Ex Parte Rodenbeck et al

Board of Patent Appeals and Interferences

Jul 18, 2007

10803434 (B.P.A.I. Jul. 18, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT WILMER RODENBECK, ROGER KEITH RUSSELL,
and MICHAEL LEE LONG
____________

Appeal 2007-0981
Application 10/803,434
Technology Center 2600
____________

Decided: July 18, 2007
____________

Before LEE E. BARRETT, JOSEPH F. RUGGIERO, and ALLEN R.
MACDONALD, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-7, 10-16, and 18-29. As indicated at page 2 of the Examiner’s
Answer, claims 18-26 have been allowed. Accordingly, only the rejection of
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claims 1-7, 10-16, and 27-29 is before us on appeal. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appellants’ claimed invention relates to a security control system in
which a remote access control system, which includes a remote access
controller electrically coupled to a remote wireless communicator, receives
wireless information from a central access control system. Upon receipt of
information from the remote wireless communicator, the remote access
controller uses the information to control locking and unlocking of a door.
(Specification 1-2).
Claim 1 is illustrative of the invention and reads as follows:
1. A wireless security control system for use in a facility having a
plurality of doors, the wireless security control system comprising
a central access control system in which access information is stored,
and
a plurality of remote access control systems each being adapted to be
mounted to a respective one of the doors of the facility to control the locking
and unlocking of the respective door, the central access control system
wirelessly transmitting access information to the plurality of remote access
control systems independent of any users associated with the access
information making any requests for rights to unlock any of the doors, each
of the remote access control systems being configured to receive wirelessly
and store at least some of the access information from the central access
control system, each of the remote access control systems being configured
to control the locking and unlocking of the respective door using the access
information stored therein, each of the plurality of remote access control
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systems making a decision whether to unlock the respective door in response
to a user making an attempt to unlock the door based on the access
information stored therein and without having to further communicate with
the central access control system.
The Examiner relies on the following prior art references to show
unpatentability:
Pilney US 5,298,883 Mar. 29, 1994
Goldman US 5,321,963 Jun. 21, 1994
Kniffin US 6,072,402 Jun. 6, 2000
(filed Jan. 9, 1992)
Pinzon US 6,161,005 Dec. 12, 2000
(filed Aug. 10, 1998)
MacLellan US 6,177,861 B1 Jan. 23, 2001
(filed Jul. 17, 1998)
Denison US 6,359,547 B1 Mar. 19, 2002
(filed Dec. 4, 1996)

Claims 1-7, 10-16, and 27-29, all of the appealed claims, stand
rejected under 35 U.S.C. § 103(a). As evidence of obviousness, the
Examiner offers Kniffin in view of Pinzon with respect to claims 1, 2, 4, and
10-12, adds Goldman to the basic combination with respect to claim 3, adds
Pilney to the basic combination with respect to claim 5, 27, and 28, adds
Denison to the basic combination with respect to claim 6, and adds
MacLellan to the basic combination with respect to claims 7 and 13-16.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Kniffin and Pilney.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Briefs and Answer for the respective details

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ISSUES
(1) Under 35 U.S.C § 103(a), with respect to appealed claims 1, 2, 4,
10-12, would one of ordinary skill in the art at the time of the
invention have been motivated and found it obvious to combine
Kniffin with Pinzon to render the claimed invention unpatentable.
(2) Under 35 U.S.C § 103(a), with respect to appealed claims 3, 5-7,
13-16, 27, and 28, would the ordinarily skilled artisan have been
motivated and found it obvious to modify the combination of
Kniffin and Pinzon by adding various tertiary references to render
the claimed invention unpatentable.
(3) Under 35 U.S.C § 103(a), with respect to appealed claim 29,
would the ordinarily skilled artisan have been motivated and found
it obvious to combine Kniffin with Pilney to render the claimed
invention unpatentable.

PRINCIPLES OF LAW
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 must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,
148 USPQ 459, 467 (1966). “[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). Furthermore, “‘there must be some
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articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . [H]owever, the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385,
1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)).

ANALYSIS
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claim 1 based on the combination of Kniffin and Pinzon, after
reviewing the Examiner’s analysis (Answer 4-5), it is our opinion that the
stated position is sufficiently reasonable that we find that the Examiner has
at least satisfied the burden of presenting a prima facie case of obviousness.
The burden is, therefore, upon Appellants to come forward with evidence
and/or arguments which persuasively rebut the Examiner’s prima facie case.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed waived [see
37 CFR § 41.37(c)(1)(vii)].
Appellants’ arguments in response to the stated rejection, as well as to
the Examiner’s comments at pages 13 and 14 in the “Response to
Argument” portion of the Answer, focus on the alleged deficiency of
Kniffin in disclosing the transmission of access information to the access
control systems independent of any users’ requests to unlock doors as
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claimed. According to Appellants (Br. 5-6; Reply Br. 1-2), the user in
Kniffin, in contrast to the claimed invention, must contact a clearinghouse
with a request for a access to a locked door with the clearinghouse then
transmitting the access information to the remote access control system.
We do not disagree with Appellants that various embodiments of the
remote control locking system of Kniffin operate exactly as Appellants have
stated. From our own independent review of Kniffin, however, it is also
apparent to us that, as alluded to by the Examiner (Answer 13-14), other
embodiments disclosed by Kniffin operate with preprogrammed access
information in the lock and do not require any user access request
communication with a clearinghouse. For example, the embodiment
described at column 5, lines 40-59 of Kniffin involves the preprogramming
of access information transmitted from a central access control system to a
remote access control system at a door on a periodic basis, i.e., without any
request by a user for access to the door. Again, Kniffin, at column 5, lines
53-55 states “[t]he door’s memory can be reprogrammed with updated
authorization data daily, or at such interval as may be appropriate.”
For their part, Appellants contend (Reply Br. 2) that Kniffin’s use of the
word “foregoing” (col. 5, l. 40) in describing the preprogrammed
authorization embodiment must be interpreted to mean that the previously
described user access request requirement must also be part of the
preprogrammed embodiment. We find no basis for interpreting the
disclosure of Kniffin in the manner suggested by Appellants. We fail to see
the point of preprogramming access information into a lock access control if
a user would still be required to request access authorization from a
clearinghouse as contended by Appellants. In our view, the ordinarily
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skilled artisan would have recognized and appreciated that any requirement
for user access request from a central clearinghouse would defeat the
purpose of preprogramming access authorization into the remote access lock
control.
We make further reference to an additional embodiment of Kniffin which
buttresses the view that different embodiments and variations thereof
disclosed by Kniffin describe situations in which access information is
programmed into the lock control and a user need not contact a central
clearinghouse for access. In a variation of the cellular telephone
embodiment described beginning at column 7, line 17 of Kniffin, a user
utilizes a cellular telephone to transmit RF signals to a lock control system,
which checks to see if the user is on a programmed list of authorized users,
to gain access to a locked door without transmitting to a clearinghouse.
(Kniffin, col. 7, ll. 36-37 and 44-49).
In view of the above discussion and analysis of the disclosure of Kniffin,
we find that, although the Examiner’s stated rejection included a reliance on
Pinzon to provide a teaching of preprogramming access control information
into a lock system independent of a user request for access, this teaching is
cumulative to what is already disclosed by Kniffin. Accordingly, it is our
opinion that, although we found no error in the Examiner’s proposed
combination of Kniffin and Pinzon as discussed supra, the Pinzon reference
is not necessary for a proper rejection of independent claim 1 since all of the
claimed elements are in fact present in the disclosure of Kniffin.
For the above reasons, since it is our opinion that the Examiner has
established a prima facie case of obviousness which has not been overcome
by any convincing arguments from Appellants, the Examiner’s 35 U.S.C.
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§ 103(a) rejection of independent claim 1, as well as dependent claims 2, 4,
and 10-12 not separately argued by Appellants, is sustained.
We also sustain the Examiner’s obviousness rejection of dependent
claim 3 in which Goldman is added to the combination of Kniffin and
Pinzon. Initially, we find Appellants’ arguments (Br. 8-9; Reply Br. 2-3)
related to the alleged deficiency in the applied prior art in providing a
teaching of an exterior mounted antenna to be unpersuasive since, as alluded
to by the Examiner (Answer 14), Kniffin in fact illustrates the receiving and
transmitting antennas being mounted exteriorly of the lock housing 12. We
also find no error in the Examiner’s establishment of proper motivation for
adding to the proposed combination the teachings of the Goldman reference,
which illustrates in Figure 3 the control element 116 mounted on the inside
of the door 112. In our view, the ordinarily skilled artisan would have
recognized and appreciated the obvious security and environmental
protection advantages of placing the wireless communication and remote
access control circuitry on the inside of the door housing. As the Supreme
Court stated in KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. at 1742-43, 82
USPQ2d at 1397, “[r]igid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.”
With respect to dependent claim 5, we also find no error in the
Examiner’s establishment of proper motivation for adding Pilney’s teaching
of providing a receiving/transmitting switch to the proposed combination of
Kniffin and Pinzon and, accordingly, we sustain this rejection as well.
Appellants have made no separate arguments for patentability of this claim
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but, instead, have chosen to rely on arguments made with respect to parent
claim 1, which arguments we found to be unpersuasive as discussed supra.
We also sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
dependent claim 6 in which the Denison reference is added to the proposed
combination of Kniffin and Pinzon. Appellants (Br. 9; Reply Br. 3) attack
the teaching of Denison as providing a disclosure of a wired port only as an
alternative to a wireless port in contrast to the language of claim 6 which
requires both wired and wireless communication. Our review of the
disclosure of Denison, however, reveals that Denison does in fact provide
for both wired and wireless communication. For example, in addition to the
portion of Denison (col. 3, ll. 36-39) cited by the Examiner as teaching a
wired port, Denison also provides for wireless communication as illustrated
in the Figure 6 embodiment described beginning at column 9, line 50.
Turning to a consideration of the Examiner’s obviousness rejection of
dependent claims 7 and 13-16 in which the periodic updating features of the
MacLellan reference are added to the proposed combination of Kniffin and
Pinzon, we also sustain this rejection. Appellants’ arguments (Br. 10-11) in
response reiterate those made with respect claim 1 alleging the failure of
MacLellan to provide a teaching of wireless transmission of authorization
information from a central control to a remote access control independent of
any user access request. As we discussed previously, however, such a
teaching is found in the disclosure of Kniffin.
Lastly, we also sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
dependent claims 27 and 28 and independent claim 29 in which the Pilney
reference is added to Kniffin to address the “normally powered down”
feature of these claims. Our review of Kniffin, however, indicates that this
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teaching of Pilney is cumulative to what Kniffin already discloses and,
accordingly, Pilney is not needed for a proper rejection of these claims. As
described at column 3, lines 37-40 of Kniffin, each lock receiver in a locking
system can be targeted by time division multiplexing “wherein each receiver
awakens in staggered brief intervals to listen for messages.”
As a final commentary, we note that, as mentioned earlier, the
Examiner has indicated (Answer 2) that claims 18-26 have been allowed.
We find nothing on the record before us, however, which provides any
reasons as to why these claims were allowed. We make the observation that
independent claim 18 includes the feature of a plurality of central wireless
communicators that are coupled to the central access controller. This feature
is also present in dependent claim 14, a claim to which the Examiner applied
the MacLellan reference in combination with Kniffin and Pinzon to address
this feature. If the Examiner remains of the position that claims 18-26
should be allowed, a “Reasons for Allowance” should be included to ensure
completeness of the record.

CONCLUSION
In summary, we have sustained the Examiner’s 35 U.S.C. § 103(a)
rejections of all of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 1-7, 10-16, and 18-29 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv)(effective
September 13, 2004).

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AFFIRMED

eld

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