Ex parte Merchel

Board of Patent Appeals and Interferences

Feb 7, 2000

08254575 (B.P.A.I. Feb. 7, 2000)

Application for patent filed June 6, 1994.1
An amendment after final [paper no. 15] was filed and2
its entry approved [paper no. 16], however, it did not make
any changes to the claims.
1
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not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HORST MERCHEL
__________
Appeal No. 1997-3483
Application 08/254,5751
___________
ON BRIEF
___________
Before FLEMING, LALL and BARRY, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 202
to 28.
The disclosed invention pertains to a pledge card for
Appeal No. 1997-3483
Application 08/254,575
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unlocking a pledge lock used to lock one shopping cart to a
string of other carts. The insertion of the card moves a
control member which unlocks a closure bolt, which releases a
coupling member of an adjacent cart and the cart can be
released. The card is seized and retained in the released
cart and is released from the cart only when the cart is
brought back and coupled back to the string of carts. The
invention is further illustrated by the following claim.
Representative claim 20 is reproduced as follows:
20. In combination with at least two carts, a lock
system comprising:
a pledge lock on one of said carts;
a locking member of the other of said carts receivable in
said pledge lock and releasable thereform;
a card for operating said pledge lock, said card having
along an edge or on a surface thereof at least one recess or
at least one projection constituting a formation specific to
said card and distinguishing said card from cards free from
said formation; and
bolt release and card seizure means in said lock operated
by said formation upon insertion of said card into said lock
for releasing said member and seizing said card and for
retaining the seized card until the member associated with the
other cart is inserted into said lock.
The references relied on by the Examiner are:
Appeal No. 1997-3483
Application 08/254,575
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Randall et al. (Randall) 3,629,834 Dec. 21,
1971
Crafton 3,906,447 Sep. 16, 1975
Kilborn 4,527,052 Jul. 2, 1985
Lo 4,627,252 Dec. 9, 1986
Seckinger et al. (Seckinger) 4,686,358 Aug. 11,
1987
Lepage et al. (Lepage) 5,069,324 Dec. 3, 1991
Claims 20 to 28 stand rejected under 35 U.S.C. § 103 over
various combinations of Randall, Crafton, Kilborn, Lo,
Seckinger and Lepage.
Reference is made to Appellant’s brief and the Examiner's
answer for their respective positions.
OPINION
We have considered the record before us and we will
reverse the rejection of claims 20 to 28.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467
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Application 08/254,575
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(CCPA 1966), and to provide a reason why one having ordinary
skill in the pertinent art would have been led to modify the
prior art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. System., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Furthermore, the Federal Circuit states that “[the] mere
fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
Appeal No. 1997-3483
Application 08/254,575
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obvious unless the prior art suggested the desirability of the
modification.” In re Fitch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). “Obviousness may not be established using hindsight or
in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. V. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ 2d at 1239 (Fed.
Cir. 1995), citing W. Lish. Gore & Assocs., v. Garlock, Inc.,
721 F.2d 1551, 1553, 220 USPQ 311, 312-13 (Fed. Cir. 1983).
Next we review the rejections of the different claims.
Claims 20 to 24 and 28
These claims have been rejected as being obvious over Lo
in view of Lepage and Kilborn. Lo discloses a generic card
lock. Lepage shows a string of carts locked to each other
using a non card (conventional) lock. Kilborn teaches a user
card being seized and retained by an autoteller. The Examiner
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Application 08/254,575
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asserts [answer, page 3] that “[i]t would have been obvious
... that the structure of the locking mechanism of Lo could be
modified to operably connect shopping carts as taught by
Lepage.” Realizing that this combination is still deficient,
the Examiner contends [answer, page 4] that “[i]t would have
been obvious ... to provide a card retaining means as taught
by Kilborn in the card lock of Lo.” Appellant argues that
none of these references teaches or offers any suggestion to
combine these references and concludes [brief, page 6] that
“what we have here is a combination of nonanalogous art based
on hindsight, a rejection made with eyes taught by the instant
invention.”
We are persuaded by Appellant’s arguments. The card
means of Kilborn are seized and retained for a totally
different purpose or reason and are not at all suggestive of
the use of a card for a locking mechanism as contemplated by
the invention and claimed in independent claim 20. Even if
combinable, there would be still lacking in the combination
the limitation of “bolt release and card seizure means in said
lock ... for releasing said member and card seizing said card
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Application 08/254,575
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and for retaining the seized card until the member associated
with the other cart is inserted into said lock.” (Claim 20,
lines 11 to 15).
Therefore, we do not sustain the rejection of independent
claim 20 and, hence, of dependent claims 21 to 24 and 28.
Claim 25
This claim depends on claim 20 and has been rejected as
being obvious over Lo in view of Lepage and Kilborn, and
further in view of Crafton. The additional reference, Crafton
does not cure the above noted deficiency of Lo, Lepage and
Kilborn. Therefore, we do not sustain the rejection of claim
25 over Lo, Lepage, Kilborn and Crafton.
Claim 26
This claim depends on claim 20 and is rejected over Lo in
view of Lepage and Kilborn, and further in view of Seckinger.
However, Seckinger still does not meet the above noted
deficiency of the combination of Lo, Lepage and Kilborn.
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Therefore, we do not sustain the rejection of claim 26 over
Lo, Lepage, Kilborn and Seckinger.
Claim 27
This claim also depends on claim 20 and is rejected over
Lo in view of Lepage and Kilborn, and further in view of
Randall. The additional reference, Randall, does not meet the
above noted deficiency of the combination of Lo, Lepage and
Kilborn. Therefore, we do not sustain the rejection of claim
27 over Lo, Lepage, Kilborn and Randall.
In conclusion, we have reversed the decision of the
Examiner rejecting claims 20 to 28 over various combinations
of Lo, Lepage, Kilborn, Crafton, Seckinger and Randall.
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Application 08/254,575
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REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
PSL/pgg
The Firm of Karl F. Ross
5676 Riverdale Ave.
Box 900
Riverdal (Bronx), NY 10471-0900
Appeal No. 1997-3483
Application 08/254,575
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