Apple Inc.

Patent Trials and Appeals Board

Jul 15, 2021

2020004293 (P.T.A.B. Jul. 15, 2021)

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.
14/274,452 05/09/2014 James R. KROGDAHL P22182US1 7384
62579 7590 07/15/2021
APPLE INC./BROWNSTEIN
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
EXAMINER
DILLON, DANIEL P
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
07/15/2021 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):
patentdocket@bhfs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES R. KROGDAHL, ADAM T. GARELLI,
BRUCE E. BERG, LILIYA LYANDRES,
WILLIAM F. LEGGETT, and
PAUL CHOINIERE
Appeal 2020-004293
Application 14/274,452
Technology Center 1700
Before KAREN M. HASTINGS, BRIAN D. RANGE, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 7–9, 15, 20–23, 25, and 26. See
Final Act. 2, 6, 9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 “Apple Inc.” Appeal
Br. 3.
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CLAIMED SUBJECT MATTER
Claims 1 and 15, reproduced below, are illustrative of the claimed
subject matter:
1. A computing device housing, comprising:
a housing member defining:
an exterior surface of a computing device; and
a recessed portion recessed relative to an adjacent
portion of the exterior surface of the computing device and
defined by a base portion and a wall, the wall defining a
wall surface having a surface energy different than a
surface energy of the adjacent portion of the exterior
surface of the computing device; and
a support pad comprising a self-profiling thermoplastic
material and defining:
a first portion positioned within the recessed
portion, the self-profiling thermoplastic material of the
first portion abutting and adhering to the wall surface; and
a second portion protruding relative to the adjacent
portion of the exterior surface of the computing device and
defining a dome-shaped profile having a shape based at
least in part on the surface energy of the wall surface, the
surface energy of the adjacent portion of the exterior
surface of the computing device, or a combination thereof.

15. A housing for a computing device, comprising:
a housing member defining:
a recessed region comprising a surface; and
an adjacent region of the housing member;
an oleophobic coating positioned on the surface of the
recessed region and having a first surface energy different from
a second surface energy of the adjacent region of the housing
member; and
a self-profiling pad deposited on the oleophobic coating in
the recessed region, configured to be an interface between the
housing member and a surface on which the computing device
can be placed, and comprising:
a body made of a thermoplastic material;
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a first surface protruding beyond the adjacent region of the
housing member and having a dome-shaped profile with a shape
at least partially defined by the first surface energy; and
a second surface within the recessed region, abutting the
oleophobic coating, and configured to exclusively abut one side
of the housing member.
Claims Appendix (Appeal Br. 22, 24) (emphases added).
REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date
Tracy US 2008/0251663 A1 Oct. 16, 2008
Casebolt US 2011/0089792 A1 Apr. 21, 2011
Bleecher US 2012/0045954 Al Feb. 23, 2012
Silverman US 2013/0008796 A1 Jan. 10, 2013
Fournand US 2015/0361279 A1 Dec. 17, 2015

REJECTIONS
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1–3, 5, 8, 9, 21, 22, 23 103 Tracy, Casebolt
1, 2, 7 103 Tracy, Silverman
15, 20, 25, 26 103 Tracy, Bleecher,
Fournand

Claim 1 (Tracy & Casebolt)2
In rejecting claim 1 over Tracy and Casebolt, the Examiner
determines that the limitation “a second portion . . . defining a dome-shaped

2 Appellant argues against the rejections of claims 1–3, 5, 8, 9, 21, and 23
based on Tracy and Casebolt as a group, with claim 1 as the representative
claim. See Appeal Br. 6–13. These claims stand or fall together with respect
to the rejection based on Tracy and Casebolt. See id.; see also 37 C.F.R.
§ 41.37(c)(1)(iv).
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profile having a shape based at least in part on the surface energy of the wall
surface, the surface energy of the adjacent portion of the exterior surface of
the computing device, or a combination thereof” of claim 1 renders the claim
a product-by-process claim. Final Act. 4; see also Ans. 12–13. “If the
product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985). As a result, the Examiner finds that the recited footing is
taught because it is not structurally distinguished from the anti-skid footing
of Tracy shown in Figures 1, 2A, 2B, and 3 of Tracy. See Final Act. 4.
Appellant does not disagree with the Examiner’s interpretation that
claim 1 is a product-by-process claim. See Appeal Br. 9 (distinguishing
Tracy because “Tracy’s foot is not self-profiling and is not formed through a
process ‘based at least in part on the surface energy of the wall surface of a
recess in a computing device housing, the surface energy of the adjacent
portion of the exterior surface of the housing, or a combination thereof’”)
(emphasis added). Appellant’s argument that “Tracy’s foot . . . is not formed
through a process ‘based at least in part on the surface energy of the wall
surface of a recess in a computing device housing, the surface energy of the
adjacent portion of the exterior surface of the housing, or a combination
thereof” (Appeal Br. 9) is unpersuasive as it does not structurally distinguish
the prior art.
Appellant argues, for the first time in the Reply Brief that “the
structural shape of the claimed foot (e.g., the dome-shaped profile) is based
on and indeed results at least in part from particular physical properties of
the claimed housing (e.g., the surface energy of particular surfaces.” Reply
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Br. 7 (stating that Appellant “disagrees” with the Examiner’s interpretation
that claim 1 is a product-by-process claim). Appellant’s argument in the
Reply Brief contradicts the argument that Tracy’s foot differs from claim a
because it “is not formed through a process ‘based at least in part on the
surface energy of the wall surface of a recess in a computing device housing,
the surface energy of the adjacent portion of the exterior surface of the
housing, or a combination thereof’” in the principal Brief. Compare id.
(emphasis added), with Appeal Br. 9.
Appellant’s argument that “Tracy’s foot is not self-profiling” is
unpersuasive (Appeal Br. 9) because it is incommensurate in scope with
claim 1. Claim 1 requires only “a support pad comprising a self-profiling
thermoplastic material” which is taught or suggest by the outer portion 70 of
anti-skid foot 42 of Tracy which “comprises an elastomer material such as . .
. a thermoplastic elastomer . . . .” Tracy ¶ 8; see also Final Act. 3 (citing
Tracy ¶ 8 and finding that the foot in Tracy contains an elastomer material
such as thermoplastic).
Appellant’s argument that Tracy does not teach or suggest “the wall
defining a wall surface having a surface energy different than a surface
energy of the adjacent portion of the exterior surface of the computing
device” (Appeal Br. 9–10) is unpersuasive because it attacks Tracy
individually and does not address the Examiner’s obviousness rejection
which is based on the combined prior art teachings of both Tracy and
Casebolt. For example, the Examiner finds that Casebolt teaches that “[t]he
anodization process leaves the surface of the aluminum structural support
layer 212 [of a portable computing device 200] with high surface energy.”
Casebolt ¶ 50 (cited in Final Act. 3–4). “Non-obviousness cannot be
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established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant’s unelaborated argument that Tracy does not teach or
suggest “the self-profiling thermoplastic material of the first portion abutting
and adhering to the wall surface” as recited in claim 1 (Appeal Br. 10) is
unpersuasive because it does not adequately explain why the limitation
excludes the removable foot of Tracy. Appellant does not propose a
construction of the claim terms “abutting” or “adhering.” Appellant argues
that the “self-profiling thermoplastic material . . . adhering to the wall
surface” would change the principle of operation of the foot of Tracy which
is secured via a threaded member (id.) but does not explain why the term
“adhering to the wall” requires a particular method of attachment that
excludes the prior art threading method.
As the Examiner finds, “Tracy explicitly teaches ‘the shoulder and
corresponding walls surrounding the cavity substantially reduce a moment
arm of any force applied to the anti-skid foot in a direction substantially
parallel or planar to the support surface’” and that “Tracy additionally
teaches the wall portion abutting the ‘corresponding walls’ as being a
thermoplastic.” Ans. 14. Appellant does not dispute these prior art teachings.
See Reply Br. 3, 7 (stating that “the Examiner alleges that because Tracy’s
foot may touch the wall of its recess when a force is applied, it amounts to
‘adhering’ to the wall”). Appellant argues only that “Tracy in no way
describes or suggests adhesion of the foot to the wall surface of Tracy’s
recess.” Reply Br. 3, 7. A prior art reference can teach a claimed invention
even though it describes the claimed subject matter using different terms.
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See In re Schaumann, 572 F.2d 312, 317 (CCPA 1978) “([A]lthough
appellants would have us hold that Hildebrandt fails as an anticipation
because it does not contain a description of the subject matter of the
appealed claims, ipsissimis verbis, we cannot countenance a result which so
obviously [exalts] form over substance.”). Appellant’s argument therefore
does not identify reversible error in this aspect of the obviousness analysis.
Appellant’s argument that the cited portions of Casebolt do not
“describe local modification of the surface energy of the Casebolt’s
structural support layer (e.g., to produce different surface energies at
different locations on the structural support layer)” (Appeal Br. 12) is
unpersuasive because it again attacks Casebolt individually rather than
argument against the combined prior art teachings on which the obviousness
rejection is based. See Merck, 800 F.2d at 1097; see also Final Act. 4
(providing a rationale to combine the references and explaining that the
limitations at issue are taught or suggested by the combined prior art
teachings).
Appellant’s argument that combining Tracy with Casebolt would
change the principle of operation in Tracy such that the prior art foot is no
longer “removably couplable to a device via a threaded member” is
unpersuasive. Appeal Br. 12. “Combining the teachings of references does
not involve an ability to combine their specific structures.” In re Nievelt, 482
F.2d 965, 968 (CCPA 1973) (emphasis omitted). In any event, Appellant
provides no evidence that combining the prior art teachings would render
Tracy inoperable for its intended purpose. “Attorneys’ argument is no
substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed.
Cir. 1989). Moreover, Appellant’s argument is unpersuasive as it is
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incommensurate in scope with claim 1 requires only that “the wall defining a
wall surface having a surface energy different than a surface energy of the
adjacent portion of the exterior surface of the computing device” and not any
particular method in which the recited support pad is attached.
Appellant’s argument that the advantages in support of the
Examiner’s rationale to combine “is not needed by and is not relevant to the
disclosure of Tracy” (Appeal Br. 12) is unpersuasive because it does not
identify reversible error in the Examiner’s “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellant’s remaining arguments are unelaborated statements of
disagreement with the Examiner without sufficiently explaining why the
Examiner reversibly erred. We find them unpersuasive because “mere
statements of disagreement . . . do not amount to a developed argument.”
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir.
2006).
Claim 22
Claim 22 depends from claim 1 and additionally recites that “the base
portion is curved.”
Appellant argues that neither prior art references teaches or suggests a
curved base portion. Appeal Br. 13. Appellant, however, does not address
the Examiner’s finding that “the threaded member extends from the base of
the recess and would be included as a part of the base curves outward, thus
meeting the limitation of claim 22 such that the claim doesn’t describe how
the base is curved.” Compare Reply Br 2–13, with Ans. 15; compare Appeal
Br. 13, with Final Act. 6. The Examiner’s finding in support of the rejection
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of claim 22 is therefore unchallenged. Because the finding is reasonable and
the Appellant has not challenged it, we accept it as fact. See In re Kunzmann,
326 F.2d 424, 425 n.3 (CCPA 1964).
Moreover, we note that it has been generally held that ordinarily
changes in sizes of shapes of known elements are within the level of skill in
that art, especially in the absence of unexpected results or criticality. Cf.
Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (holding
that, where the only difference between the prior art and the claims was a
recitation of relative dimensions of the claimed device and a device having
the claimed relative dimensions would not perform differently than the prior
art device, the claimed device was not patentably distinct from the prior art
device); see also In re Dailey, 357 F.2d 669, 676 (CCPA 1966) (change in
shape ordinarily prima facie obvious). The rejection of claim 22 is sustained
for these reasons.
Claim 1 (Tracy & Silverman)3
In rejecting claim 1 over Tracy and Silverman, the Examiner finds
that the limitation “a second portion . . . defining a dome-shaped profile
having a shape based at least in part on the surface energy of the wall
surface, the surface energy of the adjacent portion of the exterior surface of
the computing device, or a combination thereof” of claim 1 renders the claim
a product-by-process claim. Final Act. 8; see also Ans. 12–13. “If the
product in a product-by-process claim is the same as or obvious from a

3 Appellant argues against the rejections of claims 1, 2, and 7 based on Tracy
and Silverman as a group, with claim 1 as the representative claim. See
Appeal Br. 14–15. These claims stand or fall together with respect to the
rejection based on Tracy and Silverman. See id.; see also 37 C.F.R.
§ 41.37(c)(1)(iv).
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product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” Thorpe, 777 F.2d at 697. As a
result, the Examiner finds that the recited footing is taught because it is not
structurally distinguished from the anti-skid footing of Tracy shown in
Figures 1, 2A, 2B, and 3 of Tracy. See Final Act. 7.
As with the rejection of claim 1 over Tracy and Casebolt, Appellant
does not disagree with the Examiner’s interpretation that claim 1 is a
product-by-process claim. See Appeal Br. 14–15. Appellant’s argument that
Silverman does not teach or suggest this limitation is unpersuasive as it does
not address the Examiner’s findings in support of the rejection.
Appellant’s argument that Silverman does not teach or suggest “the
wall defining a wall surface having a surface energy different than a surface
energy of the adjacent portion of the exterior surface of the computing
device” because “Silverman does not disclose forming a cosmetic finish
outside, but not inside, a recess (or vice versa)” (Appeal Br. 15) is
unpersuasive because it attacks the reference individually rather than the
prior art teaching as a whole on which the rejection is based. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” Merck, 800 F.2d at 1097.
Appellant also argues that individual teachings of Tracy and
Silverman do not teach or suggest “the wall defining a wall surface having a
surface energy different than a surface energy of the adjacent portion of the
exterior surface of the computing device.” Appellant argues that “Tracy’s
anti-skid foot 42 is attached to the housing 22 via threaded connections”
which does not teach this particular limitation. Appeal Br. 15. Appellant also
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argues that “Silverman suggests applying the layers of the cosmetic finish to
a cavity so that each feature of the non-cosmetic structure has a desired
cosmetic finish, which would produce the same surface energy inside and
outside the cavity.” Id. Appellant argues that the Examiner’s analysis that a
skilled artisan would have applied the anodized aluminum “to the visible
areas of the laptop housing” (Ans. 15) is based on impermissible hindsight.
Reply Br. 3, 10.
“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this case, the
preponderance of the evidence supports the Examiner’s findings and
analysis as the preponderance of the evidence shows that “a person of
ordinary skill can implement a predictable variation [of a known work].” See
KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a
predictable variation [of a known work], § 103 likely bars its
patentability.”).
Claim 15 (Tracy, Bleecher, & Fournand)4
In rejecting claim 1 over Tracy and Silverman, the Examiner finds
that the limitation “a first surface . . . having a dome-shaped profile with a

4 Appellant argues against the rejections of claims 15, 20, 25, and 26 based
on Tracy, Bleecher, and Fournand as a group, with claim 15 as the
representative claim. See Appeal Br. 16–20. These claims stand or fall
together with respect to the rejection based on Tracy, Bleecher, and
Fournand. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
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shape at least partially defined by the first surface energy” of claim 15
renders the claim a product-by-process claim. Final Act. 10; see also Ans.
12–13. “If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” Thorpe, 777 F.2d
at 697. As a result, the Examiner finds that the recited footing is taught
because it is not structurally distinguished from the anti-skid footing of
Tracy shown in Figures 1, 2A, 2B, and 3 of Tracy. See Final Act. 9.
Other than stating that Appellant “respectfully disagrees with the
assertion at page 10 of the Office action that the limitation ‘having a dome-
shaped profile with a shape at least partially defined by the first surface
energy’ does not appear to provide any further structural limitations to the
final product,” Appellant does not explain why the Examiner reversibly
erred here. Appeal Br. 18. Appellant’s argument is therefore unpersuasive as
“mere statements of disagreement . . . do not amount to a developed
argument.” SmithKline Beecham Corp., 439 F.3d at 1320. Appellant’s
remaining arguments with regard to Tracy are unpersuasive as they attack
the reference individually rather than address the combined prior art
teaching on which the rejection is based. See Merck, 800 F.2d at 1097.
Appellant’s arguments addressing the individual teachings of
Bleecher and Fournand (Appeal Br. 19–20) are unpersuasive for the same
reason that they do not address the combined prior art teaching on which the
rejection is based. See Merck, 800 F.2d at 1097.
Appellant’s argument that combining Tracy and Bleecher for
protection “against exposure to environmental factors such as dust or dirt”
(Appeal Br. 19 (citing Final Act. 9–10)) is unnecessary and unpersuasive
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because it does not identify reversible error in the Examiner’s rationale in
support of the rejection. “[I]nterrelated teachings of multiple patents; the
effects of demands known to the design community or present in the
marketplace; and the background knowledge possessed by a person having
ordinary skill in the art, all [can provide] an apparent reason to combine the
known elements in the fashion claimed.” KSR, 550 U.S. at 418.
Appellant’s argument that combining the physical structures of Tracy
and Bleecher “could interfere with the threading of Tracy’s foot onto
Tracy’s threaded member if the oleophobic coatings remains on the threads
of Tracy’s threaded member” (Appeal Br. 19) is unpersuasive for various
reasons. First and foremost, Appellant’s argument is unsupported by
evidence. Second, “[c]ombining the teachings of references does not involve
an ability to combine their specific structures.” Nievelt, 482 F.2d at 968
(emphasis omitted). Lastly, Appellant does not explain why the issue of
whether the Examiner’s proposed modification may or may not interfere
with how the prior art device may be constructed structurally distinguishes
the apparatus claim 15.

CONCLUSION
The Examiner’s rejections are affirmed.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5, 8,
9, 21, 22,
23
103 Tracy, Casebolt 1–3, 5, 8, 9,
21, 22, 23

1, 2, 7 103 Tracy, Silverman 1, 2, 7
15, 20, 25,
26
103 Tracy, Bleecher,
Fournand
15, 20, 25, 26
Overall
Outcome
1–3, 5, 7–9,
15, 20–23,
25, 26

TIME PERIOD FOR RESPONSE

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).
AFFIRMED