Joaquin RodriguezDownload PDFPatent Trials and Appeals BoardSep 4, 201915256385 - (D) (P.T.A.B. Sep. 4, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/256,385 09/02/2016 Joaquin Rodriguez JR.0002_QC 1002 138757 7590 09/04/2019 QuickChore Corp. 701 Tennessee Avenue #201 Alexandria, VA 22305 EXAMINER NGUYEN, LEE ART UNIT PAPER NUMBER 2647 NOTIFICATION DATE DELIVERY MODE 09/04/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): anthony.whittington1@gmail.com awhittington@quickchore.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOAQUIN RODRIGUEZ ________________ Appeal 2018-007732 Application 15/256,3851 Technology Center 2600 ____________ Before DENISE M. POTHIER, MICHAEL R. ZECHER, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1‒20 and 22, which are all the claims pending in this application. Claim 21 was canceled. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is Joaquin Rodriguez. Br. 2. Appeal 2018-007732 Application 15/256,385 2 STATEMENT OF THE CASE Introduction Appellant’s application relates to a mobile phone case that holds accessories. Spec. ¶ 6. Claim 1 illustrates the appealed subject matter and reads as follows: 1. A device for storing one or more accessories comprising: a case having one or more earphones cavities to hold one or more earphones; one or more apertures stored on the case to operate a camera; one or more channels stored on the case to wrap up one or more wires of the earphones; a panel that forms a portion of the case, wherein the earphone cavities and the channels are both directly embedded on the panel and the channels are configured to wind the wires of the earphones without the use of an automatic operation and the earphone cavities have a depth between 5 mm and 20 mm; a storage area for storing the one or more accessories; and a retractile portion that includes one or more slits to mount the earphones to the panel. The Examiner’s Rejections Claims 1, 2, 4, 6‒10, 12, 14‒16, 18, 20, and 22 stand rejected under 35 U.S.C. § 103 as being unpatentable over Lin (US 2007/0293288 A1; Dec. 20, 2007), Brandenburg (US 2009/0036175 A1; Feb. 5, 2009), and Stern (US 2013/0208937 A1; Aug. 15, 2013). Final Act. 3‒5.2 2 All references to the Final Action refer to the Final Action entered on October 20, 2017. Appeal 2018-007732 Application 15/256,385 3 Claims 3, 11, and 17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Lin, Brandenburg, Stern, and Singhal (US 2014/0252786 A1; Sept. 11, 2014). Final Act. 5. Claims 5, 13, and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Lin, Brandenburg, Stern, and Gronewoller (US 2016/0173160 A1; June 16, 2016). Final Act. 5‒6. ANALYSIS Claim 1 Appellant argues the Examiner erred in rejecting claim 1 as unpatentable over Lin, Brandenburg, and Stern. See Br. 5‒7. In particular, Appellant argues Stern teaches away from the Examiner’s proposed combination because Stern teaches an automatic cord retraction system, contrary to the claimed device that comprises channels “configured to wind the wires of the earphones without the use of an automatic operation.” Br. 5‒6. According to Appellant, Stern’s enclosed, automatic winding mechanism is incompatible with Brandenburg and Lin. Id. Appellant has not persuaded us of Examiner error. The Examiner finds, and we agree, Lin teaches a mobile phone case that includes a channel with a spool where an earphone cable may be coiled. Final Act. 3 (citing Lin, Figs. 5, 6A, 6B, 7, ¶ 30); Ans. 8 (citing the same). The Examiner finds Stern teaches varying geometries of cavities that hold earphones according to the size of the earphones. Ans. 8 (citing Stern ¶ 59). The Examiner finds an ordinarily skilled artisan would have combined Stern’s earphone cavities with Lin’s manual retraction system. See id. Appeal 2018-007732 Application 15/256,385 4 Appellant’s argument that Stern teaches away from the proposed combination is unpersuasive for two reasons. First, the proposed combination does not incorporate Stern’s cord retraction system as suggested by Appellant. Instead, the proposed combination relies on Stern’s teaching of earphone cavity geometries. See Final Act. 3; Ans. 8. Second, Stern does not teach away from a manual retraction system. Although Stern teaches the cord may be retracted in an automatic fashion, Stern also teaches an alternative embodiment where the user may spin a reel manually to retract the earphone cord. Stern ¶ 55. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”). Thus, Stern’s teaching of two alternative cord retraction systems, including both automatic and manual systems, does not constitute teaching away from manual cord retraction. Appellant also argues the proposed combination does not teach or suggest “the earphone cavities have a depth between 5 mm and 20 mm,” as recited in claim 1. Br. 6. Appellant argues Stern teaches the storage compartment geometry corresponds to the shape and size of ear buds, but does not explicitly teach every possible range of measurements that are claimed. Id. Appellant has not persuaded us of Examiner error. The Examiner finds, and we agree, Stern teaches the size of the storage compartment (the claimed “earphone cavities”) may vary according to the size of earphones to Appeal 2018-007732 Application 15/256,385 5 be stored. Final Act. 4 (citing Stern ¶ 59); Ans. 9 (citing the same). The Examiner finds, and we agree, an ordinarily skilled artisan would have understood from this teaching that the storage compartment may have a depth in the 5mm to 20mm range. Ans. 9. Appellant has not persuasively identified error in the Examiner’s findings. Nor has Appellant overcome the Examiner’s prima facie case of obviousness by establishing that the claimed range is critical by showing that the range achieves unexpected results relative to the range of earphone sizes taught by Stern. See In re Peterson, 315 F.3d 1325, 1330‒31 (Fed. Cir. 2003) (citing In re Geisler, 116 F.3d 1465, 1469‒70 (Fed. Cir. 1997)). Appellant also argues the Examiner erred in rejecting claim 1 because Stern does not teach a retractile portion with slits, as recited by claim 1. Br. 6 (citing Stern Figs. 6A, 6B, 7, ¶¶ 31‒33). Appellant has not persuaded us of Examiner error. The Examiner relies on Lin, not Stern, for teaching these limitations. See Final Act. 5 (citing Lin, Figs. 6A, 6B, 7); Ans. 10 (citing Lin ¶¶ 31–32). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the Examiner finds, and we agree, Lin teaches a pedestal (the claimed “retractile portion”) that includes a pair of earphone sockets (the claimed “one or more slits”) that elastically deform to allow the earphone to enter the sockets. Ans. 10 (citing Lin ¶¶ 31‒32). Appellant has not persuasively identified error in these findings. For these reasons, we sustain the Examiner’s obviousness rejection of claim 1. We also sustain the Examiner’s obviousness rejection of independent claims 9 and 15, which Appellant argues are patentable for the Appeal 2018-007732 Application 15/256,385 6 same reasons. See Br. 7. We also sustain the Examiner’s obviousness rejections of dependent claims 2‒8, 10‒14, and 16‒20, for which Appellant provides no separate arguments. See id. Claim 22 Claim 22 recites “[t]he apparatus of claim 9, wherein the one or more accessories stored in the storage area are digital media accessories.” Appellant argues the Examiner erred in rejecting claim 223 because Lin does not teach or suggest “wherein the one or more accessories stored in the storage area are digital media accessories.” Br. 6‒7. In particular, Appellant argues Lin teaches a cell phone case, not an additional storage area for storing digital media accessories. Id. According to Appellant, the claimed storage area may be used to protect “digital media devices,” which may include credit cards, smart cards, digital cards, etc. Br. 7 (citing Spec. ¶ 24). Appellant has not persuaded us of Examiner error. The Examiner finds, and we agree, Lin teaches a protective apparatus that holds a portable device and one or more accessories. Final Act. 5 (citing Lin ¶ 21); Ans. 12 (citing Lin ¶¶ 7, 21). The Examiner finds, and we agree, the portable device is a digital media device and the accessories are, therefore, digital media accessories. Id. Appellant’s argument that “digital media devices” may include credit cards, smart cards, and digital cards, is not commensurate with the scope of the claim, which recites none of these particular devices. 3 Appellant argues the Examiner erred in rejecting claim 21 because Lin fails to teach or suggest this “wherein” limitation. See Br. 6‒7. Claim 21 was withdrawn, but claim 22 recites this limitation. Accordingly, we treat the listing of claim 21 as a typographical error and address the argument as directed to claim 22. Appeal 2018-007732 Application 15/256,385 7 See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that limitations not appearing in the claims cannot be relied upon for patentability). Indeed, claim 22 does not recite “digital media devices,” instead reciting “digital media accessories.” Accordingly, Appellant has not persuaded us the Examiner erred in finding an ordinarily skilled artisan would have understood Lin’s “one or more accessories” that are stored in a cell phone case to be “digital media accessories,” as claimed. We, therefore, sustain the Examiner’s obviousness rejection of claim 22. DECISION We affirm the Examiner’s decision rejecting claims 1‒20 and 22 under 35 U.S.C. § 103. 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation