Ex Parte Garthe

Patent Trial and Appeal Board

Jan 22, 2016

13009948 (P.T.A.B. Jan. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/009,948 01/20/2011
25006 7590 01/26/2016
DINSMORE & SHOHL LLP
POBOX7021
TROY, MI 48007-7021
FIRST NAMED INVENTOR
Bernhard Garthe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MFA-30402/04 1764
EXAMINER
SOSNOWSKI, DAVIDE
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
01/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@patlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNHARD GAR THE
Appeal2013-002294
Application 13/009,948
Technology Center 3600
Before LYNNE H. BROWNE, PATRICK R. SCANLON, and FRANCES
L. IPPOLITO, Administrative Patent Judges.
IPPOLITO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Bernhard Garthe (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-11 and 16. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2013-002294
Application 13/009,948
CLAIMED SUBJECT MATTER1
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A padlock for securing and monitoring a switch of an
industrial plant having a lock housing of plastic, furthermore
having a hoop which is displaceably held at the lock housing,
and having a lock cylinder which is arranged in the lock
housing and can selectively be brought from an open position
into a locked position to lock the hoop to the lock housing,
wherein an RFID transponder is arranged in the lock housing.
REJECTION2
Claims 1-11 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Masoncup (US 4,811,578, iss. Mar. 14, 1989) in view of
Zovic (US 7,719,421, iss. May 18, 2010).
ANALYSIS
Appellant does not present separate arguments specifically directed to
the dependent claims under rejection (App. Br. 3-7). Therefore, the
dependent claims will stand or fall with independent claim 1.
The Examiner finds that Masoncup substantially discloses the claimed
padlock except for a lock housing of plastic and a RFID transponder
arranged in the lock housing. Final Act. 3-5. With regard to the plastic
housing, the Examiner asserts that it would have been obvious to modify
1 An after-final amendment to claims 1, 4, 9, 11, and 16 was entered by the
Examiner on June 28, 2012 in an Advisory Action. In the Advisory Action,
the Examiner indicated that the after-final amendment overcame the § 112
second paragraph rejection of claim 16 stated in the final office action, but
the prior art rejections are maintained. Ans. 2-3; Adv. Act. 2; App. Br. 3.
2 The§ 112 second paragraph rejection of claim 16 has been withdrawn.
Ans. 2-3.
2
Appeal2013-002294
Application 13/009,948
Masoncup' s lock with a plastic housing because it would have been "within
the general skill of a worker in the art to select known material on the basis
of its suitability." Id. at 4. The Examiner adds that Zovic discloses the use
of plastic as a housing material. Id. (citing Zovic, 3 :28--40). The Examiner
further asserts
[i]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to, via simple substitution
of one known element for another to obtain predictable results,
substitute an RFID transponder as taught by Zovic for the
transducer or radio transmitter ofMasoncup or, in the alternative
and in view of Zovic, to add the RFID transponder as taught by
Zovic to the radio transmitter of Masoncup to gain any and all
advantages presented by the RFID transponder as taught by
Zovic. It would have been obvious to one having ordinary skill
in the art at the time the invention was made to add the RFID
transponder as taught by Zovic to the apparatus disclosed by
Masoncup for the purpose of optimizing security by
incorporating the tracking capabilities of the RFID transponder.
Further; the replacement of or addition to the radio transmitter of
Masoncup with the RFID transponder of Zovic is merely the
application of a known technique to a known device ready for
improvement to yield predictable results - improved tracking of
the status of the lock with updated technology.
Id. at 4--5.
Appellant argues that the Examiner uses hindsight to combine the
teachings of the references because Masoncup and Zovic disclose devices
designed for different purposes. Specifically, Appellant argues Masoncup
teaches an "anti-theft" multi-use device and Zovic discloses a single-use
identification tag that is constructed of lightweight plastic material designed
to be opened easily to allow security to check the contents of luggage. App.
Br. 4--5 (citing Zovic, 5:21---6:18). As such, Appellant argues there is no
3
Appeal2013-002294
Application 13/009,948
reason, other than hindsight, to combine the references because the
Masoncup and Zovic devices are designed for "completely different
purposes, used in completely different fashions from each other, and have a
completely different mode of operation." App. Br. 5; see Reply Br. 1--4.
In the Answer, the Examiner responds that Zovic discloses a security
device with a security strap, a locking function that can function as an anti-
theft device, and a RFID transponder designed to facilitate locating luggage.
Ans. 3--4 (citing Zovic, 1:58---60; 2:29--47; 6:25-37). The Examiner's
position is persuasive. Zovic teaches that "security system 20 can be used
with any conventional piece of luggage that is of a type that has cooperating
parts adapted to receive ... a padlock" and "[ w ]ith the security strap 24
operably received by the cooperating parts of such a piece of luggage (not
shown), and said strap operably received by the linking means, the piece of
luggage cannot be opened." Zovic, 6:25-37.
Moreover, we agree with the Examiner that the Zovic device is not a
single-use device because after security strap 24 is removed from first
passageway 34, a new security strap 124 may be inserted to re-secure the
piece of luggage. Ans. 6-7 (citing Zovic 2: 12-22 ). Appellant takes the
position that Zovic is a single-use device because it can only be used on one
trip. Reply Br. 4. Nonetheless, Appellant states that the "second strap can
be used to reattach the body 30 to the luggage." Id. We agree with the
Examiner that the use of the second strap indicates, at least, a second use of
the Zovic device to secure a piece of luggage.
Appellant further argues that the Examiner's reasoning is based on
hindsight because replacing the Masoncup metal lock housing with plastic
would completely change the "mode of operation of Masoncup from a
4
Appeal2013-002294
Application 13/009,948
robust security padlock which resists attack, to a padlock housing made of a
relatively flimsy material which may be easily attacked and broken or cut."
App. Br. 6.
We are not persuaded that a plastic housing renders the Masoncup
padlock inoperable, even considering Appellant's argument that a plastic
housing may make for a less effective anti-theft device. As the Examiner
notes, substituting the plastic housing material does not impact the mode of
operation of the Masoncup device because the Masoncup lock would operate
the same way and perform the same function with the same end result. Ans.
7. Further, also noted by the Examiner, a metal padlock may be easily
opened by means of a key or via a bolt cutter, and "the fact that a
security/locking device may easily be opened does not in any way mean that
the device is not an anti-theft device." Ans. 5---6. Moreover, the Examiner
points out that the Masoncup reference does not state the Masoncup lock
housing or hoop is constructed of metaL Id. at 4. 3
Appellant also argues that Masoncup discloses an audible transducer
or radio transmitter, but does not disclose a RFID transponder. App. Br. 6.
However, the Examiner does not rely on Masoncup to teach a RFID
transponder. The Examiner asserts that it would have been obvious to
replace Masoncup' s transducer or transmitter with Zovic' s RFID
transponder to, among other things, optimize security by incorporating the
tracking capabilities of the RFID transponder. Ans. 9. Thus, Appellant has
3 The Examiner acknowledges that Masoncup teaches a padlock is
"typically" composed of metal. Ans. 4 (citing Masoncup, 1 :30-32).
5
Appeal2013-002294
Application 13/009,948
not apprised us of any error in the Examiner's findings and conclusion of
obviousness on this basis.
DECISION
We affirm the Examiner's decision rejecting claims 1-11 and 16.
AFFIRMED
em
6