Ex Parte Nair et al

Board of Patent Appeals and Interferences

May 30, 2012

11513471 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHANDRA NAIR, ERIC M. JOHNSON,
and CURT CROLEY
____________________

Appeal 2010-004680
Application 11/513,471
Technology Center 3700
____________________

Before: KEN B. BARRETT, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004680
Application 11/513,471
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a wearable holder pad for a mobile
computing device. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1 A pad for interposition between a limb of a user and an
apparatus to be attached to the limb, the pad comprising:
a first cushion element extending along a first portion of
a first side of the pad;
an attachment element attaching the apparatus to the first
cushion element; and
a second cushion element extending along a first portion
of a second side of the pad, the first and second cushion
elements being separated from one another by a first reduced
thickness area, wherein, when the pad is mounted in a desired
orientation, the first reduced thickness area extends between the
first and second cushion elements substantially along a
longitudinal axis of the limb, and wherein, when the pad is
interposed between the limb and the apparatus attached thereto,
the pad is bent along the longitudinal axis and the first and
second cushion elements are compressed so that the first and
second cushion elements and the reduced thickness area are in
contact with the limb.

REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kleinert (U.S. 7,114,189 B1, iss. Oct. 3, 2006, filed Sep.
30, 2004) in view of AAPA (Applicant Admitted Prior Art).

Appeal 2010-004680
Application 11/513,471
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OPINION
The Examiner correctly found that Kleinert discloses the basic device
claimed but does not discuss any particular attachment element or means.
Appellants discuss independent claims 1, 13, and 20 separately, but raise
essentially the same issues. Appellants argue the Examiner erred because
Kleinert does not disclose “[a] pad for interposition between a limb of a user
and an apparatus” and it would not have been obvious to incorporate an
“attachment element” (claims 1 and 13) or “attachment means” (claim 20).
App. Br. 5-7.
The problem with Appellants’ arguments is that they do not address
the position taken by the Examiner. We are mindful that, in Appellants’
Specification, “mobile terminals” are the “apparatus” Appellants
contemplated for use with the pad. However, the claims presented for our
review contain no such limitation and we must decline to import such a
limitation from Appellants’ Specification. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993)(Although the claims are interpreted in light of the
specification, limitations from the specification are not read into the claims.).
The Examiner has consistently interpreted Kleinert’s sleeve 12 as the
claimed “apparatus” to be attached to the limb of a user. Ans. 3; Final Rej. 2.
Appellants have not presented any arguments to demonstrate why the
Examiner’s interpretation of the extremely broad term “apparatus” is
unreasonable.
Kleinert does not describe how sleeve 12 is attached to the structure
interpreted by the Examiner as Kleinert’s pad, pad areas A, B, E, F. Ans. 3-
4. However, the Examiner correctly points out that it would have been
obvious to include some type of attachment structure, such as stitching, or
adhesives—those described as “conventional” by Appellants (Spec. 4, para.
Appeal 2010-004680
Application 11/513,471
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[0014])—to effectuate the attachment described by Kleinert (col. 2, ll. 27-
29). Ans. 4.
Appellants’ arguments are focused on the obviousness of including
some additional attachment structure for attaching an additional apparatus to
Kleinert’s pad (App. Br. 5-6), such as a mobile terminal or other apparatus
not designed for impact (Reply Br. 2). Since Appellants’ arguments address
a position never taken by the Examiner, those arguments do not apprise us of
any error in the Examiner’s position.

DECISION
The Examiner’s rejection of claims 1-20 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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