Ex Parte Wang

Patent Trial and Appeal Board

Feb 26, 2014

11907150 (P.T.A.B. Feb. 26, 2014)

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.
11/907,150 10/10/2007 Wei Kai Wang 10380.000-00000 1100
22852 7590 02/26/2014
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
BOSWELL, CHRISTOPHER J
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
02/26/2014 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 WEI KAI WANG
____________

Appeal 2012-000277
Application 11/907,150
Technology Center 3600
____________

Before NEAL E. ABRAMS, MICHAEL L. HOELTER, and
PATRICK R. SCANLON, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Wei Kai Wang (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-23. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2012-000277
Application 11/907,150

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THE INVENTION
The claimed invention is directed to a hidden shackle style lock and to
a method of using a hidden shackle style lock.
Claims 1 and 12, reproduced below, are illustrative of the subject
matter on appeal.
1. A hidden shackle style lock comprising;
a substantially cylindrical housing having a top surface, a
bottom surface, and a curved side surface;
a first cavity on the bottom surface of the housing
extending part way along a thickness of the housing;
a second cavity on the side surface intersecting with the
first cavity;
a hollow sleeve slidably attached within the second
cavity, the sleeve including a first end face, a second end face,
and a third cavity, the third cavity extending from the first end
face to the second face and being substantially coaxial with the
second cavity;
a shackle having a first end and a second end fixedly
coupled to the first end face of the sleeve; and
an interchangeable core having a first locking mechanism
and a second locking mechanism lockingly disposed within the
third cavity and coupled to the shackle, the interchangeable core
being configured to,
operate the first locking mechanism to rotate the
shackle, and
operate the second locking mechanism to unlock
the interchangeable core from the third cavity.

12. The method of using a hidden shackle style lock
with an interchangeable core comprising;
slidably attaching a hollow sleeve within a first cavity of
a housing of the lock;
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Application 11/907,150

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fixedly coupling a shackle having a first locking feature
to the sleeve;
inserting an interchangeable core including a first locking
mechanism and a second locking mechanism within a central
cavity of the hollow sleeve;
operating the first locking mechanism to lockably attach
the interchangeable core to the sleeve;
sliding the shackle across an exposed second cavity; and
operating the second locking mechanism to engage the
first locking feature.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Best ’878 US 4,075,878 Feb. 28, 1978
Best ’034 US 4,444,034 Apr. 24, 1984
Liu US 6,338,261 B1 Jan. 15, 2002

THE REJECTIONS
Claims 1, 3-6 and 10-20 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Liu.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Liu and Best ’878.
Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Liu and Best ’034.
Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Liu and Best ’034.

Appeal 2012-000277
Application 11/907,150

4
OPINION
Claims 1, 3-6 and 10-20
Anticipation – Liu
In finding that all of the subject matter recited in independent claim 1
is disclosed by Lui, the Examiner has taken the position that
“interchangeable core (21) [has] . . . a second locking mechanism (212)
lockingly disposed within the third cavity and coupled to the shackle [211],”
and that interchangeable core 21 “[is] configured to . . . operate the second
locking mechanism to unlock the interchangeable core from the third cavity
(column 3, lines 32-44).” Ans. 5-6.
Appellant argues that:
In Liu, an operator removes pin 212 to unlock core cylinder 21
from sleeve 23. Applicant submits that this removal of pin 212
by an operator . . . is not equivalent to “the interchangeable core
being configured to . . . operate the second locking mechanism
to unlock the interchangeable core from the third cavity,” . . . .
Therefore, Liu does not disclose or suggest a “second locking
system” that is configured to be operated by the interchangeable
core to “unlock the interchangeable core from the third cavity,”.
. . .
Br. 17.
Liu explains that “[t]he cylinder 21 [interchangeable core 60] is
connected to a second end of the locking bar 211 [shackle 44] by a pin
212.” Col. 2, ll. 63-64. “[I]f the cylinder 21 is to be replaced, the pin
212 is first removed and the locking bar 211 is disengaged from the
cylinder 21, so that the cylinder 21 can be removed from the sleeve 23
. . . . Therefore, the cylinder 21 can be replaced.” Col. 3, ll. 32-36;
See Figs. 1, 10 and 11. As Appellant has asserted, it appears that pin
212 is manually removed from its interface with shackle 211 and
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Application 11/907,150

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interchangeable core 21, which allows the core to be removed from
sleeve 23. The Examiner has failed to explain why this is not the
case, that is, how interchangeable core 21 is “configured to . . .
operate” pin 212 (the “second locking mechanism”) to unlock
interchangeable core 21 from hollow sleeve 23 (the third cavity).
Thus, this requirement of claim 1 is not disclosed or taught by
Liu, and the rejection of independent claim 1 and dependent claims
3-6, 10 and 11 is not sustained.
The method of claim 12 includes the steps of slidably attaching
a hollow sleeve within a cavity in the lock housing, “fixedly coupling
a shackle having a first locking feature to the sleeve,” inserting an
interchangeable core including first and second locking mechanisms
within a central cavity of the hollow sleeve, and “operating the second
locking mechanism to engage the first locking feature.” The
Examiner has taken the position that the “first locking feature” of Liu
comprises the unnumbered aperture in shackle 211 that receives pin
212, that the “second locking mechanism” is pin 212, and that the
second locking mechanism is operated to engage the first locking
feature. Ans. 6-7. Appellant argues that core cylinder 21 is not
configured to operate the first or the second locking mechanisms, and,
in particular, that “[a]lthough Liu does not explicitly disclose how pin
212 is inserted and removed, a person of ordinary skill in the art, upon
reviewing the disclosure of Liu, would recognize that cylinder 21 does
not perform the function of inserting or removing pin 212.” Br. 18.
Liu’s pin 212 has been designated by the Examiner as the
“second locking mechanism” recited in Appellant’s claim 12. Liu
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explains that “if the cylinder 21 is to be replaced, the pin 212 is first
removed and the locking bar 211 is disengaged from the cylinder 21
so that cylinder 21 can be removed from the sleeve 23” (emphasis
added). Col. 3, ll. 32-35; Figs. 1, 6, 10 and 11. That fact that pin 212
is removed prior to removing cylinder 21 from sleeve 22 indicates that
this sequence is necessary. In the absence of evidence or explanation
to the contrary, it then follows that the second locking system (pin
212) cannot be installed in cylinder 21 prior to inserting cylinder 21
into sleeve 23, and therefore, the Liu system does not disclose or teach
the method step in claim 12 of “inserting an interchangeable core
including . . . a second locking mechanism within a central cavity of
the hollow sleeve” (emphasis added).
The rejection of independent claim 12 and dependent claims
13-15 is not sustained.
Independent claim 16 requires, inter alia, “an interchangeable core
lockingly disposed within the third cavity . . . by operating a first locking
mechanism of the interchangeable core using a key.” It is the Examiner’s
view that “one of ordinary skill in the art would recognize an
‘interchangeable core’ is a replaceable component of a locking device.”
Ans. 12 (emphasis added). Thus, interpreting the claim language as
applying to removing the core from the sleeve, the Examiner finds that in
Liu “a user with a correct key can operate the first locking mechanism to
lock or unlock the interchangeable core from the bore within the sleeve.”
Ans. 12. Appellant directly disputes this conclusion. Br. 19.
There is no teaching in Liu that interchangeable cylinder (core)
21 is “lockingly disposed” against removal from hollow sleeve 23; it
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Application 11/907,150

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is held in sleeve 23 by virtue of being attached to locking bar
(shackle) 211 by pin 212, and can be removed from the sleeve only by
removing pin 212 and then sliding the core out of the sleeve. Thus,
the Examiner’s conclusion that core 21 is “lockingly disposed” in
sleeve 23 against removal therefrom by means of a key is in error.
The rejection of independent claim 16 and dependent claims
17-20 is not sustained.
Claim 2
Obviousness – Liu and Best ’878
Claims 7-9
Obviousness – Liu and Best ’034
Claims 21-23
Obviousness – Liu and Best ’034
The claims to which these rejections are directed depend from
independent claims 1, 12 and 16. The teachings of Best ’878 and Best ’034,
which were cited with regard to further limitations added by the dependent
claims, do not overcome the shortcomings in Liu with regard to independent
claims 1, 12 and 16, which were pointed out supra. Such being the case,
these three rejections also are not sustained.

DECISION
The rejection of claims 1, 3-6 and 10-20 under 35 U.S.C. § 102(b) as
being anticipated by Liu is reversed.
The rejection of claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over Liu and Best ’878 is reversed.
The rejection of claims 7-9 under 35 U.S.C. § 103(a) as being
unpatentable over Liu and Best ’034 is reversed.
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Application 11/907,150

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The rejection of claims 21-23 under 35 U.S.C. § 103(a) as being
unpatentable over Liu and Best ’034 is reversed.

REVERSED
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