ZAGG Intellectual Property Holding Co., Inc.Download PDFPatent Trials and Appeals BoardMay 11, 20212020003886 (P.T.A.B. May. 11, 2021) 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. 15/492,618 04/20/2017 Cecily Sumsion Sabin 3651-101 5420 20551 7590 05/11/2021 THORPE NORTH & WESTERN, LLP. P.O. Box 1219 SANDY, UT 84091-1219 EXAMINER SENGUPTA, SONYA MAZUMDAR ART UNIT PAPER NUMBER 1745 NOTIFICATION DATE DELIVERY MODE 05/11/2021 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): patentdocket@tnw.com warren.archibald@tnw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CECILY SUMSION SABIN, DEBBIE MAUERMAN, and MANUEL CARREON Appeal 2020-003886 Application 15/492,618 Technology Center 1700 Before JENNIFER R. GUPTA, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 11–15, 23–28, 36, and 37. We have jurisdiction. 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Zagg Intellectual Property Holding Co., Inc. Appeal Br. 3. Appeal 2020-003886 Application 15/492,618 2 CLAIMED SUBJECT MATTER The claims are directed to methods for coupling a screen protector to a cell phone. Independent claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A method for coupling a screen protector to a cell phone having a display screen displaying alignment indicia and instructions thereon, the method comprising: bringing the screen protector into proximity of the display screen; following instructions displayed on the display screen of the cell phone for aligning the screen protector with respect to the display screen; aligning alignment indicia of an alignment liner of the screen protector with the alignment indicia of the display screen; placing the screen protector on the display screen while the alignment indicia of the alignment liner remains aligned with the alignment indicia of the display screen; and affixing the screen protector to the display screen. OPINION Claims 11–15 and 23–28 The Examiner rejects claims 11–15 and 23–28 under 35 U.S.C. § 103 as unpatentable over the combined disclosures of Jiang2 and Ozeki.3 Final Act. 3–4. Appellant argues that the Examiner “has not shown that there was sufficient reason to modify the asserted prior art references” in order to arrive at the claimed subject matter. Appeal Br. 11. We agree. The 2 US 7,914,644 B2, issued March 29, 2011. 3 US 2015/0273786 A1, published October 1, 2015. Appeal 2020-003886 Application 15/492,618 3 rejection makes factual findings regarding the teachings of Jiang and Ozeki, but fails to offer any reason that would have motivated the skilled artisan to combine the teachings of these references. Final Act. 3–4. Indeed, once challenged on this point, the Examiner fails to respond in the Answer to Appellant’s argument. See Ans., generally. We emphasize that claims “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Under these circumstances, we cannot sustain the Examiner’s obviousness rejection of claims 11–15 and 23–28. Claims 36 and 37 The Examiner’s rejection of claims 36 and 37 suffers from the same deficiency outlined above because it amounts to an obviousness rejection made entirely of factual findings. Final Act. 4–5. This alone warrants reversal of the rejection. KSR, 550 U.S. at 418. Moreover, Appellant correctly argues that the relied upon disclosure in Ozeki does not teach “causing the cell phone to sense a position, or an orientation, or both, of the screen protector with respect to the display screen.” Appeal Br. 14; Ozeki ¶ 64. The Examiner fails to sufficiently explain how Ozeki’s cell phone can sense a position or orientation of the screen protector if the touch operation is deactivated. Ozeki ¶ 64. The Examiner’s obviousness rejection of claims 36 and 37 is not sustained. Appeal 2020-003886 Application 15/492,618 4 CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11–15, 23– 28, 36, 37 103 Jiang, Ozeki 11–15, 23– 28, 36, 37 REVERSED Copy with citationCopy as parenthetical citation