Ex Parte Tropp

Patent Trial and Appeal Board

Jun 30, 2017

13412233 (P.T.A.B. Jun. 30, 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.
5090-82769-A 8740
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
13/412,233 03/05/2012
23432 7590 06/30/2017
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
David TROPP
06/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID TROPP
Appeal 2016-001455
Application 13/412,23s* 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, ANTON W. FETTING, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 29-53. We have jurisdiction under 35 U.S.C.
§ 6(b). A hearing was held on April 27, 2017.
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies Blessed By Pinto, LLC as the real party in interest. Br.
1.
Appeal 2016-001455
Application 13/412,233
THE INVENTION
Appellant claims a method and articles for improving airline luggage
inspection. (Spec. 1).
Claim 29 reproduced below, is representative of the subject matter
on appeal.
29. A set of locks for securing travelers’ luggage while
facilitating an entity’s authorized luggage-screening of luggage
that the travelers have locked with said locks, without breaking
the locks or the luggage, wherein the set comprises at least a
first subset and a second subset each comprising plural locks,
each lock in each of the first and second subsets having a
combination lock portion for use by the travelers to lock
and unlock the lock and in addition having a master key portion
for use by the luggage-screening entity to unlock and re-lock
the lock while the combination lock portion of the same lock
remains in a locked state, wherein the same master key unlocks
the master key portion of each lock in the first and second
subsets, and different locks of the first and second subsets have
combination lock portions with different plural numbers of
dials, wherein:
the master key portion of each lock in the first and second subsets of
locks is configured for the same master key to unlock and re­
lock the lock for the authorized luggage-screening
independently of a locked state of the combination lock portion
of the same lock;
the combination lock portion of each lock in the first and second
subsets of locks is configured to unlock and re-lock the lock
independently of a locked state of the master key portion of the
same lock, using respective different combination dial settings
of the plural number of dials as selected by of for the travelers;
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Application 13/412,233
each lock of a first subset of plural locks and a second subset of plural
locks of the locks in the set has two or more combination lock
dials;
the number of dials in each lock of the first subset differs from the
number of dials in each lock of the second subset; and
each lock in the set has the same prominent indicia configured to
uniquely differentiate the locks of the set from locks that are not
configured for the luggage-screening entity to unlock and re­
lock with the same master key for said authorized luggage­
screening by said entity.
each lock in the set has the same prominent indicia configured to
uniquely differentiate the locks of the set from locks that are not
configured for the luggage-screening entity to unlock and re­
lock with the same master key for said authorized luggage­
screening by said entity.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Misner et al. US 6,877,345 B1 April 12, 2005
MasterLock, MasterLocks.com, http://masterlocks.com.
Travel Good Showcase Magazine, Getting Back the Business:
An Update on the Travel Sentry Project, 24—25 (July/August 2003).
The following rejections are before us for review.
Claims 29-53 are rejected under 35 U.S.C. § 112(a).
Claims 49—53 are rejected under 35 U.S.C. § 101.
Claims 29-53 are rejected under 35 U.S.C. § 103(a).
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Application 13/412,233
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 3—6 of the
Answer concerning only the rejection made under 35U.S.C. § 112 first
paragraph.
2. The Specification of US 7,021,537 describes, “FIG. 1 is a front plan
view of one embodiment of the special lock used in the method of the
present invention in open position modified to show a key hole for a master
key on the bottom.” Col. 3,11. 46-48.
3. The Specification of US 7,021,537 describes “FIG. 2 is a front plan
view of a second embodiment of the special lock used in the method of the
present invention.” Col. 3,11. 49—50.
4. The Specification of US 7,021,537 describes “FIG. 3 is a front plan
view of a second embodiment of the special lock used in the method of the
present invention modified to show a key hole for a master key on the
bottom.” Col. 3,11. 51—54.
5. The Specification of US 7,021,537 describes,
special lock having a combination lock portion and having a
master key lock, the master key lock portion for receiving a
master key that can open the master key lock portion of any
special lock of this type, the special lock designed to be applied
to an individual piece of airline luggage.
Col. 2,11. 62-67.
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Application 13/412,233
6. The Specification of US 7,021,537 only uses the word “set” as a
verb, stating, “The combination can be a front dial that is turned or
65 several dials that are turned to set the combination.” Col. 4,11. 64-65.
ANALYSIS
35 U.S.C. § 112 REJECTION
We will sustain the rejection of claims 29-53 under 35 U.S.C. § 112
first paragraph.
The Examiner found:
The disclosure of ‘500 fails to recite Pg. 2123—25 of the instant
invention in which appellant discloses a definition of ‘any
special lock’ and the definition directed to size and shape of the
lock. This aspect of the instant invention first appears in
appellants appellant 10/75631 (now patent 8145576) filed
January 1, 2004. As such any claim limitation directed to a
different “look or size” or type of lock is only afforded the
priority date of January 1, 2004. The examiner notes the
limitations in questions are of claims 29, 36, 42 and 49 which
claim a first and second subset of looks.
(Answer 3.)
Appellant argues,
Indeed, the specification makes clear that “[t]he phrase ‘any
special lock of this type’ is intended to include special locks
having a multiplicity of sub-types. . . .” ’223 Appln., at page 6,
lines 22—23. In addition, the disclosure states that “the master
key lock portion” receives “a master key that can open the
master key lock portion of any special lock of this type,” and
consistently refers to the master key in the singular. In other
words, the same master key can open different locks.
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Application 13/412,233
Accordingly, the Examiner’s reliance on this part of the
disclosure as support for her rejection under 35 U.S.C. § 112,
paragraph 1, is misplaced.
(Appeal Br. 12)
We disagree with the Appellant. We find that Appellant has failed to
show, as of the filing date sought, that Appellant was in possession of the
invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563—64 (Fed. Cir. 1991). An applicant shows possession of the claimed
invention by describing the claimed invention with all of its limitations using
such descriptive means as words, structures, figures, diagrams, and formulas
that fully set forth the claimed invention. Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Our review of the present
Specification as well as prior filed, 10/706,500 now, US 7,021,5372 shows
no description of a set of locks,
wherein the set comprises at least a first subset and a second
subset each comprising plural locks, each lock in each of the
first and second subsets having a combination lock portion for
use by the travelers to lock and unlock the lock and in addition
having a master key portion for use by the luggage-screening
entity to unlock and re-lock the lock while the combination lock
portion of the same lock remains in a locked state, wherein the
2 Priority Application 10/756,531, now US 8,145,576, does describe
‘“any special lock of this type’ is intended to include special locks having a
multiplicity of sub-types such as different sizes, different manufacturing
designs or styles, etc.” (Col. 4,11. 21-24), but Application 10/756,531 is a
C.I.P. of US’537. We find this description constitutes at least part of the
added new matter of the continuation-in-part application.
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Application 13/412,233
same master portion of each lock in the first and second
subsets.
App’x. Claim 29.
Appellant’s assertion that the term “special lock” warrants a definition
of a set of locks with first and second subset of locks is not supported by the
instant Specification or anything found in the US ‘537 Specification on
which Appellant bases priority. At best, the Specification describe “special
lock” only in terms of its components, stating,
special lock having a combination lock portion and having a
master key lock, the master key lock portion for receiving a
master key that can open the master key lock portion of any
special lock of this type, the special lock designed to be applied
to an individual piece of airline luggage.
(FF. 5). Nowhere in the in the present Specification or in that of priority US
‘537 is the word “subset” used. Nowhere are the words “set of locks” used,
let alone a set of locks with different combination arrangements. None of
Appellant’s available Specifications include such a description. In fact, the
only use of the word “set” in the available Specifications is as a verb, and
only in the context of setting a combination, i.e., turning the dials of the
lock. (FF. 6).
Appellant also argues,
The specification describes that the traveler-operated lock
portion in one subset is a 4-dial combination lock, in another
subset it is a 3-dial combination lock, and in yet another subset
it is a lock mechanism other than a combination lock. ’233
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Appln., Figs. 1 and 3, page 10 lines 14—17. In all three subsets,
each of the traveler-operated lock portions are different, yet
they share the same master key that locks the master lock
portion of each. (See e.g., ’233 Appln., pg. 8, lines 16—18) (“As
seen from Figs. 1—4, special lock 10 includes a combination
lock portion 20 having a unique combination and a master key
lock. The master key lock portion is operated by a master
key.”). Accordingly, the application shows examples of the
different subsets of the special lock, all opened with the same
master key and thus meeting the stated objects of providing
“special locks that remain viable after being subjected to airport
luggage screening (id. at page 4, lines 8—10) and of “a master
key exclusively maintained by the luggage screening authority”
(id. at page 4, lines 12—13).
(Appeal Br. 12—13).
We disagree with Appellant that “the application shows example of
the different subsets of the special lock” Id. at 13. We find instead that the
Specification always describes a special lock in the context of a single
embodiment. See (FF. 2-4). The definition of embodiment is based on a
representation of a single idea.3 The Specification only describes the special
lock in terms of its own features. (FF. 5). Therefore, we find no merit in
Appellant’s argument that the three separate embodiments of the lock shown
in Figures 1-3 of the Specification constitute subsets of a set.
35 U.S.C. § 103 REJECTION
3 Someone or something that is a perfect representative or example of
a quality, idea, etc. https://www.merriam-
webster.com/dictionary/embodiment (last visited 6/15/2017).
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Application 13/412,233
We will not sustain the rejection of claims 29-53 under 35 U.S.C. §
103(a).
The Examiner found concerning the rejection of claims 29—53 that
MasterLock teaches a set of wherein:
the master key portion of each look in the first and second
subsets of locks is configured for the same master key to unlock
and re-lock the lock for the authorized luggage-screening
independently of a locked state of the combination lock portion
of the same look, the combination lock portion of each look in
the first and second subsets of locks is configured to unlock and
re-lock the lock independently of a locked state of the master
key portion of the same lock.
(Final Act. 8).
Appellant argue,
The Examiner also asserts (Office Action 115) that
Masterlock teaches that multiple locks have their own
individual key to unlock as well as can be unlocked by the
master key, citing “1500 series” locks in Masterlock page 3.
However, these locks only open with master keys that differ for
each location such as a school, a health club, and employee
lockers. Different keys are used for different locations. In
addition, as noted above they lack the recited showing of plural
subsets that differ from each other, where at least one subset has
plural-dial traveler-operated lock portion.
(Appeal Br. 21).
We agree with Appellant. We find nothing in MasterLock that
discloses or suggests a set of locks having a plurality of subsets that differ
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Application 13/412,233
from each other at the combination lock portion. Even assuming that the
plurality of pictures of locks on page 1 of MasterLock are of different locks
constituting a set, MasterLock here shows all locks having the same
combination arrangement, namely, one spin dial combination and a master
key release in the rear of the lock. Since each of independent claim 29, 36,
42, 49 all include the feature of different traveler operated portions, and
there is no evince why one having ordinary skill in the art would provide
such a set, the claims are not met by Masterlock. Since claims 30-35, 37-39,
43-48 and 50-53 depend from one of claims 29, 36, 42, 49 and since we
cannot sustain the rejection of claims 29, 36, 42, 49, the rejection of claims
30-35, 37-39, 43-48 and 50-53 likewise cannot be sustained. Therefore, we
will not sustain the rejection of claims 29-53 under 35 U.S.C. § 103(a).
35 U.S.C. § 101 REJECTION
We will not sustain the rejection of claim 49-53 rejected under 35
U.S.C. § 101 because the claims are directed to an improvement in the
relevant technology of combination locks, and not to an abstract idea.
(.McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed.
Cir. 2016). The Federal Circuit noted in McRO that the abstract idea
exception has been applied to prevent patenting of claims that abstractly
cover results where “it matters not by what process or machinery the result is
accomplished.” McRO, 837 F.3d at 1312. The court in that case, thus,
looked to whether the claim at issue focused on a specific method that
improves the relevant technology, i.e., computer animation, or instead was
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Application 13/412,233
directed to a result or effect that itself is the abstract idea and merely invokes
generic processes and machinery. Id at 1313.
Here independent claim 49, albeit a method, requires specific
structure for a set of locks with a master key portion of each lock configured
for the same master key to unlock and relock the lock independently of a
locked state of the combination portion and a combination portion
configured to unlock and relock of a locked state independently of the
master key portion. Independent claim 49 is thus squarely directed to a
technological improvement in the field of lock technology, an improvement
moreover in an article of manufacture which is patent eligible subject matter.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 29—53 under
35U.S.C. § 112.
We conclude the Examiner did err in rejecting claims 49—53 under 35
U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 29—53 under
35 U.S.C. § 103.
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Application 13/412,233
DECISION
The decision of the Examiner to reject claims 29—53 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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