Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE PREBIN M. REMARK
Appeal No. 87-2422
Heard: October 16, 1989
Application for Patent filed August 26, 1985, Serial No. 769,756; a
Continuation of Serial No. 269,014 filed May 20, 1981, now Abandoned.
Paul J. Esatto, Jr. et al. for appellant
Scully, Scott, Murphy & Presser
Primary Examiner - Robert L. Wolfe
McCandlish, Parsons and Pate
Harrison E. McCandlish
This appeal is from the examiner's rejection of claims 12 through 21, which are all of the claims remaining in the application. [FN2]
Appellant's invention is directed to a security seal for securing a door or other closure member of a container. The security seal is of the type that must be broken in order to open the door to gain access to the interior of the container.
Appellant's security seal comprises a male member and a female member. The male member is formed with a rod-shaped shank which is adapted to extend through a pair of door locking rings. The shank terminates at one end in an enlarged head and at the other end in a tapered portion which is inserted into a socket in the female member. A latching or locking ring in the female member prevents the male member from being withdrawn from the female member. The female member and the enlarged head on the male member have dimensions large enough to prevent the members from being drawn through the locking rings.
As defined in independent claims 12 and 17, the shank comprises a steel cable (which forms the core of the shank) and an exterior, rigid layer of material for bracing the steel cable core.
Claims 12 and 17, which are the only independent claims on appeal, define the invention as follows:
12. A seal device applicable, especially to closure means for the doors of wagons, trucks, trailers, containers and the like, comprising a male part and a female part, said male part comprising an elongated shank having first and second ends, protuberant stop means at said first end for preventing withdrawal of said shank from said closure means by said first end, and a male ferrule on said second end having a smaller lateral dimension than said stop means thereby allowing insertion of said shank in said closure means by said second end, said female part having a socket for reception of said male ferrule, and said device including locking means for cooperating with said male ferrule and said socket to couple said male and female parts within said socket when said male ferrule is inserted in said socket, whereby said female part prevents withdrawal of said shank from said closure means, characterized in that said shank comprises a steel cable and a rigid layer to stiffen and brace the cable, said layer permitting the male and female parts to be interlocked with a stroke of a hammer without unraveling said cable.
17. A sealing device for a container with locking rings, said device comprising a first and a second member adapted for snap fit interlocking after the first member has been introduced into a cavity provided in the second member; said first member further comprising a rod shaped elongate body with an insertion end suitable for introduction into said cavity, and a head end, said head end as well as said second member having a larger transverse dimension than the insertion end so as to render them suitable for use with locking rings of internal dimension intermediate that of the insertion end and the head end and second member, said insertion end of said elongated body being formed by a flexible core in the form of a length of multiple strand steel cable, said core being imbedded in a layer of rigid material, the other end of said core extending into the head end of said elongated body and imbedded in a layer of rigid material to form a head member, said lock characterized in that the flexible core is totally surrounded by a layer of material which braces the core and which is sufficiently rigid to allow the elongate body which forms one member of the lock to interlock with the second member by the stroke of a hammer, without the strands of the flexible core being separated.
*2 Dependent claims 14 and 19 add the feature of annular grooves formed in the rigid layer around the steel cable to create lines of weakness in the rigid layer.
The examiner relies upon the following references in support of his rejection under 35 U.S.C. 103:
Taylor 876,028 Jan. 7, 1908
Swallow 883,501 Mar. 31, 1908
Moberg et al. (Moberg) 3,980,337 Sept.14, 1976
McCoag 4,280,726 July 28, 1981
(filed May 25, 1979)
The examiner has rejected the appealed claims as follows:
1. Claims 12 through 21 stand rejected under 35 U.S.C. 112, second paragraph, as being indefinite and hence failing to particularly point out and distinctly claim the subject matter which the appellant regards as his invention.
2. Claims 12, 13, 15/12, 15/13, 16/12, 16/13, 17, 18, 20/17, 20/18, 21/17 and 21/18 stand rejected under 35 U.S.C. 103 as being unpatentable over McCoag in view of Swallow and Moberg.
3. Claims 14, 15/14, 16/14, 19, 20/19 and 21/19 stand rejected under 35 U.S.C. 103 as being unpatentable over the references applied in the rejection of claims 12 and 17 above, and further in view of Taylor.
Considering first the §112 rejection, the examiner's position is as follows:
Lines 2 and 3 of claim 12 read on alternative language making the claims indefinite. The period at the end of line 8 of claim 17 is also objected to for making the claim indefinite. (final office action, Paper No. 26, page 2)
With regard to claim 12, the examiner appears to have interpreted the preamble phrase "applicable, especially to closure means for the doors of wagons, trucks, trailers, containers and the like" as reading in the alternative (i.e., wagons, trucks, trailers, containers or the like).
Appellant does not dispute the examiner's rejection under the second paragraph of §112. Instead, as indicated on page 14 of the main brief, appellant merely proposes to amend the claims to overcome the rejection. At oral hearing, we understood appellant's counsel to acquiesce in the §112 rejection. Accordingly, we will summarily sustain the examiner's rejection of all of the appealed claims under the second paragraph of §112. We hasten to add that claim 12 and all of the claims depending directly or indirectly from claim 12 are additionally indefinite because the phrase "and the like" is vague and uncertain in that it is not clear from the specification what appellant intended to cover by the recitation of "and the like." Note Ex parte Kristensen, 10 USPQ 2d I701 (BPAI 1989).
*3 Turning now to the §103 rejection of claims 12, 13, 17 and 18, the examiner's position is as follows:
To merely modify the seal-type lock of McCoag such that the rod-shaped body 10 has a flexible and resilient core surround [sic] by a rigid layer and to further specify that this resilient core be a steel cable would be [ [ [ [sic, have been] obvious in view of the teachings of Swallow and Moberg, respectively. Further, to specify that the rigid layer be made of plastic or steel would be [sic, have been] obvious in view of Moberg. (final office action, Paper No. 26, page 3)
Appellant does not dispute the examiner's finding that the security seal device shown in Figure 2 of the McCoag patent incorporates all of the structure in the portion of claim 12 preceding the "characterized" clause, including the female part, the elongated shank on the male part, the protuberant stop means (which reads on the enlarged head of the male part) the male ferrule on the end of the shank which is inserted into the socket of the female part, and the locking means (which is readable on the locking ring) which cooperates with the male ferrule and the female socket to couple the male and female parts together. Likewise, appellant does not dispute the examiner's finding that the McCoag patent discloses all of the elements of claim 17 preceding the recitation of the flexible core in the elongated body. Instead, appellant contends--and the examiner concedes--that the male part of McCoag's security seal device lacks a flexible core of any type.
In contrast to McCoag's construction in which the shank of the male part is a solid rod-shaped body, we are told by appellant that his construction with the flexible steel cable core provides a number of advantages as set forth on page 7 of the main brief. In particular, as we understand appellant's arguments, the claimed invention is advantageous because the flexible steel cable core in the elongated male part prevents breakage of the male part by merely subjecting the male part to repeated bending by means of a pipe or other tool as is the case with the prior art seal device of McCoag. In contrast, appellant tells us that unlike McCoag's security seal, his seal with the flexible steel cable core requires a wire cutter in order to open the seal.
With particular regard to the Swallow patent, appellant argues, inter alia, that the patentee's rigid shackle does not stiffen and brace the flexible wire core. As for the Moberg patent, appellant contends that the security seal device in this reference lacks a rigid rod-shaped body having a flexible core.
Appellant further contends that all of the applied references are deficient for the following reasons:
None of these prior art references teach [sic, teaches] a flexible core embedded in a layer of rigid material that stiffens and braces the core and to allow the enlongate [sic, elongate] body to be interlocked with a female locking member with the stroke of a hammer without the strands of a flexible core being separated. The only teaching of an outer layer for an inner core is in Swallow which teaches the use of a hollow glass or procelain [sic, porcelain] layer that does not brace the core and does not permit the lock to be sealed with one stroke of a hammer. (main brief, Paper No. 31, page 18)
*4 In addition to arguing that the examiner has not made out a prima facie case of obviousness, appellant has proffered the Rule 132 declaration of Lau Diderichsen (the export manager of appellant's licensee company) in rebuttal of the examiner's showing of obviousness.
We have carefully considered appellant's arguments concerning the applied references. However, we are satisfied that the examiner has made out a prima facie case of obviousness with respect to claims 12, 13, 17 and 18. Our reasons follow.
The McCoag patent discloses a security seal device which, like appellant's seal device, is used to seal a container having a pair of locking rings or other similar structure. McCoag's security seal device is similar to appellant's device in that it has a rigid, rod-shaped body terminating at one end in an enlarged head and at the other end in a tapered portion which is configured for engagement with a locking member in the socket or bore of a female part to prevent unauthorized removal of the seal. The rigid construction of the male member allows it to be driven into the blind bore of the female member (see col.2, lines 49-52).
The Swallow patent also discloses a keyless type security seal having a rigid shackle portion which is adapted to extend through one or more locking rings and which surrounds a core in the form of a flexible wire. As disclosed in the Swallow specification, the shackle may be either hollow or solid to accommodate the wire core. In the case where the shackle is solid, the wire is disclosed as being incorporated into the shackle at the time the shackle is formed. According to the Swallow's specification, the shackle is made from a frangible, rigid material such as glass or porcelain, and the wire core is required to be of suitable character.
Admittedly, the subject matter of claim 12 differs from McCoag's seal device by calling for the steel cable and the rigid layer which stiffens and braces the cable. As for claim 17, McCoag admittedly fails to disclose a flexible core of any type, let alone the claimed multiple strand steel cable embedded in a layer of rigid material for bracing the core.
Swallow, however, teaches a keyless security seal construction having a flexible core in the form of a wire surrounded by a frangible rigid rod-shaped shackle body. As noted in our discussion supra, Swallow expressly discloses that the frangible shackle body may be solid instead of hollow, and in the case where the shackle body is solid, the wire core is incorporated into the rigid shackle body at the time the shackle is formed as shown in Figure 6 of Swallow's drawings.
Appellant's counsel nonetheless was understood to argue that the claims distinguish from Swallow by reciting that the rigid layer around his steel cable "braces" the cable and consequently is not so stiff to prevent bending. [FN3] This argument is unpersuasive.
When the claim language is given its broadest reasonable interpretation consistent with the specification, [FN4] the recitation that the rigid layer "braces" the cable core merely means that the rigid layer strengthens or reinforces the core, not that the rigid layer is capable of being bent to some extent to distinguish from Swallow's rigid shackle. Thus, as we interpret the claim language, Swallow's rigid, solid shackle body (see Figure 6) also serves to both stiffen and brace the flexible wire core, thus suggesting the claim limitation of stiffening and bracing the flexible core.
*5 Although the Swallow patent does not explicitly require that the wire core be made of steel, it does teach that the core should be of "suitable character" (see lines 37-38 on page 1), presumably for locking purposes. Steel, being commonly known for its strength, would certainly have been recognized by one of ordinary skill in the art as being of such "suitable character."
It is important to observe that, similar to appellant's utilization of the flexible cable core (or wire as it is described in appellant's originally filed specification), Swallow utilizes the wire core "so that if the shackle is broken, the wire still serves in its place and must be cut in order to free the staple" (emphasis added) (page 1, lines 38-41 of the Swallow specification). Thus, similar to appellant's security seal, the outer rigid shackle of Swallow's seal may be broken, but a cutter is still required to cut the flexible core for removing the seal.
The security seal disclosed in the Moberg patent is similar to appellant's device in that it has a rod-shaped member (70) terminating at one end in an enlarged head and at the other end in a further member which has a tapered end portion for insertion into a female fastening device (86) for engagement with a locking ring (94). The rod-shaped member (70) of Moberg is adapted to extend through container locking means (84) and is in the form of a steel cable which is inherently capable of flexure.
Based on the foregoing analysis of the prior art references, it is evident that the McCoag patent is pertinent for its suggestion of a two-piece security seal device in which the elongated, rod-shaped male member is rigid and strong enough to allow it to be driven into the socket of the female member as with a hammer, the Swallow patent is relevant for its suggestion of utilizing a flexible core embedded in and stiffened by an outer rigid covering and requiring cutting to remove the seal even though the rigid covering is broken, and the Moberg patent is relevant for its suggestion of utilizing a steel cable (which resists breakage by bending and requires cutting) as the elongated male member of the security device to prevent what Moberg describes as "casual pilfering by non-professional thieves" (abstract, lines 1-2). Furthermore, Swallow is not limited to its specific teachings of the materials for the rigid shackle or covering, but instead is fairly suggestive of utilizing a flexible core which is embedded in a rigid layer and which requires cutting in order to break the seal. As for dependent claims 13 and 18, Swallow's rigid covering is sufficiently brittle so that it will break if an attempt is made to break the seal by bending. Thus, when these teachings of the applied references are considered collectively, we are satisfied that they suggest the subject matter of claims 12, 13, 17 and 18 to establish a prima facie case of obviousness. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
*6 In rebuttal of the examiner's showing of obviousness, appellant relies on the Diderichsen declaration which is principally concerned with what purports to be commercial success of the invention. In evaluating this declaration, we are mindful of the necessity of reweighing the entire merits of the matter and hence considering all of the evidence of record anew. In re Piasecki, 745 F.2d 1465, 223 USPQ 785 (Fed. Cir. 1984). We are also mindful that objective evidence of non-obviousness in any given case may be entitled to more or less weight, depending upon its nature and its relationship with the merits of the claimed invention. Ashland Oil, Inc. v. Delta Resins & Refractories, 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985). Thus, as pointed out in Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985):
... this court in Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983), has unequivocally stated that for commercial success of a product embodying a claimed invention to have true relevance to the issue of nonobviousness, that success must be shown to have in some way been due to the nature of the claimed invention, as opposed to other economic and commercial factors unrelated to the technical quality of the patented subject matter. Thus, a 'nexus is required between the merits of the claimed invention and the evidence offered, if that evidence is to be given substantial weight enroute to [a] conclusion on the obviousness issue.' Id. at 1539, 218 USPQ at 879. (citations omitted)
At oral hearing, appellant's counsel argued that the evidence in the Diderichsen declaration is sufficient to establish a nexus, specifically a prima facie case of nexus, between the merits of the claimed invention and the alleged commercial success. In support of this position, appellant's counsel at oral hearing has relied upon Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ 2d 1222 (Fed. Cir. 1988) in which the court stated the requirements for a prima facie case of nexus as follows: [FN5]
A prima facie case of nexus is generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent. ...
A patentee is not required to prove as a part of its prima facie case that the commercial success is not due to factors other than the patented invention. (emphasis in the original)
In the present case, the thing sold is the article itself, namely the seal device. Under Demaco, a prima facie case of nexus is made out in such a situation merely by showing that the product is commercially successful and is the invention disclosed and claimed in the subject application. According to Demaco, a showing of a prima facie case of nexus is sufficient to shift the burden of coming forward with evidence to the adversary, which in the present ex parte proceedings corresponds to the examiner, to prove that the commercial success was due to factors unrelated to the merits of the claimed invention.
*7 In Demaco, the court stressed that the foregoing evidentary routine of shifting the burden of coming forward with evidence in rebuttal after a prima facie case of nexus is established was appropriate in civil litigation, presumably because the challenger or adversary has the opportunity through discovery proceedings and other evidence gathering means to adduce such rebuttal evidence.
In contrast, the examiner in ex parte proceedings has no available means for adducing evidence to show that the commercial success was due to extraneous factors. For this reason, we are of the opinion that the evidentary routine pertaining to the shifting of the burden upon presenting a prima facie case of nexus is inapplicable to ex parte proceedings in the Patent and Trademark Office.
Indeed, over the years, our reviewing court and its predecessor, the Court of Customs and Patent Appeals, has consistently required more than a mere showing that there was commercial success and that the commercially successful article embodied the invention in order to establish the requisite nexus in ex parte cases. See, for example, In re Thompson, 545 F.2d 1290, 192 USPQ 275 (CCPA 1976) ("Although commercial success is averred, there is no evidence showing that such success was attributable to the merits of appellants' invention rather than to other factors such as advertising."), In re Heldt, 433 F.2d 808, 167 USPQ 676 (CCPA 1970) ("while such affidavits [dealing with alleged commercial success] are, indeed, relevant, they can only be given effect when it is positively clear from the facts presented therein that the commercial success asserted was the direct result of the unique characteristics of the claimed invention and not due to other causes.") and In re Noznick, 478 F.2d 1260, 178 USPQ 43 (CCPA 1973) in which the court ruled that the requisite nexus was not established because in the court's words, "[f]or all the record shows, the sales may be the result of advertising or other extraneous factors not related to [the merits of the claimed invention]." In a similar vein, the court in In re Mageli, 470 F.2d 1380, 176 USPQ 305 (CCPA 1973) ruled that the requisite nexus had not been established because as far as the record was concerned, "the sales could have resulted from a large advertising campaign, price concessions to get the product moving, or purchases by an affiliate or controlled company rather than from the advantageous attributes of the claimed compound."
Furthermore, even in inter partes proceedings, a mere showing of sales and gross receipts is insufficient to establish the requisite nexus. See, for example, Sjolund v. Musland, 847 F.2d 1573, 6 USPQ 2d 2020 (Fed. Cir. 1988) and Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 219 USPQ 857 (Fed. Cir. 1983). Furthermore, the court in Cable Electric Products, supra, emphasized that in absence of further economic evidence, evidence about reported sales was a "fairly minimal" indicator of commercial success. In particular, the court in Cable Electric Products, supra, stated:
*8 Nevertheless, what it shows in relation to commercial success is fairly minimal. Without further economic evidence, for example, it would be improper to infer that the reported sales represent a substantial share of any definable market or whether the profitability per unit is anything out of the ordinary in the industry involved. (226 USPQ at 888)
We do not find that any of the foregoing cases dealing with the nexus issue have been overruled either expressly or sub silentio by Demaco or any other court decisions, for that matter. Accordingly, the above-cited authorities stand as binding precedent until overruled. See In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985).
In view of the foregoing authorities dealing with nexus, it therefore is still necessary to show in ex parte proceedings before the Patent and Trademark Office that commercial success was due to the merits of the claimed invention (i.e., that the claimed features were responsible for the success) if the evidence of nonobviousness is to be accorded substantial weight. This we do not think appellant has done.
In particular, the Diderichsen declaration fails to establish that the articles sold (identified in the Diderichsen declaration as the "FLEXIBLE SECURITY SEAL") embodied the invention claimed in any of the appealed claims before us. In paragraph 1 of the Diderichsen declaration, the declarant merely states that appellant is the "above applicant for patent on a new invention entitled 'ENGAGEMENT LOCK"DD'. The declarant does not go on to state that this "new invention" is the one disclosed or presently claimed in the subject application.
In paragraph 5 of the Diderichsen declaration, the seal identified as the "flexible security seal" is indicated parenthetically to be "the invention". However, the declarant has failed to establish that "the invention" is the invention disclosed or presently claimed in the subject application.
In paragraph 19 of the Diderichsen declaration, the declarant merely refers to the commercial success of "the present invention", but does not indicate that "the present invention" is the invention disclosed and presently claimed in the subject application.
Accordingly, for the foregoing reasons alone, the Diderichsen declaration does not clearly establish that the article sold embodied the invention defined in the appealed claims. This would have been simple enough to say, and since the declarant has chosen not to do so, it would be inappropriate in these circumstances to draw such an inference from the vague and ambiguous statements of the declarant.
Furthermore, and perhaps more importantly, even if it is assumed arguendo that the invention referred to in the Diderichsen declaration is the invention disclosed in the subject application, it appears that all of the structural features apparently contributing to the alleged commercial success are not recited in appealed claims 12, 13, 17 and 18. In this regard, the annular grooves (14) which are formed in the rigid layer to create lines of weakness are recited in claims 14 and 19, but not in claims 12, 13, 17 and 18.
*9 On pages 7 and 8 of the main brief, these annular grooves are stated to be one of the three major features contributing to the asserted advantage of appellant's invention over the prior art. These annular grooves are also stated on page 8 of the main brief to be advantageous because they add "an element of frangibility to the ... outer covering, [so that] the rod shaped member will clearly show any attempt by an unauthorized person to tamper with the lock or break it open" (main brief, page 8).
The Diderichsen declaration apparently refers to this frangible groove feature as "the indicator feature that indicates when tampering has been attempted" (Diderichsen declaration, paragraph 19). According to the Diderichsen declaration, "the commercial success of the present invention has been primarily the combination of the security of the FLEXIBLE SECURITY SEAL together with the indicator feature that indicates when tampering has been attempted" (emphasis added) (Diderichsen declaration, paragraph 19). In paragraph 18 of the Diderichsen declaration, the declarant again stresses the frangible indicator, contending that "no other company in the industry thought it was obvious to combine a frangible indicator with the flexible cable ..."
From this record, it appears that the frangible indicator groove feature in the outer rigid covering or layer of the seal is asserted to have contributed, at least to some extent, to the sales and hence to the asserted commercial success. Yet, claims 12, 13, 17 and 18 do not recite this feature. Accordingly, even though these claims are broad enough to cover an article which may include the grooves, they are also broad enough to cover articles which do not include the grooves.
Since claims 12, 13, 17 and 18 do not claim the frangible groove feature, it is improper to draw the inference that the commercial success of appellant's seals was due to the merits of the invention as claimed in claims 12, 13, 17 and 18. See Sjolund v. Musland, 847 F.2d 1573, 6 USPQ 2d 2020 (Fed. Cir. 1988) and In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978). See also In re Grasselli, 713 F.2d 731, 218 USPQ 769 (Fed. Cir. 1983).
In sum, there is no evidence in the record before us that the features claimed in claims 12, 13, 17 and 18 were themselves, apart from the frangible groove feature, responsible for the asserted commercial success.
Moreover, merely showing a prima facie case of nexus by itself is not always sufficient to rebut a prima facie case of obviousness, for as stated in Demaco:
Once a prima facie case of nexus is made the court must consider the evidence adduced on both sides of the question, with such weight as is warranted. See Ashland Oil, Inc. v. Delta Resins & Refractories, 776 F.2d 281, 306, 22 USPQ 657, 674 (Fed. Cir. 1985) ("The objective evidence of secondary considerations may in any given case be entitled to more or less weight, depending upon its nature and its relationship to the merits of the invention"), cert. denied, 475 U.S. 1017 (1986). (7 USPQ 2d at 1227; emphasis added)
*10 In the present case, it is evident from our discussion thus far that appellant has failed to establish a clear case of nexus between the asserted commercial success and the merits of the invention as claimed in claims 12, 13, 17 and 18, thus detracting from the weight to be accorded to the evidence of commercial success. In this regard, we are not unmindful of the attempt made in the Diderichsen declaration to establish a nexus by showing that the so-called flexible security seals (presumably, appellant's current invention) have replaced the licensee's prior art seal (identified as the rigid seal in paragraph 5 of the Diderichsen declaration) in the marketplace, together with the statement that no money was expended by the licensee for advertising or promotion in the United States.
With regard to the evidence that the licensee's customers have begun to switch from the prior art seal to the so-called flexible security seal despite a higher cost for the latter, there is no evidence that the licensee has not itself initiated the phase-out of the prior art seal to thus limit the quantity available to customers. Also, even though the price of the so-called flexible security seal has been alleged to be higher than the cost of the prior art seal, there is no evidence indicating what the difference in cost is. It is therefore possible that the cost while being higher may only be slightly higher. As a result the so-called flexible security seal may have been underpriced as far as other steel cable security seals are concerned.
As far as the asserted sales of the flexible security seal itself are concerned as set forth in paragraph 5 of the Diderichsen declaration, there is no evidence of the market share represented by these sales. In this regard, the declarant has chosen not to furnish us with any idea of the size of the market for this type of security seal. Also, there is no evidence that the sales of the flexible security seal have come at the expense of other prior art steel cable seals. Indeed, in absence of further economic evidence, it is improper, as stated in Cable Electric Products, supra, to infer that the reported sales represent a substantial share of any definable market or even that the profitability per unit is anything out of the ordinary in the industry in question.
As for the lack of advertising as asserted in paragraphs 8 and 11 of the Diderichsen declaration, there is no evidence that persons other than the licensee, such as appellant himself, paid for advertising and promotion in the United States. Furthermore, if there truly was no advertising or promotion in the United States, then such a situation raises the question of how prospective purchasers became aware of the flexible security seal or even of the office which the licensee opened in New York in 1985 to take orders.
As for paragraph 18 of the Diderichsen declaration, there is nothing in the record to show how the declarant became aware that "no other company in the industry thought it was obvious to combine a frangible indicator with the flexible cable4)4B'D'D' This type of conclusionary hearsay statement is entitled to little weight. See In re Mageli, supra.
*11 With regard to paragraph 15 of the Diderichsen declaration, none of the claims, including claims 12, 13, 17 and 18, recites that the rigid, outer covering or layer is cast. Unclaimed features such as this one cannot be relied on to draw the inference that the asserted commercial success was due to the merits of the claimed invention itself. See Sjolund v. Musland, supra.
As for paragraph 12 of the Diderichsen declaration, the statement that 8 out of 10 of the world's largest container shipping companies use "One-Seal locks" is not relevant since the licensee, One-Seal A.S., sells other security seals under its company name, specifically the so-called "rigid seal" mentioned in paragraph 5 of the declaration.
As for the statements made in paragraph 14 of the Diderichsen declaration, no reason is given for the failure of the prior art steel cable security seal marketed by the declarant's competitor. For all we know, the failure may have been due in part to the fact that the heads on the steel cable of the Brooks seal are not cast on the cable.
With regard to paragraph 20 of the Diderichsen declaration, even if it is assumed arguendo that the reference to the "present invention" means the seal as disclosed together with the frangible grooves in the rigid outer cover, a nexus between what was accepted by the U.S. Customs Service and the invention claimed in claims 12, 13, 17 and 18 clearly has not been established because these claims do not recite the frangible groove feature as discussed supra. Furthermore, there is nothing in the record to indicate whether the U.S. Customs Service has accepted other seals for in-bond and high-security purposes. Still further, it is of interest to note that the U.S. Customs statement (Exhibit B) refers to the seal in question as having been "advertised" in apparent contradiction to the statement made in paragraph 8 of the Diderichsen declaration.
We also note that the declarant has chosen not to furnish us with the attachment which accompanied the U.S. Customs Service notification.
Regarding paragraphs 21 and 22 of the Diderichsen declaration, the declarant states that the Locktainer Flex seal described in the Wallet patent No. 4,418,952 (copy attached) was an attempt to "copy the present invention" by utilizing a metal coil (presumably shown in the Wallet patent) to simulate the ribs and presumably appellant's frangible grooves. The relevance of this allegation is not understood because such a metal coil does not correspond to the claimed rigid layer in which the steel cable is embedded.
In the final analysis, evidence of nonobviousness, although being a factor that certainly must be considered, is not necessarily controlling. Newell Companies Companies, Inc. v. Kenney Manufacturing Co., 864 F.2d 757, 9 USPQ 2d 1417 (Fed. Cir. 1988).
In view of the foregoing, we are satisfied that when all of the evidence is considered, the totality of the rebuttal evidence cannot be accorded substantial weight, so that, on balance, the evidence of nonobviousness fails to outweigh the evidence of obviousness as in E.W.P. Corporation v. Reliance Universal Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985). Accordingly, we will sustain the examiner's §103 rejection of claims 12, 13, 17 and 18.
*12 We will also sustain the §103 rejection of claims 15/12, 15/13, 16/12, 16/13, 20/17, 20/18, 21/17 and 21/18 since the rejection of these claims has not been challenged with any reasonable specificity. See In re Nielson, 816 F.2d 1567, 2 USPQ 2d 1525 (Fed. Cir. 1987). See also In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).
Turning now to dependent claims 14 and 19, both of these claims recite that annular grooves are formed in the rigid layer around the steel cable to create lines of weakness. According to appellant, these annular grooves are advantageous because, inter alia, they provide frangible regions of weakness in the outer rigid layer around the steel cable to serve as an indicator of any attempt to tamper with the seal.
In contrast to the construction defined in claims 14 and 19, the Taylor patent discloses a dial lock spindle having a groove at its head end to facilitate the removal of the entire head of the spindle. Thus, when the evidence before us is considered, we are of the opinion that the subject matter of claims 14 and 19 would not have been obvious from the combined teachings of McCoag, Swallow, Moberg and Taylor. Accordingly, we cannot sustain the rejection of claims 14, 15/14, 16/14, 19, 20/19 and 21/19.
Under the provisions of 37 C.F.R. 1.196(b), we enter the following new ground of rejection against the appealed claims:
Claims 12 through 21 are rejected under 35 U.S.C. 112, first paragraph, as being based upon a specification which, as filed, does not satisfy the description requirement in the first paragraph of §112. The test for determining compliance with the written description requirement is whether the disclosure of an application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter. In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983). The content of the application drawings may also be considered in determining compliance with the written description requirement. In re Kaslow, supra.
In the case at bar, we find no mention in the specification as filed of a cable of any type, let alone a steel cable as called for in claim 12 or a multi-strand steel cable as called for in claim 17. In the specification as filed, the core 12 is specifically described as a steel wire. See page 4 of the specification where it is stated that the core is "in the form of a steel wire 12." All wires or, more particularly, steel wires are not necessarily cables let alone multi-strand cables. Accordingly, the description that the core is a steel wire does not provide the requisite support for the recitation of a steel cable as set forth in the appealed claims.
The introductory portion of the specification as filed does not cure the deficiencies of the detailed description. In this regard, the specification states on page 2 that the core is "in the form of a steel wire or spring wire or band or other elastic material." This disclosure also does not provide support for the recitation of the steel cable in the appealed claims. Certainly, elements such as a spring wire, a band or other elastic material are not necessarily cables.
*13 The drawings in the application at bar do not satisfy the deficiencies of the specification as discussed supra. Indeed, element 12 is described in the specification as being a wire, not a cable. Furthermore, the illustration of the core in Figure 2 of the drawings is equivocal at best. If anything, it appears to show a band as described on page 2 of the specification. In view of the foregoing, we find nothing in the original disclosure, including the drawings, to indicate, expressly or inherently, that appellant had possession of the later claimed subject matter which calls for a steel cable. Furthermore, with particular regard to claim 12, there is no support in the original disclosure of the preamble recitation that the closure means is for doors of "wagons, trucks, trailers ...." In addition, since the subject application was filed under 37 C.F.R. 1.62 (1985) as a file wrapper continuation of appellant's parent application without an additional oath or declaration, the subject application may only disclose subject matter disclosed in the parent application. See 37 C.F.R. 1.62(c) (1985). Appellant's parent application, however, also fails to provide support for the recitation of the steel cable in the appealed claims.
For the foregoing reasons, claims 12 through 21 are based on a specification which, as filed, does not satisfy the description requirement in the first paragraph of §112.
1. The rejection of claims 12 through 21 under the second paragraph of §112 is affirmed.
2. The §103 rejection of claims 12, 13, 15/12, 15/13, 16/12, 16/13, 17, 18, 20/17, 20/18, 21/17 and 21/18 is affirmed.
3. The §103 rejection of claims 14, 15/14, 16/14, 19, 20/19 and 21/19 is reversed.
4. A new rejection has been entered against the appealed claims pursuant to 37 C.F.R. 1.196(b).
The examiner's decision rejecting the appealed claims is affirmed.
Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date hereof (37 C.F.R. 1.197).
With respect to the new rejection under 37 C.F.R. 1.196(b), should appellant elect the alternate option under that rule to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire two months from the date of this decision. In the event appellant elects this alternate option, 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.
*14 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 us for final action on the affirmed rejection, including any timely request for reconsideration thereof.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
AFFIRMED 37 C.F.R. 1.196(b)
BOARD OF PATENT APPEALS AND INTERFERENCES
Saul I. Serota
Ian A. Calvert
Marion Parsons, Jr
William F. Pate, III
FN1. The three member panel which heard oral argument consisted of Examiners-in-Chief McCandlish, Parsons and Pate. Chairman Serota and Vice Chairman Calvert were added to this panel for purposes of rendering the decision. Legal support for adding panel members, without requiring reargument, can be found in In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985).
FN2. An earlier appeal (Appeal No. 611-48) in appellant's parent application Serial No. 269,014 resulted in an affirmance of the examiner's rejection under 35 U.S.C. 103. The appealed claims in the subject application differ in certain respects from the rejected claims in the parent application, thus raising new issues of patentability.
FN3. This argument would appear to give some insight to the characterization in the Diderichsen declaration that the seal is a "FLEXIBLE SECURITY SEAL", notwithstanding the description that the outer covering or layer, as it is called in the claims, is stated in both the specification and the claims to be rigid.
FN4. See, for example, In re Sneed, 710 F.2d 1544, 218 USPQ 385 (Fed. Cir. 1983).
FN5. 37 C.F.R. 1.192 requires that the authorities relied upon in an appeal must be set forth in appellant's brief. In the present case, Demaco has not been cited in appellant's briefs. However, since Demaco was decided subsequent to the time period for filing briefs in this appeal, we will consider this authority in addressing the obviousness/nonobviousness issue raised on this appeal.
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