Ex Parte Hoffman et al

Patent Trial and Appeal Board

Sep 25, 2014

12753084 (P.T.A.B. Sep. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DUSTIN L. HOFFMAN, BRITT C. ASHCRAFT and
WILLIAM ADAM GRALEWSKI

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Appeal 2013-001530
Application 12/753,0841
Technology Center 2800
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Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–7, 9–17, and 19–21. We have jurisdiction under 35
U.S.C. § 6.

1 According to Appellants, the Real Party in Interest is Hewlett-Packard
Development Company, LP. App. Br. 1.

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STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. An enclosure system, comprising:
an electronic device housing to enclose an open framework of
components of the electronic device; and
a breathable, dilatant material disposed about at least a portion of the
electronic device housing.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mascrier US 5,228,762 July 20, 1993
Chien US 6,168,249 Bl Jan. 2, 2001
Illingworth McKinnon
(hereinafter “McKinnon”)
US 2005/0001521 Al Jan. 6, 2005
Palmer et al. (hereinafter
“Palmer”)
US 7,381,460 B2 Jun. 3, 2008

THE REJECTIONS
1. Claims 1–7, 9–17, and 19–20 are rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite.2
2. Claims 1, 2, 4–7, 9–13, 15–17, and 19–21 are rejected under
35 U.S.C. § 103(a) as unpatentable over Chien, McKinnon and
Palmer.
3. Claims 3 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Chien, McKinnon, Palmer and Mascrier.

2 The rejection of claim 21 under 35 U.S.C. § 112, second paragraph, as
indefinite is withdrawn. Ans. 2.
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INDEFINITENESS
The Examiner maintains that the term “a breathable dilatant material”
is unclear as to whether the dilatant material itself is required to be
breathable, like the open-cell structure disclosed in Palmer, see Palmer 2–
44–48, or whether the dilatant material as incorporated into a porous or non-
porous material is required to be breathable, e.g., by including perforations.
Ans. 2–4; Final Action 2–3.
Claims are indefinite “only if it can be concluded that one of ordinary
skill in this art, having appellants’ disclosure and claims before him, would
not be possessed of a reasonable degree of certainty as to the exact subject
matter encompassed within the claims.” In re Moore, 439 F.2d 1232, 1236
(CCPA 1971).
We agree with Appellants that the claims are not indefinite. App. Br.
5.3 In response to the indefiniteness rejection, Appellants direct us to several
passages in the Specification, including the following:
Dilatant materials can be incorporated into non-porous
materials, such as a solid rubber-like material, or porous
materials, such as a woven fabric-like material. One example
of a commercially available dilatant material is D3O™
manufactured by d3o lab (Hove, England, www.d3olab.com).
App. Br. 5; Spec. ¶ 8. As noted by the Examiner, the d3o web site
referenced in Appellant’s Specification describes a dilatant material that is
breathable due to the presence of perforations. Ans. 3–4; Final Action 2–3.
When read in view of the above-quoted passage in the Specification, the
phrase “breathable dilatant material” is broad enough to cover either

3 Appellants failed to paginate their brief, but we refer to the pages as if they
were numbered sequentially, starting with the page on which the caption
appears.
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configuration proposed by the Examiner. The phrase is not indefinite
merely because the claims do not specify the structure of the dilatant
material that enables it to be breathable. The claims are “merely broad in
this respect,” and “[b]readth is not indefiniteness.” In re Gardner, 427 F.2d
786, 788 (CCPA 1970) (“We do not find any indefiniteness in any of the
claims by reason of their failure to name a host.”). Accordingly, we reverse
the Examiner’s indefiniteness rejection.
OBVIOUSNESS
Claim 1
Appellants do not challenge the Examiner’s findings regarding Chien.
Compare Final Action 4–5 with App. Br. 8–9; Reply Br. 6. Instead,
Appellants argue that McKinnon is not analogous to the claimed invention
and that “Palmer does not render obvious the use of a dilatant material as
part of an electronic device itself.” App. Br. 8. We address each of
Appellants’ arguments in turn.
We, like the Examiner, are not persuaded that McKinnon is non-
analogous art. See Ans. 5. Both McKinnon and the claimed subject matter
relate to covers for protecting an electronic device, such as a computer or
central processing unit (CPU). See McKinnon ¶ 22 (“Embodiments of the
present invention provide a cover for an electronic component . . . . The
cover acts to protect the electronic component from dust . . .”). Furthermore,
both McKinnon and the claimed subject matter address the problem of
providing a cover that encloses and protects an electronic device, while at
the same time allowing ventilation around the device. Id., ¶ 12 (describing
cover made from porous fabric). The fact that McKinnon’s cover enables a
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CPU to be slid into and out of the cover does not make the disclosure non-
analogous, as argued by Appellants. Cf. Reply Br. 6. McKinnon is
analogous prior art because it is from the same field of endeavor as the
claimed subject matter. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
Next, Appellants argue that the combination of Palmer with the other
cited references would not have been obvious because Palmer “does not
describe the use of a dilatant material as an outer portion of an electronic
device,” but instead discloses the use of that material in packaging, vehicle
dashboards and protective clothing. App. Br. 9, citing Palmer, 3:58-4:5.
This argument is not persuasive because it fails to address the full breath of
claim 1. Claim 1 merely requires that a dilatant material be “disposed
about” an electronic device housing, and does not require that the dilatant
material be part of the electronic device itself. App. Br. 8 (claim 1). We
agree with the Examiner that, when the dilatant material is used as a
packaging material, as taught by Palmer, the material would be “disposed
about a portion of the electronic device housing,” as recited in Appellants’
claim 1. Ans. 5. Furthermore, Palmer teaches that a dilatant material can be
used in packaging for delicate equipment, id., 3:42, or in packaging for
delicate objects or machinery, id., 3:63. We agree with the Examiner that, to
one of ordinary skill in the art, delicate equipment, objects or machinery
would include an electronic device and, in view of Palmer’s teaching, it
would have been obvious to one of ordinary skill in the art to use a dilatant
material as packaging for an electronic device. Ans. 7.
Aside from their failure to address the full breadth of claim 1,
Appellants’ arguments are not convincing for additional reasons. There is
no dispute that the dilatant material described in Palmer is one example of a
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breathable, dilatant material, as recited in Appellants claim 1. At best,
Appellants claim a new use for a known dilatant material, namely as an
enclosure for an electronic device. The dilatant material has the same
function in Appellants’ claimed combination as taught by Palmer: to
provide impact protection. Compare Spec. ¶ 10 (dilatant material provides
“the protection of a rigid or solid enclosure when the device is subjected to a
sudden shock or impact”) with Palmer, 1:3–6 (disclosed energy absorbing
materials are “employed in systems designed for the protection of humans,
animals or objects from damage by impact”). KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 415 (2007) (“a combination which only unites old elements
with no change in their respective functions” is obvious and not patentable),
quoting Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.,
340 U.S. 147, 152 (1950).
We find that Palmer’s disclosure of “a wide variety of applications”
for a dilatant material, Palmer, 3:59, including packaging for delicate
equipment, id. at 3:42, packaging for delicate objects or machinery, id. at
3:63, and vehicle dashboards, id. at 4:1, provides a suggestion or motivation
for one of ordinary skill in the art to use a dilatant material as an enclosure
for an electronic device, as recited in Appellants’ claim 1. For purposes of
selecting a material to provide impact protection, an electronic device is the
same as or analogous to delicate equipment or a vehicle dashboard. In view
of Palmer’s teaching of uses for a dilatant material that are analogous to the
use claimed by Appellants, it would have required no more than ordinary
creativity for one of ordinary skill in the art to select a dilatant material as a
material for enclosing an electronic device. KSR, 550 U.S. at 421 (“A
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person of ordinary skill is also a person of ordinary creativity, not an
automaton.”).
There is no contention that using a dilatant material as an enclosure
for an electronic device requires any more than ordinary skill in the art. Nor
is there any contention that the relevant design considerations and
construction methods are different from those involved in using a dilatant
material in the various applications disclosed in Palmer. Id. at 401 (“[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, using the technique is obvious unless its actual application is
beyond his or her skill.”). Although Appellants argue that Palmer “does not
render obvious the use of a dilatant material to promote airflow out of an
electronic device housing,” App. Br. 7, there is no contention that
breathability is a novel feature or that Appellants’ claimed combination
provides unexpected or unpredictable results. KSR, 550 U.S. at 416 (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Remaining Appealed Claims
Appellants submit no arguments for patentability of claims 2–7, 9–17,
and 19–21 separate from claim 1. Instead, Appellants merely quote the
claim language and contend that these claims are patentable for “the same
reasons” as claim 1 or that “similar” arguments apply. App. Br. 9-11. These
statements are not a substantive argument as to the separate patentability of
these claims. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“a mere
recitation of the claim elements and a naked assertion that the corresponding
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elements were not found in the prior art” is not a substantive argument that
requires claims be separately addressed); 37 C.F.R. § 41.37(c)(iv) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”).

CONCLUSION OF LAW AND DECISION
The Examiner’s § 112 rejection is reversed. The Examiner’s § 103
rejections are affirmed.
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).

AFFIRMED

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