Ex parte Pires et al.

Board of Patent Appeals and Interferences

Sep 21, 1999

08407275 (B.P.A.I. Sep. 21, 1999)

Application for patent filed April 20, 1995. According to appellants, the application is a continuation of1
Application 08/099,837, filed July 29, 1993, now abandoned.
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journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MANUEL PIRES and RUSSELL MOSKWA
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Appeal No. 1996-3178
Application 08/407,2751
______________
ON BRIEF
_______________
Before HAIRSTON, BARRETT and FRAHM, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s final rejection of claims 2 to 5, 7 to 9,
Appeal No. 1996-3178
Application 08/407,275
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12 and 13, which constitute all of the pending claims in the application before us. Claims 1, 6, 10 and
11 were canceled by appellants in their amendment of September 7, 1994. We note that the copy of
the appealed claims, claims 2 to 5, 7 to 9, 12 and 13, submitted with the Brief as an appendix, is
incorrect. In addition to the minor errors noted by the examiner at page 2 of the Answer, we note the
following additional errors:
In claim 4, line 1, "in claim 1" should be --in claim 12-- in accordance with appellants’
amendment of September 7, 1994.
In claim 12, line 3, "a plurality a plurality" should be --a plurality-- in accordance with
appellants’ amendment of March 12, 1996.
BACKGROUND
The subject matter on appeal is directed to a storage system 1 (see appellants’ Figure 1) for
storing objects (e.g., keys 4) which are associated with identification devices 2 (e.g., an electronic
memory). The identification devices 2 are attached to the objects or keys 4 with a wire 3, and engage
into stations 6 on a frame 16 or housing 17 as shown in Figure 1. As further shown in Figure 1, storage
system 1 includes a display means 13 and a keyboard or input means 12 for user interface. As stated
by appellants at page 1 of the specification, the storing and keeping track of objects such as keys is a
known problem for automobile dealers, hotels, hospitals, and the like. It was recognized in the prior art
that it would be desirable to record the user of a key so that it cannot be lost due to various events such
as employee turn-over. See specification, page 1.
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Representative claim 12 is reproduced below:
12. A storage system suitable for storing a plurality of objects each associated with an
identification device including electronic memory means operable for storing a unique readable code,
said system comprising
a frame;
a plurality of station means in said frame operable to receive said identification devices;
reading means operable for reading the respective codes of electronic memory means;
input means operable for inputting information to respective electronic memory means to relate
the associated code of each of said memory means to the associated object to said identification means
and also for inputting information to respective electronic memory means as to a selected one of said
identification devices or its associated object;
processing means operable for processing inputted information to said input means and for
processing information from said reading means; and
display means responsive to said processing means and operable for indicating the location of
an identification device engaged in one of said station means based on inputted information.
Representative claim 2 is reproduced below:
2. The storage system as claimed in claim 12, wherein said station means further
comprises locking means operable to inhibit the disengagement of said identification device and
responsive to said processing means.
The following references are relied on by the examiner:
Appeal No. 1996-3178
Application 08/407,275
We note that the amendment submitted on March 12, 1996, accompanying the Brief, has been entered and2
considered by the examiner as indicated at page 2 of the Answer. We also note that the Revocation of Power of
Attorney was received March 23, 1999, and a new power of attorney was entered as per the letter to appellants dated
April 1, 1999, Paper no. 19.
4
Thomas 4,271,352 Jun. 2, 1981
Banks et al. (Banks) 4,635,053 Jan. 6, 1987
Saliga 5,038,023 Aug. 6, 1991
Claims 2, 3 and 7 to 9 stand rejected under 35 U.S.C. § 103. As evidence of obviousness, the
examiner relies upon Saliga, Thomas, and Banks.
Claims 4, 5, 12 and 13 stand rejected under 35 U.S.C. § 103. As evidence of obviousness,
the examiner relies upon Saliga and Thomas.
Rather than repeat the positions of appellants and the examiner, reference is made to the Brief
and the Answer for the respective details thereof.2
OPINION
At the outset, we note that appellants (Brief, page 4) group and argue claims 2, 3 and 7 to 9 as
standing or falling together, and group and argue claims 4, 5, 12 and 13 as standing or falling together.
We are in general agreement with this grouping of the claims, and take claim 2 as being representative
of the first group, and take claim 12 as being representative of the second group for purposes of our
decision. See 37 CFR 1.192(c)(7).
In reaching our conclusion on the issues raised in this appeal, we have carefully considered
appellants’ specification and claims, the applied patents, and the respective viewpoints of appellants
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and the examiner. As a consequence of our review, we are in agreement with the well reasoned
statements of the examiner (final rejection, pages 3 to 4; Answer, pages 3 to 5) that the
claims on appeal would have been obvious to one of ordinary skill in the art at the time the invention
was made in light of the collective teachings of the applied references. For the reasons which follow,
we will sustain the decisions of the examiner rejecting claims 2 to 5, 7 to 9, 12 and 13 under 35 U.S.C.
§ 103.
Rejection of Claims 4, 5, 12, and 13 Under 35 U.S.C. § 103:
We first turn to appellants’ argument (Brief, page 4) that there is no motivation to combine
Saliga and Thomas. Appellants simply state that Saliga identifies keys after a key is placed into storage
whereas Thomas does not, and that therefore they have different goals and cannot be combined. We
disagree. Both Saliga and Thomas pertain to key coding and tagging using electronic means in order to
prevent loss, theft, access, and to keep track of information related to the owner and key itself. We
find that it would have been obvious to one of ordinary skill in the art at the time of appellants’ claimed
invention to have employed the electronic memory concept of Thomas to the storage system taught by
Saliga. The motivation would have been as given by the examiner, to store more information in a
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limited area (final rejection, page 3). Thomas even teaches that bar codes and E PROM’s are alternate
and equivalent embodiments of his invention. Saliga and Thomas are both concerned with solving the
same problem - that of using a computer to maintain records and other information pertinent to the key
to which the identification device is attached. Accordingly, we cannot find error in the examiner’s
statement of the motivation for making the combination.
We turn next to appellants’ argument (Brief, page 4) that the examiner fails to provide a
reference or expert opinion supporting the proposition that bar codes are an art recognized equivalent
to an electronic memory. We disagree with appellants. As set forth by the examiner (Answer, pages 4
to 5), Thomas is relied upon to show the equivalence of an electronic memory to bar codes. As
discussed in Thomas at column 6, line 16 to column 7, line 21, many equivalent types of card coding
can be used to associate an identification device and key with user data. Thomas teaches that some of
these equivalent coding methods are magnetic stripe or tape (column 6, lines 6 to 15), optical character
recognition (column 6, lines 16 to 39), bar code scanning systems (column 6, lines 40 to 56),
electronically programmable read only memory or E PROM (preferred embodiment as discussed from
columns 4 to 6 and shown in Figures 1 through 5), and embossed character recognition (column 7, lines
4 to 21). We find that one of ordinary skill in the art looking at the reference to Thomas would have
clearly understood that an E PROM could be used in place of bar codes.
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Rejection of Claims 2, 3, and 7 to 9 Under 35 U.S.C. § 103:
We turn next to appellants’ argument (Brief, page 5) that there is no suggestion to combine
Banks with Saliga or to combine Banks with Saliga and Thomas. Appellants aver that the examiner has
not provided a reference to show that it would have been obvious to use a light source to locate keys.
We cannot agree. Instead, we agree with the examiner that Banks teaches
a display means or LED light as an indicator to indicate to a user which key slot contains a requested
key (see column 6, lines 7 to 10). As to motivation to combine the indicator teaching of Banks with
Saliga and Thomas, we note our agreement with the examiner (Answer, page 4) that using an indicator
is a quick way to notify a user about the location of a selected item/key. Furthermore, we note that it
would have been common sense to use a light to locate the selected item/key since locating an item/key
by row and column on a character display is tedious and time consuming. See In re Bozek, 416 F.2d
1385, 1390, 163 USPQ 545, 549 (CCPA 1969) (standing for proposition that conclusion of
obviousness may be made from common knowledge and common sense of person of ordinary skill in
art without any specific hint or suggestion in particular reference); In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968) and In re Shepard, 319 F.2d 194, 197, 138 USPQ 148, 150 (CCPA
1963) (both standing for proposition that not only specific teachings of reference but also reasonable
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inferences which artisan would have logically drawn therefrom may be properly evaluated in formulating
rejection).
We turn next to appellants’ argument (Brief, page 4) that the examiner has not made it evident
how Banks and Saliga could be structurally combined, and that instead the examiner is combining ideas
and not technology. We note that the 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. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed.
Cir. 1991); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In other words, the
test is not what the individual references themselves teach, but rather what the combination of the
disclosures taken as a whole would have suggested to one of ordinary skill in the art. In re McLaughlin,
443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). In the case before us, we find that the
examiner has properly and sufficiently set forth a prima facie case of obviousness under 35 U.S.C. §
103. We find that representative claim 2 on appeal, which recites a locking means, would have been
obvious in light of the collective teachings and concepts fairly suggested by Saliga and Banks. Banks
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teaches a solenoid 26 for locking and unlocking an identification device and key 21 as claimed.
Furthermore, we note that Saliga discusses a retaining latch for preventing unauthorized access as well
as an indicator lamp to show item location (see column 1, lines 44 to 51). We agree with the examiner
(Answer, pages 3 to 4) and find that it is the combination of teachings and concepts of Saliga and
Banks, along with Thomas, that meets the language of the claims on appeal, and not the structural
combination of the references.
Lastly, we consider appellants’ argument (Brief, page 5) that the rejection is based on
impermissible hindsight (i.e., the examiner’s understanding founded on applicants’ disclosure). It
must be recognized that any judgement on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning. But so long as it takes into account only knowledge which was within the
level of ordinary skill at the time the claimed invention was made, and does not include knowledge
gleaned only from the applicants’ disclosure, such a reconstruction is proper. See In re McLaughlin,
443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). We cannot find any assertion in
appellants’ Brief that the reasoning of the obviousness rejection in the Office action took into account
knowledge gleaned only from applicants’ disclosure. In other words, it appears that applicants’
hindsight argument is merely a general argument or assertion.
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In any event, the artisan would have had no need for recourse to applicants’ disclosure for
direction to apply the teachings of either Thomas or Banks to a storage system as taught by Saliga. All
that is involved is the application of knowledge clearly present in the prior art. See In re Sheckler, 438
F.2d 999, 1001, 168 USPQ 716, 717 (CCPA 1971).
In light of the foregoing, the differences between the subject matter recited in the claims and the
references are such that the claimed subject matter as a whole would have been obvious within the
meaning of 35 U.S.C. § 103. Accordingly, we shall sustain the standing rejections of claims 2 to 5, 7
to 9, 12 and 13 on appeal.
CONCLUSION
The decisions of the examiner rejecting claims 2 to 5, 7 to 9, 12 and 13 under 35 U.S.C. §
103 are affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED
Appeal No. 1996-3178
Application 08/407,275
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KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERIC FRAHM )
Administrative Patent Judge )

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