Ex Parte DeMaio et al

Board of Patent Appeals and Interferences

Aug 16, 2007

10885524 (B.P.A.I. Aug. 16, 2007)

The opinion in support of the decision being entered today is not binding precedent
of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS E. DEMAIO and RUBEN A. JIMENEZ

____________

Appeal 2006-3408
Application 10/885,524
Technology Center 3600
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Decided: August 16, 2007
____________

Before LINDA E. HORNER, ANTON W. FETTING, and DAVID B. WALKER,
Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 10-14. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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THE INVENTION
Appellants claim a motorcycle disk lock reminder adapted to be received
and held in the ignition switch of a motorcycle and incapable of operating the
ignition switch, which serves as a reminder that a disk lock with locking pin is
locked into place on one of the wheels and is adapted to carry a loop for receiving
the locking pin (Specification 2). Claims 10 and 13, reproduced below, are
representative of the subject matter on appeal.
10. The combination of
(a) A motorcycle disc lock reminder comprising
a key having a head portion and a key blank
portion, said key blank portion being adapted to be
received and held in the ignition switch of a
motorcycle and being incapable of operating said
ignition switch,
said disc lock reminder being adapted to
serve to provide a reminder that a disc lock with
locking pin is locked into place on one of the
wheels of a motorcycle; and
(b) a motorcycle disc lock with locking pin;
said locking pin being locked into place;
said motorcycle disc lock reminder and said
motorcycle disc lock being held together by a key
ring which passes through said head portion and
over said locking pin.
13. A motorcycle disc lock reminder comprising
a key having a head portion and a key blank
portion,
said key blank portion being adapted to be
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received and held in the ignition switch of a
motorcycle and being incapable of operating said
ignition switch,
said disc lock reminder serving to provide a
reminder that a motorcycle disc lock with locking
pin is locked into place on one of the wheels of a
motorcycle,
wherein said head portion includes a
warning light or LED, and
wherein said head portion further includes
an off-center key ring passing through said head
portion for attachment to a disc lock when the disc
lock reminder and disc lock are in a storage- ready
state and
wherein said key ring is in the form of a
loop large enough to receive said locking pin.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
De Forrest, Sr. US 4,559,796 Dec. 24, 1985
Fields US 4,683,741 Aug. 4, 1987
Montano US 5,205,144 Apr. 27, 1993
Titterton US 6,178,787 Jan. 30, 2001

The following rejections are before us for review.
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1. Claims 10-121 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Titterton in view of Montano.
2. Claim 13-14 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Titterton in view of Montano and further in view of Fields or De Forrest. 2

ISSUE
The issue before us is whether Appellants have shown that the Examiner
erred in rejecting the following claims under 35 U.S.C. 103(a): (1) claims 10-12 as
unpatentable over Titterton in view of Montano; and (2) claims 13-14 as
unpatentable over Titterton in view of Montano and further in view of Fields or
De Forrest. The correctness of the above rejections turns on whether the secondary
references may properly be combined with Titterton to provide (1) a motorcycle
disc lock reminder and a motorcycle disc lock held together by a key ring which
passes through said head portion and over said locking pin; and (2) a warning light
or LED.
Rather than repeat the arguments of Appellants and the Examiner, we make
reference to the Briefs and the Answer for their respective details. Only those
arguments actually made by Appellants have been considered in this decision.

1 The Examiner originally rejected claims 10-12 and 14 as unpatentable over
Titterton in view of Montano. In the Answer, he corrected the rejections to group
claim 14 with claim 13, from which it depends (Answer 4).
2 The Examiner listed this rejection as over Titterton in view of Fields or De
Forrest, but it is clear from his findings in support of the rejection that he also
relied on Montano (Answer 8). Accordingly, we review this rejection over the
combination of Titterton, Montano, and Fields or De Forrest.
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Arguments which Appellants could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).

1. Titterton teaches a motorcycle wheel disk lock reminder system with a
disk lock adapted for attachment to a wheel of a motorcycle. The
reminder system also includes a reminder unit with an insertion tab
outwardly extending from an inner face of the reminder unit. The
insertion tab can be inserted into (1) a slot in the disk lock; or (2) an
ignition keyhole of the motorcycle after removal from the slot in the disk
lock to prevent insertion of an ignition key without prior removal of the
reminder unit. (Titterton, col. 4, ll. 3-13).
2. The reminder unit of Titterton includes a head portion 21 (referred to as
dome-shaped arcuate outer face), an offset loop portion 24 (referred to as
a rectangular side tab) having a circular hole 25, and a key blank portion
22 (referred to as an insertion tab). The offset loop portion is designed
for extending a flexible elongate element such as a string, cord, strap, or
small chain therethrough to permit attachment of the reminder unit to an
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object such as a user’s belt loop or key chain. (Titterton, col. 4, ll. 28-32
and 46-56).
3. Montano teaches a message board 20 joined by a message board
attachment ring 22 to a holder head 10, which is adapted to be securely
attached to a key-operated door lock (Montano, col. 1, ll. 19-26, col. 2,
ll. 34-41).
4. Fields teaches a door knob and lock assembly with a LED visible from
the exterior of the door to provide a flashing display actuated by locking
the lock assembly (Fields, col. 1, l. 60 – col. 2, l. 20).
5. De Forrest discloses a status indicator for a door lock in which two LEDs
are alternately lit to show either a locked or unlocked state of the lock to
which the status indicator is attached (De Forrest, col. 5, ll. 23-44).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level of
skill in the art, and (4) where in evidence, so-called secondary considerations.
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Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See
also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors continue
to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739, 82
USPQ2d at 1395, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that “the
principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss,
11 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v.
John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
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Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id.
The Supreme Court stated that there are “[t]hree cases decided after Graham
[that] illustrate this doctrine.” Id. at 1739, 82 USPQ2d at 1395. “In United States
v. Adams, … [t]he Court recognized that when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a predictable
result.” Id. at 1739-40, 82 USPQ2d at 1395. “Sakraida and Anderson’s-Black
Rock are illustrative – a court must ask whether the improvement is more that the
predictable use of prior art elements according to their established function.” Id. at
1740, 82 USPQ2d at 1395.
The Supreme Court stated that “[f]ollowing these principles may be more
difficult in other cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained, “[o]ften, it will be necessary for a court
to look to interrelated teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396.
The Court noted that “[t]o facilitate review, this analysis should be made explicit.”
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Id. (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[R]ejections 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 obviousness”)). However, “the
analysis need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.

ANALYSIS
A. Rejection of claims 10-12 under 35 U.S.C. § 103(a) as unpatentable over
Titterton in view of Montano.

The Examiner correctly found that Titterton teaches each of the elements of
claim 10 except said motorcycle disc lock reminder and said motorcycle disc lock
being held together by a key ring which passes through said head portion and over
said locking pin (Answer 3-4, Findings of Fact 1-2). The Examiner found that:
Since the loop portion is clearly an attachment means
(col. 4, lines 46-56), it is capable of receiving the lock
pin and attaching or joining to the disc lock in that
manner. Titterton fails to teach the use of a key ring
instead of the flexible elongate chain, strap, string or cord
to permit attachment.
(Answer 3). The Examiner further found that “Montano teaches the well known
feature of providing a key ring 22 on a loop portion of a key reminder device,” and
concluded that
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It would have been obvious to modify the attachment
means of Titterton with a well known storage means by
providing the device of Titterton with a key ring attached
to the loop portion 25, as taught by Montano, as an
obvious matter of design choice to provide further
attachment means as desired.
(Answer 3-4).
Appellants argue that Titterton requires a disk lock customized to contain
slot 18 and thus teaches away from the claimed arrangement, which dispenses with
the need of customization of the disk lock (Revised Br. 11-12). We disagree. In
fact, Titterton teaches that its “offset loop portion is designed for extending a
flexible elongate element such as a string, cord, strap, or small chain therethrough
to permit attachment of the reminder unit to an object such as a user’s belt loop or
key chain.” (Finding of Fact 2). Titterton thus teaches that the disk lock reminder
unit can be attached to a variety of objects, including a key chain, not just placed in
a slot in the disk lock. Accordingly, we find Appellants’ teaching away argument
unpersuasive.
One of ordinary skill in the art would have been able to replace the flexible
elongate chain, strap, string or cord in the motorcycle wheel disk lock reminder
system of Titterton with the key ring of Montano using methods known in the art at
the time the invention was made. Moreover, each of the elements of Titterton and
Montano combined by the Examiner performs the same function when combined
as it does in the prior art. Thus, such a combination would have yielded
predictable results. See Sakraida, 425 U.S. at 282, 189 USPQ at 453.
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Claim 10 is a combination which only unites old elements with no change in
their respective functions and which yields predictable results. Thus, the claimed
subject matter likely would have been obvious under KSR. In addition, neither
Appellants’ Specification nor Appellants’ arguments present any evidence that the
addition of a key ring to a motorcycle wheel disk lock reminder system is uniquely
challenging or difficult for one of ordinary skill in the art. Moreover, the key ring
of Montano is a technique that has been used to improve one device (the door lock
message holder of Montano), and one of skill in the art would recognize that it
would improve similar devices in the same manner.
Because Appellants have not shown that the application of the Montano key
ring to the motorcycle wheel disk lock reminder system of Titterton would have
been beyond the skill of one of skill in the art, we find using the technique would
have been obvious. Under those circumstances, the Examiner did not err in
holding that it would have been obvious to one having ordinary skill in the art at
the time the invention was made to replace the flexible elongate chain, strap, string
or cord in the motorcycle wheel disk lock reminder system of Titterton with the
key ring of Montano as an obvious matter of design choice to provide further
attachment means as desired (Answer 3-4). Because this is a case where the
improvement is no more than the predictable use of prior art elements according to
their established functions, no further analysis was required by the Examiner.
KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1396. Claims 11 and 12 were not argued
separately, and fall with claim 10. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re
Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
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B. Rejection of claims 13-14 under 35 U.S.C. § 103(a) as unpatentable over
Titterton in view of Montano and further in view of Fields or
De Forrest.

In response to this rejection, Appellants argue that “[n]othing in Fields
and/or De Forrest suggests modifying Titterton in a way which would result in
joining a motorcycle disk lock via its locking pin to a disk lock reminder as defined
in claims 10 and 13.” (Revised Br. 15). The Examiner responded that “contrary to
Appellant[s’] arguments in the last two lines of page 15, the Fields and DeForrest
patents are not used to teach the disk lock and reminder structure, this is clearly
taught by the combination of Titterton and Montano.” (Answer 8). For the same
reasons as stated for the preceding rejection, we find no error in the Examiner’s
reliance on the combination of Titterton and Montano for the limitation of an off-
center key ring passing through the head portion of the disk lock reminder for
attachment to a disc lock when the disc lock reminder and disc lock are in a
storage-ready state as required by claim 13.
In its pre-KSR brief, Appellants further argue there is no teaching,
suggestion, or motivation to combine Titterton with any of the secondary
references (Revised Br. 12, 15-16). KSR forecloses Appellants’ argument that a
specific teaching is required for a finding of obviousness. KSR, 127 S.Ct. at 1741,
82 USPQ2d at 1396.
Moreover, one of skill in the art would have been able to modify the
combination of Titterton and Montano to include an LED lock status indicator as
taught by Fields or De Forrest using methods known in the art at the time the
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invention was made. Each of the elements of Titterton, Montano, and Fields or
De Forrest combined by the Examiner performs the same function when combined
as it does in the prior art. Thus, such a combination would have yielded
predictable results. See Sakraida, 425 U.S. at 282, 189 USPQ at 453.
Claim 13 is a combination which only unites old elements with no change in
their respective functions and which yields predictable results. Thus, the claimed
subject matter likely would have been obvious under KSR. In addition, neither
Appellants’ Specification nor Appellants’ arguments present any evidence that the
addition of an LED lock status indicator to a motorcycle wheel disk lock reminder
system is uniquely challenging or difficult for one of ordinary skill in the art.
Moreover, the LED lock status indicators of Fields or De Forrest are techniques
that have been used to improve certain devices (the door locks of Fields or De
Forrest), and one of skill in the art would recognize that they would improve
similar devices in the same manner.
Because Appellants have not shown that the application of the LED lock
status indicator of Fields or De Forrest to the motorcycle wheel disk lock reminder
system of the combination of Titterton and Montano would have been beyond the
skill of one of skill in the art, we find using the techniques would have been
obvious. Under those circumstances, the Examiner did not err in holding that it
would have been obvious to one having ordinary skill in the art at the time the
invention was made to add a conventional LED lock status indicator as taught by
Fields or De Forrest to the motorcycle wheel disk lock reminder system of the
combination of Titterton and Montano in order to facilitate use of the lock by
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providing information on the lock status (Answer 8). Because this is a case where
the improvement is no more than the predictable use of prior art elements
according to their established functions, no further analysis was required by the
Examiner. KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1396. Claim 14 was not argued
separately, and falls with claim 13. See 37 C.F.R. § 41.37(c)(1)(vii). See also In
re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).

CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred in
rejecting claims 10-14 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 10-14 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

AFFIRMED

JRG
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Joseph E. Mueth, Esq.
Joseph E. Mueth Law Corporation
Suite 300
100 E. Corson Street
Pasadena, CA 91103-3842