Appeal No. 1997-1632 Page 14
Application No. 08/138,555
the ‘cover’ test, one would ask whether the application claims are covered by (i.e., not
patentably distinct from) the claims of the patent.” Id. at 1436 (internal footnote
omitted.)
Here, the inventions specified by claim 54 of the application and claim 1 of
Henderson are related as a combination and a subcombination. Inventions in this
relationship are patentably distinct if the claimed combination does not require the
particulars of the claimed subcombination for patentability, and the subcombination has
utility by itself or in other combinations. M.P.E.P. § 806.05(c)(8th ed., Aug. 2001). In
this case, the application’s combination of a using a RF transmission to update a key or
lock does not require Henderson’s subcombination of “compar[ing] the first and second
date data to determine which associated collection of data is the freshest,” Henderson,
col. 54, ll. 2-3, for patentability. To the contrary, claim 54 merely mentions that “data . .
. can be compared with other like data to determine which of two lockout lists
respectively associated with said data is the fresher.” (Emphasis added.) Furthermore,
the subcombination has separate utility such as ensuring that devices connected by
media other than a RF link “both contain the collection of data determined to be the
freshest.” Henderson, col. 54, ll. 20-21. Therefore, we reverse the rejection of claim 54
as unpatentable over claim 1 of Henderson.
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