11161741 (B.P.A.I. Oct. 26, 2010)

Ex Parte XIAO

Board of Patent Appeals and InterferencesOct 26, 2010

11161741 (B.P.A.I. Oct. 26, 2010)

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. 11/161,741 08/15/2005 JIE XIAO 0506-02-815 2740 7590 10/26/2010 Jie Xiao P.O. Box 946 Holbrook, NY 11741 EXAMINER FULTON, KRISTINA ROSE ART UNIT PAPER NUMBER 3673 MAIL DATE DELIVERY MODE 10/26/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JIE XIAO ____________________ Appeal 2009-008575 Application 11/161,741 Technology Center 3600 ____________________ Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and KEN B. BARRETT, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 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 on the PTOL-90A cover letter attached to this decision. Appeal 2009-008575 Application 11/161,741 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1, 2 and 4-18. App. Br 3. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a briefcase having a combination lock. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A briefcase comprising a combination lock, wherein the combination lock comprises: a group of at least three tumbler rings, each tumbler ring operable to rotate and to settle at one of multiple predetermined positions and having multiple position-labels thereon each corresponding to one of the multiple predetermined positions, and wherein each tumbler ring has thereon only one wild-card position-label and multiple alphabetical-letter position-labels each being a single English alphabetical-letter, and the wild- card position-label is different from any one of the twenty-six English alphabetical-letters and is configured for representing any one of the twenty-six English alphabetical-letters. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Gray Remington Basche US 2,261 US 4,395,892 US 6,621,405 B1 Sep. 18, 1841 Aug. 2, 1983 Sep. 16, 2003 Fiegener US 2006/0169007 A1 Aug. 3, 2006 REJECTIONS Claims 1, 2, 4-9, and 15-17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gray, Remington and Fiegener. Ans. 3. Appeal 2009-008575 Application 11/161,741 3 Claims 10-12 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gray and Fiegener. Ans. 6. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gray, Fiegener, and Basche. Ans. 6. ISSUES Appellant argues claims 1, 2, 4-9 and 15-18 as a group. App. Br. 5-14. We select claim 1 as the representative claim, and claims 2, 4-9 and 15-18 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Appellant argues the patentability of claim 1 based upon the lock configuration. Specifically, the fact that each tumbler has “only one wild-card position-label and multiple alphabetical-letter position-labels.” No arguments are presented regarding the Examiner’s proposed combination with Remington’s briefcase or Basche’s algorithm. Although included under a separate subheading, Appellant argues the patentability of claims 10-14, which relate to the method for configuring the lock including “selecting one wild-card position- label and multiple alphabetical-letter position-labels for each tumbler ring,” for the same reasons argued with respect to claim 1. App. Br. 14-15. Thus, the sole issue for our consideration is whether the Examiner erred in concluding the claimed subject matter would have been obvious because the applied prior art would not have rendered obvious a lock having “one wild- card position-label and multiple alphabetical-letter position-labels” for each tumbler ring. FINDINGS OF FACT 1. Gray discloses a combination lock having revolving rings 1-8. ll. 24-40. Each ring 1-8 has a space between the letters resulting in 52 divisions Appeal 2009-008575 Application 11/161,741 4 which may form part of the line that must be attained in order to open the lock. Each end plate 9, 10 has twenty-two letters and twenty-two blank spaces which may form part of that line. ll. 49-83. 2. Gray discloses that the divisions may be designated by letters, figures, other marks or blank spaces. ll. 89-103. 3. Fiegener teaches that letters, numbers, ciphers, symbols, colors, patterns, textures or any combination thereof may be used as position indicia on a combination lock. P. 3, para. [0041]. 4. Remington teaches that it is known to incorporate combination locks into briefcases. Fig. 1. 5. Basche discloses a combination lock wherein a method or algorithm is employed for selecting less than twenty-six letters for the positions on tumbler rings while maximizing the number of words in a given list that can be formed by those tumblers. Col. 4, ll. 3-8. ANALYSIS Gray discloses a combination lock having tumbler rings with multiple divisions, or “positions” and multiple labels thereon, including multiple English alphabetical letters. Fact 1. Gray also discloses that the divisions may be designated by indicia different from any English alphabetical letters. Fact 2. Gray does not disclose that there is only one position label different from any English alphabetical letter nor does Gray refer to those position labels that are different form English alphabetical letters as “wild-card” positions. Fiegener teaches that it was known in the art to use labels different from any English alphabetical letter as position indicia on a combination lock. Fact 3. Modifying Gray to include only one position label different from any English alphabetical letter involves merely the substitutions of Appeal 2009-008575 Application 11/161,741 5 elements known to be interchangeable or an alteration in the size of Gray’s device yielding a predictable result and would have been obvious to one having ordinary skill in the art. Terming such a position a “wild-card” position involves a distinction that is discernible only within the human mind and therefore does not patentably distinguish the claimed device over the prior art. Appellant argues that the Examiner has failed to establish a prima facie case of obviousness for the claimed subject matter on the ground that Appellant’s lock is a matter of design choice, because the Examiner has not provided any reasons to support this conclusion. This argument is not persuasive. Firstly, Appellant has not addressed the Examiner’s position that a letter in Gray’s lock could constitute a wild card and Feigener demonstrates that a letter is interchangeable with some other label that is not a letter. See Fact 3; Non-Final Rej. 3-4. Appellant argues the Examiner’s statement on page 6 of the Non-Final Rejection (para. 15) is merely conclusory but this statement merely references the reasons already articulated thereinabove. Appellant’s argument concerning In re Dailey is moot since it is clear from the Non-Final Rejection that the Examiner does not rely upon In re Dailey to support the rejections presently before us for review. Non-Final Rej. 7; App. Br. 6-8; Reply Br. 3. Contrary to Appellant’s assertion, even if true, the alleged lack of appreciation of the advantages of the invention by the Examiner would not provide any objective evidence of nonobviousness because the objective standard for determining obviousness is based upon a hypothetical person of ordinary skill in the art, not a particular Examiner. App. Br. 8-10. Appellant relies upon In re Wright apparently for the proposition that secondary considerations or advantages from the Specification must be Appeal 2009-008575 Application 11/161,741 6 evaluated in determining obviousness of the claimed invention. Appellant cites this general principal without pointing to any portion of the Specification the Examiner failed to afford weight to or consider in determining obviousness. App. Br. 10-11. Appellant contends the Examiner is required to give patentable weight to the wild-card label. App. Br. 11-13; Reply Br 3-4. We note that although the Examiner argues the label is printed matter, and therefore not entitled to patentable weight, the Examiner makes this assertion only in the alternative. Ans. 4; Non-Final Rej. 3-4, 7. If no weight were afforded the symbol on the label there would have been no reason for the Examiner to rely upon Fiegener for specifically teaching a label different from any English alphabetical letter as discussed above. The Examiner has shown that it is known in the art to use this specific printed matter on locks. Thus, even if the printed matter, the label, is functionally related to the lock, and entitled to patentable weight, it is not related to the lock in any new and unobvious way, because the combination of Gray and Fiegener would have suggested it. Appellant’s argument that the “wild-card position label[s]” in this case are analogous to the “false label” in In re Miller is unpersuasive. App. Br. 11-13; Reply Br. 3. The distinction lies in the fact that any printed matter, letter, figure, number, other mark or blank space may serve as a “wild-card” without any alteration of how the lock functions since what symbol constitutes a “wild-card” is a distinction that is discernible only to the human mind. In contrast, changing the label of the measuring receptacle in In re Miller would result in measuring a different quantity. We cannot agree that the claimed invention solves a longstanding problem of selecting any desired word as a password because in the absence of a required letter Appeal 2009-008575 Application 11/161,741 7 an individual could designate one particular letter to represent another. Contra App. Br. 12; Reply Br. 5. Appellant cites Basche as evidence of long-felt need, failure of others and teaching away. App. Br. 13-14; Reply Br. 6-7. Appellant does not cite any particular portion of Basche in support of these allegations. Basche simply describes an alternative solution to a similar problem. Basche does not discourage or even discuss pursuing the path claimed by Appellant. The fact that Basche solves a similar problem in a different way does not establish long-felt need, failure of others or teaching away because it does not relate to Appellant’s claimed subject matter. CONCLUSIONS OF LAW The Examiner did not err in concluding the claimed subject matter would have been obvious because the applied prior art would not have rendered obvious a lock having “one wild-card position-label and multiple alphabetical-letter position-labels” for each tumbler ring. DECISION For the above reasons, the Examiner’s rejections of claims 1, 2 and 4- 18 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009). AFFIRMED mls Appeal 2009-008575 Application 11/161,741 8 JIE XIAO P.O. BOX 946 HOLBROOK, NY 11741