Ex Parte 8418852 et al

Patent Trial and Appeal Board

Oct 31, 2017

90013486 (P.T.A.B. Oct. 31, 2017)

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.
90/013,486 04/10/2015 8418852 52253/526 8192
25901 7590 11/01/2017
ERNEST D. BUFF
ERNEST D. BUFF AND ASSOCIATES, LLC.
231 SOMERVILLE ROAD
BEDMINSTER, NJ 07921
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
11/01/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN T. ZIEMBA
Appellant
____________________

Appeal 2017-006813
Reexamination Control 90/013,486
Patent US 8,418,852 B21
Technology Center 3900
____________________

Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 Issued to John T. Ziemba on April 16, 2013.
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Patent US 8,418,852 B2

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Appellant filed a REQUEST FOR REHEARING on September 25,
2017 (hereinafter “Rehearing Request” or “Reh’g Req.”) under 37 C.F.R.
§ 41.522, seeking rehearing of our Decision, mailed August 1, 2017
(hereinafter “Decision” or “Dec.”), which affirmed various final rejections
of the claims made by the Examiner. We grant the Rehearing Request to the
extent that we consider the Requester’s arguments, but DENY the request to
modify the Decision.
Appellant presents essentially the same argument as originally argued
in the Appeal. Appellant also argues that the Board took certain statements
made during oral argument out of context relating to the combination.
Specifically, Appellant argues that, while the compartment of Holmes could
be added to anything, “[i]t wouldn’t be integrated there in that structure” and
that compartment and case “would not be piggy-backed upon each other
directly, because they’d have that adhesive portion.” Reh’g Req. 53 (citing
Hearing Transcript 23). Nothing in the claims requires integration nor
precludes the use of adhesive for affixing the compartment onto the case.
Furthermore, we agree with the Examiner that, “[a]s for the claim term
‘piggybacked’, this word is not definitive of a particular structural
arrangement” and “does not preclude intervening structure as implied in
[the] argument.” Ans. 11.
Appellant also argues that “[t]he Written Opinion lacks explanation of
a motivation to combine Holmes and LB.” Reh’g Req. 6. As stated in the
Decision, however, the combination amounts to “nothing more than a simple

2 Appellant erroneously cites to 37 C.F.R. 41.72(d).
3 We note that the Rehearing Request did not include page numbers. We
reference the pages counting the cover page as page 1.
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substitution of one kind of personal item compartment for another,” which is
sufficient motivation in this case. Dec. 6. Also, given Appellant’s
statements during oral argument (see Dec. 5) and the fact that the claims do
not require the alleged integration asserted by Appellant nor a construction
of the term “piggybacked” so as to preclude intervening structure, the
motivation can be gleaned from the references themselves. Longinotti
includes a personal item compartment on a case, while Holmes teaches a
compartment affixed directly to a phone. Rather than the card case of
Longinotti, the Examiner simply suggests replacing one kind of
compartment as taught in Longinotti for another taught in Holmes. Again,
this combination amounts to a simple substitution of one known
compartment for another.
As to Appellant’s argument based on teaching away, a reference will
teach away when it suggests that the developments flowing from its
disclosures are unlikely to produce the objective of the applicant’s invention.
“A statement that a particular combination is not a preferred embodiment
does not teach away absent clear discouragement of that combination.”
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005)
(internal citations omitted). Also, whether a reference teaches away from a
claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341
(Fed. Cir. 2005). “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, . . . would be led in a direction
divergent from the path that was taken by the applicant.” In re Haruna, 249
F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich.
Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). A prior art reference must be
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considered in its entirety, i.e., as a whole, including portions that would lead
away from the claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1550 (Fed. Cir. 1983). However, “[t]he 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 . . . . ” In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, Holmes clearly teaches that it is not undesirable to have a
bulkier compartment piggybacked onto a phone. The statements in
Longinotti (Reh’g Req. 6–7) do not represent a clear disparagement and,
given the teaching in Holmes, one of skill in the art would have understood
that a phone and hinged-compartment combination could be desirable per
Holmes regardless of the preferences in Longinotti. Furthermore,
Appellant’s arguments go to statements of a preferred embodiment that do
not address the advantages already disclosed in Holmes of having a bulkier
compartment affixed to the phone. Lastly, Appellant again argues against
the combination by pointing out portions of Longinotti that deal with using
the case on a flip-phone, but as stated in the Decision,
the Examiner is not saying that all examples in Holmes have to
be used with a protective case, just that the configuration
disclosed in Longinotti of a smart phone with a protective case
could be used to modify the configuration in Holmes of
attaching a minor compartment to the back of a smart phone.
Dec. 7. Accordingly, we are not persuaded of any basis for granting the
Rehearing Request.

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REHEARING DECISION
While we have considered the Decision in light of the Request for
Rehearing, we decline to modify it in any respect.
Pursuant to 37 C.F.R. § 41.79(d), this Decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

DENIED

ACP

PATENT OWNER:
Ernest D. Buff
ERNEST D. BUFF AND ASSOCIATES, LLC.
231 Somerville Road
Bedminster, NJ 07921

THIRD PARTY REQUESTER:
STOEL RIVES LLP-SLC
201 South Main Street, Suite 1100
One Utah Center
Salt Lake City, UT 84111