Ex Parte Yahav

Patent Trial and Appeal Board

Feb 15, 2018

14563465 (P.T.A.B. Feb. 15, 2018)

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.
14/563,465 12/08/2014 Itai Yahav 813-001 3679
85154 7590 02/15/2018
LAW OFFICE OF GERARD F. DUNNE, PC
41 Union Square West
Suite 1125
NEW YORK, NY 10003
EXAMINER
GALL, LLOYD A
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
02/15/2018 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 ITAIYAHAV
Appeal 2017-003846
Application 14/563,4651
Technology Center 3600
Before STEFAN STAICOVICI, JILL D. HILL, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Itai Yahav (“Appellant”) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision in the Final Action (dated Apr. 29, 2015, hereinafter
“Final Act.”) rejecting claims 1 and 2 under 35 U.S.C. § 103(a) as
unpatentable over Aydin (US 5,437,174, iss. Aug. 1, 1995), Frolov et al. (US
5,988,708, iss. Nov. 23, 1999, hereinafter “Frolov”), and Test (US
1 According to Appellant’s Appeal Brief (filed Nov. 30, 2015, hereinafter
“Br.”), the inventor, Itai Yahav, is the real party in interest. Br. 1.
Appeal 2017-003846
Application 14/563,465
4,558,193, iss. Dec, 10, 1985).2 We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellant’s invention relates to a self-contained electronically
actuated cylinder lock or alternatively a lock operable by a key. Spec. 2.
Sole independent claim 1, reproduced below, is representative of the claimed
subject matter:
1. A lock configured to be installed in an existing installation
for a conventional key lock, includes a locking cylinder adapted
to be installed in an existing installation and can be rotated to an
unlocking position, a pawl adapted to engage the locking
cylinder to prevent rotation of the locking cylinder to its
unlocked position, an electronic device operated by a user to
release the pawl from its engagement with the locking cylinder,
and a mortise cylinder operable by a key to remove the same
pawl from the locking cylinder by use of the key.
ANALYSIS
Appellant does not present arguments for the patentability of claim 2
apart from claim 1. See Br. 4—12. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), we select claim 1 as the representative claim to decide the
2 An indefiniteness rejection of claim 2 under 35 U.S.C. § 112, second
paragraph, is withdrawn by the Examiner in the Answer (dated Aug. 22,
1016, hereinafter “Ans.”). Ans. 3.
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Application 14/563,465
appeal of the rejection of these claims, with claim 2 standing or falling with
claim 1.
The Examiner finds that Aydin discloses, inter alia, a lock including
locking cylinder 103 and electronic device 10, 12 for operating pawl 81, 82
that engages locking cylinder 103, but does not disclose a mortise cylinder
operable by a key to actuate pawl 81, 82. Final Act. 3^4 (citing Aydin, col.
5,11. 29—52, Fig. 11). Nonetheless, the Examiner finds that Frolov discloses
numerous electronic devices for actuating an electronic lock including key
pad 160, 161 and key switch 153, and that Test discloses that a key switch
includes mortise cylinder 12 operable by key 46. Id. at 4. The Examiner
concludes that based on the teachings of Frolov and Test, it would have been
obvious to a person of ordinary skill in the art to modify Aydin’s lock “to
include a key switch mortise cylinder operable by a key, in addition to the
electronic device 10, 12 ... [in order] to provide numerous ways of
actuating the motor of Aydin, to provide expected locking and unlocking
capabilities.” Id.
Appellant argues that the references do not “teach or suggest a lock
that can be installed in an existing location as well as operated
electronically” by both an electronic device and a key to actuate “the same
pawl serving to lock the same locking cylinder.” Br. 6. Appellant asserts
that the Examiner also fails to “provide[] any reason as to why the applied
references render such a combination of features obvious.” Id. According
to Appellant, the Examiner is using a “piece-meal rejection” and has not
considered the invention as a whole, and, thus, the rejection is based on
“hindsight reasoning.” Br. 8—9.
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Application 14/563,465
The Examiner replies that the references applied as prior art disclose
locks “installed and used ‘in an existing installation,’” and that “Appellant
does not claim any additional structure” that distinguishes over the art. Ans.
5. The Examiner explains that
The lock of the primary reference to Aydin is installed on an
existing door, as is the lock of appellant in fig. 1. The devices
of Frolov ... are clearly used with a door lock existing location.
As set forth in column 1, lines 32-37, the key switch mortise
lock of Test is installed and used in an existing location.
Id. According to the Examiner, “the numerous electronic actuators of Frolov
... are used to actuate the very same lock for the door, and when combined
with Aydin, would actuate the very same rack pawl 81,82 for the locking
cylinder.” Id. at 6. The Examiner asserts that a person of ordinary skill in
the lock art would recognize the predictable results of using multiple
electronic lock actuators in Aydin “for convenience purposes, as well as
serving as a back-up in the event that one of the actuators becomes
disabled.” Id. at 7.
We are not persuaded by Appellant’s arguments for the following
reasons. First, regarding Appellant’s contention that the references do not
disclose locks used in an existing location, the Examiner is correct in that
Aydin discloses “a system which may be retrofitted into a wide variety of
existing mechanical door locks.” Aydin, 1:10-11; see also Ans. 5.
Secondly, Appellant cannot show nonobviousness by attacking Aydin,
Frolov, and Test individually when the rejection as articulated by the
Examiner is based on a combination of Aydin, Frolov, and Test. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981). In this case, although we
appreciate that the references do not individually release/remove the same
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Application 14/563,465
pawl using both an electronic device and a key, the Examiner is correct that
the modification of Aydin’s lock system to include Frolov’s numerous
actuators “would actuate the very same rack pawl 81, 82 for the locking
cylinder.” See Ans. 6. Specifically, because Frolov’s “lock control system
118” is controlled by various actuators from a remote location, or at the site
using at least one of key switch 153 and electronic access devices 160, 161
(see Frolov, 10:21—31; 14:31—52; Fig. 16; see also Ans. 3), to actuate the
same lock for the door, when modifying Aydin’s lock, according to Frolov,
Aydin’s motor would likewise be controlled by different actuators including
an electronic access device and a key switch to “actuat[e] the same motor
54b and same rack pawl 81, 82 of Aydin.” Ans. 4.
Finally, the argument of impermissible hindsight reconstruction
argument is unpersuasive where the Examiner states a rationale for the
modification that we determine is supported adequately by sufficient facts.
See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016). In this case, we
agree with the Examiner that the determination of obviousness is not based
on impermissible hindsight reconstruction (see Br. 9) because the Examiner
states a reasoning with rational underpinnings for the modification, namely,
“for convenience purposes, as well as serving as a back-up in the event that
one of the actuators becomes disabled.” See Ans. 7. More specifically, the
Examiner uses Frolov’s multiple actuators including keypads 160, 161, and
key switch 153 to “provide numerous ways of actuating the motor of Aydin,
to provide expected locking and unlocking capabilities.” Final Act. 4.
Appellant does not provide persuasive evidence or technical reasoning that
Frolov’s devices would not have expected locking and unlocking
capabilities. As the Examiner’s modification leads to a predictable result,
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Application 14/563,465
the modification is well within the skill of a person having ordinary skill in
this art. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
For these reasons, we sustain the Examiner’s rejection of claim 1 as
unpatentable over the combined teachings of Aydin, Frolov, and Test.
Claim 2 falls with claim 1.
SUMMARY
The Examiner’s decision rejecting claims 1 and 2 as unpatentable over
Aydin, Frolov, and Test is 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)(l)(iv).
AFFIRMED
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