Ex Parte Pesapane

Patent Trial and Appeal Board

Sep 28, 2016

10592274 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/592,274 0910612007
69308 7590 09/30/2016
MICHAEL BEST & FRIEDRICH LLP (Allegion)
100 EAST WISCONSIN A VE
SUITE 3300
MILWAUKEE, WI 53202-4108
Dominic Pesapane
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.
048518-9011-USOl 8046
EXAMINER
YANG, JAMES J
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
MKEIPDOCKET@MICHAELBEST.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOMINIC PESAP ANE
Appeal2015-008014
Application 10/592,274
Technology Center 2600
Before CARL W. WHITEHEAD, JR, JEREMY J. CURCURI, and
HUNG H. BUI, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-37. Final Act. 1. We have jurisdiction under 35
U.S.C. § 6(b).
Claims 1-37 are rejected under 35 U.S.C. § 112, second paragraph,
for being indefinite. Final Act. 2-3.
Claims 1-36 are rejected under 35 U.S.C. § 103(a) as obvious over
Crosley (US 4,837,822; iss. Jun. 6, 1989) and Rollins (US 4,811,012; iss.
Mar. 7, 1989). Final Act. 4--26.
Claim 37 are rejected under 35 U.S.C. § 103(a) as obvious over
Crosley. Final Act. 26-29.
We affirm.
1 According to Appellants, the real party in interest is Schlage Lock
Company. App. Br. 2.
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Application 10/592,274
STATEMENT OF THE CASE
Appellant's invention relates to "controllers and keys for[] lock
systems." Spec. 1:7-8. Claim 1 is illustrative and reproduced below:
1. An access control system for at least one structure
having at least first and second doors, each door having a lock
adjustable between a locked state and an unlocked state, the
control system comprising:
a key with a code, the code including only a code first
segment and a code second segment;
a first controller operatively coupled with the first door
lock and having a memory with a single first controller stored
value, the first controller being configured
to receive the code from the key,
to compare only the code first segment with the
single first controller stored value, wherein the first controller is
pre-programmed to determine which segment of the code is the
code first segment, and
to adjust the first door lock to the unlocked state
when the first controller determines that the code first segment
matches with the single first controller stored value,
said match being the sole requirement to adjust the first
door lock to the unlocked state, wherein the comparison of the
code first segment with the single first controller stored value is
the sole comparison made by the first controller; and
a second controller operatively coupled with the second
door lock and having a memory with a single second controller
stored value, the second controller being configured
to receive the code from the key,
to compare only the code second segment with the
single second controller stored value, wherein the second
controller is pre-programmed to determine which segment of
the code is the code second segment, and
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to adjust the second door lock to the unlocked state
when the second controller determines that the code second
segment matches with the single second controller stored value,
said match being the sole requirement to adjust the
second door lock to the unlocked state, wherein the comparison
of the code second segment with the single second controller
stored value is the sole comparison made by the second
controller.
ANALYSIS
THE INDEFINITENESS REJECTION OF CLAIMS 1-3 7
The Examiner finds claims 1-37 are indefinite, discussing several
terms, including (1) "sole requirement" recited in claims 1 and 37, (2) "said
comparison between the second code and the single first controller" recited
in claim 37, and (3) "said match [(second occurrence)]" as recited in claims
1 and 37. Final Act. 2-3; see also Ans. 2-3.
Whether a claim is indefinite is an issue of law. Credle v. Bond,
25 F.3d 1566, 1576 (Fed. Cir. 1994). The second paragraph of 35 U.S.C.
§ 112, requires that a patent's claims, viewed in light of the specification and
prosecution history, inform those skilled in the art about the scope of the
invention with reasonable certainty. See Nautilus, Inc. v. Biosig, Insts., Inc.,
134 S. Ct. 2120, 2129-30 (2014). "[A] patent must be precise enough to
afford clear notice of what is claimed, thereby apprising the public of what is
still open to them." Id. at 2129 (citation, quotations, and brackets omitted).
Indefiniteness is to be evaluated from the perspective of a person with
ordinary skill in the relevant art at the time of the invention-when the
patent application was filed. Id. at 2128.
Our reviewing court has previously applied a standard consistent with
that of Nautilus in the examination context. See In re Warmerdam, 33 F.3d
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1354, 1361 (Fed. Cir. 1994) ("The legal standard for definiteness is whether
a claim reasonably apprises those of skill in the art of its scope."). In
addition, our reviewing court has stated that "[i]t is the applicants' burden to
precisely define the invention, not the PTO's." In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997).
Regarding the term "sole requirement," recited in claims 1 and 37, we
find the Examiner erred in finding the term "sole requirement" renders
claims 1-37 indefinite for reasons stated by Appellant on pages 7-9 of the
Appeal Brief. See App Br. 7-9. For example, the term "sole requirement,"
when read in light of Appellant's Specification, refers to only one match is
required to make an access decision, as Appellants argue. Id. at 8.
Regarding the term "said comparison between the second code and
the single first controller" recited in claim 37 and the term "said match
[ (second occurrence)]" recited in claims 1 and 3 7, we see no error in the
Examiner's findings that these terms render claim 1-37 indefinite. See App.
Br. 8-11 (Appellant indicates willingness to file amendment after decision
on appeal). For example, there is no antecedent basis for these terms in the
context of claims 1 and 37.
For these reasons, we sustain the Examiner's indefiniteness rejection
of claims 1-37.
THE OBVIOUSNESS REJECTION OF CLAIMS 1-36 OVER CROSLEY AND ROLLINS
The Examiner finds Crosley and Rollins teach all limitations of claim
1. Final Act. 4--8. In particular, the Examiner finds Crosley teaches all
limitations of claim 1, except for recited limitations: "to compare only the
code first segment with the single first controller stored value, wherein the
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Application 10/592,274
first controller is pre-programmed to determine which segment of the code is
the code first segment"; "the comparison of the code first segment with the
single first controller stored value is the sole comparison made by the first
controller"; "to compare only the code second segment with the single
second controller stored value, wherein the second controller is pre-
programmed to determine which segment of the code is the code second
segment"; "the comparison of the code second segment with the single
second controller stored value is the sole comparison made by the second
controller." Final Act 7. The Examiner finds Rollins teaches these recited
limitations in order to support the conclusion of obviousness. Final Act. 7-8
(citing Rollins col. 6, 11. 55---66).
Specifically, the Examiner reasons:
it would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the electronic lock
system in Crosley by integrating the teaching of the cards and
locks with identifiable common and individual codes as taught
by Rollins.
The motivation would be to utilize a known method of
maintaining security in a system where cards may be lost or
access codes need to be updated (see Rollins, Col. 1, Lines 57-
62).
Final Act. 8.
Appellant presents the following principal argument:
Rollins discloses that a lock on a door designated an
"individual door" includes three individual access codes stored
in a memory. Rollins also discloses that when a card is inserted
into the lock, the individual field portion data of the key card is
compared to all three individual access codes stored in the
memory to make an access decision. See, e.g., col. 8, lines 2-14
of Rollins.
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In contrast to the system of Rollins, the system recited in
claim 1 requires each controller to have only a "single" stored
value which is compared to a code segment of a key.
App. Br. 13.
We do not see any error in the Examiner's findings. Nor do we see
any error in the Examiner's conclusion of obviousness.
Regarding Appellant's principal argument,
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
Here, the Examiner finds Crosley teaches "a first controller
operatively coupled with the first door lock and having a memory with a
single first controller stored value" and "a second controller operatively
coupled with the second door lock and having a memory with a single
second controller stored value" as recited in claim 1. Final Act. 5-6 (citing
Crosley col. 4, 11. 14--15; col. 11, 11. 35-39, 54--59; col. 12; 11. 34--35, 57-59)
(emphasis added). Thus, we see no error in the Examiner's finding that
Crosley as understood by a skilled artisan teaches each controller having a
single stored value, as recited.
Rollins (col. 8, 11. 2-14 (emphasis added)) discloses:
The electronic lock of the door D is also designated an
"individual door" by the initialization identification card and
contains three individual codes d-1, d-2 and d-3 in memory and
no common door code, and key cards of three card holders
Barbara, Pat and Jan, contain only an individual code, d-1, d-2
and d-3, respectively in the fields 23, 23 as illustrated in FIG.
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11. When any of the cards of Barbara, Pat and Jan is inserted in
the door D, the microprocessor 30 within the electronic lock
compares the code in the individual fields 23, 23 of the card to
all three of the lock access combinations in the RAM 32 and
after noting a match, opens the lock.
Thus, the disclosure at this portion of Rollins does compare an individual
code to all three stored values. However, when Rollins' s teachings of first
(individual) and second (common) code segments (see Rollins col. 6, 11. 55-
66) are combined with Crosley's teachings of an electronic lock system with
each lock controller having a single stored value (see Crosley col. 4, 11. 14--
15; col. 11, 11. 35-39, 54--59; col. 12; 11. 34--35, 57-59), each lock controller
has a single stored value as taught by Crosley and the electronic lock makes
a sole comparison, using either the individual code segment or the common
code segment as taught by Rollins. See Ans. 3--4.
Further, we note Rollins (col. 7, 11. 39--49) discloses an individual lock
being accessible by a number of people less than a predetermined limit,
suggesting to a skilled artisan that an individual lock may have a different
number of stored values than three (for example, one stored value).
We, therefore, sustain the Examiner's rejection of claim 1, as well as
claims 2-36, which are not separately argued with particularity.
THE OBVIOUSNESS REJECTION OF CLAIM 37 OVER CROSLEY
The Examiner finds Crosley teaches all limitations of claim 37. Final
Act. 26-29. In particular, the Examiner finds and concludes:
However, the locks only compare the Area/Sequence
pairs if the Area/Sequence pairs validate an action, and also if
the Area has been programmed into the lock (see Crosley, Col.
12, Lines 29-36). Therefore, it would have been obvious to one
of ordinary skill in the art at the time of the invention for the
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first lock to compare only the first code if the Area/Sequence
pairs stored in the card only have one matching Area that also
validates an action with the first lock. Also, it would have been
obvious to one of ordinary skill in the art for the second lock to
compare only second code if the Area/Sequence pairs stored in
the card only have one matching Area that also validates an
action with the second lock. Thus, it would have been obvious
to one of ordinary skill in the art to try and program the cards
such that the cards do not have repeated Area/Sequence pairs.
Additionally, it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify
the system to only include a comparison of the Area codes on
the keys as a matter of engineering choice. As indicated in the
Crosley reference, the locks may be unlocked if the Area codes
match (see Crosley, Col. 12, Lines 29-52), even if the Sequence
codes match or do not match, as long as the message fields are
valid. Thus, removing the step of comparing the Sequence
codes would not disable the system's ability to determine
whether a door should be unlocked, and thus for its intended
purpose.
Final Act. 29 (emphasis added); see also Ans. 4--5.
Appellant presents the following principal argument:
[I]n order to open a lock in the system of Crosley, a key card
message must include: (1) an instruction to open the lock, (2)
an area number that matches the lock's area code, and (3) a
sequence number that matches the lock's sequence number.
Even if the key card's sequence number does not need to match
the lock's sequence number, the lock still requires at least two
comparisons and two matches to open.
In contrast to the system of Crosley, the system recited in
claim 37 requires only one code, from a key that includes more
than one code, to open the door. While the key of claim 3 7
includes multiple codes, each of the first controller and the
second controller is operable to unlock its respective door only
if a particular one of the key codes matches the controller stored
value. As explained above, Crosley' s system requires at least
two comparisons and two matches to open.
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App. Br. 15
We do not see any error in the Examiner's findings. Nor do we see
any error in the Examiner's conclusion of obviousness.
The appeal of this rejection turns on one question: Does Crosley
teach unlocking the lock based on a sole comparison?
We agree with and adopt as our own the Examiner's findings and
reasons on page 29 of the Final Action, quoted above. See Final Act. 29.
Regarding Appellant's argument, the argument does not show any
error in the Examiner's findings and reasons because Crosley (col. 12, 11.
29-34) discloses: "The 2 byte Sequence number is paired with the Area
number to validate most actions the lock can take. When an Area/Sequence
pair validates an action such as 'open the door', the lock firmware compares
the pair to the Areas and Sequences currently stored in the lock."
Put another way, Crosely's comparison of the key's Area and the
lock's Area constitutes unlocking the lock based on a sole comparison.
Comparing only Area codes, and not Area/Sequence pairs, is an engineering
choice. See Final Act. 29; see also App. Br. 15 (acknowledging key card's
sequence number does not need to match the lock's sequence number).
Contrary to Appellant's argument, Crosley's action (instruction to open the
lock), which is validated by the Area, does not constitute an additional
comparison. See Crosley col. 12, 11. 29-34.
We, therefore, sustain the Examiner's rejection of claim 3 7.
ORDER
The Examiner's decision rejecting claims 1-37 is affirmed.
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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 ).
AFFIRMED
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