Ex Parte Overman et al

Patent Trial and Appeal Board

Feb 27, 2017

14525838 (P.T.A.B. Feb. 27, 2017)

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.
14/525,838 10/28/2014 John Overman 43844-CNTl 7972
23589 7590
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
GAMI, TEJAL
ART UNIT PAPER NUMBER
2126
NOTIFICATION DATE DELIVERY MODE
03/01/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents @ hovey williams, com
amalik @hovey williams .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN OVERMAN and JOEY HENDRICH
Appeal 2016-006197
Application 14/525,838
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006197
Application 14/525,838
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
The invention relates to “obtaining key codes, such as blind key codes
and electronic security codes for manufacturing and programming keys to fit
and operate a vehicle lock” (Spec. 116). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for obtaining and distributing key codes
comprising the steps of:
receiving lock information from a user, the lock
information including one or more of the following: a vehicle
make, a vehicle model, a vehicle’s year of manufacture, and a
vehicle identification number;
connecting a computing device to a key code provider;
obtaining with the computing device a key code from the
key code provider, wherein the key code corresponds to the lock
information received from the user;
decrypting, via a processor in the computing device, the
key code obtained from the key code provider to obtain key
specification data;
presenting to the user the key code or the key specification
data via the computing device; and
sending the key specification data to a key forming device.
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Appeal 2016-006197
Application 14/525,838
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mutch US 2011/0262240 A1 Oct. 27,2011
Overman US 9,323,884 Apr. 26,2016
REJECTIONS
The Examiner made the following rejections:
Claims 1—20 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Mutch.
Claims 1—20 stand rejected on the non-statutory ground of
obviousness-type double patenting over U.S. Application No. 13/760,813,
which has since issued as U.S. Patent 9,323,884 to Overman.
ANALYSIS
The Anticipation Rejection
The Examiner finds Mutch discloses every limitation of claim 1,
including “decrypting, via a processor in the computing device, the key code
obtained from the key code provider to obtain key specification data” (Final
Act. 6—7). Appellants contend Mutch fails to disclose “key specification
data decrypted from the key code” (Br. 17). We agree with Appellants.
Mutch describes a system for duplicating a key that involves capturing
an optical image of a master key, determining a key pattern of the master
key, selecting a proper key blank, and cutting a key pattern in the key blank
(Mutch, Abstract; 112). For the “decrypting” limitation in claim 1, the
Examiner cites Mutch’s paragraphs 8 and 104 (Final Act. 5—6), which
describe the following:
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Appeal 2016-006197
Application 14/525,838
Automotive keys often utilize transponder chips in the
head of the key to provide an enhanced level of security. The
automobile or vehicle may be capable of reading the chip in the
key and verifying that the proper electronic code is present before
allowing the vehicle to start or run. In some newer vehicles these
codes are encrypted and/or may be rolling (changing) codes to
make the copying of a key even more difficult. This presents a
particular challenge to aftermarket key duplicators. Commonly,
electronic devices and keys are required to duplicate such
automotive keys. The keys have the electronic chips or circuit
boards in the head of the key and the duplicator must have an
electronic device, such as an antenna, to read the chip or circuit
board and write to the key.
(Mutch, | 8).
The primary reasons to integrate the read/write device 226
may be to integrate the reading of the microchip or circuit board
embedded within a master key 22 and write an appropriate
functional code to a microchip or circuit board embedded on a
key blank 24. An additional and important benefit is that the
information read from a master key 22 may be used to assist in
the identification of the master key 22. The database of key
blanks 24 may include data related to information that may be
read from a microchip or circuit board embedded with a master
key 22.
(Mutch, 1104).
As quoted here, Mutch describes that automotive keys can use a chip
with an electronic code for security purposes (see Mutch, | 8). In order to
duplicate such a key, Mutch’s system uses a read/write device to read a code
from a master key, and write a code to a key blank (see Mutch, 1104).
However, Mutch does not disclose decrypting a key code to obtain key
specification data, as recited in claim 1. Although Mutch discloses a code
stored on a key’s chip can be encrypted (Mutch, | 8), this fact does not
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Appeal 2016-006197
Application 14/525,838
disclose decrypting a key code in the process of obtaining and distributing
the key code as in claim 1.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 1, independent claims 8 and 15 which
recite commensurate limitations, and dependent claims 2—7, 9-14, and 16—
20.
The Double Patenting Rejection
The Examiner provisionally rejected claims 1—20 for obviousness-
type double patenting in view of U.S. Application No. 13/760,813 (Final
Act. 2-4). The ‘813 application, however, has since issued as U.S. Patent
9,323,884 to Overman. Accordingly, the Examiner’s rejection is no longer
provisional. Appellants do not contest the Examiner’s double patenting
rejection (see App. Br. 14—18). We thus pro forma affirm the rejection.
CONCLUSIONS
Under 35 U.S.C. § 102(e), the Examiner erred in rejecting claims 1—
20.
Under the non-statutory ground of obviousness-type double patenting,
Appellants have not shown the Examiner erred in rejecting claims 1—20.
DECISION
For the above reasons, the Examiner’s decision rejecting claims 1—20
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)(l)(iv).
AFFIRMED
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