Ex Parte Johnson et al

Patent Trial and Appeal Board

Dec 23, 2016

11529445 (P.T.A.B. Dec. 23, 2016)

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.
11/529,445 09/27/2006 Ronald L. Johnson WAGIC-01702 8059
7590 12/27/2016
HAVERSTOCK & OWENS LLP
ATTN: Jonathan O. Owens
162 North Wolfe Road
Sunnyvale, CA 94086
EXAMINER
JIANG, YONG HANG
ART UNIT PAPER NUMBER
2689
MAIL DATE DELIVERY MODE
12/27/2016 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 RONALD L. JOHNSON and KENNETH R. JOHNSON
____________

Appeal 2016-002469
Application 11/529,4451
Technology Center 2600
____________

Before JEAN F. HOMERE, ERIC B. CHEN, and
SHARON FENICK Administrative Patent Judges.

FENICK, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–3, 5, 8–11, 13, 16–20, 22–26, 31–41, 43, 44, 46, 47,
49–58, 60–62, and 64–69. (Appeal Br. 1.) Claims 4, 6, 7, 12, 14, 15, 21,
27–30, 42, 45, 48, 59, and 63 have been canceled. (Appeal Br. 2; Claims
App’x.) Claim 70 has been indicated as allowable. (Appeal Br. 30.) We
have jurisdiction under 35 U.S.C. § 6(b)(1).
We affirm.

1 Appellants identify WAGIC as the real party in interest. (Appeal Br. 2.)
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Invention
Appellants’ invention relates to locking container devices, including a
closeable container, a lock coupled to the container, and a programmable
timer circuit which actuates the lock at a programmed time. (Abstract.) A
change in external condition (e.g., the location of the container) can also be
detected and used to determine whether to unlock the container. (Abstract;
Spec. 11:27–12:8.)
Representative Claims
Claims 1 and 51, reproduced below with certain disputed limitations
emphasized, are representative:
1. A locking container device comprising:
a. a closeable container for holding at least one object;
b. a lock coupled to the container and moveable between
a lock position and an unlock position; and
c. a programmable circuit for automatically actuating the
lock between the lock position and the unlock position at
an unlock time, wherein the lock is moved to the lock
position at activation and does not move to the unlock
position until the unlock time and further wherein the
container is biased toward an open position such that the
container automatically opens upon the lock moving to the
unlock position, and wherein after the circuit is
programmed with a single unlock time within an input time
range, the container is not openable by a recipient until
the programmed unlock time, wherein after the container
is opened, the container remains unlocked until it is
programmed with a new unlock time.
51. A system including a plurality of selectively locking
container devices comprising:
a. a plurality of container devices, each comprising an
internal cavity, each device located at a separate isolated
geographic location, and each further comprising:
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i. a container for holding one or more objects;
ii. a lock coupled to the container and moveable
between a lock position and a unlock position; and
iii. a receiver circuit coupled to the lock, the
receiver circuit configured to actuate the lock
between the lock and unlock position;
iv. a GPS system for transmitting a location signal;
and
b. a single transmitting source for selectively transmitting
one or more instruction signals individually to each of the
plurality of container devices, wherein the one or more
instructions signals are based upon the location signal
and a predetermined time, and wherein the receiver circuit
in the plurality of container devices automatically moves
the lock between the lock position and the unlock position
in response to receiving the one or more instruction
signals.
References and Rejections
The Examiner rejects claims 1–3, 5, 8–11, 13, and 67 under 35 U.S.C.
§ 103(a) as unpatentable over Cardinale et al.(US 2003/0090364 Al,
published May 15, 2003), Henry et al. (US 5,774,059, issued June 30, 1998),
and Grist (US 5,310,184, issued May 10, 1994). (Final Action 5–7.)
The Examiner rejects claims 16–20, 23, 25, 31–38, 43, 44, 47, 49, 50,
and 68 under 35 U.S.C. § 103(a) as unpatentable over Cardinale, Henry,
Grist, and Kim (US 6,040,771, issued Mar. 21, 2000). (Final Action 7–11.)
The Examiner rejects claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Cardinale, Henry, Grist, Kim, and Melancon (US
3,823,586, issued July 16, 1974). (Final Action 11.)
The Examiner rejects claims 24 and 46 under 35 U.S.C. § 103(a) as
unpatentable over Cardinale, Henry, Grist, Kim and Bates (US 6,057,779,
issued May 2, 2000). (Final Action 11–12.)
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The Examiner rejects claims 26, 39, 40, and 41 under 35 U.S.C.
§ 103(a) as unpatentable over Cardinale, Henry, Grist, Kim and Parvulescu
(US 6,081,758, issued June 27, 2000). (Final Action 12–13.)
The Examiner rejects claims 51, 52, 54–56, 58, 60, 61, and 65 under
35 U.S.C. § 103(a) as unpatentable over Cardinale and Kuma (US
5,907,286, issued May 25, 1999). (Final Action 13–16.)
The Examiner rejects claims 57 and 66 under 35 U.S.C. § 103(a) as
unpatentable over Cardinale, Kuma, and Kaarsoo et al. (US 5,475,378,
issued Dec. 12, 1995). (Final Action 16–17.)
The Examiner rejects claims 62 under 35 U.S.C. § 103(a) as
unpatentable over Cardinale, Kuma, and Parvulescu. (Final Action 18.)
The Examiner rejects claims 64 under 35 U.S.C. § 103(a) as
unpatentable over Cardinale, Kuma, and Grist. (Final Action 19.)
The Examiner rejects claim 69 under 35 U.S.C. § 103(a) as
unpatentable over Kuma and Cardinale. (Final Action 19–21.)

Issues
(A) Did the Examiner err in finding the combination of Cardinale,
Henry, and Grist discloses a locking container device comprising a closeable
container and a programmable circuit “wherein after the circuit is
programmed with a single unlock time within an input time range, the
container is not openable by a recipient until the programmed unlock time”
and “wherein after the container is opened, the container remains unlocked
until it is programmed with a new unlock time,” as recited in claim 1?
(B) Did the Examiner err in combining Cardinale and Kuma, as in the
rejection of claim 51?
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(C) Did the Examiner err in finding the combination of Cardinale and
Kuma discloses, “a single transmitting source for selectively transmitting
one or more instruction signals individually to each of the plurality of
container devices, wherein the one or more instructions signals are based
upon the location signal and a predetermined time,” and “wherein the
receiver circuit in the plurality of container devices automatically moves the
lock between the lock position and the unlock position in response to
receiving the one or more instruction signals,” as recited in claim 51?
ANALYSIS
(A) “wherein after the circuit is programmed with a single
unlock time within an input time range, the container is not
openable by a recipient until the programmed unlock time” and
“wherein after the container is opened, the container remains
unlocked until it is programmed with a new unlock time”

The Examiner finds that the combination of Cardinale, Henry, and
Grist teaches or suggests all the elements of claim 1, including the limitation
that “after the circuit is programmed with a single unlock time within an
input time range, the container is not openable by a recipient until the
programmed unlock time” (the “single unlock time limitation”) and the
limitation that “after the container is opened, the container remains unlocked
until it is programmed with a new unlock time,” (the “remains unlocked
limitation.”) (Final Action 5–7.)
Cardinale is directed towards a lockbox container, with programmable
opening utility, providing access to contents of the container at a time
chosen by a user. (Cardinale, Abstract.) Henry is directed to a
programmable electronic lock which allows a user to disable access to the
locked device prior to a predefined time. (Henry, Abstract, Spec. 2:44–58.)
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(i) single unlock time limitation
The Examiner’s rejection combines Cardinale’s teaching of a single
unlock time, at which time the lock moves to the unlock position (Final Act.
6) and with Henry’s teaching of a container that is not openable by a
recipient until the programmed unlock time (id. at 7.) This combination, the
Examiner finds, teaches or suggests the single unlock time limitation. (Id.)
Appellants argue Cardinale does not teach the entirety of the single
unlock time limitation, because Cardinale lacks a teaching or suggestion that
after the container is locked it is not openable until the unlock time. (Appeal
Br. 10.) Appellants further argue Henry does not teach the entirety of the
single unlock time limitation, because Henry does not teach a single unlock
time, and because Henry teaches a “Timelock-Override” operation by which
the container may be opened regardless of the programmed lock. (Id. at 11;
Reply Br. 5–6.) With respect to the combination, the Appellants only
present a conclusory argument based on the individual arguments regarding
Cardinale and Henry. (Appeal Br. 12–13; Reply Br. 5.)
Appellants’ arguments regarding Cardinale are unavailing because
they do not address the finding made by the Examiner – that Cardinale
teaches a single unlock time, not that Cardinale teaches the entirety of the
single unlock time limitation including that “the container is not openable by
a recipient until the programmed unlock time”. Appellants’ arguments
regarding the teachings of Henry regarding a single unlock time leave
uncontroverted the teachings of Cardinale regarding a single unlock time.
With respect to the container being unopenable until the unlock time,
and Henry’s Timelock-Override, we agree with the Examiner that this
feature is an optional feature. (Answer 3–4.) Henry teaches that a pair of
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keys may be used to unlock the container “[w]hen the Timelock-Override
parameter is enabled.” (Henry 15:61.)
Appellants argue that “if neither Cardinale, Henry nor Grist teach a
limitation, then their combination cannot teach this limitation.” (Reply Br.
5.) However, this is incorrect. Where a combination of references is found
to teach a limitation, non-obviousness cannot be established by attacking
references individually. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). The test for obviousness is whether the combination of
references, taken as a whole, would have suggested the patentee's invention
to a person having ordinary skill in the art. In re Keller, 642 F.2d 413, 425
(CCPA 1981). While Appellants are correct (Reply Br. 5) that a statement
in their Appeal Brief (Appeal Br. 13) does purport to address the
combination, this statement is conclusory and based only on the purported
deficiencies of the references individually as discussed above, and not the
combination.
We therefore are not persuaded of error in the Examiner’s findings
with respect to the single unlock time limitation.
(ii) remains unlocked limitation
The Examiner finds that Cardinale teaches the remains unlocked
limitation. (Final Act. 6.) Appellants’ sole argument with respect to this
limitation is that because of Cardinale’s purported deficiencies with respect
to the single unlock time limitation, “[c]learly then, Cardinale cannot also
teach” the remains unlocked limitation. We do not see the relationship
between the limitation at issue and the deficiencies argued with respect to
the single unlock limitation, and are not convinced of error in the
Examiner’s findings with respect to the remains unlocked limitation.
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Thus, we are not persuaded the Examiner erred in rejecting claim 1, or
claims 2, 3, 5, 8–11, 13, and 67, argued with claim 1, or claims 16–20, 23,
25, 31–38, 43, 44, 47, 49, 50, and 68 (Appeal Br. 15–20), claim 22 (id. at
20), claims 24 and 46 (id.), or claims 26, 39, 40,and 41 (id. at 21), all argued
on substantially the same basis.
(B) Combining Cardinale and Kuma
Appellants argue that the Examiner erred in combining Cardinale and
Kuma. (Appeal Br. 21–22; Reply Br. 7.) Appellants argue that no
justification from the Cardinale and Kuma is offered in support of the
combination. (Id.) However, Appellants' arguments contending there is no
rationale for the combination in the cited prior art is unpersuasive of error.
The Supreme Court has made clear that we apply “an expansive and flexible
approach” to the question of obviousness. KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 415 (2007). The rationale for combining or modifying the prior
art “may be found in any number of sources, including common knowledge,
the prior art as a whole, or the nature of the problem itself.” Dystar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1361 (Fed. Cir. 2006).
Appellants argue that, while the Examiner finds that the combination
would improve safety (Final Act. 4, 7) in fact, “such a system would only
create lags and delays if the container arrived early or at any other time” and
“a container may be opened at an unapproved or incorrect time if the
container experiences a delay in transport or it arrives at its destination too
early.” (Appeal Br. 21.) Appellants argue:
Kuma teaches that the unlock signal is based upon location not
time. Kuma does not teach a single transmitting source for
selectively transmitting one or more instruction signals
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individually to each of the plurality of container devices,
wherein the one or more instruction[] signals are based upon
the location signal and a predetermined time signal.
Specifically, Kuma is not compatible with an unlock signal
based upon a predetermined time and nothing within Kuma or
Cardinale has been offered to justify this combination.
(Id at 22.) However, these arguments regarding Kuma’s teachings state in a
conclusory manner, but do not show, why the Examiner’s proposed use in
the combination of Cardinale’s time signal would have been incompatible
with the teachings of Kuma regarding the use of location signal. We thus
are not persuaded of error in the findings of the Examiner that the
combination is reasonable given the teachings of the individual prior art
documents and would improve security. (Final Act. 4, 7; Answer 5.)
(C) “a single transmitting source for selectively transmitting
one or more instruction signals individually to each of the
plurality of container devices, wherein the one or more
instructions signals are based upon the location signal and a
predetermined time” and “wherein the receiver circuit in the
plurality of container devices automatically moves the lock
between the lock position and the unlock position in response to
receiving the one or more instruction signals”
The Examiner finds that Cardinale and Kuma discloses all the
elements of claim 51, including the limitation of “a single transmitting
source for selectively transmitting one or more instruction signals
individually to each of the plurality of container devices, wherein the one or
more instructions signals are based upon the location signal and a
predetermined time” (the “single transmitting source” limitation) and the
limitation that “the receiver circuit in the plurality of container devices
automatically moves the lock between the lock position and the unlock
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position in response to receiving the one or more instruction signals” (the
“receiver circuit lock/unlock limitation”). (Final Action 13–15.)
Kuma is directed to a transport container including a key mechanism
for locking the container which is unlocked based on position information
for the transport container. (Kuma, Abstract.) The Examiner finds that the
combination of Kuma and Cardinale teaches the single transmitting source
limitation and the receiver circuit lock/unlock limitation. (Final Action 13–
15.)
Appellants argue that neither one of Cardinale and Kuma teaches an
unlock signal based on both location and time, and in a conclusory manner
state that Kuma’s location-based instruction signal is not compatible with an
unlock signal based on time. (Appeal Br. 22–24.) As in the case of Claim 1,
we do not find any argument persuasive of error regarding the teachings or
suggestions of the prior art combination, and therefore we are not persuaded
of error in the Examiner’s rejection of claim 51, claims 52, 54-56, 58, 60,
61, and 65, argued with claim 51 (Appeal Br. 25), or claims 53 (id. at 26), 57
and 66 (id.), 62 (id. at 27), 64 (id.), 69 (id. at 27–30) argued on substantially
the same basis.

DECISION
We affirm the Examiner’s rejection of claims claim 1–3, 5, 8–11, 13,
16–20, 22–26, 31–41, 43, 44, 46, 47, 49-58, 60–62 and 64–69 under 35
U.S.C. § 103(a) as unpatentable.
Pursuant to 37 C.F.R. § 1.136(a)(1)(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
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AFFIRMED