Ex parte WINNER

Board of Patent Appeals and Interferences

Nov 5, 1998

08442816 (B.P.A.I. Nov. 5, 1998)

Application for patent filed May 17, 1995. According to1
the appellant, the application is a continuation-in-part of
Application No. 08/233,291, filed April 26, 1994, now U.S.
Patent No. 5,488,844.
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journal and (2) is not binding precedent of the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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEVIN D. WINNER
____________
Appeal No. 97-3194
Application No. 08/442,8161
____________
ON BRIEF
____________
Before ABRAMS, McQUADE, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 3, 4, 6, 9 to 24, 31 to 38 and 44 to 46,
which are all of the claims pending in this application.
Appeal No. 97-3194
Application No. 08/442,816
We AFFIRM-IN-PART, however, for reasons explained infra,
we denominate our affirmance of claims 3, 4, 6, 9 to 20 and 44
to 46 a new ground of rejection under 37 CFR § 1.196(b).
Appeal No. 97-3194 Page 3
Application No. 08/442,816
In determining the teachings of Lipschutz, we will rely2
on the translation provided by the PTO. A copy of the
translation is attached for the appellant's convenience.
BACKGROUND
The appellant's invention relates to a security device,
more particularly a theft prevention device for use on
bicycles, motorcycles, mopeds and other conveyance means
(specification, page 1, lines 1-3). An understanding of the
invention can be derived from a reading of exemplary claims
11, 31 and 44, which appear in the appendix to the appellant's
brief.
The references of record relied upon by the examiner in
rejecting the appealed claims are:
Damon 596,237 Dec. 28,
1897
Wood 929,910 Aug.
3, 1909
Johnson 4,856,308 Aug. 15,
1989
Winner 5,488,844 Feb. 6,
1996
Lipschutz 2,495,555 June 11,2
1983
(France)
Appeal No. 97-3194 Page 4
Application No. 08/442,816
Clark 2,134,463 Aug. 15,
1984
(United Kingdom)
Claims 44, 45, 3, 11 and 12 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Damon.
Claims 44, 45 and 3 stand rejected under 35 U.S.C. § 103
as being unpatentable over Wood in view of Damon.
Claims 4, 6, 18, 31 to 38 and 46 stand rejected under
35 U.S.C. § 103 as being unpatentable over Damon in view of
Johnson.
Claims 9, 10, 13 to 17, 19 and 20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Damon in view of
Lipschutz.
Claim 38 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Damon in view of Johnson and Clark.
Appeal No. 97-3194 Page 5
Application No. 08/442,816
The other rejections set forth in the final rejection3
and the answer have been withdrawn by the examiner in the
Advisory Action of June 28, 1996 (Paper No. 10) and the
supplemental examiner's answer (Paper No. 18).
Claims 3, 4, 6, 9 to 24, 31 to 38 and 44 to 46 stand
rejected under the judicially created doctrine of double
patenting over the claims of Winner.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections , we make reference to the examiner's answer (Paper3
No. 16, mailed December 3, 1996) and the supplemental
examiner's answer (Paper No. 18, mailed April 16, 1997) for
the examiner's complete reasoning in support of the
rejections, and to the appellant's brief (Paper No. 14, filed
September 16, 1996) and reply brief (Paper No. 17, filed
January 28, 1997) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
Appeal No. 97-3194 Page 6
Application No. 08/442,816
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The double patenting issue
The appellant has not argued the rejection of claims 3,
4, 6, 9 to 24, 31 to 38 and 44 to 46 under the judicially
created doctrine of double patenting over the claims of
Winner. The appellant has stated in the past (Paper No. 9,
filed June 20, 1996) that he "is fully prepared, upon
allowance of the claims of this application, to file a
Terminal Disclaimer thereby overcoming this non-statutory
objection [rejection]." Since no Terminal Disclaimer has yet
been submitted to overcome this rejection, we summarily
sustain the rejection of claims 3, 4, 6, 9 to 24, 31 to 38 and
44 to 46 under the judicially created doctrine of double
patenting.
The § 103 rejection utilizing Damon
Appeal No. 97-3194 Page 7
Application No. 08/442,816
In rejecting claims under 35 U.S.C. § 103, the examiner4
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993).
We find that the examiner has established a prima facie
case of obviousness with respect to the rejection of claims4
44, 45, 3, 11 and 12 under 35 U.S.C. § 103 as being
unpatentable over Damon.
Claim 44 recites:
A bicycle theft prevention device comprising:
a) a first generally U-shaped rod member including
first and second parallel arms joined by a bight, at least one
arm of said rod member including a plurality of lock engaging
means evenly spaced therealong,
b) a second U-shaped member being movable along the
arms of said rod member toward and away from said bight and
including first and second arms to telescopically engage
respectively the first and second parallel arms of said rod
member, and
c) a lock housing joined to said second U-shaped
member and containing lock means to prevent disengagement of
the arms of said second U-shaped member from the arms of said
rod member when the device is locked, and to permit
disengagement of the arms of said second member from the arms
of said rod member when the device is unlocked, the arms of
said second U-shaped member being freely disengaged from the
arms of said U-shaped rod member when the device is unlocked
and the members are telescoped away from one another.
Claim 45 recites:
Appeal No. 97-3194 Page 8
Application No. 08/442,816
The device according to claim 44, wherein the lock
engaging means comprises ratchet teeth along one arm of the
rod member and the lock means comprises a pawl that is spring
biased into abutting contact with one of said ratchet teeth
when the device is locked.
Claim 3 recites:
The device according to claim 45, wherein said ratchet
teeth partially circumscribe said at least one arm.
Claim 11 recites:
A theft deterrent device comprising a) a first generally
U-shaped member, b) a second generally U-shaped member, each
member having first and second parallel arms, the parallel
arms of the first member being telescopically received into
the parallel arms of the second member, the first member
containing a plurality of ratchet teeth spaced along its first
parallel arm, and c) lock means associated with the second U-
shaped member, said lock means including a pawl engaging
individual ratchet teeth when said lock means is locked, to
prevent said members when engaged from being separated, while
allowing said members to be telescoped together, and when said
lock means is unlocked, allowing the members to be freely
disengaged when telescoped away from one another.
Claim 12 recites:
The device according to claim 11, wherein the first U-
shaped member comprises a rod, with the ratchet teeth spaced
uniformly along said first parallel arm thereof.
Damon's invention relates to locks and latches, and
particularly to a lock for bicycles, baggage, and other
Appeal No. 97-3194 Page 9
Application No. 08/442,816
portable articles to lock the same against removal or
transportation (page 1, lines 8-11). As shown in Figure 2,
Damon's lock includes
(1) a U-shaped bar or rod 1 having upon one end teeth 2, (2) a
U-shaped hollow tube 3, and (3) a locking assembly mounted
upon one end of the tube 3 for engagement with the teeth 2.
Damon's locking assembly includes flanges 7 integral with the
tube 3, a toothed plate 8, a spring 10, a cover 11, a screw-
threaded projection 16, and a key 18. In addition, Damon
teaches (page 1, lines 42-54) that
[t]he other end of the bar 1 has a longitudinal groove 4,
terminating in an L-shaped groove 5, which engages a lug
6 on the inside of one end of the tube or sleeve 3, so
that the shackle [bar 1] may be operated to slide in or
out of the sleeve the whole length of the said groove 4
with the toothed end of the shackle in or out of the
sleeve without separating the shackle from the sleeve,
said shackle being turned to have the lug 6 engage the L-
shaped groove 5 to put the toothed end of the shackle
out of the out of the line with the sleeve or to separate
the sleeve entirely.
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Appeal No. 97-3194 Page 10
Application No. 08/442,816
It is axiomatic that, in proceedings before the PTO,5
claims in an application are to be given their broadest
reasonable interpretation consistent with the specification,
and that claim language should be read in light of the
Based on our analysis and review of Damon and claims 44,
45, 3, 11 and 12, it is our opinion that there are no
differences.
The examiner had implicitly determined (answer, p. 2)
that Damon lacked "the arms of said second U-shaped member
being freely disengaged from the arms of said U-shaped rod
member when the device is unlocked and the members are
telescoped away from one another" as recited in independent
claim 44 and "when said lock means is unlocked, allowing the
members to be freely disengaged when telescoped away from one
another" as recited in claim 11. We do not agree.
We agree with the appellant's understanding of the
operation of Damon's lock as set forth on page 8 of the brief.
However, it is not apparent to us how the above-noted
limitations of claims 44 and 11 are not readable on Damon's
lock. In that regard, when the device of Damon is unlocked5
Appeal No. 97-3194 Page 11
Application No. 08/442,816
specification as it would be interpreted by one of ordinary
skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983). Moreover, limitations are not to
be read into the claims from the specification. In re Van
Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir.
1993) citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).
and the rod 1 and tube 3 are telescoped away from one another
so that the rod 1 is entirely separated from tube 3, the arms
of the U-shaped tube 3 are freely disengaged from the arms of
the U-shaped rod 1. We find no recitation in these claims
which would exclude the 90° rotation that is necessary in
Damon's lock to completely disengage rod 1 from tube 3.
The appellant's argument concerning claims 44, 45, 3, 11
and 12 are unpersuasive for the following reasons. The issue
of whether it would have been obvious to removing Damon's lug
6 and groove 4 as set forth by the examiner is moot in view of
our determination above that all limitations of claims 44, 45,
3, 11 and 12 are taught by Damon. With regard to claims 45
and 11, we find that Damon's pawl (i.e., locking plate 8) is
spring biased into abutting contact with one of the ratchet
teeth 2 (claim 45) or engagement with individual ratchet teeth
Appeal No. 97-3194 Page 12
Application No. 08/442,816
2 (claim 11) when the device is locked. In that regard, we
find no limitation in either claim 45 or claim 11 which
requires the pawl to engage one and only one tooth. With
regard to claim 3, as clearly shown in Figure 3, the ratchet
teeth 2 of Damon partially circumscribe the one arm of rod 1.
As noted above, Damon does teach all the limitations of
claims 44, 45, 3, 11 and 12. A disclosure that anticipates
under 35 U.S.C. § 102 also renders the claim unpatentable
under
35 U.S.C. § 103, for "anticipation is the epitome of
obviousness." Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ
1021, 1025 (Fed. Cir. 1984). See also In re Fracalossi, 681
F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); In re Pearson,
494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974). Thus, the
examiner has established a prima facie case of obviousness.
The § 103 rejection utilizing Wood in view of Damon
We will not sustain the examiner's rejection of claims
44, 45 and 3 under 35 U.S.C. § 103 as being unpatentable over
Wood in view of Damon. In that regard, we agree with the
Appeal No. 97-3194 Page 13
Application No. 08/442,816
appellant's argument (brief, pp. 11-15) that it would not have
been obvious to modify Wood to arrive at the claimed invention
absent impermissible hindsight. See W. L. Gore & Assoc. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The § 103 rejection utilizing Damon in view of Johnson
We find that the examiner has established a prima facie
case of obviousness with respect to the rejection of claims 4,
6, 18, 31 to 36 and 46 under 35 U.S.C. § 103 as being
unpatentable over Damon in view of Johnson, but not the
rejection of claims 37 and 38.
Johnson discloses an automobile steering lock. Johnson
teaches that one problem with prior antitheft devices is that
they appear susceptible to being overcome by physical force or
manipulation. Specifically, Johnson teaches (column 1, lines
43-50) that the locking mechanism of Moore U.S. Patent No.
3,462,982 is exposed, and includes pry points thereabout in
which a crowbar may be inserted in an attempt to overcome such
mechanism and that irrespective of whether such a device can
Appeal No. 97-3194 Page 14
Application No. 08/442,816
be overcome by physical manipulation, they present prospective
thieves with the appearance of being breakable.
As shown in Figure 1, Johnson's lock is comprised of an
elongated body member 10, an elongated rod member 12 which is
dimensioned to move in telescopic fashion within body member
10, and a housing 14. Hooks 16, 18, for engaging
diametrically opposed portions of the steering wheel from the
inside thereof, are provided on body member 10 and rod member
12, respectively. Locating means 20 and locking means 22 are
provided within
housing 14 to position and lock rod member 12 stationary with
respect to body member 10 at any one of a plurality of
positions. More specifically, body member 10 is comprised of
an elongated tube 30 of circular cross-section. Tube 30
defines a central passage 38 of circular cross-section. A
durable plastic coating 40 is provided over sleeve 32 and hook
16 to provide a nonabrasive surface over section 36. Rod
member 12 is comprised of an elongated rod 46 of circular
cross-section. The outer diameter of rod 46 is dimensioned
slightly less than the diameter of passage 38 in body member
Appeal No. 97-3194 Page 15
Application No. 08/442,816
10 to enable rod 46 to move freely in telescopic fashion in
body member 10. Annular grooves 50, transverse to the axis of
rod 46 are provided along a major portion thereof. Grooves 50
are generally semi-circular and are
axially spaced along rod 46 to provide intermediate surfaces
52. The hook end of rod member 12 is provided with a plastic
coating 54 similar to that provided on section 36 of body
portion 10.
As shown in Figures 4 and 5, Johnson's locating means 20
and locking means 22 are within housing 14. Locating means 20
is generally comprised of a spherical bearing 60, and biasing
spring 62 disposed within a bore 64 in housing 14. Bore 64
communicates with passage 38 by extending through portion 34
of tube 30. Spring 62 is confined within bore 64 in
compression such that bearing 60 is biased towards, and
partially exposed in, passage 38. Locking means 22 includes a
boss 70, a conventionally known key lock 72 and a locking
member 74. Locking member 74 is generally cylindrical in
shape and includes an arcuate outer surface 76 of a diameter
generally matching the semicircular grooves 50 in rod 46, and
Appeal No. 97-3194 Page 16
Application No. 08/442,816
a flat or recessed portion 78. A washer member (not shown) is
provided between lock 72 and locking member 74 to effect
rotational movement of locking member 74 about its axis when
lock 72 is locked and unlocked. To accommodate lock 72 and
locking member 74, bore 84 of varying diameter is provided
through boss 70 into housing 14. Bore 84 intersects tube 30
and produces a slot or aperture 86 which intersects passage
38, as shown in Figure 1. Bore 84 is aligned relative to
passage 38 such that arcuate surface 76 of locking member 74
is partially disposed within passage 38 when locking member 74
is in a first position, and recess 78 is oriented toward
passage 38 when member 74 is rotated 180° to a second
position. Further in this respect, bore 84 is disposed
relative to bore 64 such that when spherical member 60 is
aligned with a groove 50 on rod 46, locking member 74 is
likewise aligned with a groove 50 on rod 46. Spherical
bearing 60 and locking member 74 are disposed opposite each
other in housing 14 such that they align with the same groove
50 on rod 46.
Appeal No. 97-3194 Page 17
Application No. 08/442,816
The examiner determined (answer, pp. 4-5) that it would
have been an obvious exchange of known equivalents to one of
ordinary skill in the art at the time the invention was made
to modify the locking device and engaging notches of Damon
with a locking mechanism and engaging notches like that taught
by Johnson. We agree. In addition, apparently with respect
to claims 37 and 38, the examiner also determined that plastic
coating 40 of Johnson was a "bubble wrap" material and that it
would have been obvious to one of ordinary skill in the art to
place the plastic coating 40 of Johnson over all lock
portions, including the lock housing, to provide a non-
abrasive surface. We do not agree.
The appellant argues (brief, pp. 16-20) that there is no
suggestion or motivation to modify Damon by the teachings of
Johnson absent impermissible hindsight. We do not agree.
Initially we note that while there must be some teaching,
reason, suggestion, or motivation to combine existing elements
to produce the claimed device, it is not necessary that the
cited references or prior art specifically suggest making the
combination (see B.F. Goodrich Co. v. Aircraft Braking Systems
Appeal No. 97-3194 Page 18
Application No. 08/442,816
Copy attached.6
Corp., 72 F.3d 1577, 1583, 37 USPQ2d 1314, 1319 (Fed. Cir.
1996) and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500,
1502 (Fed. Cir. 1988)). Rather, the test for obviousness is
what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). Moreover, in evaluating such references it is
proper to take into account not only the specific teachings of
the references but also the inferences which one skilled in
the art would reasonably be expected to draw therefrom. In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). In
this case, however, Johnson specifically teaches that a
problem exists with prior antitheft devices such as the
locking mechanism of Moore U.S. Pat. No. 3,462,982 (see column
1, lines 41-50) and that his device presents a formidable
obstacle to a potential theft (see column 5, lines 49-54). In
that the locking mechanism of Moore is a ratcheting device6
similar to that disclosed in Damon, it is our opinion that
Appeal No. 97-3194 Page 19
Application No. 08/442,816
Johnson does provide the necessary teaching, reason,
suggestion, and motivation to replace Damon's ratcheting type
lock with the more formidable lock taught by Johnson.
With respect to claim 4, the appellant argues (brief, p.
17) that Johnson does not disclose the use of ratchet teeth
and a spring biased pawl as claimed. We do not agree. The
claimed ratchet teeth which fully circumscribe the arm read on
Johnson's grooves 50 and the claimed spring biased pawl reads
on Johnson's spherical bearing 60 biased by spring 62.
With respect to claims 37 and 38, the appellant argues
(brief, pp. 21-23) that the applied prior art does not teach
or suggest the lock housing being "enclosed in a protective
cover" as recited in claim 37 or the protective cover
comprising "bubble wrap material" as recited in claim 38. We
agree. First, the examiner's determination that plastic
coating 40 of Johnson was a "bubble wrap" material is without
a proper foundation. In that regard, Johnson describes the
coating 40 as being a durable plastic coating and is shown in
Figure 5 as a flat coating. Thus, there is no evidentiary
Appeal No. 97-3194 Page 20
Application No. 08/442,816
basis for the examiner to conclude that coating 40 is a
"bubble wrap" material since "bubble wrap" is a well known
material. Second, the examiner's determination that it would
have been obvious to one of ordinary skill in the art to place
the plastic coating 40 of Johnson over the lock housing also
lacks the necessary evidentiary basis. In that regard, the
conclusion that the claimed subject matter is prima facie
obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally
available to one of ordinary skill in the art that would have
led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). Rejections based on § 103 must rest on a factual basis
with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The
examiner may not, because of doubt that the invention is
patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual
basis for the rejection. See In re Warner, 379 F.2d 1011,
Appeal No. 97-3194 Page 21
Application No. 08/442,816
1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968).
Appeal No. 97-3194 Page 22
Application No. 08/442,816
The § 103 rejection utilizing Damon in view of Lipschutz
We find that the examiner has established a prima facie
case of obviousness with respect to the rejection of claims 9,
10, 13 to 17, 19 and 20 under 35 U.S.C. § 103 as being
unpatentable over Damon in view of Lipschutz.
Lipschutz discloses an antitheft device for motor
vehicles. In Figures 2-4, Lipschutz teaches to apply the
antitheft device to a two-wheeled motor vehicle. In Figures
5-7, Lipschutz teaches to apply the antitheft device to a
four-wheeled motor vehicle. In the embodiment of the
antitheft device shown in Figures 8-9, Lipschutz teaches (page
5, lines 7-9) that a bellows 33 "ensures the protection for
portion A and prevents the user from being in contact with the
shaft 17."
The examiner determined (answer, p. 5) that it would have
been obvious to one of ordinary skill in the art at the time
the invention was made to place an expandable protective
sleeve around the notched locking rod of Damon in a manner set
Appeal No. 97-3194 Page 23
Application No. 08/442,816
forth in Lipschutz to protect the locking notches from dirt
and debris. We agree.
The appellant argues (brief, pp. 25-26) that Lipschutz is
non-analogous art. 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). In the present instance, we are informed by the
appellant's originally filed specification that the invention
is particularly directed to a security device, more
particularly a theft prevention device for use on bicycles,
motorcycles, mopeds and other conveyance means (specification,
page 1, lines 1-3). Lipschutz discloses an antitheft device
for both two-wheeled and four-wheeled vehicles and thus falls
at least into the former category of the Wood test. Thus, we
conclude that Lipschutz is analogous art.
The appellant argues (brief, pp. 23-25) that there is no
suggestion or motivation to modify Damon by the teachings of
Appeal No. 97-3194 Page 24
Application No. 08/442,816
Lipschutz absent impermissible hindsight. We do not agree.
Lipschutz specifically teaches that bellows 33 is provided to
ensure the protection for portion A (i.e., threaded shaft 17)
and to prevent the user from being in contact with the shaft
17. It is our opinion that Lipschutz does provide the
necessary teaching, reason, suggestion, and motivation to
provide an expandable protective sleeve around the notched
locking rod of Damon to protect the locking notches from dirt
and debris and to prevent the user from contacting the notched
locking rod in a manner suggested and taught by Lipschutz.
With respect to claim 17, the appellant argues (brief, p.
26) it is not obvious to modify Damon to provide the specific
ratchet teeth as claimed. We do not agree. The claimed
ratchet teeth including "a flat stop surface" and "a second
surface sloping inwardly toward the rod axis from the radially
outer edge of the stop surface" read on Damon's teeth 2.
Thus, there is no need to modify Damon to provide the specific
ratchet teeth as claimed.
Appeal No. 97-3194 Page 25
Application No. 08/442,816
The § 103 rejection utilizing Damon in view of Johnson and
Clark
We will not sustain the examiner's rejection of claim 38
under 35 U.S.C. § 103 as being unpatentable over Damon in view
of Johnson and Clark since the examiner has not established a
prima facie case of obviousness. In that regard, it would not
have been obvious in our view to modify Damon to arrive at the
claimed invention absent impermissible hindsight.

Claim 38 requires both (1) the lock housing being
"enclosed in a protective cover" as recited in parent claim
37, and (2) the protective cover comprising "bubble wrap
material" as recited in claim 38. We agree. First, the
examiner's determination that material 17 of Clark is a
"bubble wrap" material is without a proper foundation. In
that regard, Clark describes element 17 as a plastic sleeve
and is shown in Figures 1 and 2 as having an undulating
surface. Thus, it is our opinion that there is an
insufficient evidentiary basis for the examiner to conclude
that sleeve 17 is a "bubble wrap" material since "bubble wrap"
is a well known material. Second, the examiner's implicit
Appeal No. 97-3194 Page 26
Application No. 08/442,816
determination that it would have been obvious to one of
ordinary skill in the art to place the plastic sleeve 17 of
Clark over Damon's lock housing also lacks the necessary
evidentiary basis.
CONSIDERATION OF EVIDENCE OF NONOBVIOUSNESS
Having arrived at the conclusion that the teachings of
the prior art are sufficient to establish a prima facie case
of obviousness with respect to claims 3, 4, 6, 9 to 20, 31 to
36 and 44 to 46, we recognize that the evidence of
nonobviousness submitted by the appellant must be considered
en route to a determination of obviousness/nonobviousness
under 35 U.S.C.
§ 103. See Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530,
218 USPQ 871 (Fed. Cir. 1983). Accordingly, we consider anew
the issue of obviousness of claims 3, 4, 6, 9 to 20, 31 to 36
and 44 to 46 under 35 U.S.C. § 103, carefully evaluating
therewith the objective evidence of nonobviousness supplied by
the appellant. See In re Oetiker, 977 F.2d 1443, 1445-46, 24
USPQ2d 1443, 1444-45 (Fed. Cir. 1992); In re Piasecki, 745
F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984).
Appeal No. 97-3194 Page 27
Application No. 08/442,816
In this case the appellant has submitted evidence in the
form of a declaration from John F. Hornbostel, Jr. (attached
to Paper No. 6, filed Mach 11, 1996). The declaration
provides:
1. In August, 1994, Winner [Winner International
Royalty Corporation, assignee of the appealed application]
introduced a line of bicycle security locks into the United
States market to permit bicycle owners to secure a bicycle to
an immoveable object. This line of locks represents the first
products introduced by Winner into the bicycle accessory
market. Winner sells four different styles and sizes of
bicycle locks. I am advised that all four of the locks are
covered by one or more claims of the above-captioned
application.
2. Following the commercial introduction of the bicycle
locks in 1994, these locks enjoyed immediate substantial
commercial success and have experienced a continuous sales
growth. In the most recent three month period from October
through December 1995, the dollar volume of sales of these
locks at the wholesale level has exceeded $185,000.00.
3. In my opinion, the success of the bicycle lock in
the marketplace is due in large measure to the features of the
locks that are covered by the claims of the patent
application. More specifically, the use of two U-shaped
members which telescopically move toward and away from one
another and which utilize either a pawl/ratchet tooth
arrangement or a plurality of semicircular grooves with a lock
mechanism, to provide a wide degree of adjustability are
features which have contributed to the almost instantaneous
success and popularity of the lock devices.
4. Another reason for the success of the lock devices
is the relative simplicity of the design and operation of each
device and the claimed features thereof which protect the
bicycle and the lock components from marring, damage and
weathering.
5. In my opinion, the Winner line of bicycle locks have
displaced the United States sales of locks manufactured by
Appeal No. 97-3194 Page 28
Application No. 08/442,816
well established sellers of bicycle security devices, and has
resulted in a net decrease in the market share of these
competitive devices. This is even more surprising when
considering the dominance of the market by these other
manufacturers compared to the total absence of Winner from the
bicycle lock market until less than two years ago.
We do not believe that the declaration establishes
commercial success of the invention as set forth in claims 3,
4, 6, 9 to 20, 31 to 36 and 44 to 46. In that regard, the
declaration provides no data concerning whether the amount of
sales of the bicycle lock represents a substantial share in
this market. Although the declaration indicates that over
$185,000 had been spent on the bicycle locks in a three month
period, the declaration provides no indication of whether this
represents a substantial amount in this market. Our reviewing
court has noted in the past that evidence related solely to
the number of units sold provides a very weak showing of
commercial success, if any. See In re Huang, 100 F.3d 135,
137, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); Cable Elec.
Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27, 226
USPQ 881, 888 (Fed. Cir. 1985) (finding that sales of 5
Appeal No. 97-3194 Page 29
Application No. 08/442,816
million units represent a minimal showing of commercial
success because "[w]ithout further economic evidence
. . . it would be improper to infer that the reported sales
represent a substantial share of any definable market"); see
also In re Baxter Travenol Lab., 952 F.2d 388, 392, 21 USPQ2d
1281, 1285 (Fed. Cir. 1991) ("[I]nformation solely on numbers
of units sold is insufficient to establish commercial
success."); Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1151,
219 USPQ 857, 861 (Fed. Cir. 1983) (determination of
obviousness not erroneous where evidence of commercial success
consisted solely of number of units sold and where no evidence
of nexus). On the basis of the limited information provided
by the declarant, we conclude that the appellant has failed to
establish commercial success.
Even assuming that the appellant had sufficiently
demonstrated commercial success, that success is relevant in
the obviousness context only if it is established that the
sales were a direct result of the unique characteristics of
the claimed invention, as opposed to other economic and
commercial factors unrelated to the quality of the claimed
Appeal No. 97-3194 Page 30
Application No. 08/442,816
subject matter. See Cable Elec., 770 F.2d at 1027, 226 USPQ
at 888. In other words, a nexus is required between the sales
and the merits of the claimed invention. In ex parte
proceedings before the Patent and Trademark Office, an
applicant must show that the claimed features (i.e., the
subject matter of claims 3, 4, 6, 9 to 20, 31 to 36 and 44 to
46) were responsible for the commercial success of an article
if the evidence of nonobviousness is to be accorded
substantial weight. Merely showing that there was commercial
success of an article which embodied the invention is not
sufficient. See Ex parte Remark, 15 USPQ2d 1498, 1502-03 (Bd.
Pat. App. & Inter. 1990). Compare Demaco Corp. v. F. Von
Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed.
Cir.), cert. denied, 488 U.S. 956 ( 1988). See also Pentec,
Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ 766
(Fed. Cir. 1985) (commercial success may have been
attributable to extensive advertising and position as a market
leader before the introduction of the patented product); In re
Fielder, 471 F.2d 640, 176 USPQ 300 (CCPA 1973) (success of
invention could be due to recent changes in related technology
or consumer demand; here success of claimed voting ballot
Appeal No. 97-3194 Page 31
Application No. 08/442,816
could be due to the contemporary drive toward greater use of
automated data processing techniques).
The declaration contain only assertions that the locks
being sold are "covered by one or more claims of the above-
captioned application" and that "the success of the bicycle
lock in the marketplace is due in large measure to the
features of the locks that are covered by the claims of the
patent application." This is insufficient to establish the
required nexus. Claims are not technical descriptions of the
disclosed inventions but are legal documents like the
descriptions of lands by metes and bounds in a deed which
define the area conveyed but do not describe the land.
Because of this characteristic of claims, the commercial
success of a machine "claimed" may be due entirely to
improvements or modifications made by others to the invention
disclosed in the application for patent. Such success is not
pertinent to the nonobviousness of the advantages inherent in
what is specifically disclosed in the application are not to
be considered in determining nonobviousness. In re Vamco
Machine and Tool, Inc., 752 F.2d 1564, 1577, 224 USPQ 617, 625
Appeal No. 97-3194 Page 32
Application No. 08/442,816
(Fed. Cir. 1985). Furthermore, the appellant failed to submit
any factual evidence that would demonstrate the nexus between
the sales and the claimed invention - for example, an
affidavit from the purchaser explaining that the product was
purchased due to the claimed features. In the present case,
the sales may have been due to lower manufacturing costs, the
market position of Winner, prior relations between Winner and
the companies to which the locks were sold, advertising, the
use of a trademark similar to Winner's trademarks used for
their steering wheel locks, or features of the locks
attractive to customers or other companies but unrelated to
the claimed subject matter (e.g., the protective cover as
recited in claims 37 and 38, the notch as recited in claim
22). In sum, the appellant simply has not carried his burden
to establish that a nexus existed between any commercial
success and the novel features claimed in claims 3, 4, 6, 9 to
20, 31 to 36 and 44 to 46.
In the final analysis, evidence of nonobviousness,
although being a factor that certainly must be considered, is
not necessarily controlling. See Newell Companies, Inc. v.
Appeal No. 97-3194 Page 33
Application No. 08/442,816
Kenney Manufacturing Co., 864 F.2d 757, 768, 9 USPQ2d 1417,
1426 (Fed. Cir. 1988).
In view of the foregoing, we are satisfied that when all
the evidence and arguments are considered, the evidence of
nonobviousness fails to outweigh the evidence of obviousness
as in Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 44
USPQ2d 1181 (Fed. Cir. 1997) and EWP Corp. v. Reliance
Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985).
Accordingly, we sustain the rejections of claims 3, 4, 6, 9 to
20, 31 to 36 and 44 to 46 under 35 U.S.C. § 103 set forth
above wherein we had determined that a prima facie case of
obviousness had been established.
Appeal No. 97-3194 Page 34
Application No. 08/442,816
New ground of rejection under 37 CFR § 1.196(b)
In view of our finding above that independent claims 11
and 44 are anticipated by Damon, we denominate our affirmance
of independent claims 11 and 44, and claims 3, 4, 6, 9, 10, 12
to 20, 45 and 46 dependent thereon, a new ground of rejection
under 37 CFR § 1.196(b).
CONCLUSION
To summarize, (1) the decision of the examiner to reject
claims 3, 4, 6, 9 to 24, 31 to 38 and 44 to 46 under the
judicially created doctrine of double patenting over the
claims of Winner is affirmed; (2) the decision of the examiner
to reject claims 44, 45, 3, 11 and 12 under 35 U.S.C. § 103 as
being unpatentable over Damon is affirmed; (3) the decision of
the examiner to reject claims 44, 45 and 3 under 35 U.S.C. §
103 as being unpatentable over Wood in view of Damon is
reversed;
(4) the decision of the examiner to reject claims 4, 6, 18, 31
to 36 and 46 under 35 U.S.C. § 103 as being unpatentable over
Damon in view of Johnson is affirmed; (5) the decision of the
examiner to reject claims 37 and 38 under 35 U.S.C. § 103 as
Appeal No. 97-3194 Page 35
Application No. 08/442,816
being unpatentable over Damon in view of Johnson is reversed;
(6) the decision of the examiner to reject claims 9, 10, 13 to
17, 19 and 20 under 35 U.S.C. § 103 as being unpatentable over
Damon in view of Lipschutz is affirmed; and (7) the decision
of the examiner to reject claim 38 under 35 U.S.C. § 103 as
being unpatentable over Damon in view of Johnson and Clark is
reversed. In addition, for reasons explained supra, we have
denominated our affirmance of claims 3, 4, 6, 9 to 20 and 44
to 46 to be a new ground of rejection under 37 CFR § 1.196(b).
In addition to affirming the examiner's rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53131, 53197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. Office 63, 122 (Oct. 21,
1997)). 37 CFR § 1.196(b) provides, "A new ground of
rejection shall not be considered final for purposes of
judicial review."

Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
Appeal No. 97-3194 Page 36
Application No. 08/442,816
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
Appeal No. 97-3194 Page 37
Application No. 08/442,816
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.
Appeal No. 97-3194 Page 38
Application No. 08/442,816
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; 37 CFR § 1.196(b)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
GJH
Appeal No. 97-3194 Page 39
Application No. 08/442,816
VICKERS DANIELS AND YOUNG
TWENTIETH FLOOR TERMINAL TOWER
CLEVELAND, OH 44113
APPEAL NO. 97-3194 - JUDGE NASE
APPLICATION NO. 08/442,816
APJ NASE
APJ ABRAMS
APJ McQUADE
DECISION: AFFIRMED-IN-PART;
37 CFR § 1.196(b)
Prepared By: Gloria Henderson
DRAFT TYPED: 29 Oct 98
FINAL TYPED: