Ex Parte Pendleton

Patent Trial and Appeal Board

Feb 10, 2016

12492425 (P.T.A.B. Feb. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/492,425 0612612009
93485 7590
Brient Globerman, LLC
1175 Grimes Bridge Road
Suite 100
Roswell, GA 30075
02/12/2016
FIRST NAMED INVENTOR
Bruce Pendleton
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0901-01018 7260
EXAMINER
WILKENS, JANET MARIE
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
02/12/2016 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):
sbrient@brientip.com
info@brientgloberman.com
kgloberman@brientip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE PENDLETON
Appeal2013-007570
Application 12/492,425
Technology Center 3600
Before MICHAEL L. HOELTER, JILL D. HILL, and
LEE L. STEPINA, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1-22 and 24. App. Br. 5. Claims 23
and 25 have been cancelled. App. Br. 5. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal2013-007570
Application 12/492,425
THE CLAIMED SUBJECT MATTER
The disclosed subject matter is entitled "Safes With Rotating Inner
Supports." Spec. Title. Independent claim 1 is illustrative of the claims on
appeal and is reproduced below:
1. A safe comprising:
a. a safe housing defining a secure storage chamber,
said safe housing comprising:
a first, partially cylindrical, housing portion that
defines a first portion of said secure storage chamber;
a second housing portion that extends outwardly
from said first housing portion, said second housing
portion defining:
a second portion of said secure storage chamber
that is in communication with said first portion of said
secure storage chamber; and an access opening;
b. a rotatable item support assembly defining a shelf
portion, said rotatable item support being adapted so that, as
said rotatable item support is rotated, said shelf portion moves
between: ( 1) a first position in which said shelf portion is
disposed within said first portion of said secure storage
chamber; and (2) a second position in which said shelf portion
is disposed within said second portion of said secure storage
chamber;
c. a door, disposed adjacent said access opening, that
is adapted for selectively preventing access to said secure
storage chamber through said access opening; and
d. a locking mechanism that is adapted for selectively
maintaining said door in a closed and locked orientation in
which said door prevents access to said secure storage chamber.
REFERENCES RELIED ON BY THE EXAMINER
Chovanec
Dyment
Bowen
us 2,610,473
us 4,848,856
US D335,595
2
Sept. 16, 1952
July 18, 1989
May 18, 1993
Appeal2013-007570
Application 12/492,425
THE REJECTIONS ON APPEAL
Claims 1--4, 6, 7, 10-12, and 14--20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dyment and Chovanec.
Claims 1-22 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bowen, Dyment, and Chovanec.
ANALYSIS
All of the claims on appeal are rejected as being unpatentable over
Bowen, Dyment, and Chovanec. Final Act. 3. We address that rejection
first. Further, Appellant argues all the claims together as a group. See App.
Br. 13-22. We select independent claim 1 for review with claims 2-22 and
24 standing or falling with claim 1. See 37 C.F.R. 41.37(c)(l)(iv).
Appellant additionally presents arguments directed to issues of secondary
consideration. App. Br. 22-26. We separately address these issues of
secondary consideration.
The rejection of claims 1-22 and 24
as unpatentable over Bowen, Dyment, and Chovanec
Claim 1 is directed to a "safe" "defining a secure storage chamber."
The Examiner and Appellant both agree on the definition of a "safe" as
generally being a housing or a receptacle used to protect items or otherwise
keep them free from harm or risk. 1 This definition is consistent with the
1 The Examiner states that a "safe" is "a housing to store and protect items."
Ans. 3. Appellant states "[a] 'safe' is generally defined by Merriam-
Webster as 'a place or receptacle to keep articles (as valuables) [free from
harm or risk]' (substituting the definition of' safe' (i.e., the verb) after ' (as
valuables)' in the definition)." App. Br. 18. See also
http://dictionary.reference.com/browse/safe?s=t where a "safe" is defined as
"any receptacle or structure for the storage or preservation of articles" (last
visited February 2, 2016).
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Application 12/492,425
term's use in the Specification. Claim 1 is also directed to a safe having a
particular housing structure with an internal "rotatable item support
assembly." The Examiner relies on Bowen for teaching "a circular rotary
rifle and hand gun/pistol safe." Final Act. 3. The Examiner relies on
Dyment for disclosing a safe (also including "a rotatable item support
assembly") having "a rectangular prism/cuboid second housing portion"
forming an "access opening." Final Act. 3--4. The Examiner relies on
Chovanec for teaching "a lock (14) on a glass panel door." Final Act. 5.
The Examiner concludes that it would have been obvious to first modify the
housing of Bowen "by using an alternate door structure thereon" (i.e.,
Dyment' s ), and then "to modify the safe of Bowen in view of Dyment by
adding a lock on the door, such as is taught by Chovanec, to prevent the
items located therein from being accessed without authorization." Final Act.
4--5; see also Ans. 4.
Appellant contends that "[t]he Examiner failed to clearly articulate
any reason why the claimed invention would have been obvious in light of a
display case or cabinet." App. Br. 13; see also App. Br. 14, 21, 22 and
Reply Br. 3. However, the Examiner sets forth reasoning, and Appellant
does not indicate how or why the reasons provided by the Examiner (see
Final Act. 4--5, Ans. 4) are inadequate or unreasonable. We therefore are not
persuaded by Appellant's contention.
Appellant also alleges that Dyment and Bowen are not analogous to
Appellant's "safe" because these references are from a different field of
endeavor (i.e., display or transparent cases). See App. Br. 15-16. Appellant
acknowledges that "the term 'safe' is given its general meaning, i.e. a
housing to store and protect items," but contends that the Examiner does not
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Application 12/492,425
provide "how a display case or cabinet can be considered 'a housing to store
and protect items.'" App. Br. 16. Appellant states that "putting a lock on a
display case is not the same as putting items in a safe" because "[a]
determined thief can break into a display case, but the same thief may be
prevented from breaking into a safe or secure enclosure." App. Br. 16.
Accordingly, Appellant contends that "a secure enclosure (e.g., a safe) is not
from the same field of endeavor as a display case or cabinet." App. Br. 16.
Appellant's argument is not persuasive because Appellant appears to
be giving the claim term "safe" a definition different from its general
dictionary definition provided by both the Examiner and Appellant. See
supra. Appellant is basing the term "safe" on the amount of effort a
determined thief must expend to breach it, yet the amount of protection or
security required of the safe is neither stated in its dictionary definition nor
claimed by Appellant. In short, Appellant's device, and the combination of
Dyment and Bowen (including Chovanec's lock) both pertain to a secure
enclosure for the contained articles and as such, we are not persuaded that
they hail from different fields of endeavor. Furthermore, Appellant does not
explain how, just because the contents of a locked housing can be seen from
the outside, that visual capability precludes the locked housing from being a
"safe" as that term is understood.2 See also Ans. 2.
Appellant further contends that "Dyment and Bowen are not
reasonably pertinent to the problem faced by the inventor" because "a
display case or cabinet does not address the problem of saving space and
2 One is reminded of museums or the like (e.g., The National Archives in
Washington, DC) where valuable artifacts are securely on display behind
glass enclosures.
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Application 12/492,425
improving the functionality of a gun safe." App. Br. 16-17. As support,
Appellant references "Fraley Declaration at 8" which discusses "[t]he
materials used to manufacture and design[]" safes. App. Br. 17. However,
as above, the dictionary definition employed supra as to what constitutes a
"safe," as well as Appellant's claims, are silent as to the material required to
meet this limitation. See also Ans. 3 ("nothing in the housing construction
[is] claimed" that distinguishes over the housing of Bowen and Dyment). As
such, the referenced "Fraley Declaration" does not persuade us that the
Examiner erred in construing the claim term "safe." See also Ans. 4--5. We
additionally note Appellant's reference "a gun safe" when claim 1 is only
directed to a "safe." App. Br. 17.
Regarding the specific problem of saving space mentioned by
Appellant (App. Br. 17), both Dyment and Bowen are silent on this point.
However, Appellant also addresses another problem that was faced, which is
one of providing access to the enclosed contents. 3 See also Fraley
Declaration at 6. Dyment pertains to a device having "racks for displaying
and dispensing individually packaged articles" and hence is also concerned
with product accessibility. Dyment 1:15-16; see also 2:27-28 ("racks
particularly intended to enhance impulse buying of retail items") and 2:47
("easy loading and removal of articles"). Appellant does not dispute that
Dyment provides access to the enclosed items, nor does Appellant dispute
that Dyment also addresses the problem of providing access to items in the
back of the enclosure. See App. Br. 17; see also 2:58---63 (discussing the
3 "For example, a user storing 40 rifles in a rectangular gun safe may have to
remove 20 or more of the rifles in order to access a particular rifle at the
back of the safe." Spec. 1: 13-15; App. Br. 17.
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Application 12/492,425
rotation of the contained articles so as "to present all of the articles in the
support rack to the customer for viewing regardless of where the customer
stands in relation to the display"). Additionally, Bowen's device is entitled
"Rotary Rifle Cabinet" which we understand to contain a support therein
that is rotated to access rifles at the back of the cabinet.
Accordingly, for the above reasons, we are not persuaded by
Appellant's arguments.
Appellant also contends that claim 1 discloses "a secure housing" and
that the cited art "discloses insecure display cases and cabinets."4 App. Br.
18; see also App. Br. 20. Appellant supports this assertion by contending
that the Examiner's reliance on display/transparent housings as meeting the
ordinary definition of a "safe" "is clearly a false assertion." App. Br. 18; see
also Reply Br. 3--4. Appellant reiterates that the concept of Dyment or
Bowen teaching "a gun safe housing is facially false," and again addresses
"the materials" from which such devices are constructed as well as the ease
by which Dyment's or Bowen's devices can be breached. App. Br. 19-20.
For similar reasons discussed above regarding similar arguments,
Appellant's contentions are not persuasive of Examiner error in view of the
above noted definition of a "safe." In short, Appellant does not explain how
a housing that is locked (as taught by Chovanec) fails to meet the claim
limitation of a "secure storage chamber."
From a different perspective, perhaps, Appellant contends that "safes
are inherently different from display cases and cabinets." App. Br. 21.
4 Appellant states that "[t]he problem with the Examiner's argument is
fundamental: a display case with a lock, as in the cited prior art, does not
teach a secure housing." Reply Br. 3.
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Application 12/492,425
However, Appellant does not elaborate further as to how the devices of
Dyment and Bowen (incorporating a lock) fail to fall within the ordinary
definition of a "safe" as discussed supra. Appellant also alleges that the
Examiner employed "impermissible hindsight" (App. Br. 21-22), but fails to
indicate that which was only gleaned from Appellant's Specification. See
also Ans. 4.
Appellant further contends that "by citing references that a safe
designer or manufacturer would not take into account, the Examiner has not
'tak[ en] into account only knowledge which was within the level of ordinary
skill in the art."' App. Br. 22 (referencing MPEP § 2145; In re McLaughlin
443 F.2d 1392, 1395, (CCPA 1971). Appellant does not otherwise explain
how the level of skill of a "safe" designer or manufacturer (as that word is
defined) was not taken into account by the Examiner. See, e.g., Reply Br. 3.
Instead, it appears that Appellant is seeking to limit the level of skill to only
(non-transparent) gun safes constructed of welded, steel plate walls. See
Fraley Declaration at 8. This is not the level of skill to be employed in
ascertaining the matter before us.
Secondary Considerations
Our reviewing court has instructed us that "secondary considerations
of nonobviousness ... simply cannot overcome a strong prima facie case of
obviousness" and that for obviousness under§ 103, "all that is required is a
reasonable expectation of success" (Wyers v. Master Lock Co., 616 F.3d
1231, 1242, 1246 (Fed. Cir. 2010)).
In the matter before us, Appellant contends that the submitted
secondary considerations "must be considered." App. Br. 22. The Examiner
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Application 12/492,425
separately addresses Appellant's contentions concerning both "long felt
need" and "commercial success." Ans. 5.
Regarding "long felt need," Appellant contends that the claimed
invention "was not solved by others" and relies on the Fraley Declaration for
support. App. Br. 23-24. Appellant contends that Mr. Fraley' s "testimony
confirms that others have been unable to solve this need" (i.e., a need for a
solution to "poor accessibility found in traditional rectangular safes"). App.
Br. 23 (referencing "Declaration of Fraley at 6"). However, neither
Appellant nor Mr. Fraley explain how Bowen's round "Rotary Rifle
Cabinet" (Title) fails to likewise present a solution to "poor accessibility
found in traditional rectangular safes."
Appellant also addresses the submitted industry publications stating
that they are indicative of "a solution to a long-standing accessibility
problem within the context of gun safes." App. Br. 23; see also App. Br.
24--25. However, the claims are not presented "within the context of gun
safes," but instead, simply "safes."5 As to the issue of accessibility, that
matter has previously been addressed. As to the particular shape of the
housing recited, the Examiner specifically addresses Dyment to the effect
that "a second rectangular prism/cuboid housing portion attached to a first
housing portion has been known in the art." Ans. 5. In conclusion,
Appellant does not persuade us that the Examiner's cited combination of
Bowen, Dyment, and Chovanec fails to render Appellant's device obvious,
despite Appellant's "long felt need" rationale, in view of "what a person of
5 Appellant's Specification states "[a]lso, it should be understood that, while
various embodiments of the invention are described herein as being adapted
for the storage of guns, other embodiments may be used for the storage of
other items." Spec. 9:26-29.
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Application 12/492,425
ordinary skill using ordinary common knowledge would have understood the
references to teach." Ans. 5.
Regarding "commercial success," the Examiner states that "there does
not appear to be any nexus" because "there is no comparative data," and also
because "there are no sales results presented." Ans. 5. Appellant
acknowledges the need for a "nexus between the demonstrated commercial
success and novelty of the invention" (App. Br. 23; see also Reply Br. 5),
but contends that " [a] nexus is presumed when (as in this case) the
commercially successful product is the claimed invention itself' (App. Br.
26; Reply Br. 5). "Therefore, the accolades above show a nexus between the
commercially successful product and the claimed invention and that the
claimed invention represents a commercial success." App. Br. 26.
Even presuming arguendo that a nexus has been shown despite the
lack of any submission relating to comparative/sales data6 (see Ans. 5), we
must abide by the holding in Wyers. As such, and in view of the dictionary
definition of a "safe" and the arguments/analysis presented above, we are
not persuaded that Appellant's proffered evidence of secondary
consideration overcomes the prima facie case of obviousness established by
the Examiner.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claims 1-22 and 24 as being obvious over Bowen,
Dyment, and Chovanec.
6 "Comparative data and sales results are not the only way to show a nexus
between the demonstrated commercial success and the novelty of the
invention." Reply Br. 5.
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Application 12/492,425
Because we are affirming the Examiner's rejection of all the claims
under the cited combination of Bowen, Dyment, and Chovanec, we need not
address at this time the Examiner's other rejection of only some of the
claims under Dyment and Chovanec alone.
DECISION
The Examiner's rejection of claims 1-22 and 24 is affirmed.
The Examiner's rejection of claims 1--4, 6, 7, 10-12, and 14--20 is not
reached.
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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