Ex Parte Fry et alDownload PDFPatent Trial and Appeal BoardJan 31, 201311789671 (P.T.A.B. Jan. 31, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WALTER G. FRY and JEFFREYA. LEV ____________________ Appeal 2011-001216 Application 11/789,6711 Technology Center 2600 ____________________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed Apr. 24, 2007. The real party in interest is Hewlett- Packard Development Company, L.P.. (App. Br. 2.) Appeal 2011-001216 Application 11/789,671 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-25 which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants’ invention relates to an electronic device and imaging device that facilitates mounting of imaging device in use and stored orientations such that when in a desired use orientation, the lens of imaging device is usable and when in the stored orientation, lens of imaging device is disposed within recessed area of housing to protect and/or reduce the likelihood of damage to imaging device. (Spec. 6, ¶ [0016].)2 Representative Claim Independent claim 1, reproduced below, with disputed limitations italicized, further illustrates the invention: 1. An electronic device with a variably positionable imaging device, comprising: a housing having a recessed area for receiving the imaging device therein, the imaging device being disposed within a periphery of the housing when disposed in the recessed area, the imaging device removable from the recessed area and insertable in the recessed area with a lens of the imaging device disposed in each of at least two orientations, wherein each of the at least two orientations has two exterior surfaces flush with the housing. 2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”) filed May 17, 2010; and Reply Brief (“Reply Br.”) filed Sep. 22, 2010. We also refer to the Examiner’s Answer (“Ans.”) mailed Jul. 22, 2010. Appeal 2011-001216 Application 11/789,671 3 Rejections on Appeal 1. The Examiner rejects claims 1-24 under 35 U.S.C. § 103(a) as being unpatentable over Shibuya (U.S. Patent No.7,019,784 B1, issued Mar. 28, 2006) and Kishida (U.S. Patent No. 6,933,981 B1, issued Aug. 23, 2005). 2. The Examiner rejects claim 25 under 35 U.S.C. § 103(a) as being unpatentable over Silvester (U.S. Patent No. 6,812,958 B1, issued Nov. 2, 2004), and Griencewic (U.S. Patent No. 5,801,919, issued Sep. 1, 1998). ISSUES Based on our review of the administrative record, Appellants’ contentions, and the Examiner’s findings and conclusions, the issues before us follows: 1. Under § 103, did the Examiner err in concluding that the combination of Shibuya and Kishida collectively would have taught or suggested an “imaging device is] removable from the recessed area and insertable in the recessed area with a lens of the imaging device disposed in each of at least two orientations” (claim 1), within the meaning of Appellants’ claim 1 and commensurate limitations of claims 11 and 20? 2. Under § 103, did the Examiner err in concluding that the combination of Silvester and Griencewic collectively would have taught or suggested “the imaging device usable while located in the recessed area and while the first housing is in a closed position Appeal 2011-001216 Application 11/789,671 4 relative to the second housing” (claim 25), within the meaning of independent claim 25? FINDINGS OF FACT We adopt the Examiner’s findings in the Answer and the Final Office Action as our own. ANALYSIS Based on Appellants’ arguments (App. Br. 12-14), we select independent claim 1 and 25 as representative of Appellants’ arguments and groupings with respect to claims 1-24 and 25 respectively. Claims 1-24 Appellants contend, inter alia, that: Th[e] teaching [of Kishida] is contrary to claim 1 which recites that the imaging device is removable from the recessed area and insertable in the recessed area with a lens of the imaging device disposed in each of at least two orientations. By contrast, Kishida teaches that the imaging device is removable from the recessed area and insertable in the recessed area with a lens of the imaging device disposed in a single orientation (i.e., the orientation with hook 64 engaging hole 72). Kishida never teaches or even suggests an alternate mechanism to remove and insert the camera to the computer with the lens of the camera disposed in at least two orientations. In Kishida, when the camera is removed from the computer or inserted into the computer, the lens is in the same orientation. Thus, Kishida teaches the lens in a single orientation, which is contrary to claim 1. (App. Br. 12-13.) We note, however, that the Examiner cited Shibuya, not Kishida, to teach or suggest the claimed limitation argued above by Appellants. (Ans. Appeal 2011-001216 Application 11/789,671 5 3-4, 17.) Specifically, the Examiner relied upon Kishida to teach or suggest an imaging device that is removable and insertable into a recessed area (Ans. 4) and Shibuya to teach or suggest the imaging device disposed in each of at least two orientations (Ans. 3-4, 17; Shibuya, Figs. 8A, 8B). We agree with and adopt these findings and this reasoning as our own. Appellants fail to appreciate what the combination of Shibuya and Kishida collectively would have taught or suggested. Appellants’ individual attack of Kishida is unavailing because the arguments are not responsive to the Examiner’s specific findings and, therefore, are ineffective to rebut the Examiner’s prima facie case of obviousness.3 Based on this record, we conclude that the Examiner did not err in concluding that the cited references, collectively, would have taught or suggested the limitations recited in representative claim 1. Regarding claim 2, Appellants assert that Kishida fails to teach the limitations recited in claim 2. (App. Br. 13.) However, similar to claim 1, the Examiner relied on Shibuya to teach or suggest the limitations of claim 2. (Ans. 4-5.) Therefore, we find Appellants’ individual attack of Kishida unavailing. Appellants did not separately argue the patentability of claims 3-24 with particularity. (App. Br. 13.) Thus, based on this record, we conclude that the Examiner did not err in rejecting claims 1-24. Accordingly, we affirm the Examiner’s obviousness rejection of claims 1-24 for the reasons discussed above. 3 “Non-obviousness cannot be 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) (citing In re Keller, 642 F.2d 413, 425-426 (C.C.P.A. 1981). Appeal 2011-001216 Application 11/789,671 6 Claim 25 Appellants argue that the cited references fail to teach or suggest that “the image device is usable while located in the recessed area and while the first housing is in a closed position relative to the second housing.” (App. Br. 14.) Appellants assert Griencewic teaches that “when the display is in the closed position and the camera is located in the storage position . . . , then the lens of the camera is obscured by the body of the computer.” (Id. (emphasis added).) The Examiner found, however, that Griencewic teaches that the camera assembly functions even when in the closed (storage) position. (Ans. 18; Griencewic, col. 4, ll. 33-37.) Further, the Examiner explains that, contrary to Appellants’ assertion, the claimed “closed position” was not interpreted as referencing the display of Griencewic being closed. (Ans. 18.) We agree with and adopt the Examiner’s findings and this reasoning as our own. Griencewic explains that “lens assembly 68 is still exposed when camera assembly 26 is in the storage position, thus permitting the camera assembly to function and video an intended subject even when in the storage position.” (Griencewic, col. 4, ll. 33-37; see Figs. 2-4, 6.) Accordingly, we conclude that Griencewic in combination with Silvester would have at least suggested a functional (usable) image device in a recessed area when a first housing (display) is in a closed position relative to a second housing (body). Thus, based on this record, we conclude that the Examiner did not err in rejecting claim 25. Accordingly, we affirm the Examiner’s rejection of claim 25. Appeal 2011-001216 Application 11/789,671 7 Reply Brief Appellants argue for the first time that the cited references fail to teach or suggest each of the at least two orientations has two exterior surfaces flush with the housing. (Reply Br. 2-3.) We note that the Reply Brief is properly used to respond to points of argument raised by the Examiner in the Answer and not as a means for presenting new arguments. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“informative”) (absent a showing of good cause, the Board is not required to address arguments in the Reply Brief that could have been presented in the principal Brief). While we have fully considered Appellants’ responses in the Reply Brief, we decline to address any new arguments not originally presented in the principal Brief. With respect to all claims before us on appeal, arguments which Appellants could have made but chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). See also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (citations omitted). CONCLUSIONS OF LAW Appellants have not shown that the Examiner erred in rejecting claims 1-25 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejections of claims 1-25. 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). Appeal 2011-001216 Application 11/789,671 8 AFFIRMED llw Copy with citationCopy as parenthetical citation