Ex Parte Mannella

Board of Patent Appeals and Interferences

Oct 15, 2010

10797884 (B.P.A.I. Oct. 15, 2010)

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.
10/797,884 03/10/2004 Eugenio Mannella 67,167-003/5706-03 5075
26096 7590 10/15/2010
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
BARRETT, SUZANNE LALE DINO
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
10/15/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EUGENIO MANNELLA
____________

Appeal 2009-013505
Application 10/797,884
Technology Center 3600
____________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Eugenio Mannella (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting claims 1-24. We have jurisdiction
under 35 U.S.C. § 6(b).

The Invention
The claims on appeal relate to a lock assembly.
Claims 1, 11, and 17, reproduced below, are representative of the
subject matter on appeal.
1. A lock core assembly comprising:
a barrel which defines an axis; and
a plug mountable for rotation within said barrel for
rotation around said axis relative said barrel, said plug
comprising [a] rear segment which defines a first plane
parallel to a second plane, said first plane and said second
plane transverse and offset along said axis, a first
engagement member at least partially within said first
plane and a second engagement member at least partially
within said second plane, said first engagement member
perpendicular to said second engagement member.

11. A lock assembly comprising:
a lock housing;
a barrel which defines an axis, said barrel mountable
within said housing;
a plug mountable for rotation within said barrel for
rotation around said axis relative said barrel, said plug
comprising a male rear segment;
a torque blade comprising a female end engageable
with said male end; and
a retainer axially retaining said female end over said
male end.

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17. A lock assembly comprising:
a lock housing;
a barrel which defines an axis, said barrel mountable
within said housing;
a plug mountable for rotation within said barrel for
rotation around said axis relative said barrel, said plug
comprising a male rear segment; and
a spindle comprising a female end with opposed cams
engageable with said male rear segment.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1, 4, 5-7, 9-13, 15-19, and 21-23 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Neary (U.S. Patent No. 4,068,510, issued Jan. 17,
1978). Ans. 3.
Claims 1-3, 5-7, 9, 11-14, 16-20, 22, and 23 are rejected under
35 U.S.C. § 102(b) as anticipated by Deckert (U.S. Patent No. 4,444,033,
issued Apr. 24, 1984). Ans. 4.
Claims 8 and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable
over either Neary or Deckert in view of Jacobi (U.S. Patent No. 2,348,135,
issued May 2, 1944). Ans. 4.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

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DISCUSSION
Issues
The determinative issues in this appeal are:
(1) Did the Examiner err in finding that the end of the key 68 as
shown in Figure 8 of Neary constitutes a rear segment or a male rear
segment of the plug 59?
(2) Did the Examiner err in failing to make findings with respect to
whether the rear segment of the plug 136 of Deckert defines a first plane
parallel to a second plane with the first and second planes being transverse
and offset along the axis of the barrel as required by claim 1?
(3) Did the Examiner err in failing to make findings with respect to
whether Deckert discloses a torque blade having a female end capable of
engaging with a male rear segment of a plug 136 as required by claim 11?
(4) Did the Examiner err in finding that Deckert discloses a first
engagement member (external threads 139) which is part of its plug (plug
136) as required by claim 17?
(5) Did the Examiner err in concluding with respect to claim 24 that it
would have been obvious to one of ordinary skill in the art to modify the
retainer (collar 140) of Deckert to be frustum-conically shaped by the
teachings of Jacobi for the reason that it would have been an obvious matter
of design choice to prevent tampering by providing an anti-drill sloped
surface?
Analysis
Issue 1
Appellant contends that the Examiner has improperly interpreted the
end of the key 68 of Neary as a part of the plug 59. App. Br. 6. The
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Appellant also contends that “[t]he plug 59 of Neary does not include a first
engagement member and a second engagement member, or a male segment
that is engageable with a female end of a torque blade or spindle as in
Appellant’s claims.” Id. Appellant also contends that the Examiner’s
argument (i.e., “it would have been obvious to one of ordinary skill in the
lock art to consider the fully inserted and assembled key of Neary as part of
the plug such that the rear end of the key is considered the rear segment of
the plug” (Ans. 5)) “is not a consideration in an anticipation rejection”
because “[a]nticipation requires that each and every element recited in the
claim is disclosed in the cited reference, which it is not in this rejection.”
Reply Br. 1.
The Examiner’s position is that Neary discloses each and every
feature of the claimed lock assembly including a barrel and plug 59. Ans. 3.
More particularly, the Examiner posits that the plug 59 has a rear segment
(claims 1-10) or male rear segment (claims 11-24) in the form of the end of
the key 68 as shown in Figure 8 of Neary. Ans. 3-4. The Examiner also
posits that the first and second engagement members are “formed by the
perpendicular ends of the key 68 as shown in Fig. 8.” Ans. 4. The
Examiner argues that:
With respect to Appellant's arguments on
page 5-6 of the brief regarding the rejection over
Neary, it is maintained that Neary teaches a key
which has a rear male segment defining first and
second perpendicular portions, with portions lying
in two parallel planes as shown in Figure 8 of
Neary, and wherein the key is integral with the
plug when fully inserted into the keyway and
rotates therewith as a fixed plug element. While
Appellant argues that the key is a separate element
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and that it is improper for the Examiner to consider
the key part of the claimed plug, the Examiner
disagrees. It is well known in the lock art to
provide a lock plug and key with the feature of
locking the key into a plug, as evidenced by the
patents in class 70, subclass 389 (key removal
preventing), thereby providing a fixed, integral
plug device. Therefore, it would have been
obvious to one of ordinary skill in the lock art to
consider the fully inserted and assembled key of
Neary as part of the plug such that the rear end of
the key is considered the rear segment of the plug.

Ans. 5.
Neary discloses a double cylinder safety lock having a pin tumbler
cylinder mechanism which includes a cylinder housing or body 21 in which
the cylinder plug 22 is rotatable about an axis 17. Title and col. 2, ll. 42-46.
A collar 29 has internal threads for threaded engagement with a threaded end
of the plug 22 and is in abutment with the body 21. Col. 3, ll. 12-14.
We agree with Appellant that the end of the key 68 of Neary cannot
be considered to be part of the plug. We also agree with Appellant that the
Examiner’s obviousness statement in the Response to Arguments section of
the Examiner’s Answer is not a consideration with respect to an anticipation
rejection (i.e., the Examiner did not set forth a 35 U.S.C. § 102(b) or in the
alternative 35 U.S.C. § 103(a) rejection). Thus, it does not appear that the
Examiner’s rejection discloses each and every element of the claims,
because the Examiner has not made any findings with respect to proper
features of Neary’s plug 59 which constitute perpendicular first and second
engagement members and a rear segment or male rear segment.
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In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 4-7, 9-13, 15-19, and 21-23 under 35 U.S.C. § 102(b) as
anticipated by Neary.
Issue 2
Appellant contends that “claim 1 recites that the rear segment ‘defines
a first plane parallel to a second plane’ and that the first plane and the second
plane are ‘transverse and offset along said axis.” Reply Br. 2. Appellant
also contends that “[t]he rejection does not even mention the claimed
planes.” Id.
The Examiner’s position is that Deckert discloses the invention
substantially as claimed in claims 1-3, 5-7, and 9. Ans. 4. More
particularly, the Examiner posits that:
Deckert teaches a lock and spindle assembly
housing comprising a barrel and plug 136 having a
rear male segment (at 139,156,158 in Figure 18)
with first engagement member (at 139) and second
perpendicular engagement member 156 and a
spindle rod 142 having a female end 144,146,152
(female end is hole in 152 which receives male pin
member 156) which is engaged with a portion of
the plug end male rear segment and having cam
segments 144,146 to engage the male member and
further comprising a cylindrical retainer 140 which
engages the grooves (threads) in the plug rear
segment.
Id.
We agree with Appellant that the Examiner has failed to make any
findings with respect to whether or not the rear segment of Deckert’s plug
defines first and second parallel planes which are transverse and offset along
the axis of the barrel. Thus, the Examiner has failed to establish that
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Deckert discloses each and every feature of claims 1-3, 5-7, and 9 in order to
anticipate the claims 1-3, 5-7, and 9.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1-3, 5-7, and 9 under 35 U.S.C. § 102(b) as anticipated by Deckert.
Issue 3
Appellant contends that “claim 11 recites ‘a torque blade comprising a
female end.’” and that “[t]he rejection does not even mention a torque
blade.” Reply Br. 2.
The Examiner’s position is as discussed supra with respect to Issue 2.
We agree with Appellant that the Examiner has failed to make any
finding with respect to whether or not Deckert discloses a torque blade as is
recited in claim 11. Thus, the Examiner has failed to establish that Deckert
discloses each and every claim feature in order to anticipate claims 11-14
and 16.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 11-14 and 16 under 35 U.S.C. § 102(b) as anticipated by Deckert.
Issue 4
Appellant has not made any specific contentions with respect to claim
17, but generally contends that the Examiner’s interpretation of the plug as
being comprised of elements 139 (threads), 156 (pin), and 158 (bore) of
Deckert is improper because “element 139 is an end of the body 130 (see
col. 6, lines 21-24), and is not part of the plug 136.” Reply Br. 1.
The Examiner’s position is that:
Deckert teaches a lock and spindle assembly
housing comprising a barrel and plug 136 having a
rear male segment (at 139,156,158 in Figure 18)
with first engagement member (at 139) and second
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perpendicular engagement member 156 and a
spindle rod 142 having a female end 144,146,152
(female end is hole in 152 which receives male pin
member 156) which is engaged with a portion of
the plug end male rear segment and having cam
segments 144,146 to engage the male member and
further comprising a cylindrical retainer 140 which
engages the grooves (threads) in the plug rear
segment.
Ans. 4.
Deckert discloses a cylinder assembly 129 having an exterior body
130 with a lower cylindrical portion 132 and a top portion 134. Col. 6,
ll. 15-20. A plug 136 is mounted for rotation within the lower cylindrical
portion 132. Col. 6, ll. 20-21. The plug 136 includes a fixed annular collar
138 at one end and threads 139 at an opposite end. Col. 6, ll. 21-30. At the
threaded end of the plug is an opening leading to a bore 158 along the outer
periphery of the plug 136 in its longitudinal direction. Col. 6, ll. 44-52. The
bore 159 houses a spring and pin 156. Col. 6, ll. 52-54. The pin engages an
opening 160 in a washer 150 having its opening 150 around a tail cam 142
near one end of the tail cam 142. Col. 6, ll. 44-52. At the very end of the
tail cam 142 is base 144 having shoulder stops 146, 148 thereon. Id. Also
around the tail cam is a collar 140 having internal threads for mating with
the external threads 139 on the end of the plug 136. Col. 6, ll. 24-28.
We cannot agree with Appellant that the Examiner’s interpretation of
elements 139, 156, and 158 as being a part of plug 136 is improper. At
column 6, lines 24-27, Deckert clearly states that “[t]he second end portion
of plug 136 projects a small distance out beyond the second end of the
exterior body 130 and is provided with external threads 139 that mate with
the internal threads (not shown) of collar 140.” It is clear from this quoted
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passage of Deckert that the external threads 139 are considered to be part of
the plug 136. In addition, the bore 158 in the body of the plug 136 is
necessarily a part of the plug 136. Finally, we do not find that it was
unreasonable for the Examiner to find that the pin 156 housed in the bore
within the body of the plug 136 constitutes a part of the plug 136.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 17-20, 22, and 23 under 35 U.S.C. § 102(b) as anticipated by
Deckert.
Issue 5
Appellant contends that the Examiner’s motivation for combining
Jacobi with either Neary or Deckert (i.e., “to prevent tampering by providing
an anti-drill sloped surface”) is improper because “the rejection does not
establish how one of ordinary skill would expect a sloped surface on a
retainer arranged deep inside the lock to provide a security enhancement.”
Reply Br. 2. Appellant further contends that “the Examiner seems to be
relying on personal knowledge or pure speculation that a retainer having a
sloped surface would somehow be drill-proof and provide a security
improvement.” Id.
The Examiner’s position is that “Jacobi teaches a frustum-conical
shaped retainer (at 32 in Figure 1)” and “[i]t would have been obvious to
modify the retainer of either Neary or Deckert to have a frustum-conical
shaped retainer as taught by Jacobi as an obvious matter of design choice to
prevent tampering by providing an anti-drill sloped surface.” Ans. 4-5.
Neary and Deckert have been discussed supra.
Jacobi discloses an automobile door lock known as a pillar lock.
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P. 1, ll. 1-5. The lock has a casing or housing 5 having a bore 6 which
receives a rotatable cylinder 7. P. 2, ll. 19-24. The casing or housing 5 and
the cylinder 7 are provided with pin tumblers 8 by which the cylinder 7 is
secured against rotation in a neutral position at which a key may be inserted
and withdrawn. P. 2, ll. 24-28. The cylinder 7 ends at least on one side with
a beveled flange 32. Figs. 7 and 8 and p. 2, ll. 107-109.
We agree with Appellant that the Examiner’s reasoning is speculative,
particularly since Jacobi does not say anything about its sloped surface being
for prevention of tampering. In addition, we agree with Appellant that
making the retainer of either of Neary or Deckert to have a sloped surface
would not provide a security enhancement because the retainers are located
deep within the lock.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 8 and 24 under 35 U.S.C. § 103(a) as unpatentable over either
Neary or Deckert in view of Jacobi.
CONCLUSIONS
The Examiner erred in finding that the end of the key 68 as shown in
Figure 8 of Neary constitutes a rear segment or a male rear segment of the
plug 59.
The Examiner erred in failing to make findings with respect to
whether the rear segment or male rear segment of the plug 136 of Deckert
defines a first plane parallel to a second plane with the first and second
planes being transverse and offset along the axis of the barrel as required by
claim 1.
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The Examiner erred in failing to make findings with respect to
whether Deckert discloses a torque blade having a female end capable of
engaging with a male rear segment of a plug 136 as required by claim 11.
The Examiner did not err in finding that Deckert discloses a first
engagement member (external threads 139) which is part of its plug (plug
136) as required by claim 17.
The Examiner erred in concluding that it would have been obvious to
one of ordinary skill in the art to modify the retainer of either Neary or
Deckert to be frustum-conically shaped by the teachings of Jacobi for the
reason that it would have been an obvious matter of design choice to prevent
tampering by providing an anti-drill sloped surface.
DECISION
We reverse the Examiner’s 35 U.S.C. § 102(b) rejections of claims 1,
4, 5-7, 9-13, 15-19, and 21-23 as anticipated by Neary and claims 1-3, 5-7,
9, 11-14, and 16 as anticipated by Deckert and the Examiner’s 35 U.S.C.
§ 103(a) rejection of claims 8 and 24 as unpatentable over either Neary or
Deckert in view of Jacobi.
We affirm the Examiner’s 35 U.S.C. § 102(b) rejection of claims 17-
20, 22, and 23 as anticipated by Deckert.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART

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Klh

CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009