Ex parte Weiss

Board of Patent Appeals and Interferences

Jan 21, 2000

08300703 (B.P.A.I. Jan. 21, 2000)

Application for patent filed September 02, 1994. 1
According to appellant, the application is a continuation of
Application No. 07/911,208, filed July 9, 1992, now abandoned.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENNETH P. WEISS
____________
Appeal No. 1997-1117
Application No. 08/300,7031
____________
ON BRIEF
____________
Before THOMAS, JERRY SMITH, and RUGGIERO, Administrative
Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-9, 12, 15-33, and 35-37, all of the claims pending in
the present application. Claims 10, 11, 13, 14, and 34 have
been canceled.
Appeal No. 1997-1117
Application No. 08/300,703
2
The claimed invention relates to a system for inhibiting
unauthorized access to or utilization of a container or other
protected device. More particularly, Appellant indicates at
pages 7-11 of the specification that the state of a free
standing lock or other provided control is varied in response
to receipt of a dynamic non-predictable code.
Claim 1 is illustrative of the invention and reads as
follows:
1. A free standing locking system for a container, said
system permitting access to the container by at least one
authorized individual, the system comprising:
means in the possession of each of said authorized
individuals for generating a dynamic non-predictable code;
locking means for preventing access to said container;
means for releasing said locking means to permit access
to the container, said means for releasing including means
operative when an individual desires access to the container
for receiving the current non-predictable code for the
individual, means responsive to the received non-predictable
code for verifying that the individual is authorized to have
access to the container, and means responsive to verification
that the individual is authorized access for releasing the
locking means;
means for recording the time period since each release of
said locking means;
means responsive to the recorded time period reaching a
predetermined threshold for relocking said locking means; and
Appeal No. 1997-1117
Application No. 08/300,703
3
means responsive to said means for releasing for
automatically opening said container and responsive to the
recorded time period reaching said predetermined threshold for
automatically closing said container.
The Examiner relies on the following prior art:
Tolson 3,337,992 Aug. 29,
1967
Elliot 4,366,595 Jan. 04,
1983 Mauer 4,803,902 Feb.
14, 1989
Weiss 5,023,908 Jun. 11,
1991
Fumanelli 5,087,107 Feb.
11, 1992
Harder et al. (Harder) 5,196,841 Mar. 23,
1993
(Filed May 29, 1990)
Warren 5,225,825 Jul. 06,
1993
(Filed Oct. 17,
1990)
Claims 1, 2, 4, 6-9, 12, 15-33, and 35-37 stand finally
rejected under 35 U.S.C. § 103 as being unpatentable over the
combination of Weiss, Harder, Elliot, Fumanelli, and Warren.
Claim 3 stands finally rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Weiss, Harder, Elliot,
Fumanelli, and Warren and further in view of Tolson. Claim 5
stands finally rejected under 35 U.S.C. § 103 as being
Appeal No. 1997-1117
Application No. 08/300,703
The original non-compliant Appeal Brief was filed July2
17, 1996 and was corrected by a Supplemental Appeal Brief
filed May 11, 1999. We will refer to the original Appeal
Brief as simply the Brief.
4
unpatentable over the combination of Weiss, Harder, Elliot,
Fumanelli, and Warren and further in view of Mauer.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief and Answer for the2
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner and the
evidence of obviousness relied upon by the Examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, Appellant’s
arguments set forth in the Brief along with the Examiner’s
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Application No. 08/300,703
5
rationale in support of the rejections and arguments in
rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 1-9, 12, 15-29, 32, 33, and 35-37. We reach the
opposite conclusion with respect to claims 30 and 31.
Accordingly, we affirm-in-part.
Appellant has indicated (Brief, page 4) that, for the
purposes of this appeal, the claims will stand or fall
together in the following groups: Group I (claims 1-9, 12, and
15-26), Group II (claims 27-29 and 32), Group III (claims 30
and 31), Group IV (claims 33, 35, and 36) and Group V (Claim
37). Consistent with this indication, Appellant has made no
separate arguments with respect to any of the claims within
each group. Accordingly, we will consider the claims
separately only to the extent that separate arguments are of
record in this appeal. Dependent claims 2-9, 12, 15-26, 28,
29, 32, 35, and 36 have not been argued separately and,
accordingly, will stand or fall with their base claim.
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Application No. 08/300,703
6
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an Examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to Appellant
to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
In making the obviousness rejection of representative
independent claim 1 from Group I, the Examiner has pointed out
the teachings of Weiss, Harder, Elliot, Fumanelli, and Warren,
has reasonably indicated the perceived differences between
this prior art and the claimed invention, and has provided
reasons as to how and why the prior art references would have
been modified and/or combined to arrive at the claimed
invention (Answer, pages 2-6). In our view, the Examiner's
analysis is sufficiently reasonable that we find that the
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Application No. 08/300,703
7
Examiner has at least satisfied the burden of presenting a
prima facie case of obviousness. The burden is, therefore,
upon Appellant to come forward with evidence or arguments
which persuasively rebut the Examiner’s prima facie case of
obviousness. Arguments which Appellant could have made but
elected not to make in the Brief have not been considered in
this decision (note 37 CFR § 1.192).
Appellant’s initial argument in response to the
obviousness rejection of claim 1 (Brief, pages 5 and 6)
asserts the individual deficiencies of Warren, Elliot, and
Fumanelli in disclosing the various limitations of the claim.
However, the Examiner has utilized these references in
combination with each other along with Harder and Weiss. One
cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of
references. In re Keller, 642 F. 2d 413, 208 USPQ 871 (CCPA
1981); In re Merck & Co., Inc., 800 F. 2d 1091, 231 USPQ 375
(Fed. Cir. 1986).
Appellant further attacks the Examiner’s proposed
combination by contending that the applied references are from
relatively diverse arts and involve diverse technologies
Appeal No. 1997-1117
Application No. 08/300,703
8
(Brief, page 6). We do not agree. The test for non-analogous
art is first whether the art is within the field of the
inventor's endeavor and, if not, whether it is reasonably
pertinent to the problem with which the inventor was involved.
In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA
1979). A reference is reasonably pertinent if, even though it
may be in a different field of endeavor, it logically would
have commended itself to an inventor's attention in
considering his problem because of the matter with which it
deals. In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061
(Fed. Cir. 1992). As pointed out by the Examiner (Answer,
pages 8 and 9), all of the applied prior art references in the
present instance are concerned with the security of enclosures
or containers and/or the opening and closing of same. In our
view, the skilled artisan would logically have consulted the
teachings of all of the prior art references considering
Appellant’s concern with inhibiting unauthorized access to
protected devices.
In view of the above discussion, it is our view that
Appeal No. 1997-1117
Application No. 08/300,703
9
the Examiner has established a prima facie case of obviousness
with respect to independent claim 1 which remains unrebutted
by any convincing arguments offered by Appellants.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 103 is
sustained. Since, as noted above, Appellant has grouped
claims 1, 2-9, 12, and 15-26 as standing or falling together,
claims 2-9, 12, and 15-26 fall with claim 1 in accordance with
37 CFR § 1.192(c)(7). Thus, it follows that the decision of
the Examiner to reject claims 2-9, 12, and 15-26 under 35
U.S.C. § 103 is also sustained.
We now turn to a consideration of independent claim 27
(grouped together by Appellant with dependent claims 28, 29,
and 32 as Group II) and independent claim 33 (grouped together
with dependent claims 35 and 36 as Group III). After
reviewing Appellant’s arguments, we sustain the Examiner’s
obviousness rejection of these claims as well. Appellant’s
arguments center on the alleged deficiencies of the references
in disclosing the claimed limitations requiring two levels of
verification before recognizing a message as an authorized
message for accessing a protected device. In particular,
Appellant attacks the teachings of Warren which the Examiner
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Application No. 08/300,703
10
has relied on for disclosing the claimed two-level
verification feature.
Upon careful review of the Warren reference, we are in
agreement with the Examiner’s position as stated in the
Answer. The disclosure at column 16, lines 1-58 of Warren
describes an initial access verification performed by
comparing a portion of an input code with a stored access code
and a second verification performed by determining whether
access is permitted to a selected container by examining a
“device” portion of the input code. Additionally, in our
view, the description in column 16 of Warren has relevance to
independent claim 33 which is directed to the verification of
the input of a selected code and additional information. As
alluded to by the Examiner at page 11 of the Answer, Warren
provides for the enablement of control of a particular device
according to the input of an additional “device” code after
analysis of the input selected access code. Further, to the
extent that Appellant is correct in challenging Warren’s use
of a dynamic non-predictable code, the disclosure of Weiss,
which is included in the Examiner’s proposed combination,
provides a clear teaching of this feature. For the above
Appeal No. 1997-1117
Application No. 08/300,703
11
reasons, we sustain the Examiner’s 35 U.S.C. § 103 rejection
of independent claim 27 and dependent claims 28, 29, and 32
which stand of fall together with claim 27 as well as the
rejection of independent claim 33 and claims 35 and 36
dependent thereon.
As to independent claim 37, grouped separately by
Appellant,
we find Appellant’s arguments to be unpersuasive and sustain
the Examiner’s obviousness rejection of this claim as well.
In our view, Warren provides a clear disclosure of the feature
of programming and storing access codes providing for
different levels of access for different personnel (e.g.
Warren, column 5, lines 10-13, column 10, lines 11-20, column
16, lines 28-33, and column 17, lines 60-64).
Turning now to a consideration of dependent claims 30 and
31, grouped and argued separately by Appellant, we note that,
while we found Appellant’s arguments to be unpersuasive with
respect to the obviousness rejection of claims 1-9, 12, 15-29,
32, 33, and 35-37, we reach the opposite conclusion with
respect to claims 30 and 31. We agree with Appellant (Brief,
page 8) that none of the prior art references provide for the
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Application No. 08/300,703
12
resetting of a “keep-alive” means in response to a means for
verifying as required by the claims. The Examiner, aside from
a broad general assertion at page 11 of the Answer, has never
attempted to address how any of the limitations are taught or
suggested by the references. We are not inclined to dispense
with proof by evidence when the proposition at issue is not
supported by a teaching in a prior art reference, common
knowledge or capable of unquestionable demonstration. Our
reviewing court requires this evidence in order to establish a
prima facie case. In re Knapp-Monarch Co., 296 F.2d 230, 232,
132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). Accordingly, since all of the
limitations are not taught or suggested by the prior art, we
do not sustain the obviousness rejection of dependent claims
30 and 31.
In summary, we have sustained the 35 U.S.C. § 103
rejection of claims 1-9, 12, 15-29, 32, 33, and 35-37, but
have not sustained the 35 U.S.C. § 103 rejection of claims 30
and 31. Therefore, the Examiner’s decision rejecting claims
1-9, 12, 15-33, and 35-37 is affirmed-in-part.
Appeal No. 1997-1117
Application No. 08/300,703
13
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
Appeal No. 1997-1117
Application No. 08/300,703
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lp
Appeal No. 1997-1117
Application No. 08/300,703
15
PATENT ADMINISTRATOR
TESTA HURWITZ & THIBEAULT LLP
HIGH STREET TOWER
125 HIGH STREET
BOSTON MA 02110
Leticia
Appeal No. 97-1117
Application No. 08/300,703
APJ RUGGIERO
APJ SMITH, JERRY
APJ THOMAS
DECISION: AFFIRMED-IN-PART
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: December 5, 2000
Draft Final
3 MEM. CONF. Y N
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