Ex Parte Frolov et al

Patent Trial and Appeal Board

Jun 16, 2014

12295641 (P.T.A.B. Jun. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GEORGE FROLOV, JOHN E. WALSH III,
VICTOR BOGDANOV, ALFRED S. LEVESQUE,
KEVIN D. MILLER, DON SHILONIE, and ADAM O’DAY
____________________

Appeal 2012-004745
Application 12/295,641
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
George Frolov et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 7 to 32 and 35 to 51. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE CLAIMED SUBJECT MATTER
Claim 7, reproduced below, is illustrative of the claimed subject
matter.
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7. A deadbolt lock assembly comprising
a retractable and extendable deadbolt,
a housing,
a credential reading device on the housing,
an outside turnpiece pivotally mounted on the housing,
the turnpiece being normally disconnected from the deadbolt,
and the turnpiece being configured to be gripped and turned by
an operator,
a key operated lock mechanism on the housing, and
a mechanism operable to connect the turnpiece to the
deadbolt so that an operator can turn the turnpiece to move the
deadbolt, the mechanism connecting the turnpiece to the
deadbolt both when an operator uses a key in the key operated
lock mechanism and when an operator presents an appropriate
credential to the credential reading device, only one of the key
and the credential being required for the mechanism to connect
the turnpiece to the deadbolt.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Frolov ʼ347
Frolov ʼ293
US 6,286,347 B1
US 6,876,293 B2
Sep. 11, 2001
Apr. 5, 2005
Keightly US 2005/0172685 A1 Aug. 11, 2005

REJECTIONS
I. Claim 38 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.1
II. Claims 7–11, 19–22, and 31 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Frolov ʼ347.

1 See Final Rej. 2; Ans. 4 (stating that every ground of rejection set forth in
the Office action from which the appeal is taken, except for grounds “listed
under the subheading ‘WITHDRAWN REJECTIONS’” is maintained).
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III. Claims 32 and 45–51 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Keightly.
IV. Claims 35 and 38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Frolov ʼ347.
V. Claims 12–18 and 39–44 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Frolov ʼ347 and Frolov ‘293.
VI. Claims 23–30, 36, and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Frolov ‘347 and Keightly.

OPINION
Rejection I – Indefiniteness
Appellants do not contest the Examiner’s rejection of claim 38 as
being indefinite. Thus, Appellants have waived any argument of error, and
we summarily sustain the rejection. See In re Berger, 279 F.3d 975, 984,
985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a
rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed
to contest the rejection on appeal).
Rejection II
Claim 7 requires, in relevant part, a mechanism which is operable to
connect the turnpiece to the deadbolt and which connects the turnpiece to the
deadbolt both when an operator uses a key in the key-operated lock
mechanism and when an operator presents an appropriate credential to the
credential reading device, with only one of the key and the credential being
required for the mechanism to connect the turnpiece to the deadbolt. The
Examiner reads this claimed “mechanism” on clutch mechanism 12 of
Frolov ʼ347. Ans. 5–6. However, we agree with Appellants that Frolov
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ʼ347 does not disclose that the clutch 12, which is operable to connect lever
handle 24 with the lockset actuator when a valid code is entered to switch
access control 26 to an unlocked state (col. 3, l. 38 – col. 5, l. 17), also
connects lever handle 24 to the lockset actuator when an operator uses a key
in key-operated lock 28. See App. Br. 16. Rather, as pointed out by
Appellants, Frolov ʼ347 discloses that key-operated lock 28 “operates a cam
mechanism 29 interacting directly with the lockset in a conventional manner
to implement a mechanical override function.” Col. 3, ll. 28–31; App. Br.
17. Frolov ʼ347 does not elaborate on any “conventional manner” of the
lock operating a cam mechanism to interact directly with the lockset.
The Examiner asserts that when a key is used to actuate the lockset,
“the bolt is withdrawn by actuation of the turnpiece via the clutch.” Ans.
26–27. However, the Examiner does not point to any disclosure in Frolov
ʼ347 to support this assertion. Rather, the Examiner cites “proof of concept
shown in figures 8-11 in U.S. Patent Number 5,640,863” (hereinafter Frolov
ʼ863). Id. Although Frolov ʼ863 does appear to disclose that which is
lacking in Frolov ʼ347, we note that the rejection is based on anticipation by
Frolov ʼ347, not on anticipation by Frolov ʼ863 or on obviousness based on
a combination of Frolov ʼ347 and Frolov ʼ863. It is not at all apparent, and
the Examiner does not explain with sufficient clarity, how this disclosure of
Frolov ʼ863 supports the Examiner’s position that the subject matter of claim
7 is anticipated by Frolov ʼ347. See Reply Br. 4 (commenting that the
Examiner has not attempted to explain why this case presents a circumstance
in which multiple references may be relied upon to support an anticipation
rejection under 35 U.S.C. § 102).
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We therefore conclude that the Examiner fails to establish a prima
facie case that Frolov ʼ347 anticipates the subject matter of claim 7. We do
not sustain the rejection of claim 7 and of its dependent claims 8–11, 19–22,
and 31.
Rejection III
Claim 32 requires, in relevant part, “an outside turnpiece pivotally
mounted on the housing, . . . being configured to be gripped and turned by
an operator.” App. Br. 50, Claims App’x. The Examiner reads this
limitation on Keightly’s lock barrel 94. Ans. 8. According to the Examiner,
the turnpiece (lock barrel 94) is “configured to be gripped and turned by an
operator (via key 16).” Id. We agree with Appellants that Keightly’s lock
barrel 94 does not meet the claim language “configured to be gripped and
turned by an operator.” See App. Br. 23. Rather, it is the key that is gripped
and turned by the operator in Keightly’s device. Reply Br. 5.
Thus, we do not sustain the Examiner’s rejection of claim 32 and of
its dependent claims 45-51 as being anticipated by Keightly.
Rejection IV
The Examiner finds that Frolov ʼ347 discloses all of the elements of
claim 38, with the exception of the adapter (operator coupling assembly 50)
having a plurality of notches. Ans. 12. The Examiner asserts that “[i]t is
common knowledge in the prior art to incorporate additional notches about
the adapter” to have the pin be “movable into any one of the notches,
depending on the relative rotational positions of the adapter and the
clutching cam.” Ans. 12. As pointed out by Appellants, the Examiner does
not provide any evidence to support this assertion of “common knowledge.”
App. Br. 30. However, the Examiner also reasons that it would have been
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obvious “to duplicate the notch of the adapter [of Frolov ʼ347] to a plurality
of locations around the adapter in order to have pivotal movement of the
adapter cause pivotal movement of the clutching cam when the pin extends
into any one of the notches.” Ans. 12 (relying on In re Harza, 274 F.2d 669,
671 (CCPA 1960) for the legal principle that “[d]uplicating the components
of a prior art device is a design consideration within the skill of the art”); id.
at 30. “It is well settled that the mere duplication of parts has no patentable
significance unless a new and unexpected result is produced.” In re Harza,
274 F.2d 669, 671 (CCPA 1960). Appellants do not specifically identify
error in the Examiner’s application of the “mere duplication” rationale set
forth in Harza in the rejection of claim 38 as being unpatentable over Frolov
ʼ347.
For the above reasons, we sustain the rejection of claim 38.
Claim 35 depends indirectly from claim 7. The Examiner’s proposed
modification of Frolov ʼ347 does not overcome the deficiency of Frolov
ʼ347 vis-à-vis claim 7, discussed supra. Thus, we do not sustain the
rejection of claim 35.
Rejection V
In rejecting claims 12–18, which depend from claim 7, as
unpatentable over Frolov ʼ347 and Frolov ʼ293, the Examiner does not
articulate any findings or reasoning that would cure the defect in the
rejection of claim 7. Thus, for the reasons set forth above in discussing
Rejection II, we do not sustain the rejection of claims 12–18.
Independent claim 39 requires, inter alia, a mechanism including
a motor and a controller that receives input from the credential
reading device and sends a signal to the motor to connect the
turnpiece to the deadbolt, and that, after turning of the turnpiece
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to retract the deadbolt, initiates a relock time delay to give an
operator a predetermined amount of time to relock the deadbolt
with the turnpiece, and, after the relock time delay, disconnects
the turnpiece from the deadbolt and wherein the controller, after
an operator extends the deadbolt, truncates the relock time
delay.
App. Br. 53, Claims App’x.
Independent claims 40, 41, and 43 also require a controller “that, after
turning of the outside turnpiece to retract the deadbolt, initiates a relock time
delay . . . .” Id. at 54, 55, 56.
The Examiner finds that Frolov ʼ347 does not disclose this relock time
delay feature, and relies on Frolov ʼ293 to address this deficiency. Ans. 13–
14, 17. Specifically the Examiner finds that Frolov ʼ293 teaches a controller
that “after presentation of an appropriate credential and turning of the
turnpiece to retract the deadbolt, initiates a relock time delay to give an
operator a predetermined amount of time to relock the deadbolt with the
turnpiece, and after the delay, disconnects the turnpiece from the deadbolt.”
Ans. 17, 18 (citing Frolov ʼ293, col. 12, l. 66 – col. 13, l. 10). We agree
with Appellants that the cited passage of Frolov ʼ293 is not conditioned on
(or associated with) turning of the turnpiece to retract or reset the deadbolt.
See App. Br. 31–32. Rather, the relock time delay of Frolov ʼ293 is initiated
by the release of the lock, which permits the latch or deadbolt to be actuated
(i.e., retracted or reset) by one of the handles 24, 26. The cited passage does
not disclose the controller initiating the relock time delay after turning of the
turnpiece (handle) to retract the deadbolt, as called for in claims 39, 40, 41,
and 43. Thus, the Examiner’s rejection is premised on an erroneous finding.
See App. Br. 33. Accordingly, we do not sustain the rejection of claims 39,
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40, 41, and 43, and of claims 42 and 44, which depend from claims 41 and
43, respectively.
Rejection VI
Claims 23–30, 36, and 37 depend from claim 7. The Examiner’s
proposed combination of Frolov ʼ347 and Keightly does not overcome the
deficiency of Frolov ʼ347 vis-à-vis claim 7, discussed supra. Thus, we also
do not sustain the rejection of claims 23-30, 36, and 37 as unpatentable over
Frolov ʼ347 and Keightly.

DECISION
The Examiner’s decision rejecting claim 38 under 35 U.S.C. § 112,
second paragraph, is affirmed. The Examiner’s decision rejecting claim 38
under 35 U.S.C. § 103(a) also is affirmed. The Examiner’s decision
rejecting claims 7–32, 35–37, and 39–51 under 35 U.S.C. §§ 102(b) and
103(a) is reversed.
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).
AFFIRMED-IN-PART

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