Ex parte Gilbert

Board of Patent Appeals and Interferences

Sep 24, 1997

08139574 (B.P.A.I. Sep. 24, 1997)

Application for patent filed October 20, 1993.1
The amendments in question were filed on February 23, 19952
(Paper No. 6) and January 2, 1997 (Paper No. 17).
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ANTHONY O. GILBERT
________________
Appeal No. 96-3033
Application 08/139,5741
________________
ON BRIEF
________________
Before ABRAMS, STAAB, and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
Anthony O. Gilbert (appellant) appeals from the examiner’s
refusal to allow claims 1-11 as amended by amendments filed2
subsequent to the final rejection. No other claims are pending.
We reverse.
Appeal No. 96-3033
Application 08/139,574
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Appellant’s invention pertains to a drop bolt system for
door security comprising a doorjamb restraint 24 mounted to a
doorjamb, and an elongate plate 22 rotatably mounted to the
doorjamb for receipt in a slot 36 in the doorjamb restraint to
block opening of a door. In a first embodiment, a latch 26 (see,
e.g., Figures 1 and 2) is mounted on the doorjamb restraint for
releasably engaging an upper edge of the elongate plate when the
plate is received in the slot 36 for preventing the plate from
being dislodged. Appealed claims 1-4, 7, 9, and 11 are directed
to the first embodiment. In a second embodiment, a pin 54 is
received in aligned holes in the elongate plate and the door when
the plate is received in the slot for preventing the plate from
being dislodged. Appealed claims 5, 6, 8 and 10 are directed to
the second embodiment.
Claim 1 is further illustrative of the appealed subject
matter and reads as follows:
1. A drop bolt system for door security comprising:
a. a doorjamb restraint mounted to a doorjamb and a
cripple underlying the doorjamb such that the restraint protrudes
from the doorjamb;
b. An elongate central metal plate having an upper edge
and a mid-point along the length of the plate, rotatably mounted
to a doorjamb frame, that releasably engages the doorjamb
restraint at the mid-point of the plate; and
Appeal No. 96-3033
Application 08/139,574
A rejection of claims 1-11 under 35 U.S.C. § 112, first3
paragraph, made in the final rejection, has been withdrawn by the
examiner in view of the amendments filed subsequent thereto. See
the advisory letter, mailed March 21, 1995 (Paper No. 7), the
examiner’s answer (page 2), mailed November 14, 1995 (Paper No.
11), and the supplemental examiner’s answer (page 1), mailed
April 1, 1996 (Paper No. 13).
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c. a central plate latch that engages the upper edge of
the central plate to releasably secure the central plate in
engagement with the doorjamb restraint to prevent rotational
movement of the central metal plate.
The following references are relied upon by the examiner as
evidence of obviousness:
Reed 1,288,988 Dec. 24, 1918
Church 1,549,182 Dec. 10, 1923
Rogers 4,871,203 Oct. 3, 1989
The appealed claims stand rejected under 35 U.S.C. § 103 as
follows:3
Claims 1-4, 7, 9 and 11, unpatentable over Reed in view of
Rogers.
Claims 5, 6, 8 and 10, unpatentable over Reed in view of
Church.
Reed, the primary reference applied in support of each of
the rejections, discloses a drop bolt system for door security
comprising a doorjamb restraint 16 mounted on a doorjamb by spurs
18, and a rotatably mounted elongate plate 20 for engaging a slot
22 in the doorjamb restraint. The doorjamb restraint 16 may
optionally be mounted to the doorjamb by a wood screw “[i]f it
Appeal No. 96-3033
Application 08/139,574
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shall be desired to apply the device with some degree of
permanency” (page 1, lines 98-99). With respect to claims 1-4,
7, 9 and 11, the examiner concedes that Reed lacks a plate latch
on the doorjamb restraint for preventing rotational movement of
the elongate plate 20 out of the slot 22, but relies on Rogers
for a teaching of this feature.
Rogers pertains to a reversible mount gate latch comprising
a back plate 21 mounted on a fence post 30, a latch member 20
pivotally mounted on the back plate, and a striker bar 13 mounted
on the gate. The back plate includes an opening 34 for receiving
therein the striker bar, and the latch member includes a
generally T-shaped opening 37, the head of which aligns with the
opening 34 of the back plate. As the gate is closed, the striker
bar engages a cam surface 33U of the latch member to pivot the
latch member out of the way and allow the striker bar to enter
the opening in the back plate. When the striker bar is fully
received in the opening 34, it clears the cam surface 33U (see
Figure 3), thereby allowing gravity to pivot the latch member
downwardly to capture the striker bar in the opening 34 (see
Figure 2).
Appeal No. 96-3033
Application 08/139,574
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According to the examiner,
Rogers teaches the well known latch mechanism
comprising a doorjamb restraint 21 protruding
from the doorjamb and a plate latch 20
pivotably mounted 22 to the doorjamb restraint
to capture the elongate central plate 19
therein. It would have been obvious to one of
ordinary skill in the art to modify the
restraint of Reed to additionally provide a
latch plate as taught by Rogers to enhance the
security of the latch as desired. [final
rejection, page 3]
We cannot support the examiner’s position. In In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992), our
current court of review stated:
It is impermissible to use the claimed
invention as an instruction manual or
“template” to piece together the teachings of
the prior art so that the claimed invention is
rendered obvious. This court has previously
stated that “[o]ne cannot use hindsight
reconstruction to pick and choose among
isolated disclosures in the prior art to
deprecate the claimed invention” [citations
omitted].
The situation here before us appears to be of the type
presented in Fritch. We will concede to the examiner that a case
can be made that there exists a correspondence between certain
elements of Reed and Rogers. It is our view, however, that the
motivation for casting about to find such correspondence comes
from first reviewing appellant’s disclosure rather than from
Appeal No. 96-3033
Application 08/139,574
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anything fairly taught by the references themselves. From our
perspective, nothing in Rogers can be fairly said to correspond
to the elongate plate 20 of Reed, which is rotatably mounted on
the same stationary support member, the doorjamb, as the
restraint member 16. Conversely, nothing in Reed can be fairly
said to correspond to the striker bar 13 of Rogers, which is
mounted on a different support member, the gate, than the
backplate or “doorjamb restraint” 21. Given their disparate
manners of operation and their different objectives, it is our
view that the only suggestion for combining Reed and Rogers so as
to arrive at the subject matter of independent claims 1 and 11
stems from hindsight knowledge impermissibly derived from
appellant’s own disclosure. It follows that we cannot sustain
the standing § 103 rejection of claims 1-4, 7, 9 and 11.
Turning to claims 5, 6, 8 and 10, Church discloses a door
latch comprising (1) a plate 5 having a bent portion 6 provided
with a serrated edge 8 for mounting on a doorjamb, and (2) a
rigid key member 10 having a first tapered portion 12 receivable
in a slot 9 of the plate and a second flange portion 18 for
engaging the door. In operation, the plate is positioned against
the doorjamb and the door is closed to cause the serrated edge to
dig into the doorjamb. Next, the tapered portion of the key is
inserted into slot 9 in the plate until end 12 of the key
Appeal No. 96-3033
Application 08/139,574
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overlaps the doorjamb and flange portion 18 engages the door with
a tight fit. Thereafter, a thumb screw or pin 14 is positioned
in one of the holes 13 in the tapered portion of the key to
prevent the key from becoming dislodged.
In rejecting claims 5, 6, 8 and 10, the examiner has taken
the position that
Church teaches a well known latch pin means
comprising a pin which, once a plate is
retained within a doorjamb restraint, is
received into a hole in the plate 13 to latch
the plate and restraint together. It would
have been obvious to one of ordinary skill in
the art to modify the plate and restraint of
Reed by providing a latch pin means as taught
by Church to enhance the security of the latch.
[final rejection, page 4]
The examiner’s position is not well taken. We acknowledge
that both Reed and Church are door security systems comprising a
doorjamb restraint mounted to the doorjamb, and an elongate plate
engaging the restraint and overlapping both the doorjamb and the
door to prevent the door from being opened. Notwithstanding
these similarities, the examiner’s rejection of claims 5, 6, 8
and 10 based on Reed and Church appears to us to be founded on
the use of impermissible hindsight gleaned from first reading
appellant’s disclosure rather than from what the references
fairly suggest. Our reasons follow.
Appeal No. 96-3033
Application 08/139,574
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First, because the Church device is held in place by
friction, and because of the way Church’s parts cooperate with
each other and with the door and doorjamb, the key 10 is
susceptible to becoming dislodged by rattling the door back and
forth. In this regard, see the discussion in Church at page 2,
lines 74-87. For this reason, Church’s design calls for the
provision of some ancillary means to ensure that the key does not
become dislodged. The same cannot be said of Reed. This is so
because Reed relies on gravity to hold the plate 20 in place.
Accordingly, it is not clear to us that one of ordinary skill in
the art, having before him the teachings of Reed and Church,
would see any need whatsoever for providing an ancillary
restraint arrangement like that of Church in Reed.
Second, although not required by the claims, appellant’s pin
is inserted into a hole in the plate and a hole in the door to
prevent rotation of the plate. Indeed, the provision of any
ancillary elongate plate restraining means in Reed that includes
a hole in the plate 20 would appear to require the provision of
at least one other pin receiving hole somewhere in order to
prevent rotation of the plate. In our view, Church provides no
such a teaching.
Third, assuming that the artisan would have been motivated
to provide Church’s ancillary pin and opening means in Reed, the
Appeal No. 96-3033
Application 08/139,574
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examiner appears to assume that such means would be incorporated
into Reed in a manner that would result in the claimed subject
matter, i.e., by providing a pin receiving hole in Reed’s
elongate plate 20 for receipt of the pin. From our perspective,
however, it is just as likely that Church’s teachings would be
incorporated into Reed by providing a pin receiving opening not
in the plate 20 but rather in the doorjamb at a location above
the plate in its latch position in order to block removal of the
plate from the slot 22.
Where prior art references require a selective combination
to render obvious a claimed invention, there must be some reason
for the combination other than hindsight gleaned from the
invention disclosure, Interconnect Planning Corp. v. Feil, 774
F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). In the fact
situation before us, we are unable to agree with the examiner
that one of ordinary skill in the art would have been motivated
by the teachings of Church to incorporate the pin and opening
restraint means thereof into the drop bolt system of Reed in a
manner which would produce the subject matter of claim 5.
Appeal No. 96-3033
Application 08/139,574
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The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-3033
Application 08/139,574
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Tim Cook
Gunn & Kuffner
5 Greenway Plaza, Ste. 2900
Houston, TX 77046