Ex Parte Nguyen et al

Patent Trial and Appeal Board

Aug 12, 2013

10159517 (P.T.A.B. Aug. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HUY NGUYEN and TOLA CHIN
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Appeal 2011-003225
Application 10/159,517
Technology Center 2600
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Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 4–18, and 21–26.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
The claimed subject matter relates to a handheld computer having a
housing configuration that orients a surface feature (Spec., p. 1, ll. 6–8).
Claim 1 is illustrative and is reproduced below with the disputed
limitation emphasized:
1. A mobile device comprising:
a housing having a front face and a back face, a length of
the front face and a length of the back face each extending
primarily in a first direction corresponding to a length of the
housing, a width of the front face and a width of the back face
each extending primarily in a second direction corresponding to
a width of the housing;
at least a first surface of the housing being substantially
planar and extending between the front face and the back face

1 We note that neither the Examiner’s Answer nor the Final Office Action
from which the appeal is taken expresses a specific ground for rejection of
claim 26. While the Appeal Brief also omits claim 26 in identifying the
claims that “are the subject of the present appeal” (Br. 3), both the Appeal
Brief (see, e.g. Br. 11) and Examiner’s Answer (see, e.g., Ans. 11) address
the claim in the argumentative portions; both Appellants and the Examiner
thereby implicitly acknowledge that claim 26 stands rejected. We conclude
that the omission of a specific ground for rejection of claim 26 is a result of
inadvertent error by the Examiner. Since Appellants have not presented any
separate argument for patentability of claim 26, any such argument is
deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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to form a top edge, the first surface being acutely angled with
respect to at least one of the front face and the back face;
wherein the housing is structured to be unitary, so that
the front face, the back face, and the first surface are fixed
relative to one another and so that the length of the housing is
constant;
a component for use in capturing an image of a scene, the
component being disposed at least partially on the first surface
and being operationally affected by a direction in which the
component is oriented;
a contact-sensitive display provided on the front face;
a plurality of input mechanisms provided on the front
face, the plurality of input mechanisms including the display;
a processor contained with the housing for displaying the
image on the display;
wherein at least one of the plurality of input mechanisms
is operable to enable a user to select the image or other content
from the display;
and
wherein the housing is structured to enable an orientation
that, relative to a reference Y that is defined by a direction of
gravity and a reference X that is orthogonal to Y, enables an
angle in which the display is viewed by a user to be acute with
respect to Y, and a direction in which the component is directed
to be substantially along X and directed outward away from the
user.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Suzuki US D435,837 Jan. 2, 2001
Suso US 6,466,202 Oct. 15, 2002
Horiki US 2002/0140667 A12 Oct. 3, 2002

2 The Examiner’s Answer (Ans. 3) cites an incorrect publication number for
Horiki. This is harmless error.
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Rejections
Claims 1, 4–18, and 21–263 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Horiki, Suzuki, and Suso (Ans. 4–9).

Issue
Appellants’ contentions present us with the issue of whether the
Examiner erred in finding the combination of Horiki, Suzuki, and Suso
teach a housing is structured to be unitary as recited in claim 1.4

ANALYSIS
Appellants contend that the housing of the mobile devices taught by
each of Horiki, Suzuki, and Suso is nonunitary (Br. 7, 8, 9). We find this
contention unpersuasive.
Horiki discloses a number of structures for a “portable
communications terminal,” exemplified by a portable telephone (Horiki ¶2).
Appellants reproduce Figs. 1(a)–1(c) and 3(a)–3(c) of Horiki in the Appeal
Brief (Br. 7) and direct their arguments to those embodiments of Horiki. But
as the Examiner correctly finds (Ans. 4), the embodiments shown in Figs.
16(a) and 16(b) of Horiki illustrate a device having a unitary housing: “The

3 See n. 1 supra.
4 Appellants assert that dependent claims 4–8, 21, 23, 25, and 26 are
patentable “for at least the same reasons as those given with respect to Claim
1,” that independent claim 9 is patentable “for at least the same reasons as
those given with respect to Claim 1,” and that dependent claims 10–18, 22,
and 24 are patentable “for at least the same reasons as those given with
respect to Claim 9” (Br. 11–12). We therefore treat claim 1 as representative
of all claims. 37 C.F.R. § 41.37(c)(1)(vii).
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example of FIG. 16(a) shows a portable telephone 1600 that does not have a
folding part” (Horiki, ¶150).
The Examiner’s rejection of claim 1 relies on a combination of
teachings drawn from (1) Horiki’s disclosure of an embodiment with a
unitary housing structure and (2) teachings drawn from Suzuki, Suso, and
other embodiments of Horiki having nonunitary housing structures (Ans. 4–
7). In light of the evidence provided by Horiki’s disclosure of unitary and
nonunitary housing structures as alternatives (see Ans. 4–5), we are not
persuaded that the Examiner erred in making such a combination.
We accordingly sustain the rejection of claim 1, as well as the
rejections of claims 4–18 and 21–26, for which Appellants rely on the same
argument.

CONCLUSION
On the record before us, we conclude that the Examiner did not err in
rejecting claims 1, 4–18, and 21–26 under 35 U.S.C. § 103(a) as
unpatentable over Horiki, Suzuki, and Suso.

DECISION
The Examiner’s decision rejecting claims 1, 4–18, and 21–26 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)(1)(iv).

AFFIRMED

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