Ex Parte Denison

Patent Trial and Appeal Board

May 31, 2017

13194356 (P.T.A.B. May. 31, 2017)

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.
13/194,356 07/29/2011 William D. Denison 60017/50006 9742
7590 05/31/2017
Phillip M. Pippenger
Miller, Matthias & Hull
One North Franklin Street, Suite 2350
Chicago, IL 60606
EXAMINER
KHAN, OMER S
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
05/31/2017 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 WILLIAM D. DENISON
Appeal 2016-005787
Application 13/194,356
Technology Center 2600
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
NORMAN H. BEAMER, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 36—73, which constitute all the claims
pending in this application. Appeal Brief 2. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Introduction
Appellant’s invention relates to a “mobile electronic control device,
such as an electronic key, [that] is used to access or otherwise control the
operations of a field device” in which “the mobile control device interacts
with the field device via wired or wireless communications.” Abstract.
Appeal 2016-005787
Application 13/194,356
Representative Claim (Disputed limitations emphasized)
36. An access control system comprising a key management
system for management of electronic keys used to access
electronic locks, comprising:
a computer having a software program for key
management functionality;
a database containing key management data;
a new and previously uninitialized electronic key capable
of a) being activated for accessing electronic locks, and b)
communicating audit trail data collected from accessed
electronic locks; and
a communication device external to the computer for
communicating between the computer and the electronic key;
wherein the software program comprises computer-
executable instructions on one or more non-transitory computer-
readable media for performing a key data exchange operation
with the steps of:
receiving an activation request signal at the
communication device from the electronic key, and sending the
activation request signal from the communication device to the
computer;
sending an activation signal from the computer to
the communication device and from the communication device
to the electronic key to activate the key;
receiving a data exchange initiation signal at the
computer from the electronic key by way of the communication
device to initiate data exchange communication with the
computer;
receiving one or more audit trails at the computer
from the electronic key through the communication device,
storing the received one or more audit trails into the
database, and
an electronic lock accessed by the electronic key,
the electronic lock configured to communicate data with the
database without any connection between the electronic lock and
the computer or the database.
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Application 13/194,356
Rejections on Appeal* 1
Claims 36—71 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Answer 2.2 3 4 5 6 7
Claims 36—71 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Answer 4.
Claims 36—38, 41—51, 54—61, 64—66, and 69—73 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Harif (US 2002/0133716 Al;
1 The provisional nonstatutory double patenting rejection of claims 36—61,
65, 66, and 70-73 (Final Rejection 5—6) has been withdrawn by the
Examiner in the Answer. Answer 27. Additionally, the rejections under
both 35 U.S.C. § 112, first and second paragraphs have been withdrawn by
the Examiner in the Answer for the following claims and corresponding
bases:
(1) the rejection of claim
transceiver”;
(2) the rejection of claim
(3) the rejection of claim
(4) the rejection of claim
transceiver”;
(5) the rejection of claim
(6) the rejection of claim
device”; and
(7) the rejection of claim
device.” Answer 27.
2 The heading of the written description rejection indicates independent
claims 72 and 73 stand rejected, the body of the rejection does not set forth
any rationale for their rejection. See Answer 3. Similarly, the body of the
indefmiteness rejection does not set forth any rationale for the rejection of
claims 72 and 73. See Answer 4—5. In the event of further prosecution, the
Examiner should consider whether an indefmiteness rejection or written
description rejection (or both) is applicable to claims 72 and 73.
47, based on “a previously uninitialized
60, based on “a new transceiver”;
65, based on “an uninitialized transmitter”;
70, based on “a new and uninitialized electronic
71, based on “a deactivated electronic transceiver”;
72, based on “a new and uninitialized control
73, based on “a previously deactivated control
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Appeal 2016-005787
Application 13/194,356
Sept. 19, 2002), in view of Rollins (US 4,811,012; March 7, 1989) and
Rodriguez (US 6,975,202 Bl; December 13, 2005). Answer 5.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Final Rejection (mailed January 21, 2015), the Appeal Brief
(filed October 21, 2015), the Answer (mailed March 14, 2016), and the
Reply Brief (filed May 16, 2016) for the respective details. We have
considered in this decision only arguments Appellant actually raised in the
Briefs.
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief, to the extent
consistent with our analysis.
Rejections Under 35 U.S.C. §112, First Paragraph
Independent claim 36 includes the term “the electronic lock
configured to communicate data with the database without any connection
between the electronic lock and the computer or the database.” (Emphasis
added.) Appellant argues the Examiner erred in rejecting claims 36—73 as
failing to comply with the written description requirement, because “the
specification very clearly teaches two embodiments: one where there is a
network connection between the electronic lock and the database, and one
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Application 13/194,356
where the data is instead carried by the key itself, eliminating the need for
such a connection.” Appeal Brief 13, citing Specification H 193, 215.
We are not persuaded by Appellant’s argument. The Examiner finds:
[t]he specification fails to show or even suggest the possession
and enablement to one of an ordinary skilled in the art that the
claimed electronic lock configured to communicate data with a
database without any connection between the electronic lock and
the claimed computer or the database.
Ans 3. The Examiner also finds, and we agree, that “Fig. 38 [of Appellant’s
Specification] undoubtedly discloses wireless communication between the
electronic lock and the computer.” Answer 3. Appellant does not point to a
definition of “without any connection” in the Specification but instead points
to two embodiments. Regarding the first embodiment (see Specification 1
193), Appellant admits “there is a network connection between the
electronic lock and the database”, an admission that entirely contradicts any
meaning of “without any connection.” Appeal Brief 13.
Regarding the second embodiment, data is transferred “from the
electronic key 412 to the PC 410” using a “communication process.”
Specification 1215. This portion of the Specification references Figure 25,
in which key read/write device 418 appears physically connected to PC 410,
and electronic key 412 appears to either connect to, or communicate with,
key read/write device 418.
To satisfy the written description requirement under 35 U.S.C. §
112(1), the specification “must clearly allow persons of ordinary skill in the
art to recognize that the inventor invented what is claimed.” Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(internal quotation marks and alterations omitted). Here, one of ordinary
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Application 13/194,356
skill in the art, upon reading the disclosure, would not “recognize that the
inventor invented what is claimed,” because one of ordinary skill would
recognize that “the electronic lock configured to communicate data with the
database” requires some kind of connection between “the electronic lock and
the computer or the database.” Such a connection could be a “network
connection” as Appellant admits, or a “wireless communication” as the
Examiner finds.
Accordingly, we sustain the Examiner’s written description rejection
of independent claim 36 and independent claims 47, 70, and 71
commensurate in scope, and claims 37—46, 48—59 not separately argued.
See Appeal Brief 8.
Rejections Under 35 U.S.C. § 112, Second Paragraph
Appellant argues the Examiner erred in rejecting claims 36—73 as
being indefinite, because when claim 36 as a whole is read, “the remainder
of the claim itself would eliminate any alleged confusion; while the lock is
indeed not connected to the computer or database, the lock nonetheless
communicates data with the database via the ke^U Appeal Brief 14,
emphasis in original.
We are not persuaded by Appellant’s argument. The Examiner finds
that:
[rjeading the claim(s), as a whole, does not remove this
ambiguity because the mere fact that the lock communicates data
with the database via the key does not clarity to one of ordinary
skilled in the art the claimed absence of connection between the
lock and computer or the database.
Answer 29. We agree with the Examiner under the same reasoning as stated
above regarding the written description rejections.
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Application 13/194,356
Accordingly, we sustain the Examiner’s indefiniteness rejection of
independent claim 36 and independent claims 47, 70, and 71 commensurate
in scope, and claims 37-46, 48—59 not separately argued. See Appeal Brief
8. We also sustain the Examiner’s indefiniteness rejections of claims 48—59,
51 and 57 (see Answer 4—5), as Appellant did not contest these rejections in
the Reply. See Reply Brief 1—4.
Rejections Under 35 U.S.C. § 103(a)
Appellant argues the Examiner erred, because “Harif fails to teach
receiving the activation request from the key itself. As such, there is no
teaching in the art for at least this limitation (receiving an activation request
signal at the communication device from the electronic key), and this
limitation is in all pending independent claims.” Appeal Brief 16.
We are not persuaded by Appellant’s argument. The Examiner finds,
and we agree, that the limitation “receiving an activation request signal at
the communication device from the electronic” encompasses Rodriguez’s
key supply system in which:
the user is requesting the initiation of the key programming or
reprogramming from the user interface of the electronic key
(wireless communication device 102), and sending the activation
request to the communication device (key supplier 104) which is
then forwarded to the computer (master key supplier 108) to
issue a secondary key.
Answer 32, citing Rodriguez Figs. 3, 5A, 6; and 11:25—55, 13:8+, 3:45—57.
Appellant does not contest this finding in the Reply.3
3 Appellant additionally argues that “the Examiner is still using an assumed
lack of support to ignore the claim requirement that the electronic lock
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Accordingly, we sustain the Examiner’s rejection of independent
claim 36, and independent claims 47, 60, 65, and 70-73 commensurate in
scope, and claims 37-46, 48—59, 61—64, and 66—69 not separately argued.
See Appeal Brief 15—16; Reply Brief 4.
DECISION
We affirm the Examiner’s written description rejection of claims 36—
59, 70, and 71.
We affirm the Examiner’s indefmiteness rejection of claims 36—59,
70, and 71.
We affirm the Examiner’s obviousness rejection of claims 36—73.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. §41.50(f).
AFFIRMED
communicates data to the database without any connection between the
two.” Answer 4. This argument was not raised in the Appeal Brief whereas
the Examiner’s finding appears in the Final Rejection (see Final Rejection
16), and this argument is not responsive to an argument raised in the
Examiner’s Answer. As no good cause is shown, this argument will not be
considered by the Board. See 37 C.F.R. § 41.41(a)(2).
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