Ex Parte Huang et alDownload PDFPatent Trial and Appeal BoardNov 28, 201712176337 (P.T.A.B. Nov. 28, 2017) Copy Citation 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. 12/176,337 07/19/2008 Yuming Huang 2429 40294 7590 11/28/2017 YUMING HUANG 810 MEADOWRIDGE DRIVE AURORA, IL 60504 EXAMINER GALL, LLOYD A ART UNIT PAPER NUMBER 3673 MAIL DATE DELIVERY MODE 11/28/2017 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 YUMING HUANG, WANDUAN HUANG, AILIAN WANG, YUZHU HUANG, YULING HUANG, YUJIAN HUANG, and WEIHUA WANG ____________________ Appeal 2016-006395 Application 12/176,337 Technology Center 3600 ____________________ Before JENNIFER D. BAHR, EDWARD A. BROWN, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s rejection1 of claims 1 and 2, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appeal is taken from the Final Office Action dated June 9, 2015 (“Final Act.”), as supplemented by the Advisory Action dated August 7, 2015 (“Adv. Act.”). Appeal 2016-006395 Application 12/176,337 2 THE CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, is the sole independent claim on appeal and is illustrative of the subject matter on appeal. 1. A safe comprising: (a) A controller inside said safe; (b) A key of said safe; (c) The controller in (a) which locks or unlocks the said safe, based on interaction with the key in (b); (d) The controller in (a) being physically inaccessible from outside of said safe when closed; (e) An outside of said safe, collectively defining an external surface; (f) The external surface being free of components for actuating the controller. THE REJECTIONS I. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated by Ernst (US 2004/0134247 A1; published July 15, 2004). II. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated by Roatis (US 2006/0213239 A1; published Sept. 28, 2006). III. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Myers (US 5,862,693; issued Jan. 26, 1999) and Borodulin (US 2007/0267489 A1; published Nov. 22, 2007). IV. Claims 1 and 2 stand rejected under 35 U.S.C. §103(a) as unpatentable over Cole (US 4,714,030; issued Dec. 22, 1987) and Borodulin. Appeal 2016-006395 Application 12/176,337 3 ANALYSIS Rejection I Regarding independent claim 1, the Examiner finds that Ernst’s merchandise container discloses the claimed safe, including a locking system 11 (i.e., a controller, as claimed) that locks or unlocks the merchandise container (i.e., safe) based on interaction with Ernst’s handheld transmitter 12 (i.e., a key, as claimed). Final Act. 2; see, e.g., Ernst ¶¶ 39, 41, Fig. 1; see also Ans. 8. The Examiner also finds that Ernst’s locking system 11 (i.e., the controller) is inside, and physically inaccessible from outside, of Ernst’s merchandise container when closed, and that the external (or outside) surfaces of housing 1 of Ernst’s merchandise container are free from components for actuating locking system 11 (i.e., the controller), as claimed. Final Act. 2. Appellants rely on their arguments as presented in (i) their Response After Final dated June 30, 2015 (the “06-30-2015 Response”), which refers to their Response After Final dated December 2, 2010 (“the “12-02-2010 Response”) filed in response to the Final Office Action dated August, 6, 2010; and (ii) their Amendment filed December 5, 2014 (the “12-05-2014 Amendment”). See Appeal Br. 10 (“Arguments”).2 Appellants also rely on the Board’s pro forma reversal of the Examiner’s rejections, under 35 U.S.C. §§ 102(b) and 103(a), of the claims pending at the time of the Board’s Decision dated May 23, 2014 (the “Decision” or “Dec.”), as evidence that 2 Appellants’ documents omit page numbers; however, we refer to pages 1 to 13 of the Appeal Brief, pages 1 to 5 of the 12-05-2014 Amendment, and to pages 1 to 4 of the 06-30-2015 Response. Appeal 2016-006395 Application 12/176,337 4 the currently pending claims, which are subject to the instant appeal, are patentable. The Board’s Decision is not evidence that the currently pending claims are patentable, because (i) the Board’s reversal in the Decision related to the claims pending as of the date of the Decision, and the claims pending as of the date of the Decision are different from the claims subject to the instant appeal; and (ii) the prior art relied on by the Examiner to reject the claims pending as of the date of the Decision (i.e., Freeman, Stuhlbarg, Peckar, and Briggs) is different from the prior art relied on by the Examiner to reject the claims subject to the instant appeal (i.e., Ernst, Roatis, Borodulin, Myers, and Cole). See Appeal Br. 10 (“Arguments”); Dec. 1–11; Ans. 6–7. In other words, the Board’s Decision is of no relevance to the standing rejections of the currently pending claims from which this appeal is taken. Appellants argue that Ernst’s merchandise container is transparent, and therefore, not a safe, as claimed, because a safe is a “security container” that is “never” transparent. 12-02-2010 Response 2 (citing Ernst ¶¶ 10, 23); see also Reply Brief 13 (arguing that Ernst discloses “a transparent merchandise container ( a vending machine) in a shop” and not a safe, as claimed, which is “normally made of metal” and “never transparent.”). Anticipation requires a showing that each limitation of a claim is found in a single reference, either expressly or inherently. Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1369 (Fed. Cir. 2005). In addition, during examination of a patent application, pending claims are given their 3 Appellants’ Reply Brief omits page numbers; however, we refer to pages 1 to 6. Appeal 2016-006395 Application 12/176,337 5 broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Specification describes Appellants’ “new safe” as “[a] smooth, complete, and rigid metal brick.” Spec. ¶ 3 (referring to Fig. 2). The Specification also discloses that the safe has “[a] security class or burglary resistant capability,” such that “an attack to the safe” will not result in “[o]bjects deposited inside the safe [being] stolen or destroyed.” Id. However, the Specification does not define the term “safe” or otherwise suggest that this term is used in a manner different from the ordinary and customary meaning of this term. An ordinary meaning of the claim term “safe” is “a place or receptacle to keep articles safe: as a : a ventilated or refrigerated chest or closet for securing provisions from pests and the effects of weather b : a metal box or chest sometimes built into a wall or vault to protect money or other valuables against fire or burglary.” WEBSTER’S THIRD NEW INT’L DICTIONARY 1998 (1993) (emphasis added). Thus, we determine, consistent with the Specification, that the broadest reasonable interpretation of the claim term “safe” is “a place or receptacle to keep articles safe,” and that non-limiting examples of safes include a chest or closet for securing provisions and a metal box for protecting valuables. Ernst discloses “a merchandise container for receiving in particular, highly valuable products that have to be protected against theft.” Ernst ¶ 2. Thus, Ernst’s merchandise container is “a receptacle to keep articles safe,” and therefore, Ernst discloses “a safe.” Further, the fact that portions of Ernst’s merchandise container are transparent, as argued by Appellants, does not remove Ernst’s merchandise container from being a safe, because the definition of the claim term safe (i.e., a receptacle to keep articles safe) does Appeal 2016-006395 Application 12/176,337 6 not require the safe to be made of any particular type of material, i.e., non- transparent. Notably, claim 1 also does not limit the safe to be formed of a non-transparent material, such as metal. See Adv. Act. 2 (determining that claims 1 and 2 do not recite “a metal panel.”). Unclaimed features cannot impart patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Arguments must be commensurate in scope with the actual claim language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellants also argue that Ernst’s merchandise container has “weak parts” on the exterior surface of the safe, for example, including Ernst’s indicator unit, transparent cover 2, and transparent face parts 4a, 4b, such that Ernst fails to disclose a safe having an external surface being free of components for actuating the controller, as claimed. 12-02-2010 Response 2 (citing Ernst ¶¶ 18, 34, 35). Although the term “weak parts” appears in previously pending claims, claim 1, as currently pending and as set forth supra, recites, “The external surface being free of components for actuating the controller.” The Specification describes the safe’s controller as the device that “controls the driving mechanism to open [the] safe door.” Spec. ¶ 14. We determine that the claim term “components for actuating the controller” means components that cause the controller to lock or unlock the safe. Ernst discloses that “[t]o prevent theft, housing 1 comprises a locking system 11 that is triggered electrically and connected to each of the two face panels 4a and 4b.” Ernst ¶ 39, Fig. 1. Ernst also discloses that “[l]ocking system 11 is actuated and unlocked (or released) via a wireless . . . opening command.” Id. ¶ 40 (emphasis added); see also id. ¶ 41 (“locking system 11 comprises a receiver 11a . . . , as well as an electromagnet 20,” wherein Appeal 2016-006395 Application 12/176,337 7 “[r]eceiver 11a cooperates with a hand-held transmitter 12 . . . operated, for example by a person in a warehouse manning a cashier’s station.”). Ernst discloses that “[u]pon receiving the opening signal, . . . two sliding elements 2a and 2b are simultaneously released on face panels 4a and 4b by the associated locking system 11” via electromagnet 20. Id. ¶ 44. Ernst also discloses that “elements 11a and 20 are disposed on associated face plates 4a, 4b,” and that contact 14 (which is “associated with both the electromagnet 20 and the locking system 11” and “scans (or ‘queries’) the position of sliding element 2a, 2b”)) forms “a coherent, compact assembly unit” along with receiver 11a and electromagnetic 20. Id. ¶ 45; see also Fig. 1. Figure 1 of Ernst is reproduced below. Figure 1 of Ernst is a perspective view of the merchandise container. See Ernst ¶ 27. Appeal 2016-006395 Application 12/176,337 8 Appellants do not dispute the Examiner’s finding that Ernst’s locking system 11, which includes receiver 11a, contact 14, and electromagnetic 20 as a coherent, compact assembly unit, corresponds to the claimed controller (i.e., the device that controls the driving mechanism to open cover 2). A preponderance of the evidence supports the Examiner’s findings that (i) locking system 11 is located on the inside surface of face panel 4a, such that Ernst’s controller is physically inaccessible from outside the merchandise container when cover 2 is closed, as claimed; and (ii) the components for actuating Ernst’s locking system (i.e., controller), including receiver 11a, electromagnetic 20, and hand-held transmitter 12, are either located inside the merchandise container or at the cashier’s station, such that the “external surface” of Ernst’s merchandise container is “free of components for actuating the controller,” as claimed.4 Regarding Appellants’ arguments that Ernst’s indicator unit, transparent cover 2, and transparent face parts 4a, 4b meet the claim limitation of “components for actuating the controller,” we disagree. Ernst discloses that indicator unit 15b is controlled by contact 14 “to indicate the state or condition of cover 2,” however, Appellants have not provided, nor can we find, support in Ernst that indictor unit 15b actuates locking system 4 Wired switching system 16 is optional. See Ernst ¶ 42, Fig 1. We also do not consider a power supply, such as an electrical cord extending from an exterior surface of Ernst’s merchandise container, as meeting the limitation of “components for actuating the controller,” because the power supplied by the cord is supplied regardless of the state of the controller. In other words, the power supply does not actuate or cause the controller to lock or unlock the merchandise container. Appeal 2016-006395 Application 12/176,337 9 11 to open or close cover 2. See, e.g., Ernst ¶ 46.5 Similarly, cover 2 and face parts 4a, 4b form structures of housing 1 of Ernst’s merchandise container, but Ernst does not disclose that cover 2 and face parts 4a, 4b in any way actuate locking system 11 to open or close cover 2. Appellants further submit as evidence of patentability that there is no safe “on the market,” since the filing of Appellants’ application for patent. 12-02-2010 Response 4. However, we do not agree that the alleged lack of a safe, as claimed, on the market at the time of filing of Appellants’ patent application, is relevant to the Examiner’s determination that Ernst anticipates the claimed invention under 35 U.S.C. § 102(b). Finally, Appellants argue that the claimed invention has an “unexpected effect,” including advantages that “Ernst’s container does not possess.” Reply Br. 1. However, as discussed supra, unclaimed advantages cannot be relied on to distinguish the claimed invention from the prior art. The Examiner’s rejection is pursuant to 35 U.S.C. § 102(b), and evidence of secondary considerations, such as unexpected results, is not relevant to a rejection under § 102(b). See In re Wiggins, 488 F.2d 538, 543 (CCPA 1973). Accordingly, Appellants’ arguments do not apprise us of error in the Examiner’s findings, and we sustain the Examiner’s rejection of independent claim 1, and claim 2 which depends therefrom, under 35 U.S.C. § 102(b), as anticipated by Ernst. 5 Moreover, Ernst depicts indicator unit 15a on an inside surface of face panel 4b and further discloses that indicator unit 15a may be a remote, wireless component, such that the exterior surface of Ernst’s merchandise container is free of indicator unit 15a. Ernst ¶ 46. Appeal 2016-006395 Application 12/176,337 10 Rejection II Regarding independent claim 1, the Examiner finds that Roatis’ vending type machine A discloses the claimed safe, including a controller (i.e., Roatis’ “motor inside the safe”) for locking and unlocking cabinet C based on interaction with a key (i.e., Roatis’ remote controller D). Final Act. 2–3; see, e.g., Roatis ¶ 27, Fig. 1. The Examiner determines that Roatis’ motor (i.e., controller) is inside, and physically inaccessible from outside, of Roatis’ cabinet C when closed (Final Act. 3), and that the external surface of Roatis’ cabinet C is free of components for actuating the motor (i.e., controller) (id.; Ans. 8 (citing Roatis ¶ 19)). Appellants argue that Roatis’ controller is the signal receiving sensor, which is “mounted outside of the safe door,” wherein “[t]he sensor is physically accessible from outside when [the] safe door is closed.” 06-30- 2015 Response 1 (citing Roatis’ p. 2, l. 21–p. 3, l. 3, Fig. 1); see also Reply Br. 3. Appellants submit that Roatis’ “door is not a complete metal panel, but has a hole on it in order to mount the sensor.” Id. Figure 1 of Roatis is reproduced below. Figure 1 depicts “a perspective view of an illustrative vending type machine A with a door B and cabinet C in a closed position and showing a remote Appeal 2016-006395 Application 12/176,337 11 controller D.” Roatis ¶ 27. Paragraph 19 of Roatis discloses, in relevant part, that [the] system is designed to operate within the structure of the device it is securing. Therefore, there is not external means by which to attack it. It may operate via an electrical controller that can utilize a variety of communication methods . . . [such as] Infrared, Radio frequency, and Switch keylock. Roatis ¶ 19. Claim 1, as set forth supra, requires, in relevant part, that (i) a controller is inside the safe for locking and unlocking the safe based on interaction with a key; (ii) the controller is physically inaccessible from outside the safe when closed; and (iii) the external surface of the safe is free from components for actuating the controller. Although Roatis supports the Examiner’s determination that Roatis’ controller (i.e., motor) is inside the safe and physically inaccessible from the outside the safe when closed, a preponderance of the evidence fails to support the Examiner’s determination that the external surface of the safe is free of components for actuating the controller. Rather, Roatis shows a component for receiving a signal from remote controller D on the exterior surface of the safe, wherein such a component actuates the controller, as claimed. See, e.g., Roatis ¶ 20 (“this design requires the application of an electrical signal to the motor to activate the system for both securing and opening sequence”). Accordingly, we do not sustain the Examiner’s rejection of independent claim 1, and claim 2 which depends therefrom, under 35 U.S.C. § 102(b), as anticipated by Roatis. Appeal 2016-006395 Application 12/176,337 12 Rejection III Regarding independent claim 1, the Examiner finds, inter alia, that Myers teaches a safe having an electronically controlled security lock 100 and actuator 150 (which together comprise a controller) inside, and physically inaccessible from outside, of Myer’s safe when closed. Final Act. 3; see e.g., Myers 3:8–10, 44–46. However, Myers discloses that a component (i.e., key board 20) for actuating the controller is located on an external surface of Myer’s safe, such that Myers fails to disclose an external surface of a safe being free of components for actuating the controller, as claimed. See, e.g., Myers 3:17–20. Figure 1 of Myers is reproduced below. Figure 1 is a perspective view of a safe utilizing an electronically controlled security lock. Id. at 2:26–28; see also id. at 3:17–20 (“an electronic input panel or keyboard 20 for entering a numeric access code for the lock 100 is attached to the exterior surface of the safe door 12.”) (emphasis added). The Examiner relies on Borodulin for teaching that it is well known to provide a hidden electronic control part 28 for a door lock 20, which is actuated by a pre-coded card 30 (i.e., a key), such that “the outside surface of the door is free of any components for actuating” the door’s lock 20. Appeal 2016-006395 Application 12/176,337 13 Final Act. 3; see e.g., Borodulin ¶¶ 17, 18, 20, 21, Figs, 1, 2; see also Ans. 9 (citations omitted). The Examiner reasons, inter alia, that it would have been obvious to modify Myer’s safe by replacing keyboard 20 on the outside of Myer’s door with a hidden electronic control part 28, as taught by Borodulin, such that the entire exterior surface of Myer’s safe is free of any component for actuating the controller 100, 150 “to optimize the security of the safe against tampering.” Final Act. 3. Appellants argue that Myer’s “device 20 . . . is mounted outside the safe door.” 06-30-2015 Response 1. However, Appellants’ argument is not responsive to the rejection as articulated by the Examiner, which acknowledges that keyboard 20, which is a component for actuating Myer’s controller, is attached to an external surface of the safe, as set forth supra, such that the external surface of Myer’s safe is not “free of components for actuating the controller,” as required by claim 1. Instead, as set forth supra, the Examiner relies on Borodulin for disclosing a hidden controller (or lock 20), which is wirelessly actuated by pre-coded card 30 that transfers energy and data via an RF antenna. See, e.g., Borodulin ¶ 21. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants also argue that the invented safe is “a complete metal panel,” as compared to Borodulin’s door, which is must be “made from a material permeable to electromagnetic radiation.” 06-30-2015 Response 2 (citing Borodulin ¶ 20); see also id. at 1–2; Reply Br. 3–4. However, as discussed supra, Appellants are arguing a limitation that is not recited in claim 1, as claim 1 does not limit the material of the safe to metal. Thus, Appeal 2016-006395 Application 12/176,337 14 Appellants’ argument does not apprise us of error in the Examiner’s findings or reasoning. Appellants further argue that the Examiner erred because Borodulin failed to appreciate the problem that is solved by Appellants’ claimed invention. 06-30-2015 Response 2. Although a combination of known elements may be nonobvious in view of the discovery of a previously unknown problem, we are not persuaded by Appellants’ argument because the Examiner has provided sufficient reasoning (i.e., “to optimize the security of the safe against tampering,” as set forth supra), with factual underpinnings from Myers and Borodulin, in support of the proposed combination, which is not reliant on recognizing the flaw allegedly discovered by Appellants. Appellants further argue that because no one thought to improve Myers, which was published in 1999, in view of Borodulin, the claimed safe is nonobvious. 06-30-2015 Response 2. However, absent a showing of long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness. Iron Grip Barbell Company, Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324-25 (Fed. Cir. 2004). Finally, Appellants argue that Myers’ safe does not have the advantages, or “unexpected effect,” of the claimed safe. Reply Br. 1 (citing 12-05-2014 Amendment); see also 06-30-2015 Response 2–3. However, Appellants have not provided sufficient evidence to show that the results (or advantages) of the claimed safe, as listed on pages 2 to 3 of the 06-30-2015 Response, were unexpected to one of ordinary skill in the art at the time of Appellant’s invention, given the technical knowledge within the art, as evidenced by Myers and Borodulin, for example. Further, to the extent Appeal 2016-006395 Application 12/176,337 15 Appellants are arguing that the metal structure of the safe provides unexpected results, the material of the safe, as discussed supra, is not claimed. See 06-30-2015 Response 3. Accordingly, we sustain the Examiner’s rejection of independent claim 1, and claim 2 depending therefrom, under 35 U.S.C. § 103(a), as unpatentable over Myers and Borodulin. Rejection IV Regarding independent claim 1, the Examiner finds, inter alia, that Cole teaches a safe having a controller (i.e., Cole’s electrically operable latching means 50), which is inside, and physically inaccessible from outside, of Cole’s security cabinet when closed. Final Act. 4; see e.g., Cole 4:11–12. However, Cole discloses that a component (i.e., “a disguised electronic control panel 71”) for actuating the controller is located on an external surface of Cole’s safe (i.e., “carried on the upper portion of the outside of door 17”), such that Cole fails to disclose an external surface of a safe being free of components for actuating the controller, as claimed. Cole 5:11–14. Figure 1 of Cole is reproduced below. Appeal 2016-006395 Application 12/176,337 16 Figure 1 is a perspective view of a cabinet, depicting disguised electronic control panel 71 on the exterior surface of the cabinet. Id. at 2:24–26. The Examiner relies on Borodulin for teaching that it is well known to provide a hidden electronic control part 28 for a door lock 20, which is actuated by a pre-coded card 30 (i.e., a key), such that “the outside surface of the door is free of any components for actuating” the door’s lock 20. Final Act. 4; see e.g., Bordulin ¶¶ 17, 18, 20, 21, Figs, 1, 2; see also Ans. 9 (citations omitted). The Examiner reasons, inter alia, that it would have been obvious to modify Cole’s safe by replacing control panel 71 (or switches 73) on the outside of Cole’s door with a hidden electronic control part 28, as taught by Borodulin, such that the entire exterior surface of Cole’s safe is free of any component for actuating the controller (i.e., Cole’s electrically operable latching means 50) “to optimize the security of the safe against tampering.” Final Act. 4; see Borodulin ¶ 17. Appellants argue that Cole’s “pressure-sensitive switch 73 is mounted outside the door.” 06-30-2015 Response 2. However, Appellants’ argument is not responsive to the rejection as articulated by the Examiner, which acknowledges that Cole discloses components for actuating the controller on an external surface of the safe, as set forth supra, such that the external surface of Cole’s safe is not “free of components for actuating the controller,” as required by claim 1. Instead, as set forth supra, the Examiner relies on Borodulin for disclosing a hidden controller (or lock 20), which is wirelessly actuated by pre-coded card 30 that transfers energy and data via an RF antenna. See, e.g., Borodulin ¶ 21. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Keller, at 425. Appeal 2016-006395 Application 12/176,337 17 Appellants further argue that because no one thought to improve Cole, which was published in 1987, in view of Borodulin, the claimed safe is nonobvious. 06-30-2015 Response 2. Absent a showing of long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness. Iron Grip Barbell Company, Inc. v. USA Sports, Inc., at 1324-25. Finally, Appellants argue that Cole’s safe does not have the advantages of the claimed safe. Reply Br. 1 (citing 06-30-2015 Response). The 06-30-2015 Response lists certain advantages of the claimed safe, including “burglar-resistance, fire-resistance, environmental resistance, and hiddenness.” 06-30-2015 Response 2. However, Appellants have not provided sufficient evidence to show that the results (or advantages) of the claimed safe, as listed on pages 2 to 3 of the 06-30-2015 Response, were unexpected to one of ordinary skill in the art at the time of Appellant’s invention, given the technical knowledge within the art, as evidenced by Cole and Borodulin, for example. Further, to the extent Appellants are arguing that the metal structure of the safe provides unexpected results, the material of the safe, as discussed supra, is not claimed. See 06-30-2015 Response 3. Accordingly, we sustain the Examiner’s rejection of independent claim 1, under 35 U.S.C. § 103(a), as unpatentable over Cole and Borodulin. Appellants chose not to challenge the Examiner’s finding that Cole’s door 17 is a door, as recited in claim 2, which depends from claim 1, and therefore, for the reasons set forth supra, we also sustain the Examiner’s rejection of claim 2, under 35 U.S.C. § 103(a), as unpatentable over Cole and Borodulin. Appeal 2016-006395 Application 12/176,337 18 DECISION The Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Enrst is affirmed. The Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Roatis is reversed. The Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Myers and Borodulin is affirmed. The Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Cole and Borodulin 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation