Ex Parte Winner

Board of Patent Appeals and Interferences

Nov 4, 2002

08863345 (B.P.A.I. Nov. 4, 2002)

1 An amendment (Paper No. 10, filed July 13, 2002) was filed subsequent
to the final rejection. The copy of the claims accompanying the brief include
the proposed changes. However, there is no indication in the record that the
amendment has been entered by the examiner. Accordingly, the claims before us
on appeal are claims as they stood at the time of the final rejection.
Because the proposed changes to the claims were merely to correct
informalities, this issue should be addressed with the examiner subsequent to
the decision on appeal.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEVIN D. WINNER
____________
Appeal No. 2000-0328
Application No. 08/863,345
____________
ON BRIEF
____________
Before FLEMING, DIXON, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1-471, which are all of the
claims pending in this application.
Appeal No. 2000-0328
Application No. 08/863,345
Page 2
2 The reference to Drori was added by the examiner in the advisory
action (Paper No. 8, mailed July 14, 1998) as support for the examiner's
taking notice of well known prior art. The examiner's reliance on Drori was
necessitated by the statement of appellant (Paper No. 6, filed March 27, 1998)
that "applicant requests the citation of prior art showing the use of separate
tamper indicating means in a vehicle security system and which is operable
after timed deactivation of the anti-theft alarm in accordance with the
applicant's claimed invention." Although the examiner should have positively
recited Drori in the statement of the rejection, because appellant has filed
BACKGROUND
Appellant's invention relates to a vehicle anti-theft system
with tampering indicator. An understanding of the invention can
be derived from a reading of exemplary claim 1, which is
reproduced as follows:
1. A vehicle anti-theft device comprising, electrical
circuit means including alarm means having activated and
deactivated modes, sensing means for sensing tampering with said
vehicle, means for shifting said alarm means to said activated
mode in response to said sensing means sensing tampering with
said vehicle, means including timing means for shifting said
alarm means from said activated mode to said deactivated mode
after a predetermined period of time, tamper indicating means
separate from said alarm means for indicating tampering with said
vehicle, and means for activating said tamper indicating means in
response to said sensing means sensing tampering with said
vehicle.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Fuller 5,055,823 Oct. 8, 1991
Drori 5,157,375 Oct. 20, 1992
Chang 5,598,725 Feb. 4, 1997

Claims 1-47 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Chang in view of Fuller and Drori2,3.
Appeal No. 2000-0328
Application No. 08/863,345
Page 3
an amended brief to address the examiner's reliance on Drori, and the
examiner's position is explained in the advisory action and the "Remarks"
section of the examiner's answer, we decline to remand the case to the
examiner for formal inclusion of Drori in the statement of the rejection.
3 In the answer (page 3) that examiner additionally lists references to
Chen, Carlo et al, Johnson, Wu, Winner, and Elmer as being relied upon in the
rejection of claims under appeal. However, we find no reliance on any of
these references in either the examiner's answer or the final rejection.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejection,
we make reference to the examiner's answer (Paper No. 14, mailed
March 2, 1999) and the advisory action (Paper No. 8, mailed July
14, 1998) for the examiner's complete reasoning in support of the
rejection, and to appellant's brief (Paper No. 12, filed
September 4, 1998) and reply brief (Paper No. 15, filed March 19,
1999) for appellant's arguments thereagainst. Only those
arguments actually made by appellant have been considered in this
decision. Arguments which appellant could have made but chose
not to make in the brief have not been considered. See 37 CFR
1.192(a). Under the heading of "Grouping of Claims" (brief,
pages 7 and 8) it is asserted that "appellant considers
independent claims 1 and 20 to be separately patentable from the
prior art and from one another and further considers claims 2 and
21 to be separately patentable respectively from claims 1 and 20
from which they depend." However, in the substantive portion of
Appeal No. 2000-0328
Application No. 08/863,345
Page 4
the brief, appellant additionally presents arguments with respect
to independent claim 34. The remaining claims, all of which
depend from either claim 1 or claim 20, have not been separately
argued, and will rise or fall with the claims from which they
depend.
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant's arguments set forth in the briefs along with the
examiner's rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we affirm-in-
part.
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
Appeal No. 2000-0328
Application No. 08/863,345
Page 5
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings
by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
Appeal No. 2000-0328
Application No. 08/863,345
Page 6
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
We consider first the rejection of claim 1 based on the
teachings of Chang, Fuller, and Drori. We make reference to the
examiner's answer for the examiner's position. Appellant asserts
(brief, page 9) that alarms 15 and 16 of Chang operate
simultaneously with LED 143 to provide audible and visual alarms.
We find that Chang discloses (figure 2) a steering wheel lock
having an alarm, for use as a vehicle anti-theft device. Chang
discloses a "first alarm means 15" (col. 2, line 43). The alarm
display is a bright LED which can flash to demonstrate various
working conditions. When alarm means 15 is shaken, detections
are obtained by a pick-up means, amplified and delivered to a CPU
for judgment as to activate an alarm circuitry. If the judgment
is positive, speakers are used to sound the alarm (col. 2, line
63 to col. 3, line 11). LED 143 is electrically connected to the
first alarm means (col. 4, lines 44 and 45). The alarm means 15
and LED flash simultaneously (col. 3, lines 45-50). As shown in
figure 5, the system of Chang is powered by a 3V power supply.
As stated by the examiner (answer, page 4) Chang does not
specifically disclose use of timing means for deactivating the
alarm after a predetermined period of time.
Appeal No. 2000-0328
Application No. 08/863,345
Page 7
Appellant argues (brief, page 9) that Fuller discloses
simultaneous deactivation of both the audible and visible alarms
after simultaneous activation thereof for a predetermined period
of time. We find that Fuller teaches the use of an anti-theft
alarm and locking device for vehicles. Fuller also discloses a
alarm as well as a bright halogen lamp which are activated when
the alarm is triggered (col. 5, lines 29-32). Fuller further
discloses that when the unit is tampered with, the alarm sounds
and lamp 26 flashes for a period of two minutes. From our review
of Chang and Fuller, we agree with appellant for the reasons set
forth by appellant in the brief, that if Chang were modified by
Fuller, the result would be simultaneous deactivation of both the
audible and visual alarms of Chang after a predetermined period
of time.
Appellant asserts (brief, page 9 and reply brief, page 3)
that in Drori the tamper indicator is activated by the vehicle
owner when the vehicle owner disarms the system, whereas
appellant provides means separate from the alarm or alarm means
which is activated in response to sensing of tampering. From our
review of Drori, we find that Drori is directed to an electronic
vehicle security system. In Drori, disarming subroutine 558
occurs in response to the receipt of a properly transmitted code.
Appeal No. 2000-0328
Application No. 08/863,345
Page 8
At step 561 the trigger and sensor flags are checked to determine
if any tampering has occurred during the armed mode. If
tampering is indicated, at step 563 the chirp counter is set to
3, and at step 564, the point of intrusion is indicated by the
active flag (or flags) is loaded into the LED register for
display by the LED control function. The proper LED pulse count
corresponding to the intrusion point is set and at step 693, the
LEDs are turned on (col. 12, line 50 to col. 13, line 9 and col.
17, lines 46-68). From the teachings of Drori, we agree with
appellant's statement (brief, page 10) that "[t]he only
modification suggested by Drori would be to provide for Chang to
respond to the owner's disarming of the system to indicate that
tampering took place." However, for the reasons which follow, we
find that the prior art suggests the invention set forth in claim
1.
As stated by the court in In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) “[t]he name of the
game is the claim.” Claims will be given their broadest
reasonable interpretation consistent with the specification, and
limitations appearing in the specification are not to be read
into the claims. In re Etter, 756 F.2d 852, 858, 225 USPQ 1, 5
(Fed. cir. 1985).
Appeal No. 2000-0328
Application No. 08/863,345
Page 9
Claim 1 recites "tamper indicating means separate from said
alarm means for indicating tampering with said vehicle, and means
for activating said tamper indicating means in response to said
sensing means sensing tampering with said vehicle." We find that
LED 143 of Chang meets the claimed tamper indicating means
separate from said alarm means because Chang discloses alarm 15
to be "first alarm means" and separately discloses LED 143 as an
alarm display. Although the alarm means and the alarm display
are both simultaneously activated, claim 1 does not distinguish
between tamper and alarm means that operate contemporaneously,
and tamper means that are activated after the period of time that
the is activated. In appellant's invention, the alarm is speaker
56 and the tamper indicator is pulsed lamp 62 (specification,
page 8). In addition, of note is the statement in appellant's
specification (id.) that "[w]hile the activation of the strobe
light is preferably contemporaneous with deactivation of the
audible alarm signal, it will be appreciated that the strobe
light can be activated at any time after tampering is detected
and, accordingly, could be activated contemporaneously with
activation of the alarm signal." In Chang, we find that the
alarm is first alarm means 15 and the tamper indicator is LED 143
which flashes. Similarly, both the alarm and tamper indicating
Appeal No. 2000-0328
Application No. 08/863,345
Page 10
means of Chang are activated during the same period of time.
Although we find that in Drori the flags associated with the
triggers and sensors are set when tampering occurs, and agree
with appellant that the tamper indicating LED panel of Drori is
activated in response to entry of a DISARM or IDENTIFY
subroutine, we find that the claimed tamper indicating means is
disclosed by Chang. Thus, we find that Chang and Fuller suggest
the language of claim 1, and consider Drori to be surplusage. We
are not persuaded by appellant's assertion (brief, page 9) that
the prior art does not teach forewarning the vehicle owner that
the vehicle has been tampered with prior to the vehicle owner
reentering or approaching the vehicle, because the claim does not
require this limitation. Nothing in the language of claim 1
requires the tamper indicating means to be activated after the
alarm means is deactivated. From all of the above, we will
sustain the rejection of claim 1. Accordingly, the rejection of
claim 1, and dependent claims 3-19 which fall with claim 1, under
35 U.S.C. § 103(a) is affirmed.
Turning next to independent claim 20, appellant (brief, page
12) presents the same arguments with respect to claim 1 and adds
that claim 20 "patentably distinguishes from claim 1 by providing
dual mechanical and electrical anti-theft devices which further
Appeal No. 2000-0328
Application No. 08/863,345
Page 11
promotes protection of a vehicle against theft." We find that
both Chang (figure 6) and Fuller (figure 1) disclose an anti-
theft device, including alarm means, that is mountable on a
vehicle and limits rotation of the vehicle steering wheel. Thus,
we find that both Chang and Fuller disclose both mechanical and
electrical anti-theft devices. We therefore sustain the
rejection of claim 20. Accordingly, the rejection of claim 20
and dependent claims 22-33, which fall with independent claim 20,
under 35 U.S.C. § 103(a) is affirmed.
We turn next to claims 2 and 21. We reverse the rejection
of these claims because we find no teaching or suggestion in the
prior art of activating LED 143 of Chang after expiration of the
time period that the alarm is in an activated mode. In view of
Chang's teaching (col. 3, lines 35-37) that "LED 143 flashes at a
particular frequency constantly, getting on a break-in burglars
nerves," we find no suggestion to turn on the LED after the alarm
is deactivated. In addition, even if we provided Chang with a
tamper indicating means as taught by Drori, claims 2 and 21 would
not be met. In Drori, the tamper indicating means, are not
activated in response to sensing means sensing tampering with the
vehicle because the setting of sensor and target flags is
insufficient to constitute activation of the tamper indicating
Appeal No. 2000-0328
Application No. 08/863,345
Page 12
means which indicate tampering with the vehicle. We agree with
appellant that the tamper indicating means is activated by the
sending of a proper code to disarm the alarm. We are not
persuaded by the examiner's assertion (answer, page 13) that it
would have been obvious to make the tamper indication of Drori
automatic because "automatic indication would have facilitated
the awareness of this indication to the owner upon his return to
the vehicle by alleviating the necessity of the owner to activate
the system." We agree with appellant (reply brief, page 3) that
the examiner's assertion is an unsupported assumption and does
not constitute the disclosure of prior art. Thus, we do not
sustain the rejection of claims 2 and 21. Accordingly, the
rejection of claims 2 and 21 under 35 U.S.C. § 103(a) is
reversed.
We turn next to the rejection of independent claim 34.
Claim 34 is different in scope from claims 2 and 21 as claim 34,
inter alia, does not require means for activating the tamper
indicating means in response to the sensing means sensing
tampering with the vehicle. Appellant asserts (brief, page 8)
that "[c]laim 34 adds that the tamper indicating means is a
visible signal which is produced at the time the alarm is
deactivated." We find appellant's assertion to be inconsistent
Appeal No. 2000-0328
Application No. 08/863,345
Page 13
with the precise language of claim 34, which recites "means
separate from said alarm means for providing a visible signal
after said predetermined period of time for indicating said
sensing of vibration of said anti-theft device." Contrary to
appellant's assertion, we find that claim 34 does not require
providing the visible signal at the time the alarm is
deactivated, or "immediately" in response to a tampering event
(reply brief, page 3), but rather only requires that the visible
signal is provided after the alarm is deactivated. Claim 34 does
not recite when the visible signal is provided, and as broadly
drafted, the claim language reads upon activating the LED panel
of Drori when the vehicle owner returns to the vehicle and
provides a proper code to disarm the system. While we agree with
appellant (brief, page 10) that "[t]he only modification
suggested by Drori would be to provide for Chang to respond to
the owner's disarming of the system to indicate that tampering
took place" we find that the teachings of Drori are sufficient to
meet the claim language of providing the visible signal after
said predetermined period of time for indicating said sensing of
vibration of said anti-theft device. Thus, we find that one of
ordinary skill in the art would have been motivated to provide
Chang with a visible indicator that would enable the vehicle
Appeal No. 2000-0328
Application No. 08/863,345
Page 14
owner to know that the steering wheel lock has been tampered with
if the owner returns to the vehicle after the alarm has
deactivated after a predetermined period of time. From all of
the above, we sustain the rejection of claim 34. We distinguish
claim 34 from claims 2 and 21 because claim 34 does not recite
both activating the tamper indicating means in response to the
sensing means sensing tampering of the vehicle, and that the
timing means includes means for activating the tamper indicating
means after the expiration of the period of time that the alarm
means is activated. Accordingly, the rejection of claim 34, and
dependent claims 35-47 which fall with claim 34, under 35 U.S.C.
103(a) is affirmed.
Appeal No. 2000-0328
Application No. 08/863,345
Page 15
CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 3-20, and 22-47 under 35 U.S.C. § 103(a) is affirmed. The
examiner's decision to reject claims 2, and 21 under 35 U.S.C.
§ 103(a) is reversed.
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
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2000-0328
Application No. 08/863,345
Page 16
SSL/kis
KEVIN D. WINNER
633 WESTMINSTER ROAD
HERMITAGE, PA 16148