Sam Morrison

Patent Trials and Appeals Board

Mar 1, 2022

2021004263 (P.T.A.B. Mar. 1, 2022)

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. 15/871,848 01/15/2018 Sam Morrison 1259-001 2108 78519 7590 03/01/2022 DALE JENSEN PLC 606 BULL RUN STAUNTON, VA 24401 EXAMINER BOSWELL, CHRISTOPHER J ART UNIT PAPER NUMBER 3675 NOTIFICATION DATE DELIVERY MODE 03/01/2022 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): DALERJENSEN@GMAIL.COM djensen@dalejensenlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SAM MORRISON Appeal 2021-004263 Application 15/871,848 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and TARA L. HUTCHINGS, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sam Morrison. Appeal Br. 2. Appeal 2021-004263 Application 15/871,848 2 BACKGROUND The Specification describes embodiments of “an easily attachable security lock for inwardly opening doors that cannot be defeated by any unauthorized party whether the occupants of the room are in the room or not.” Spec. ¶ 16. CLAIMS Claims 1 and 12 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A system comprising: a securement, the securement comprising a rising member and defining a first slot, wherein when operatively installed adjacent to a lockset of a door, the rising member clearing an escutcheon plate of the lockset and placing the rising member close to a cylinder of the lockset such that a key cannot be inserted into a lock opening of the lockset; and a locking member, the locking member constructed to be slidably coupled to the securement through a pair of apertures defined by the securement, each of the pair of apertures substantially surrounding the locking member on four sides, the locking member defining an aperture, wherein, when operatively coupled to the securement, a padlock coupled to the locking member via the aperture prevents removal of the locking member from the securement; wherein an outside handle of the lockset comprises the cylinder coupled to a noncylindrical horizontal lever, wherein when the securement and locking member are operatively coupled to the lockset, the lever of the lockset is substantially prevented from fully turning by the securement and the locking member and thereby the door is prevented from being opened until the padlock and locking member are decoupled from the securement. Appeal 2021-004263 Application 15/871,848 3 OBJECTION AND REJECTIONS2 1. The Examiner objects to the drawings under 37 C.F.R. § 1.83(a) because they fail to show every feature of the invention specified in the claims. 2. The Examiner rejects claims 1-12 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. 3. The Examiner rejects claims 1-11 under 35 U.S.C. § 103 as unpatentable over Atchisson.3 DISCUSSION Written Description and Objection to Drawings As an initial matter, we note that ordinarily an objection is petitionable to the Director and a rejection is appealable to the Board. An exception is when the issue of new matter is the subject of both an objection and a rejection, the issue is appealable. Manual of Patent Examining Procedure (“MPEP”) § 2163.06(II), Review of New Matter Objections and/or Rejections ((9th ed., rev. 10.2019, last rev. June 2020); see also MPEP § 608.04(c); 35 U.S.C. § 134(a); 37 C.F.R. § 1.181(a)(1). We also note that the MPEP states “when the objection is ‘determinative of the rejection’ the matter may be addressed by the Board.” MPEP § 1201. Here, the objection to the drawings is not specifically directed to new matter, but it is related to whether the subject matter of claim 1, as amended, has adequate support in the original disclosure. Further, our consideration of the objection 2 The Examiner indicates that the rejection of claim 12 under 35 U.S.C. § 112(b) has been overcome by an entered amendment. See Ans. 4. The Examiner has withdrawn the rejection of claim 12 under 35 U.S.C. § 102(a)(1). 3 Atchisson, US 4,285,221, iss. Aug. 25, 1981. Appeal 2021-004263 Application 15/871,848 4 is determinative of the written description rejection. Thus, we will decide both the rejection and the objection in this appeal. The Examiner objects to the drawings to the extent that the “drawings must show every feature of the invention specified in the claims” and that “the non-cylindrical horizontal lever must be shown or the feature(s) canceled from the claim(s).” Final Act. 2. Appellant argues against this objection. Appeal Br. 5-6. The Examiner also determines that the terms “a non-cylindrical horizontal lever” in claim 1 and “a non-cylindrical handle” in claim 12 are not described in the Specification, and thus, the claims fail to comply with the written description. Final Act. 3. The Examiner explains that the Specification discloses only that “the system is to be used on a handle, without any specification as to the style of the handle being used.” Id. The Examiner further states that “it is believed the intention of the system is to be used on any type of door handle, not simply limited to a non-cylindrical horizontal lever” and “the drawings do not show specifically what type of handle, or the construction thereof, thus one could not conclude the system is to be used with the aforementioned lever.” Id. at 4. Adequate written description is provided when the disclosure in the application as originally filed reasonably conveys to one of ordinary skill in the art that the inventor had possession of the claimed subject matter. See, e.g., In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). “The content of the drawings may also be considered in determining compliance with the written description requirement.” Id. Here, we agree with Appellant that the depiction of the handle 26 in Figure 1 is sufficient to indicate that the handle is a “non-cylindrical Appeal 2021-004263 Application 15/871,848 5 horizontal lever” as recited in claim 1 and a “non-cylindrical handle” as recited in claim 12. Appeal Br. 6. Thus, we find that the shape of the handle depicted reasonably conveys to one of ordinary skill in the art that Appellant was in possession of the relevant claimed subject matter when the application was filed. We agree with Appellant that “with knowledge already in their possession, one skilled in the art would” recognize that door handles can include non-cylindrical levers and that Figure 1 depicts such a handle. Appeal Br. 8. Figure 1 depicts a handle that protrudes horizontally from the attachable security locking device. The portion of the handle shown depicts a non-cylindrical, curved, and flattened portion, which we find is a significant portion of the handle such that one of ordinary skill in the art would understand the handle to be a non-cylindrical lever. Based on the foregoing, we are persuaded of error in the written description rejection and the objection to the drawings. Accordingly, we do not sustain the written description rejection of claims 1-12 or the objection to the drawings. Obviousness We are persuaded of error in the rejection of claim 1 by Appellant’s argument that the proposed modification of Atchisson would not result in a device as claimed. With respect to claim 1, the Examiner finds that Atchisson teaches a system as claimed except for “the intended use of the system on a non- cylindrical horizontal lever.” Final Act. 7. The Examiner finds that because this is an intended use limitation it “does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference Appeal 2021-004263 Application 15/871,848 6 disclosing the structural limitations of the claim.” Id. The Examiner further finds: It is common knowledge in the prior art to prevent access to a key cylinder in a door handle by placing a securement device over said key cylinder in the same field of endeavor for the purpose of preventing unauthorized access to the door lock. It would have been obvious to one having ordinary skill in the art at the time the invention was made to utilize the securement on a non-cylindrical horizontal lever by adapting the securement to receive a non-cylindrical horizontal lever by allowing the non- cylindrical horizontal lever to extend through a sidewall of the securement in order to prevent access to the lockset of the handle. Id. at 8. Appellant argues that “[t]he proposed modification of Atchisson would still allow the lockset to fully turn if the securement of Atchisson were adapted to receive a non-cylindrical horizontal lever by allowing the non-cylindrical horizontal lever to extend through a sidewall of the securement.” Appeal Br. 18. Thus, Appellant asserts that such a modification would not result in the securement and locking member preventing the device from fully turning as required by the claim. We are persuaded by this argument. As an initial matter, we will address the Examiner’s finding that the limitations at issue are intended use limitations. The claim includes certain limitations that describe the device functionally with respect to a device to which it is “operatively coupled” or “operatively installed.” For example, the claim requires that the securement, when operatively installed adjacent to a lockset of a door, clears an escutcheon plate and is close to a cylinder of the lockset so that a key cannot be inserted. Additionally, and relevant to the issues here, the device is operatively coupled to a lockset with a “non- Appeal 2021-004263 Application 15/871,848 7 cylindrical horizontal lever” such that the lever “is substantially prevented from fully turning by the securement and the locking member and thereby the door is prevented from being opened.” Claim 1. The Examiner indicates that these limitations do not impose any structural limitations on the claimed system. Final Act. 7. We disagree. Rather than merely being intended use, these are functional limitations that define the device by what it does rather than what it is. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). Thus, at a minimum, the Examiner must show that the art, as modified, is at least capable of performing the functions recited. For example, the Examiner must show that the modified device is capable of being operatively coupled to a lockset as recited in the claim, including being coupled to a non-cylindrical horizontal lever such that “the lever of the lockset is substantially prevented from fully turning by the securement and the locking member.” Claim 1. We agree with Appellant that the Examiner has not established adequately that the proposed modification would enable Atchisson’s device to perform the functions claimed. In particular, the Examiner does not explain adequately how Atchisson’s device would be modified such that a horizontal lever can extend through a sidewall of the device while still allowing the securement and locking member to prevent the lever from fully turning. Atchisson discloses a shroud 11 that surrounds an entire doorknob and shaft with a clevis 12 that is inserted into the shroud to retain the shroud in place on the doorknob and shaft. See Atchisson Abstract, Figs. 1-3. Atchisson discloses that “even where the doorknob 16 lacks any existing build-in lock, the presence of the shroud 11 on the doorknob and its associated shaft prevents anyone from grasping the knob to open the door.” Appeal 2021-004263 Application 15/871,848 8 Id. at col. 3, ll. 61-63. Thus, the shroud prevents the door knob from turning because it cannot be grasped. We agree with Appellant that it is not clear how the proposed modification would teach a device as claimed, because allowing for a horizontal lever to protrude through the side of the device would allow someone to grasp the lever in order to turn it, i.e., the lever would not be “substantially prevented from fully turning by the securement.” This appears to be the case because the Atchisson device does not prevent the shrouded doorknob from turning, but rather, as described above, the device prevents the user from accessing the doorknob so that it can be grasped and turned. If a horizontal lever of the lockset were extending through a sidewall of the shroud, could grasp it and turn the door handle and the shroud would have little effect on this functionality. Regarding this issue, the Examiner also explains: a shroud covering the lever would make it difficult for a user to substantially grasp the lever and fully turn the outside handle to an actuated position. Additionally, it is taken that the securement would be applied to the outside handle when the handle is locked to prevent access thereto, where one of ordinary skill in the art would recognize outside door handles are substantially prevented from fully turning when locked, and when the securement is placed thereon, it adds an additional level of security further preventing actuation of the aforementioned outside door handle. Ans. 5-6. To the extent the Examiner asserts that the modification would make it difficult to grasp and fully turn the lever, we do not find that sufficient to meet the limitation, which requires that the lever is “prevented from fully turning” and not that it is simply more difficult to do so. We also disagree with the Examiner’s alternative explanation indicating that the modified covering would cover the lock and add an additional level of Appeal 2021-004263 Application 15/871,848 9 security. The claim requires that the lever is “substantially prevented from fully turning by the securement.” In the instance where the handle is locked, it is the lock and not the securement device that is preventing the lever from fully turning. As such, we agree with Appellant that the claim would not read on the modified device even if the lockset were locked. See Reply Br. 5. Based on the foregoing, we are persuaded of error in the rejection of claim 1 as obvious. For the same reasons we are persuaded of error in the rejection of the dependent claims. Accordingly, we do not sustain the obviousness rejection of claims 1-11. CONCLUSION We REVERSE the Examiner’s objection to the drawings under 37 C.F.R. § 1.83(a). We REVERSE the written description rejection of claims 1-12. We REVERSE the obviousness rejection of claims 1-11. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1-12 112(a) Written Description 1-12 1-11 103 Atchisson 1-11 Overall Outcome 1-12 REVERSED