-1300
Application No. 08/076,722

6
Appellants urge that "Fukumoto does not have a dead bolt
feature in which a combination of link, slot, extending pin,
worm gear and worm to hold the manual locking lever in a
locked position so that external force on the manual locking
lever does not move the manual locking lever from the locked
position" (brief, page 8). Further, "Appellants' claimed
invention has several structural and functional elements not
taught or suggested in Fukumoto. The primary element of claim
7 not taught or suggested in Fukumoto is the dead bolt
feature, recited as follows:
... wherein, in at least one of the operating positions,
the combination of the link, slot, extending pin, worm
gear and worm hold the manual locking lever in the locked
position so that external force on the manual locking
lever does not move the manual locking lever from the
locked position"
(brief, page 8).
In response the examiner explains that "Fukumoto teaches
a combined movement of the link, slot, extending pin, worm
gear and worm holding the manual locking lever in locked
position" and "[t]he Examiner admits that Fukumoto teaches the
Appeal No. 1996-1300
Application No. 08/076,722

7
manual locking lever 30 as moveable in both the locked (when
manual locking lever is actuated and movement of lever 3 is
prevented from unlocking the locking actuator system) and
unlocked positions (when manual locking lever 30 is actuated
and movement of lever 3 occurs to unlock the locking actuator
system). However, when the link 5 and lever 7 are uncoupled
(Figs. 3-6) the manual locking lever is held in the locked
position because it can not operate to unlock the locking
actuator system" (answer, page 5). The examiner appears to
recognize that whereas appellants' claim 7 recites structure
to "hold the manual locking lever in the locked position",
Fukumoto discloses structure which has an idle position
wherein the manual locking lever can move, but not to unlock
the lock mechanism.
We note appellants disagree with the examiner and stress
"[t]hus, if lever 30 is moving, it is not 'held' in a 'locked
position' as stated in the Examiner's Answer and as would be
required to meet Appellants' claim 7... lever 30 is not locked
in any position, but moves whenever the door handle moves"
(reply, page 10).
Appeal No. 1996-1300
Application No. 08/076,722

8
The issue before us is whether Fukumoto discloses all of
the features of claim 7 on appeal, including the function of
the "link, slot, extending pin, worm gear and worm" to "hold
the manual locking lever in the locked position". It is the
examiner's position that "appellants' reliance on an
unrealistic and narrow definition of 'held' to distinguish
their invention over the prior art is unsustainable. The
link, slot, worm gear and worm of Fukumoto 'holds' the manual
locking lever in locked position when an external force is
applied and prevents it from moving from the locked position
since the link is misaligned with projection 7 on lever 3
resulting in an idling movement of the link, slot and
extending pin" (answer, page 7). We disagree.
A door lock with elements corresponding to the elements
of appellants' claim 7 is disclosed by Fukumoto, including
housing 2, electric motor 26 (figs. 9 & 12), worm 27, worm
gear 18, lever 5 (corresponding to appellants' link), lever 30
(corresponding to appellants' manual locking lever) and a pin
which slides in the slot in lever 5. The door lock device "in
FIG. 1 is in a locked condition" (col. 4, line 1). The
transition to the unlocked condition of figure 2 is described
Appeal No. 1996-1300
Application No. 08/076,722

9
whereby lever 30 is rotated counterclockwise and "causes a
protrusion 6 at a central portion of the open lever 5 to push
an end portion 7 of the release lever 3... and the door is
opened" (col. 4, lines 13-22). Thereafter, figures 3 and 4
are described wherein "the door is locked to prevent the door
from being opened by carelessness during the running of the
vehicle" (col. 4, lines 24-26). "[W]hen the locking button 8
is pushed out and the locking arm 9 is turned clockwise... the
open lever 5 is moved around pin 10 in the direction of arrow
C (FIG. 1), and said protrusion 6 is released from the end
portion 7 of the release lever 3 as shown in FIG. 3. As a
result, even if the handle is operated and the open lever 5 is
moved downwardly, it moves idly without protrusion 6 abutting
end portion 7, so that the lock remains in the locked
condition as shown in FIG. 4" (col. 4, lines 33-43).
We note that the manual locking lever (Fukumoto's lever
30) rotates about axis 31 between locking and unlocking
positions. Fukumoto provides that the unlocking position may
be disabled as shown in figures 3 and 4. However, even in the
disabled position of figures 3 and 4, Fukumoto's lever 30 is
free to rotate about axis 31 between the locking and unlocking
Appeal No. 1996-1300
Application No. 08/076,722

10
positions. These are the only positions described by Fukumoto
for lever 30. Fukumoto's lever 30 is free to rotate about
axis 31 and there is no description of locking lever 30
against rotation about axis 31 to prevent movement from one
position to the other.
In contrast, appellants' claim 7 describes the locking
actuator system "wherein, in at least one of the operating
positions, the combination of the link, slot, extending pin,
worm gear and worm hold the manual locking lever in the locked
position so that external force on the manual locking lever
does not move the manual locking lever from the locked
position." This limitation is not described by, nor inherent
in, Fukumoto. We disagree with the examiner's position that
the Fukumoto mechanism "holds" the locking lever 30 in the
locking position when the mechanism has been moved to the idle
position. In the idle position the locking lever 30 is not
held, or seized, in place, but remains free to move between
the same positions as when the mechanism is moved to the other
(non-idle) position.
We find that Fukumoto discloses a lock system having an
electric motor, worm, worm gear, link 5 and locking lever 30
Appeal No. 1996-1300
Application No. 08/076,722

11
which moves to and from locking and unlocking positions, but
there is no disclosure that the elements "hold" the locking
lever so that external force does not move the locking lever
from the locked position. On the contrary, the locking lever
30 is shown in figure 1 in the locked position, then rotated
to the unlocked position in figure 2. When in the idle
position the locking lever 30 is free to assume the locked
position shown in figure 3, or the unlocked position shown in
figure 4. Fukumoto simply does not disclose a device "wherein
in at least one of the operating positions, the combination of
the link, slot, extending pin, worm gear and worm hold the
manual locking lever in the locked position so that external
force on the manual locking lever does not move the manual
locking lever from the locked position" (emphasis added).
Accordingly, the decision of the examiner to reject claim
7 under 35 U.S.C. § 102(e) is reversed. It follows that the
examiner's other rejection of claims 8-12 under 35 U.S.C.
' 102(e) is also reversed.

CONCLUSION
Appeal No. 1996-1300
Application No. 08/076,722

12
To summarize, the examiner's rejection of claims 7-12
under 35 U.S.C. § 102(e) is not sustained. The decision of
the examiner is reversed.

REVERSED

NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD B. LAZARUS )
Administrative Patent Judge

Appeal No. 1996-1300
Application No. 08/076,722

13

ANTHONY L. SIMON
GENERAL MOTORS CORPORATION
LEGAL STAFF
P.O. BOX 33114
DETROIT, MI 48232

Appeal No. 1996-1300
Application No. 08/076,722

14

RL/pgg

APPEAL NO. 1996-1300 - JUDGE LAZARUS
APPLICATION NO. 08/076,722

APJ LAZARUS

APJ McQUADE

APJ ABRAMS

DECISION: REVERSED

Prepared By:

DRAFT TYPED: 07 Jun 01

FINAL TYPED: