11511090 (B.P.A.I. May. 15, 2012)

Ex Parte Andren et al

Board of Patent Appeals and InterferencesMay 15, 2012

11511090 (B.P.A.I. May. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/511,090 08/27/2006 Bo Stefan Andren 005127.00533 6382 22909 7590 05/15/2012 BANNER & WITCOFF, LTD. 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 EXAMINER KAYES, SEAN PHILLIP ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 05/15/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte BO STEFAN ANDREN, BRAD N. CLARKSON and STEPHEN DYLAN BERRY ____________________ Appeal 2010-003159 Application 11/511,0901 Technology Center 2800 ____________________ Before ALLEN R. MacDONALD, DAVID M. KOHUT, and TREVOR M. JEFFERSON, Administrative Patent Judges. JEFFERSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal from a final rejection of claims 1-11 under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Application filed August 27, 2006. The real party in interest is NIKE, Inc. Appeal 2010-003159 Application 11/511,090 2 INVENTION Appellants’ invention relates to an “electronic control implemented by a rocking bezel” to control the operation of a portable electronic device. (Spec. ¶ [01]). Claim 1 is representative of the invention and is reproduced below with the key disputed limitation in italics: 1. A control for an electronic device, comprising: a display; a bezel surrounding the display and defining a primary plane; an electronic module for controlling an electronic device, the electronic module having at least one input device that provides input signals to the electronic module when activated; a casing encasing the display, the bezel, and the electronic module; a support for the bezel that allows the bezel to be rocked such that the primary plane of the bezel rotates relative to the casing; and at least one pusher that moves in response to rocking of the bezel to activate the at least one input device. REJECTIONS AT ISSUE Claims 1, 2, 4-8, 10 and 11 stand rejected under 35 U.S.C. § 102(b) as anticipated by Lang (US 2002/0101457). Ans. 3. 2 Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lang in view of Guerry (US 2003/0043698). Ans. 5. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lang in view of Kita (US 2001/0004397). Id. 2 We refer throughout this opinion to the Examiner’s Answer (“Ans.”) mailed on September 18, 2009, Appellants’ Appeal Brief (“Br.”) filed on June 3, 2009 and Appellants’ Reply Brief (“Reply Br.”) filed on November 18, 2009. Appeal 2010-003159 Application 11/511,090 3 ISSUES Did the Examiner err in finding that Lang teaches or suggests “a casing encasing the display, the bezel, and the electronic module” limitation of representative claim 1? 3 ANALYSIS Appellants contend that because Lang states that the smart watch disclosed in Lang includes one or more input buttons mounted “on” the device housing it cannot meet the claim 1 limitation that the “casing that encase[es] the display, the bezel and electronic module.” (Br. 4). Similarly, “Lang does not teach or suggest a bezel and watch module assembly both being encased within a casing.” Id. The Examiner found that Lang discloses a “device housing 104 as containing the various components of the device.” (Ans. 6). Appellants contend, however, that “nowhere does Lang state or describe that the various components include[]bezel 120 or that housing 104 encases the various components.” (Reply Br. 3)(emphasis in original). We disagree with Appellants. Claims are given their broadest reasonable construction in light of the disclosure. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Lang specification cited by the Examiner states that “[t]he smart watch 102 includes a device housing 104 containing the various 3 Appellants rely entirely on its arguments regarding claim 1 in support of the patentability of dependent claims 2, 4-8 and 11 over Lang, claim 3 over Lang and Guerry, and claim 9 over Lang and Kita. (Br. 4-5). Although Appellants nominally argue independent claim 10 separately, the arguments presented are substantially the same for those presented in claim 1. (Br. 4). Accordingly, we treat claim 1 as representative of the claims at issue. See 37 C.F.R. § 41.37(c)(1)(vii). Only those arguments actually made by Appellants in the Appeal Brief and Reply Brief are considered. See Id. Appeal 2010-003159 Application 11/511,090 4 components of the device.” (Lang ¶ [0015]). The device housing [104] in Lang is characterized as connecting to the strap 106. (Lang ¶ [0015]). As shown in Figure 1 of Lang, the housing 104 is connected to the strap and surrounds the bezel 120. Appellants admittedly describe bezel 111 of its claimed invention as “contained or encased in casing 107.” Reply Br. 2. (discussing Figure 2, Reply Br. 3, and describing it as “containing” the bezel). We conclude that the Examiner correctly found that the housing 104 taught in Lang, ¶ [0015] similarly contains the bezel 120 as shown in Figure 1 of Lang and described in ¶ [0015]. (Ans. 3 and 6). Appellants fail to show that the Examiner erred in finding that Lang anticipates claim 1 under 35 U.S.C. § 102(b). Since Appellants’ arguments form the basis for its argument that the Examiner erred in rejecting dependent claims 3 and 9 under 35 U.S.C. § 103(a), we also sustain the Examiner’s rejection of those claims for the same reasons. CONCLUSION OF LAW Based on the findings of facts and analysis above, we conclude that Appellants fail to show that the Examiner erred in rejecting claims 1, 2, 4-8, 10 and 11 under 35 U.S.C. § 102(b), and claims 3 and 9 under 35 U.S.C. § 103(a) . DECISION The Examiner’s rejection of claims 1, 2, 4-8, 10 and 11 under 35 U.S.C. § 102(b) and rejection of claims 3 and 9 under 35 U.S.C. § 103(a) are affirmed. Appeal 2010-003159 Application 11/511,090 5 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED PL: tsj