Ex Parte Ali et al

Patent Trial and Appeal Board

May 16, 2014

11799271 (P.T.A.B. May. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VALIUDDIN Y. ALI,
JEFFREY A. LEV, PAUL J. DOCZY,
and JEFFREY C. PARKER
____________

Appeal 2012-006090
Application 11/799,271
Technology Center 2800
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006090
Application 11/799,271
2
On March 1, 2011, the Examiner finally rejected claims 1-23 of
Application 11/799,271 under 35 U.S.C. § 103(a) as obvious. Appellants1
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’271 Application describes a biometric module, such as a
fingerprint scanner. Spec. ¶ 0001. The disclosed module is designed to
reduce the incidence of accidental or inadvertent scanning and to protect the
module from electrostatic discharge. Id.
Claim 1 is representative of the ’271 Application’s claims and is
reproduced below:
1. An electronic device, comprising:
a biometric module that captures a fingerprint and includes:
a frame;
a hood movable in the frame and having a first electrical
contact on one surface and a sensor on another surface;
a biasing element that biases the hood toward a working
surface of the electronic device; and
a circuit board electrically coupled to the sensor, wherein
the circuit board provides power to the sensor in response
to downward movement of the hood away from the
working surface and engagement of the first electrical
contact with a second electrical contact.
(App. Br. 19 (Claims App’x).)

1 Hewlett-Packard Development Co., LP, is identified as the real party in
interest. (App. Br. 2.)
Appeal 2012-006090
Application 11/799,271
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Houdeau.2 (Ans. 4.)
2. Claims 3 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Houdeau and Huang.3 (Ans.
5.)
3. Claim 6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Houdeau and Slevin.4 (Ans.
6.)
4. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Houdeau and Silfverberg.5 (Ans. 7.)
5. Claims 11-18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Houdeau, Slevin, and Huang.
(Ans. 8.)
6. Claims 19-21, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Houdeau and Slevin. (Ans.
11.)

2 U.S. Patent No. 6,522,773 B1, issued Feb. 18, 2003.
3 U.S. Patent Application Publication No. 2008/0187191 A1, published Aug.
7, 2008.
4 U.S. Patent Application Publication No. 2007/0146117 A1, published June
28, 2007.
5 U.S. Patent Application Publication No. 2005/0181828 A1, published Aug.
18, 2005.
Appeal 2012-006090
Application 11/799,271
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7. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Houdeau, Slevin, and Huang. (Ans. 12.)
DISCUSSION
This appeal can be resolved by consideration of a single question:
Did the Examiner reversibly err in finding that Houdeau describes or
suggests the claimed hood, electrical contact on the surface of the hood, and
biasing element? Because we answer this question in the affirmative, we
reverse the rejections of claims 1-23.
We begin by construing the terms “hood,” “electrical contact,” and
“biasing element” as used in the ’271 Application’s claims.6 During
examination, claim terms are given their broadest reasonable construction
consistent with the Specification. In general, words used in a claim are
accorded their ordinary and customary meaning. Honeywell Int’l Inc. v.
Universal Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007).
Our review of the ’271 Application’s Specification indicates that the
claimed electrical contacts are specific structures located on the bottom of
the hood and on the circuit board. See, e.g., Spec. ¶ 0009; Figs. 2A-2D.
Similarly, the Specification also describes the biasing element as a structure
that is separate from the claimed hood. Id. at ¶ 0008; Figs. 2A-2D.

6 Generally, the same word is to be given the same meaning when it appears
in multiple claims. Rexnord Corp. v. Laitram Corp. 274 F.3d 1336, 1342
(Fed. Cir. 2001) (“[A] claim term should be construed consistently with its
appearance in other places in the same claim or in other claims of the same
patent.”); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed.
Cir. 1997) (“[W]e are obliged to construe the term ‘elasticity’ consistently
throughout the claims.”).
Appeal 2012-006090
Application 11/799,271
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The Examiner, however, concluded that a single component could
simultaneously serve as part of the hood, an electrical contact, and the
biasing element. (Ans. 5-6, 8, 11.) The Examiner argues that it would have
been obvious to a person of ordinary skill in the art to separate the single,
multi-functional element described in Houdeau into the three distinct
elements required by the ’271 Application’s claims. (Ans. 13-14.) As
explained by Appellants (Reply Br. 4-5), the Examiner’s reliance on MPEP
§ 2144.04(V)(C) as supporting this argument is misplaced.
Furthermore, the Examiner neither finds nor argues that any of the
other references cited in the various rejections remedies this deficiency.
The Examiner, therefore, has not established a prima facie case of
obviousness with respect to the ’271 Application’s claims. We reverse the
rejections of claims 1-23 as obvious over Houdeau alone or in combination
with the other asserted references.
CONCLUSION
For the reasons set forth above, we reverse the Examiner’s rejections
of claims 1-23 of the ’271 Application.

REVERSED

cdc