Ex Parte Vogan

Board of Patent Appeals and Interferences

Oct 15, 2010

11238870 (B.P.A.I. Oct. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD A. VOGAN
____________

Appeal 2009-011925
Application 11/238,870
Technology Center 3600
____________

Before JOHN C. KERINS, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Richard A. Vogan (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting claims 1, 2, 4, 5, 7, 9, 10, 13, 15,

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

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16, 19, 23, 25, and 29. Appellant cancelled claims 3, 6, 8, 11, 12, 14, 17, 18,
20-22, 24, and 26-28. We have jurisdiction under 35 U.S.C. § 6(b).

The Invention
The claims on appeal relate to methods and apparatuses for securing
equipment to a workstation and a method for constructing the apparatus.
Claims 1, 7, 13, and 19, reproduced below in pertinent part and with
emphasis added, are illustrative of the subject matter on appeal.
1. A method for constructing an apparatus for securing
equipment at a workstation, the method comprising:

providing a malleable member;

forming the member into an apparatus comprising a
formed shape by bending the member such that a first
portion of the apparatus may be passed through a
hole in a surface of the workstation, while preventing
a second portion of the apparatus from being passed
through the hole, wherein ends of the member are
contained in the first portion, wherein the member
comprises a piece of metal or metal alloy that is
sufficiently rigid so as to not be easily bent by hand
more than one inch from the formed shape while
being sufficiently elastic and resilient so as to return
to the formed shape when bent less than one inch,
and wherein the workstation comprises a desk;
. . . .

7. An apparatus for securing equipment at a
workstation, comprising:

a malleable metal member that is bent into an
apparatus comprising a formed shape with at least
one end of the member having a loop;

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Application 11/238,870

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a first portion of the apparatus containing the loop at
the at least one end that is passed through a hole in a
surface of the workstation, wherein the loop at the at
least one end of the member is adapted to receive a
security cable, wherein the loop at the at least one
end is formed by bending the at least one end of the
member in a loop, and wherein the workstation
comprises a desk;
. . . .

13. A method for securing equipment at a workstation,
the method comprising:

providing a malleable metal member that is bent
into an apparatus comprising a formed shape with at
least one end of the member having a loop, and
having a first portion that may be passed through a
hole in a surface of the workstation, wherein the at
least one end of the member is included in the first
portion, and a second portion that may not be
passed through the hole, wherein the first portion
has the loop at the at least one end for receiving a
security cable, wherein the loop at the at least one
end is formed by bending the at least one end of the
member in a loop, and wherein the workstation
comprises a desk;
passing the first portion of the apparatus through
the hole in the surface of the workstation;
. . . .

19. An apparatus for securing electronic equipment at a
workstation, comprising:

a first metal plate that may not be passed through a
hole in a surface of the workstation and a second
metal plate that may not be passed through the hole,
wherein the first plate has a first aperture and is
disposed on one side of the hole in the surface of
the workstation and the second plate has a second
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aperture and is disposed on another side of the hole,
wherein the first plate and the second plate are in
contact with the surface of the workstation, and
wherein the workstation comprises a desk; and

a security cable having a loop at one end for
receiving another end of the security cable having a
lock adapted to secure the electronic equipment,
and

a member that is sequentially passed through the
first aperture in the first plate, the hole, and the
second aperture in the second plate, wherein the
member comprises a metal bolt, wherein the
member has an eye adapted to receive the loop at
the one end of the security cable.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1, 2, 4, 7, 9, 10, 13, 15, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Schwarz (U.S. Patent No. 4,676,080, issued
Jun. 30, 1987) in view of Murray, Jr. (U.S. Patent No. 6,735,990 B1, issued
May 18, 2004).2 Ans. 3 and 7.
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Schwarz in view of Murray, Jr., as applied to claim 1 above, and further in
view of Derman (U.S. Patent No. 5,351,507, issued Oct. 4, 1994). Ans. 7.

2 The rejections on pages 3 and 7 of the Examiner’s Answer are both based
upon the combination of Schwarz in view of Murray, Jr. and therefore, we
have rewritten these rejections as a single rejection. In addition, the
rejection on page 3 of the Examiner’s Answer lists claim 18 and this appears
to be a typographical error since claim 18 has been cancelled by Appellants.
The subject matter being discussed in the body of the rejection appears to be
that of claim 13, not claim 18 and thus, we have listed claim 13 in the listing
of claims being rejected and not claim 18 as was listed by the Examiner.
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Claims 19, 23, 25, and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Emerick, Jr. (U.S. Patent No. 6,418,014 B1, issued Jul. 9,
2002) in view of Murray, Jr. Ans. 8.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

DISCUSSION
Issues
The determinative issues in this appeal are:
(1) Did the Examiner err in finding that Schwarz discloses a member
comprising a piece of metal or metal alloy that is sufficiently rigid so as to
not be easily bent by hand more than one inch from the formed shape while
being sufficiently elastic and resilient so as to return to the formed shape
when bent less than one inch as called for in independent claim 1?
(2) Did the Examiner err in determining that the recitation of a first
portion of the apparatus containing a loop at one end “that is passed through
a hole in a surface of the workstation” as called for in independent claim 7
does not positively recite the workstation?
(3) Did the Examiner err in interpreting the recitation that the first
portion “may be passed through a hole in a surface of a workstation” as
called for in independent claim 13 as not positively reciting the workstation,
particularly in view of the step of “passing the first portion of the apparatus
through the hole in the surface of the workstation” which clearly positively
recites the workstation?
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(4) Did the Examiner err in concluding that the combination of
Emerick, Jr. and Murray, Jr. discloses all the limitations of claims 19, 23, 25,
and 29?
Analysis
Issue 1
Appellant contends that the malleable member of the present
invention is strikingly different from the malleable member 20 of Schwarz
and that such differences are reflected in the structural limitations of the
claims. Reply Br. 4. More particularly, Appellant contends that in claim 1
there is “a limitation of the member being ‘sufficiently rigid so as to not be
easily bent by hand more than one inch from the formed shape’, whereas
Schwarz, being comprised of a flexible cable, is not a formed shape, and
may be easily bent to a far greater extent than one inch.” Id.
The Examiner’s position is that Schwarz discloses, as follows:
. . . the member comprises a piece of metal or
metal alloy (column 2, lines 44-53) that is
sufficiently rigid so as to not be easily bent by
hand more than one inch from the formed shape
while being sufficiently elastic and resilient so as
to return to the formed shape when bent less than
one inch (column 2, lines 54-59; where 7x7
stainless steel stranded cable is a semi-rigid cable
that is substantially stiff to avert bending while
being substantially flexible to permit the loop to
pass through a hole) . . . .
Ans. 4.
Schwarz discloses a locking article for cycle accessories (bicycle
helmet 23). Title. The locking article 19 has a flexible cable loop 20 with a
stop (washer 21 and clinched press sleeve fitting 22) permanently attached to
thereto. Abstract and col. 2, ll. 44-53. The loop 20 is made from 8 to 15
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inches of 1/8 or 5/32 inch 7 X 19 or 7 X 7 stainless stranded cable. Col. 2,
ll. 54-56.
We agree with Appellant. The Examiner has not established that the
loop 20 of Schwarz meets the recitation of “the member comprises a piece of
metal or metal alloy that is sufficiently rigid so as to not be easily bent by
hand more than one inch from the formed shape while being sufficiently
elastic and resilient so as to return to the formed shape when bent less than
one inch” as called for in claim 1. Schwarz clearly teaches a flexible loop
20, as stated in lines 3-4 of the Abstract and at column 2, line 2, and the
Examiner has not cited to any evidence that such a flexible loop would be
one that is made of sufficiently rigid material that is not easily bent more
than one inch from the formed shaped.
In view of the foregoing, we do not sustain the rejections of claims 1,
2, 4, and 5 under 35 U.S.C. § 103(a) as unpatentable over Schwarz in view
of Murray, Jr.
Issues 2 and 3
Appellant contends that “no proper combination of the applied art
teaches or suggests each and every feature of the claimed invention.” App.
Br. 10.
Claim 7
More particularly, Appellant contends that the workstation is
positively recited in the recitation of “a first portion of the apparatus
containing the loop at the at least one end that is passed through a hole in a
surface of the workstation” as called for in claim 7. Reply Br. 3.
The Examiner’s position is that Schwarz teaches “a first portion
(figure 3) of the apparatus containing the loop at the at least one end that is
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passed through a hole (25) in a surface of an object.” Ans. 5. The Examiner
has not given any patentable weight to the recitation of the workstation in
the claim recitation of “a first portion of the apparatus containing the loop at
the at least one end that is passed through the hole in a surface of the
workstation” because the Examiner posits that:
It has been held that the recitation that an element
‘may’ or ‘adapted to’ perform a function is not a
positive limitation [but] only requires the ability to
so perform. It does not constitute a limitation in
any patentable sense. And is therefore not given
any patentable weight in the claims. In re
Hutchinson, 69 USPQ 138 [(CCPA 1946)].

Ans. 5-6.
We agree with Appellant that the workstation is positively recited in
claim 7, contrary to the Examiner’s position that it is not. First, we note that
the Hutchinson case only discusses “adapted” language and does not discuss
“may” language as suggested by the Examiner. Second, the claim language
in question does not contain the word “may” and rather states that the end of
the first portion of the apparatus “is passed through a hole in a surface of the
workstation.” This language clearly, positively recites the workstation.
Thus, the Examiner’s rejection fails to address each and every feature of the
claimed invention because neither Schwarz nor Murray, Jr. discloses a loop
at an end of an apparatus that is passed through the surface of a workstation.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 7, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over
Schwarz in view of Murray, Jr.
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Claim 13
More particularly, Appellant contends that the workstation is
positively recited in the recitation of “a first portion that may be passed
through a hole in a surface of a workstation” as called for in claim 13. Reply
Br. 3.
The Examiner’s position is that Schwarz discloses “an apparatus (19)
comprising a formed shape (figure 2) with at least one end of the member
having a loop (20), having a first portion (20) that is passed through a hole
(25) in a surface of the object.” Ans. 6. The Examiner maintains that:
. . . regarding [Appellant’s] argument that the
malleable element does not pass through a hole in
the surface of a workstation, the examiner points to
the phrasing of the aforementioned limitation
where the Appellant utilizes the verbiage "the
apparatus may be passed through a hole in a
surface of the workstation," wherein the Appellant
is reminded that the utilization of the phrases "may
be," "adapted to," and "capable of," are not
positive limitations and only require the ability to
so perform the function; accordingly, the examiner
takes the stance that the workstation is not
positively recited, as the malleable element only
needs to be capable of being passed through a
workstation, wherein the structure of Schwarz is
substantially identical to the structure as
claimed, and is able to function in the same
manner.
Ans. 11.
We agree with Appellant that the workstation is positively recited in
claim 13 particularly in view of the remainder of the claim which recites the
step of “passing the first portion of the apparatus through the hole in the
surface of the workstation.” This step definitely, affirmatively recites the
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workstation. Thus, the Examiner has failed to address each and every
feature of the claim since neither Schwarz nor Murray, Jr. discloses a first
portion of the apparatus passing through the surface of a workstation.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 13, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over
Schwarz in view of Murray, Jr.
Issue 4
Appellant contends that, in comparing Emerick, Jr. to the present
invention, there is a fundamental difference because in Emerick, Jr. “the
member (50) which passes through the workstation (106) also passes
through the equipment being locked.” App. Br. 16. Consequently,
Appellant contends that “the member (50) in Emerick, Jr. and its associated
features are not used in substantially the same manner as the member (405)
and its associated features in the present invention.” Id. While Appellant
agrees that the Murray, Jr. reference discloses a security cable with a loop at
the end, Appellant contends that Murray, Jr. “does not include a malleable
member passing through a hole in the surface of a workstation.” Id. Thus,
Appellant contends that “the feature of having a malleable member passing
through a hole in the surface of a workstation cannot reasonably be said to
be present in the asserted combination [of Emerick, Jr. in view of Murray,
Jr.]” and thus, “the failure of an asserted combination to teach or suggest
each and every feature of a claim remains fatal to an obviousness rejection
under 35 U.S.C. § 103.” Id.
The Examiner’s position is that Emerick, Jr. teaches the invention
substantially as claimed in claims 19, 23, 25, and 29, except that Emerick, Jr.
fails to disclose that the security lock has a cable with a loop at one end.
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Ans. 8 and 9. The Examiner posits that Murray, Jr. teaches a securing lock
(26) having a loop (34) at one end. Ans. 8 and 9-10. The Examiner
concludes that “[b]ecause both Emerick, Jr. and Murray, Jr. et al. teach
methods for securing portable devices, it would have been obvious to one
with ordinary skill in the art to substitute the security cable lock in Murray,
Jr. et al. with the apparatus to secure equipment to a workstation to achieve
the predictable result of locking a device to a static structure.” Ans. 8 and
10. Additionally, in response to Appellant’s arguments in the Appeal Brief,
the Examiner maintains that although Appellant is arguing the limitation of a
malleable member that passes through the surface of a workstation, this
limitation is not recited in any of claims 19, 23, 25, and 29. Ans. 13.
Emerick, Jr. discloses an anti-theft locking system and device for
electronic components. Title and Abstract. The first embodiment of the
locking system 10 as shown in Fig. 1A includes a locking bar 50 having a
second end 54 which is to be extended through a hole 106 in a base unit or
office desk 100, a locking passage 28 in a computer component 20, and a
central aperture 46 in a protection plate 40. Fig. 1A. The second end 54 of
the locking bar 50 has a throughbore through which a locking device 70 such
as a padlock may be inserted for locking the computer component 20 to the
desk 100. Col. 5, ll. 6-25.
We disagree with Appellant that the member (locking bar 50) of
Emerick, Jr. is not used in substantially the same manner as the member
(405) of the present invention. Indeed, both member (locking bar 50) of
Emerick, Jr. and member (405) of the present invention operate by being
passed through a hole in a desk or workstation in order to secure a piece of
equipment to the workstation.
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We agree with the Examiner that none of claims 19, 23, 25, and 29
recite a malleable member passing through the surface of a workstation.
Therefore, we are not persuaded by any of Appellant’s arguments that the
combination of Emerick, Jr, and Murray, Jr. fails to disclose a malleable
member passing through a surface of a workstation because Appellant’s
arguments are not commensurate with the scope of the claims.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 19, 23, 25, and 29 under 35 U.S.C. § 103(a) as unpatentable over
Emerick, Jr. in view of Murray, Jr.

CONCLUSIONS
The Examiner erred in finding that Schwarz discloses the recitation of
the member comprising a piece of metal or metal alloy that is sufficiently
rigid so as to not be easily bent by hand more than one inch from the formed
shape while being sufficiently elastic and resilient so as to return to the
formed shape when bent less than one inch, as called for in independent
claim 1.
The Examiner erred in determining that the recitation of a first portion
of the apparatus containing a loop at one end “that is passed through a hole
in a surface of the workstation” as called for in independent claim 7 does not
positively recite the workstation.
The Examiner erred in interpreting the recitation that the first portion
“may be passed through a hole in a surface of a workstation” as called for in
independent claim 13 as not positively reciting the workstation when the
remainder of the claim clearly, positively recites the workstation.
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The Examiner did not err in concluding that the combination of
Emerick, Jr. and Murray, Jr. discloses all the limitations of claims 19, 23, 25,
and 29.

DECISION
We reverse the Examiner’s 35 U.S.C. §103(a) rejections of claims 1,
2, 4, 7, 9, 10, 13, 15, and 16 as unpatentable over Schwarz in view of
Murray, Jr., and of claim 5 as unpatentable over Schwarz in view of Murray,
Jr. and Derman. We affirm the Examiner’s 35 U.S.C. §103(a) rejection of
claims 19, 23, 25, and 29 as unpatentable over Emerick, Jr. in view of
Murray, Jr.
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)(1)(iv) (2007).

AFFIRMED-IN-PART

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