Ex Parte Acampora et al

Board of Patent Appeals and Interferences

Feb 17, 2009

10012751 (B.P.A.I. Feb. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS ACAMPORA and KEVIN SCOTT FETTERMAN
____________

Appeal 2007-3476
Application 10/012,751
Technology Center 2600
____________

Decided:1 February 18, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and MARC S.
HOFF, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2007-3476
Application 10/012,751

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 26-44, 47, and 56-62.2 Claims 45, 46, and 48-55 have
been indicated as containing allowable subject matter (App. Br. 1). We have
jurisdiction under 35 U.S.C. § 6(b), and we heard the appeal on February 3,
2009. We affirm-in-part.

STATEMENT OF THE CASE
Appellants invented a portable computer housing with improved
stiffness or rigidity in a palm rest region of the housing. To this end, a
stiffening plate is affixed to the inner surface of the housing in the palm rest
region.3 Claim 26 is illustrative:
26. A portable computer housing, comprising:

a bottom portion providing a bottom surface for said portable
computer housing;

a top portion providing a top surface for said portable computer
housing, said top surface having a palm rest region; and

a stiffener affixed to an inner surface of the palm rest region of said
top portion,

2 Although Appellants correctly indicate this claim status in the Appeal Brief
(App. Br. 1), Appellants incorrectly indicate that claims 26-56 were rejected
in the Reply Brief (Reply Br. 3). Furthermore, Appellants incorrectly allege
that claims 14-56 were finally rejected over the prior art references to
Howell and Rice (Reply Br. 4). The Examiner, however, did not rely on
Rice in the obviousness rejection on appeal, but rather on Howell and
Koichi. See Ans. 3-4. Nevertheless, we deem these errors harmless.
3 See generally Spec. 4:16−5:2; 15:6−17:5; Figs. 1, 5A, 5B.
2
Appeal 2007-3476
Application 10/012,751

wherein said top portion and said bottom portion are coupled together
to form said portable computer housing and wherein said stiffener operates
to provide stiffness to the palm rest region substantially beyond the stiffness
otherwise provided by said top portion, said palm rest region having a first
stiffness when it is only supported by a top surface, said palm rest region
having a second stiffness that is greater than the first stiffness when it is
supported additionally with the stiffener.

The Examiner relies on the following prior art references to show
unpatentability:
Howell US 6,096,984 Aug. 1, 2000
(filed Jan. 21, 1997)
Koichi4 JP 10-105313 A Apr. 24, 1998

The Examiner rejected claims 26-44, 47, and 56-62 under 35 U.S.C.
§ 103(a) as unpatentable over Howell and Koichi (Ans. 3-4).
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer5 for their respective details. In this

4 We refer to the official English-language translation of this document
(PTO Translation No. 08-0277, dated Oct. 2007) throughout this opinion.
Although the Examiner and Appellants refer to this reference as “Koichi,”
see, e.g., Ans. 3; App. Br. 6, this term actually corresponds to the first name
of the inventor, not the inventor’s surname. See Koichi, at 1 (listing inventor
as “Koichi Imahashi”). Nevertheless, we will adopt the parties’
nomenclature for clarity and consistency.
5 Throughout this opinion, we refer to (1) the Appeal Brief filed Sept. 22,
2006; (2) the Examiner’s Answer mailed Dec. 8, 2006; and (3) the Reply
Brief filed Feb. 8, 2007. Although the Examiner’s Answer includes the
name of only one conferee (not two) (Ans. 10-11), we deem this error
harmless as the Board can exercise its discretion when determining whether
a remand is appropriate in this circumstance. See MPEP § 1207.01 (“If the
examiner’s answer does not contain the appropriate indication that an appeal
conference has been held (i.e., including the names of the conferees and
identifying themselves as the conferees along with their initials), the Board
3
Appeal 2007-3476
Application 10/012,751

decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Howell teaches a portable computer housing
with every claimed feature except for the recited stiffening plate. The
Examiner, however, relies on the metal plate 13 of Koichi for this limitation
and concludes that ordinarily skilled artisans would have found it obvious to
modify Howell to include such a plate, including applying it to the palm rest
area of Howell’s computer housing (Ans. 3-7).
Regarding independent claim 26,6 Appellants argue that while Koichi
may disclose a “laminate state” and a metal plate, Koichi does not teach or
suggest reinforcing a computer housing with a stiffener. According to
Appellants, Koichi’s metal plate 13 is not attached to any part of the housing
of base member 2, let alone the palm rest region. Rather, Appellants
contend, Koichi’s plate only extends underneath the keyboard main body 11
(which is said to be not part of the housing) and, in any event, the plate is
used for heat conduction—not stiffness and strength (App. Br. 7-9).
Appellants add that there is no motivation to combine the references in the
manner proposed by the Examiner (App. Br. 8).

should return the application directly to the appropriate [Technology Center]
Director for corrective action.”) (emphasis added).
6 Although Appellants argue independent claims 26 and 31 separately, the
arguments presented for these two claims are nonetheless commensurate.
See e.g., App. Br. 9, 10; see also Reply Br. 5-7. We therefore consider these
claims together as a group and select claim 26 as representative. See 37
C.F.R. § 41.37(c)(1)(vii).
4
Appeal 2007-3476
Application 10/012,751

The issues before us, then, are as follows:

ISSUES
Under § 103, have Appellants shown that the Examiner erred in
combining the teachings of Howell and Koichi to arrive at the invention of
representative claim 26? This main issue turns on the following pivotal
issues:
(1) Have Appellants shown that the Examiner erred in finding that the
collective teachings of Howell and Koichi teach or suggest a stiffener
affixed to an inner surface of the palm rest region of the top portion of a
portable computer housing as claimed?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
Howell
1. Howell discloses a portable computer 101 with a lid portion 104, a
base portion 110 with a top side surface 111. The base portion’s top side
surface includes a keyboard 113 and a palm rest area 117 with a touchpad
attached thereto (Howell, col. 4, ll. 44-59; Fig. 1).
2. The portable computer’s base portion also includes a processor,
system or mother board, and memory (Howell, col. 4, l. 65−col. 5, l. 2).
5
Appeal 2007-3476
Application 10/012,751

3. Howell discloses a touchpad assembly with an opening 1003 in the
face plate 1001 to expose the operating surface 120 of the touchpad 400 to a
user (Howell, col. 8, ll. 44-51; Fig. 10).

Koichi
4. Koichi discloses a portable information processing device
comprising a “main body case” 2, a “display part” 1, and a keyboard 3
(Koichi, ¶ 0014; Fig. 1). As shown in Figure 1, the keyboard 3 occupies
only some of the surface area on the top portion of the main body case such
that there is a flat surface between the keyboard and the front edge of the
main body case. See Fig. 1.
5. The keyboard has a “keyboard main body” 11 with a metal plate
13 laminated over the entire keyboard main body (Koichi, ¶ 0016; Figs. 1,
2).
6. Alternatively, the metal plate can be “arranged close to the
keyboard main body without hindering the operation of any input key 12”
(Koichi, ¶ 0016).
7. Heat pipes 14, 15 are arranged on the metal plate 13 as heat
conducting members from one end of the keyboard main body 11 to the
other. The heat pipes are made of a material with good heat conductivity (a
metal, etc.) (Koichi, ¶¶ 0017, 0020; Figs. 1, 2).
8. “The heat pipes are fixed on metal plate 13 by being wound up in
[the] metal plate 13” (Koichi, ¶ 0017).
9. Koichi notes that a metal plate is usually installed on the bottom
surface of the keyboard main body in conventional keyboards to (1)
strengthen the portable information processing device, and (2) avoid
6
Appeal 2007-3476
Application 10/012,751

concentration of the heat generated by the electronic parts and make the heat
more uniform (Koichi, ¶ 0004; Figs. 3, 4).

Appellants’ Specification
10. Appellant’s Specification notes that “[a]lthough the stiffening
plate is preferably made from aluminum…any material that is substantially
rigid (e.g., providing stiffness), while being lightweight and relatively thin
may be used” (Spec. 15:25-27).
11. Pages 15 and 16 of the Specification and Figures 5A and 5B
disclose an embodiment of the invention where the stiffening plate 510
includes dimples 512 that increase the plate’s stiffness (Spec. 15:20−16:28;
Figs. 5A, 5B).
12. As shown in Figure 5B, these dimples have a depth 520 that
increases stiffness as the depth increases (Spec. 16:13-15; Fig. 5B).
13. According to the Specification:
[T]he dimples 512 are not a limitation and that other
manufacturing process [sic] that increases the strength of the
stiffening plate may be used. For example, a stamped
protrusion 522 may also be used in conjunction with the
dimples to form the corrugated like structure. Furthermore, a
formed edge 524 at the perimeter of the stiffening plate may
also be used to increase the stiffness of the stiffening plate.

(Spec. 16:22-28).
14. The Specification notes that, in one embodiment, the top portion
is formed from plastic (e.g., polycarbonate ABS) (Spec. 18:5-6).
15. According to the Specification, the stiffening plate is affixed to
the inner surface of the top portion with an adhesive which can be a two-part
epoxy (Spec. 17:29−18:3). But other types of adhesives can be used so long
7
Appeal 2007-3476
Application 10/012,751

as they form a laminate bond with good shear strength between the stiffener
and the top portion (Spec. 18:9-11).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 550
U.S. 398, 127 S. Ct. 1727 (2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
8
Appeal 2007-3476
Application 10/012,751

showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. Such a showing requires
‘some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness’. . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
An implicit motivation to combine references can exist “when the
‘improvement’ is technology-independent and the combination of references
results in a product or process that is more desirable, for example because it
is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more
efficient.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
“[T]he specification is the single best guide to the meaning of a
disputed term, and…acts as a dictionary when it expressly defines terms in
the claims or when it defines terms by implication.” Phillips v. AWH Corp.,
415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (internal quotation marks
and citations omitted).
Claim terms are “generally given their ordinary and customary
meaning.” Id. at 1312. And “the ordinary and customary meaning of a
9
Appeal 2007-3476
Application 10/012,751

claim term is the meaning that the term would have to a person of ordinary
skill in the art . . . .” Id. at 1313.
To determine the ordinary meaning of commonly understood words, it
is entirely appropriate to cite a dictionary definition. Agfa Corp. v. Creo
Products, Inc., 451 F.3d 1366, 1376 (Fed. Cir. 2006).
Reciting how a product is made does not further limit the structure of
the product itself. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)
(citations omitted). However, structure can be implied by the recited process
steps, especially where the (1) the product can only be defined by the
process steps by which the product is made, or (2) the process steps would
be expected to impart distinctive structural characteristics to the final
product. See, e.g., In re Garnero, 412 F.2d 276, 279 (CCPA 1969); see also
MPEP § 2113.

ANALYSIS
Claims 26, 31, and 62
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 26 which calls for, in pertinent
part, a stiffener affixed to an inner surface of the palm rest region of the top
portion of a portable computer housing.
First, although Koichi’s metal plate 13 is used in conjunction with
attached heat pipes to conduct heat (FF 7), this heat transfer purpose by no
means obviates the inherent stiffening properties that such an underlying
metal plate would provide to the structure to which it was affixed. Indeed,
Koichi all but confirms this point in its discussion of a similar metal plate
used in conventional keyboards. See FF 9 (noting that the metal plate on the
10
Appeal 2007-3476
Application 10/012,751

bottom of the keyboard main body (1) strengthens the portable information
processing device, and (2) avoids concentration of heat generated by the
electronic parts) (emphasis added).
It is true that Koichi’s metal plate 13 is laminated over the keyboard
main body (FF 5) and appears to be limited to that region in Figures 1 and 2
(See id.). But Koichi also notes that it could also be arranged close to the
keyboard main body without hindering the operation of any input key (FF
6). Koichi does not further specify exactly where the plate can be located in
this alternative, but this passage nevertheless suggests that the plate can be
arranged differently from the other option (i.e., laminating the plate over the
entire keyboard main body (FF 5)).
We see no reason why such an alternative arrangement could not
include affixing the plate to at least part of Koichi’s housing structure (i.e.,
the “main body case” 2). We reach this conclusion emphasizing that the top
portion of this housing structure (and its associated “palm rest region”) is
directly adjacent to, and essentially coplanar with, the keyboard main body.
See FF 4 and 5. In short, skilled artisans would have recognized that the
plate in Koichi could be affixed to at least part of the top portion of the
housing structure yet remain sufficiently “close” to the keyboard main body
to achieve its heat transfer function (and concomitant stiffening properties).
Although not labelled as such, this housing structure would include a “palm
rest region” in view of the substantial flat surface area between the keyboard
and the front edge of the housing. See FF 4.
In any event, we see no error in the Examiner’s position based on
modifying Howell to essentially reinforce the palm rest area 117 with an
underlying metal plate in light of the teachings of Koichi. Howell, like
11
Appeal 2007-3476
Application 10/012,751

Koichi, discloses a keyboard and palm rest area that occupies some of the
top portion of the housing. Compare FF 1 with FF 4. Based on the record
before us, we see no reason why skilled artisans could not have likewise
affixed an underlying metal plate to the inner surface of the base portion’s
top surface of Howell’s computer such that the plate was in the palm rest
region. Such an improvement would yield several mechanical advantages
including, among other things, strengthening the structure and more
uniformly distributing the heat generated by the internal components housed
within the base portion. See FF 2 (noting that there are electronic
components within the base portion in Howell); see also FF 9 (noting that
the metal plate in Koichi not only distributes the heat generated by electronic
components, but also strengthens the structure).
Furthermore, stiffening the palm rest region in this manner amounts to
a technology-independent improvement whose mechanical advantages in
terms of increased strength and improved heat transfer would have been
readily apparent to skilled artisans. See DyStar, 464 F.3d at 1368. Given
that Koichi indicates that the portable information processing device (e.g., a
computer) can be strengthened by installing a metal plate to the keyboard
body’s bottom surface (FF 9), skilled artisans would recognize that such an
improvement would likewise improve similar devices (i.e., a computer
housing) in the same way, namely by affixing plates to the housing (e.g.,
including the palm rest region). This improvement would have been well
within the level of ordinarily skilled artisans, and there is nothing on this
record proving otherwise. See KSR, 127 S. Ct. at 1727 (“[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
12
Appeal 2007-3476
Application 10/012,751

using the technique is obvious unless its actual application is beyond his or
her skill.”).
For these reasons, we find no error in the Examiner’s combining the
teachings of Howell and Koichi to arrive at the invention of claim 26—a
position that is supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
Accordingly, since Appellants have not persuaded us of error in the
Examiner’s rejection of representative claim 26, we will sustain the
Examiner’s rejection of that claim, and claim 31 which falls with claim 26.
We will also sustain the Examiner’s rejection of claim 62 for similar
reasons.

Claims 27 and 37
We will also sustain the Examiner’s rejection of claim 27 which calls
for an aluminum stiffener. We agree with the Examiner (Ans. 7) that
aluminum would have been an obvious material to use for Koichi’s plate
since, among other things, it is heat conductive and rigid. The fact that
aluminum may have additional heat transfer properties inherent to the
material does not detract from its use as a stiffening material and, any event,
ordinarily skilled artisans would have recognized that aluminum has other
mechanical advantages in terms of its relative light weight, rigidity, and that
it can be easily formed.7 Thus, using aluminum for the stiffening plate
would also constitute a technology-independent improvement that would
have been an obvious variation. See DyStar, 464 F.3d at 1368. In any

7 See, e.g., Spec. 17:3-4 (“[A]s is appreciated by those skilled in the art,
[a]luminum can be easily formed (e.g., coining or stamping)….”).
13
Appeal 2007-3476
Application 10/012,751

event, we note that Appellant’s Specification suggests that using aluminum
is not critical since any other rigid, lightweight, and relatively thin material
can be used for the stiffening plate. See FF 10.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claim 27. Therefore, we will sustain the
Examiner’s rejection of that claim, and claim 37 which recites
commensurate limitations.

Claim 28
We reach a similar conclusion regarding claim 28 which calls for the
computer housing’s top and bottom portions to be formed from plastic.
While the cited references do not explicitly state that plastic is used as the
material for the computer housing, ordinarily skilled artisans would
nonetheless recognize that forming the computer housing’s top and bottom
portions from plastic would have been an obvious variation in terms of,
among other things, plastic’s relative light weight, durability, moldability,
and relatively low cost. As such, using plastic for the housing would
therefore constitute a technology-independent improvement to achieve these
benefits and therefore would constitute an obvious variation. See DyStar,
464 F.3d at 1368. Nor is there any evidence on this record proving that
affixing an aluminum plate to a plastic housing would have been beyond the
level of ordinarily skilled artisans.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claim 28. Therefore, we will sustain the
Examiner’s rejection of that claim.

14
Appeal 2007-3476
Application 10/012,751

Claim 29
We will also sustain the Examiner’s rejection of claim 29 which calls
for the stiffener to be a plate. For the reasons indicated in connection with
claim 26, we find ample reason on this record for the stiffener to be a
plate—a term that is actually used by Koichi to denote the metal plate. See
FF 5-9. Appellants’ argument regarding the prior art’s failure to teach that
the stiffener is made of aluminum (Reply Br. 9) is not commensurate with
claim 29 which does not require aluminum. In this regard, we note that
claim 29 does not depend from claim 27 (reciting aluminum), but rather
claim 26.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claim 29. Therefore, we will sustain the
Examiner’s rejection of that claim.

Claims 30 and 36
We will also sustain the Examiner’s rejection of claim 30 which calls
for the stiffener to have dimples across a substantial portion of its surface to
improve stiffness. Appellants argue that Koichi’s metal plate is flat with no
dimples and that the heat pipes 14 and 15 are not dimples (App. Br. 10).
The Examiner takes the position that providing such a feature in Koichi’s
metal plate merely constitutes a change in form or shape and therefore an
“obvious engineering choice” (Ans. 8).
The issue before us, then, is whether Appellants have shown that the
Examiner erred in finding that including dimples across a substantial portion
of the surface of Koichi’s metal plate to improve stiffness constitutes an
obvious engineering choice.
15
Appeal 2007-3476
Application 10/012,751

In deciding this question, we first construe the key term in the claim:
“dimples.” In so doing, we initially consult Appellants’ Specification as it is
the single best guide in interpreting disputed claim terms. See Phillips, 415
F.3d at 1321. Pages 15 and 16 of the Specification and Figures 5A and 5B
disclose an embodiment of the invention where the stiffening plate 510
includes dimples 512 that increase the plate’s stiffness (FF 11). As shown in
Figure 5B, these dimples have a depth 520 that, according to the
Specification, increases stiffness as the depth increases (FF 12).
While this description certainly illuminates what Appellants envision
as constituting a “dimple,” it does not explicitly or implicitly define the term
so as to give it a special meaning. We therefore construe the term with its
ordinary and customary meaning in light of this description. See Phillips,
415 F.3d at 1312-13. In so doing, we consult a dictionary definition of the
term. See Agfa, 451 F.3d at 1376 (noting that general purpose dictionaries
may be helpful when claim construction involves “little more than the
application of widely accepted meaning of commonly understood words”).
The term “dimple” is defined, in pertinent part, as “[a] slight
indentation on any surface”8—a definition that reasonably comports with the
Specification’s description of dimples.
Turning to Koichi, we note that while the metal plate 13 is flat along
most of its surface, it is not entirely flat. As shown in Figure 1, the plate is
wound in a circular fashion at both ends to accommodate the heat pipes 14
and 15. See FF 7; see also FF 8 (noting that the heat pipes are fixed on

8 Webster’s Revised Unabridged Dictionary, G & C. Merriam Co. (Noah
Porter, ed.) (1913), available at
http://machaut.uchicago.edu/?resource=Webster%27s&word=dimple&use19
13=on.
16
Appeal 2007-3476
Application 10/012,751

metal plate 13 by being wound up in the metal plate 13) (emphasis added).
This winding of the heat pipes 14 and 15 at the plate’s ends essentially forms
rounded protrusions on the edges of the plate which is shown in the enlarged
reproduction of Figure 1 of Koichi below:

Enlarged Reproduction of Figure 1 of Koichi Showing Winding the
Heat Pipes in the Metal Plate

Despite this plate structure having rounded protrusions at its edges
which would impart at least some degree of additional rigidity to the plate,
the plate nevertheless does not comprise dimples or indentations in its
surface. Nor are we persuaded by the Examiner’s position (Ans. 8) that
17
Appeal 2007-3476
Application 10/012,751

providing such dimples would merely constitute an obvious engineering
choice as a mere change in form or shape. As noted above, these dimples
are not merely cosmetic, but rather impart definite, tangible mechanical
advantages by virtue of their indented structure. See FF 11-12.
That said, however, the lack of dimples in Koichi’s plate is not
dispositive. Crucially, Appellants’ Specification expressly states that “the
dimples 512 are not a limitation and that other manufacturing process[es]
that increase[] the strength of the stiffening plate may be used” (FF 13)
(emphasis added). In this regard, the Specification provides examples in the
form of a stamped protrusion 522 and a formed edge 524 at the plate’s
perimeter to increase stiffness (Id.).
Based on this clear indication that alternative structures can be used in
lieu of dimples to enhance stiffening of the plate, we find that dimples are
therefore not critical to achieve this function. As such, we find that the
rounded protrusions or edges of the metal plate 13 in Koichi (FF 8) would
impart at least some additional rigidity or stiffness to the plate. Therefore,
improving stiffness via this formed edge structure in Koichi in lieu of
dimples would have been an obvious modification in light of the
Specification.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claim 30. Therefore, we will sustain the
Examiner’s rejection of that claim, and claim 36 which recites
commensurate limitations.

18
Appeal 2007-3476
Application 10/012,751

Claims 32-35
We will also sustain the Examiner’s rejection of claims 32-35 which
call for various structural features of the computer housing and stiffening
plate. At the outset, our previous discussion pertaining to claims 26 and 31
applies equally here and we therefore incorporate that discussion by
reference.
Regarding claims 32 and 33, we find the housings in Howell and
Koichi not only disclose base portions, but they also contain an aperture for
receiving a keyboard. See FF 1 and 4. We further find that Howell teaches
an opening for receiving a track pad as claimed in claim 34 (FF 3).
Regarding claim 35, we further note that ordinarily skilled artisans
would have ample suggestion on this record to extend the plate attached to
Howell’s housing to be coextensive with the entire top side surface of the
base portion 110 including the region of the touchpad 119. As such,
providing an opening in the plate to receive the touchpad so that it was
accessible via the exterior of the housing would have been well within the
level of ordinarily skilled artisans. That Howell provides such an opening in
the face plate of the touchpad assembly for this very purpose (FF 3) only
bolsters our conclusion.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claims 32-35. Therefore, we will sustain the
Examiner’s rejection of those claims.

Claims 38 and 61
We will also sustain the Examiner’s rejection of claims 38 and 61
which call for, in pertinent part, coupling the stiffening plate to the top
19
Appeal 2007-3476
Application 10/012,751

portion via an adhesive (claim 38) whereby the stiffening plate and the top
portion form a single monolithic member (claim 61). While Koichi does not
expressly indicate that an adhesive is used to bond the metal plate 13 to the
keyboard main body, Koichi does state that the metal plate is laminated over
the entire keyboard main body (FF 5) (emphasis added). Based on this
teaching, ordinarily skilled artisans would readily understand that using
adhesives to achieve this lamination would have been an obvious
implementation to bond the plate to the keyboard’s main body. As such,
applying this technique to attach the plate to Howell’s housing as noted
previously, the resulting bonded structure would therefore constitute a
“single monolithic member” with the requisite supporting strength as
claimed in claim 61.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claims 38 and 61. Therefore, we will sustain
the Examiner’s rejection of those claims.

Claims 39 and 40
We will not, however, sustain the Examiner’s rejection of claim 39
which calls for, in pertinent part, the stiffening plate being bonded to the
inner surface of the top portion at the dimples.
We note at the outset that this limitation is a product-by-process
limitation since it recites how the structure was formed which, as a general
proposition, does not further limit the structure of the product itself. Thorpe,
777 F.2d at 697. But we also must consider structure implied by the recited
process steps, especially where the (1) the product can only be defined by
the process steps by which the product is made, or (2) the process steps
20
Appeal 2007-3476
Application 10/012,751

would be expected to impart distinctive structural characteristics to the final
product. See, e.g., Garnero, 412 F.2d at 279; see also MPEP § 2113.
Here, the recited bonding limitation would impart distinctive
structural characteristics to the final product, namely the stiffening plate.
While we found that including dimples is not critical to the invention to
increase stiffness in connection with claims 30 and 36, claim 39 requires
bonding the stiffening plate at the dimples. As such, this feature actually
requires the dimples to be present on the plate to perform the requisite
bonding to the top portion of the housing—a technique that would therefore
impart a distinctive structural characteristic to the product. Since Koichi’s
plate does not have dimples, it follows that the plate would therefore not be
bonded at these dimples. Nor would such a product have been obvious to
ordinarily skilled artisans based on the record before us.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner’s rejection of representative claim 39. Therefore, we will not
sustain the Examiner’s rejection of that claim, and claim 40 for similar
reasons.

Claim 41
We will also sustain the Examiner’s rejection of claim 41 which calls
for, in pertinent part, a stiffening plate configured to help strengthen the
weak points of the housing, the plate affixed to an inner surface of the
housing with an adhesive to form a laminate structure. We are not
persuaded of error in the Examiner’s rejection of this claim essentially for
the reasons indicated previously with respect to claims 26, 31, 38, and 61.
Our previous discussion in connection with those claims applies equally here
21
Appeal 2007-3476
Application 10/012,751

and we therefore incorporate that discussion by reference. We add that the
recitation of “weak points where the housing has limited structure and
support” is quite broad (and somewhat subjective) and is fully met by the
housing structure of the cited prior art.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claim 41. Therefore, we will sustain the
Examiner’s rejection of that claim.

Claims 42-44
We will also sustain the Examiner’s rejection of claims 42-44 which
call for, in pertinent part, the housing and stiffening plate to be formed from
different materials, namely polycarbonate or ABS plastic and aluminum,
respectively. We are not persuaded of error in the Examiner’s rejection of
these claims essentially for the reasons indicated previously with respect to
claims 27, 28, and 37. Our previous discussion in connection with those
claims applies equally here and we therefore incorporate that discussion by
reference.
Regarding claim 44, we also see no criticality in the particular plastic
materials recited for the housing (polycarbonate or ABS plastic) in light of
the Specification’s indication that these are merely exemplary materials. See
FF 14 (noting the term “e.g.” used in connection with these materials). As
such, selecting these specific types of plastics (or any other suitable plastics)
would have been within the level of ordinarily skilled artisans.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claims 42-44. Therefore, we will sustain the
Examiner’s rejection of those claims.
22
Appeal 2007-3476
Application 10/012,751

Claim 47
We will also sustain the Examiner’s rejection of claim 47 which calls
for, in pertinent part, a two-part epoxy to form the bond between the
stiffening plate and the housing. As we indicated previously in connection
with claim 28, we find no evidence on this record proving that affixing an
aluminum plate to a plastic housing would have been beyond the level of
ordinarily skilled artisans. Nor are we persuaded that achieving this bond
via an adhesive would have been beyond this skill level as we indicated
previously with respect to claims 38 and 61.
We reach the same conclusion regarding using a two-part epoxy to
achieve this end. That Appellants’ Specification indicates that these and
other types of adhesives could be used for the bond between the stiffener and
the top portion of the housing (FF 15) only bolsters our conclusion that a
two-part epoxy is not critical so long as the requisite laminate bond is made
between the different materials yet has adequate shear strength. In short, the
particular type of epoxy used for this purpose would have been well within
the level of ordinarily skilled artisans.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claim 47. Therefore, we will sustain the
Examiner’s rejection of that claim.

Claim 56
We will also sustain the Examiner’s rejection of claim 56 which calls
for, in pertinent part, the stiffening plate including (1) a platform that is
attached to the palm rest area, and (2) one or more extensions that are
23
Appeal 2007-3476
Application 10/012,751

attached to portions of the top member that surround an opening in the top
member for placement of a keyboard.
First, as we indicated previously in connection with claims 26 and 31,
both Howell and Koichi disclose computer housings with a keyboard and
palm rest area that occupies some of the top portion of the housing.
Compare FF 1 with FF 4. And as we noted previously in connection with
claim 35, ordinarily skilled artisans would have ample suggestion on this
record to extend the plate attached to Howell’s housing to be coextensive
with the entire top side surface of the base portion 110, including the palm
rest area (i.e., a “platform” attached to the palm rest area). As such,
providing an opening in the plate to accommodate the keyboard so that it
was accessible via the exterior of the housing would have been well within
the level of ordinarily skilled artisans.
We further note that nothing in the claim precludes the recited
“extensions” from reading on the rounded protrusions on Koichi’s metal
plate formed by winding the plate around the heat pipes 14 and 15 at the
plate’s edges. See FF 8; see also our previous discussion in connection with
claims 30 and 36. As such, the plate and its “extensions” would be attached
to portions of the top member that surround the opening.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claim 56. Therefore, we will sustain the
Examiner’s rejection of that claim.

Claims 57 and 58
We will also sustain the Examiner’s rejection of claims 57 and 58
which call for, in pertinent part, the housing’s weak points to include the
24
Appeal 2007-3476
Application 10/012,751

palm rest region (claim 57), and (2) for the stiffening plate to have a shape
that substantially coincides with the palm rest region (claim 58). Our
previous discussion in connection with claims 26, 31, and 41 applies equally
here and we therefore incorporate that discussion by reference. And as we
indicated with respect to claim 41, the recited “weak points where the
housing has limited structure and support” including the palm rest region is
quite broad (and somewhat subjective) and is fully met by the housing
structure of the cited prior art with its associated palm rest regions. See FF 1
and 4.
Also, while we find the plate attached to Howell’s housing can be
coextensive with the entire top side surface of the base portion 110 including
the palm rest area as we noted previously, we also find that substantially
matching the respective shapes of the stiffening plate and the palm rest
region would have likewise been a predictable variation. Such a variation
would, among other things, conserve materials and therefore lower cost (and
weight) by applying the plate to only those areas of the housing with the
greatest needs for additional strength and heat transfer.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claims 57 and 58. Therefore, we will sustain
the Examiner’s rejection of those claims.

Claims 59 and 60
We reach the same conclusion with respect to claim 59 which calls
for, in pertinent part, the housing’s weak points to include sections around a
storage drive or keyboard contained within the housing. Claim 60 differs
from claim 59 in not only calling for both of these weak points, but also
25
Appeal 2007-3476
Application 10/012,751

reciting that the weak points additionally include a palm rest region, and
affixing the stiffening plate to all of these regions.
For the reasons indicated previously, not only can the plate attached to
Howell’s housing be coextensive with the entire top side surface of the base
portion 110 including the palm rest area, but we also find that applying the
plate to discrete areas (e.g., to those areas of the housing with the greatest
needs for additional strength and heat conduction) would have likewise been
a predictable variation. That Howell’s base portion contains key computer
components (FF 2) only bolsters our conclusion that skilled artisans could
likewise apply the plate to a given area of the base portion associated with
key computer components.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claims 59 and 60. Therefore, we will sustain
the Examiner’s rejection of those claims.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
26-38, 41-44, 47, and 56-62 under § 103. Appellants, however, have shown
that the Examiner erred in rejecting claims 39 and 40 under § 103.

ORDER
The Examiner’s decision rejecting claims 26-44, 47, and 56-62 is
affirmed-in-part.
26
Appeal 2007-3476
Application 10/012,751

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-IN-PART

ELD

BEYER LAW GROUP LLP/APPLE INC.
P.O. BOX 1687
CUPERTINO, CA 95015-1687
27