Ex parte KIM

Board of Patent Appeals and Interferences

Jan 5, 1999

08057548 (B.P.A.I. Jan. 5, 1999)

Attorney docket no. Q32358.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WAN S. KIM
____________
Appeal No. 95-4553
Application No. 08/057,5481
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HEARD: 9 December 1998
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Before URYNOWICZ, JERRY SMITH, and TORCZON, Administrative
Patent Judges.
TORCZON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks relief under 35 U.S.C. § 134 from the
final rejection of claims 1-8, all of the pending claims. We
reverse.
BACKGROUND
Appellant filed the application before us on 6 May 1993,
claiming the benefit of Korean patent application 1992-7624,
filed 6 May 1992. (Paper No. 3 (Decl.))
Appellant discloses a method and apparatus for locking a
housing door on a recording or reproducing device after a
predetermined period has elapsed without any key input. For
Appeal No. 95-4553 Page 2
Application No. 08/057,548
instance, the door covering the cassette opening in a video
cassette recorder (VCR) might be locked after thirty seconds
if no key on a remote control is pressed, to prevent tampering
by, for example, inquisitive children. The sole independent
claim on appeal illustrates the claimed subject matter (Paper
No. 6 (Amdt. A, filed 23 May 1994) at 1-2):
1. A method for locking a door of a housing of a
recording/reproduction device, said method
comprising the steps of:
judging whether an input key has been operated;
and
locking the door of the housing if said input
key has not been operated for a predetermined
elapsed time period, said locking step being
conducted independently of the operating status of
the recording/reproduction device.
The examiner rejected claims 1-4 under 35 U.S.C. § 102(b)
as anticipated by
Sander 4,851,937 25 July 1989
Claims 5-8 have been rejected under 35 U.S.C. § 103 as having
been obvious in view of Sander and the examiner's official
notice of cassette recorder doors. (Paper No. 12 (Ex. Ans.)
at 3-4.)
Sander discloses a secure communications recorder.
Passwords entered through a keypad 32 are used to unlock the
Appeal No. 95-4553 Page 3
Application No. 08/057,548
From Sander's Figure 2
recorder housing. (8:30-33.) Sander describes the locking of
the recorder housing as follows:
Because recorded communications may have
critical value, for example as evidence, the bay
containing each record deck is provided with an
electromechanical lock which is controlled by a
processor 60 over lines 78. Solenoid 80 will
withdraw bolt 82 against the force of spring 84 when
energized. Solenoid 80 is controlled by switch 86,
preferably located in the bay door handle, and
transistor 90, which in turn is controlled by
line 78 so that when transistor 90 is energized and
switch 86 is closed, bolt 82 is withdrawn. The open
or
closed state of each bay is
sensed over line 79 by
processors 60.

The rules
governing the bay lock
logic are as follows:
1. If one deck is
enabled for unlocking, all
others are disabled and
locked to prevent the
cabinet from [toppling].
2. If no password is
entered all decks are
disabled and locked.
3. If a password level
1 is entered, then all
record decks which are in
READY or RECORD and do not
have a guard tone failure
must be disabled and locked.
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Application No. 08/057,548
Other decks [may be] unlocked by a user with a level 1
password (a "tape changer") to allow full tape or tapes
which have a guard tone failure to be changed.
4. Any record deck in RERECORD is locked for all
password levels except level 4 (the service level).
(RERECORD is a function wherein the contents of one
channel of a selected tape are rerecorded onto an
auxiliary recording device.)
5. If logger 10 is in use by a remote
controller, all bays are disabled and locked.

A key operated mechanical linkage 92 is provided
to mechanically override spring 84 and withdraw
bolt 82 in the event of a system failure.
(6:50-7:13.)
DISCUSSION
Anticipation
To anticipate a claim, a prior art reference must, either
expressly or inherently, disclose each and every limitation in
the claim. Verdegaal Bros. v. Union Oil Co., 814 F.2d 628,
631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). According to the
examiner,
Sander teaches in column 6 step 2 (rules that govern
the operation of the device) that if no password is
entered all decks are disabled and locked. These
passwords are entered through keys (column 8 lines
30-33). Therefor[e], if no keys have been pressed
then the decks are disabled and locked. Since the
decks are locked after it has been determined,
i.e.[,] judged, that the keys have not been pressed
then a delay[,] i.e.[,] a predetermined period of
time must be present. Clearly a time period must
Appeal No. 95-4553 Page 5
Application No. 08/057,548
Although Appellant argues that Sander (16:60-65)2
requires a key entry to lock the logger 10, this portion of
the reference is not germane since it does not refer to the
locking of the recorder housing.
elapse between when the device is turned on and when
it is determined that no keys have been pressed.
(Paper No. 12 at 4-5, original emphasis.) The problem with
the examiner's finding is that Sander's tape bays are
ordinarily locked. (Abstract at 13-15; 6:50-59; 7:1-3; 8:51-
53.) Although Sander's rule 2, if read in isolation, might2
suggest that the bays are locked in response to a failure to
type in a password, that interpretation is inconsistent with
the teachings and purpose of Sander's invention. Sander wants
a device that is secure. (2:2-5.) The lock must be "enabled"
before the bolt of the lock is withdrawn. (6:50-59.) When
rule 2 is read in context, the preponderance of evidence
suggests that rule 2 means if no password is entered, the deck
remains disabled and locked. Thus, the portion of the
reference on which the examiner relies does not support his
position.
We find nothing else in Sander to teach the locking step
of claim 1. Sander does not explain how the decks are
initially locked or subsequently relocked. Although we must
assume that Sander inherently provides some method of locking
Appeal No. 95-4553 Page 6
Application No. 08/057,548
and relocking, we have no basis in the reference to infer that
this locking results from the passage of a predetermined
period from a key input. Without that teaching or inference,
we cannot agree that Sander teaches that limitation. See Rowe
v. Dror, 112 F.3d 473, 480-481, 42 USPQ2d 1550, 1555 (Fed.
Cir. 1997) (rejecting reliance on the negative pregnant to
show anticipation).
We reverse the rejection of claim 1 as anticipated by
Sander. The rejection of dependent claims 2-4 on the same
ground is reversed as well.
Obviousness
"To establish a prima facie case of obviousness based on
a combination of the content of various references, there must
be some teaching, suggestion or motivation in the prior art to
make the specific combination that was made by the applicant."
In re Dance, __F.3d __, __, 48 USPQ2d 1635, 1637 (Fed. Cir.
1998) (original emphasis). Claims 5-8 differ from claims 1-4
in requiring that the recording/reproduction device be a VCR.
The examiner took official notice of VCR doors. The official
notice does not, however, compensate for the lack of a
teaching or a suggestion to lock the bays after a
predetermined period of inactivity. The preponderance of
evidence does not support a finding that the cited prior art
Appeal No. 95-4553 Page 7
Application No. 08/057,548
(including the officially noticed prior art) teaches or
suggests locking the door after passage of a predetermined
period of activity. Consequently, we cannot affirm the
rejection of claims 5-8 as having been obvious in view of
Sander and officially noticed VCR doors.
DECISION
The rejections of claims 1-4 as anticipated and of
claims 5-8 as having been obvious are
REVERSED
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
cc: SUGHRUE, MION, ZINN,
MACPEAK & SEAS, PLLC
2100 PENNSYLVANIA AVE NW
WASHINGTON DC 20037-3202
Appeal No. 95-4553 Page 8
Application No. 08/057,548
RT/ki