Ex Parte Bekele et al

Patent Trial and Appeal Board

Sep 13, 2013

95001767 (P.T.A.B. Sep. 13, 2013)

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.
95/001,767 09/16/2011 Haile Bekele 2011-002 7489
24504 7590 09/13/2013
THOMAS | HORSTEMEYER, LLP
400 INTERSTATE NORTH PARKWAY SE
SUITE 1500
ATLANTA, GA 30339
EXAMINER
REIP, DAVID OWEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/13/2013 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
____________________

INCASE DESIGNS CORP.
Requester

v.

TECH SHELL, INC.1
Patent Owner, Appellant
____________________

Appeal 2013-009127
Inter partes Reexamination Control 95/001,767
Patent US 7,907,400 B22
Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
JAMES P. CALVE, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1 Tech Shell, Inc. is the Patent Owner and the real party in interest (Appeal
Brief of Patent Owner (hereinafter "App. Br.") 1).
2 Patent US 7,907,400 B2 (hereinafter "'400 patent") issued March 15, 2011
to Bekele.
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STATEMENT OF THE CASE
Claims 1-8 and 26-39 of the '400 patent are subject to reexamination
while claims 9-25 and 40-53 are not subject to reexamination (Right of
Appeal Notice3 (hereinafter "RAN") 1). Each of claims 1-8 and 26-39
subject to reexamination stand rejected (RAN 1). The Patent Owner appeals
under 35 U.S.C. §§ 134(b) and 315 from the Examiner's rejections with
respect to all of the rejected claims (App. Br. 4). The Requester does not
cross-appeal the decisions of the Examiner not adopting certain proposed
rejections. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
The '400 patent is related to Patent US 7,643,274 which is the subject
of Reexamination Control No. 95/001,766 (App. Br. 1-2). Both Patent US
7,643,274 and the subject '400 patent are involved in the legal action
Techshell Inc. v. Jwin Electronics Corporation., 3:11-cv-00556-MCR-CJK
(N.D. Florida) which has been stayed pending outcome of the reexamination
proceedings (App. Br. 2).
We AFFIRM the Examiner's rejections.
The '400 patent is directed to a protective cover for a laptop computer
(Abstract). Representative independent claim 1 reads as follows (Claims
App'x, italics added):
1. An exterior cover for a laptop computer having a display
portion and a keyboard portion, comprising:
a first elastic planar element for placement on an outside
surface of the display portion, the first elastic planar element
including:

3 The Examiner's Answer merely incorporates the RAN by reference. Hence
we cite to the RAN herein.
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a raised edge along a portion of a perimeter of the
first elastic planar element, wherein the raised edge
extends perpendicularly from the first elastic planar
element and toward the display portion; and
a plurality of tabs located on the raised edge,
wherein each tab extends from the raised edge over an
inside surface of the display portion so as to grip the
display portion; and
a second elastic planar element for placement on an
outside surface of the keyboard portion, the second elastic
planar element being separate and independent from the first
elastic planar element, the second elastic planar element
including:
a raised edge along a portion of a perimeter of the
second elastic planar element, wherein the raised edge
extends perpendicularly from the second elastic planar
element and toward the keyboard portion; and
a plurality of tabs located on the raised edge,
wherein each tab extends from the raised edge over an
inside surface of the keyboard portion so as to grip the
keyboard portion.

Independent claim 39 similarly recites "the second elastic planar
element being separate and independent from the first elastic element" but
merely recites "a tab" for the planar elements rather than a plurality of tabs.
The Examiner rejects the claims under 35 U.S.C. § 103(a) as follows:
1. Claims 1, 2, 4-7 and 26-39 as obvious over Alexander4 in view
of Genest.5
2. Claim 3 as obvious over Alexander in view of Genest and
Park.6

4 U.S. Patent No. 5,835,344 issued November 10, 1998.
5 U.S. Patent No. 6,480,377 B2 issued November 12, 2002.
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3. Claim 8 as obvious over Alexander in view of Genest.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner erred in finding that Alexander discloses
a case body 200 that is separate and independent from a case cover 202.
2. Whether the Examiner erred in finding that Genest discloses a
case having "a plurality of tabs" as recited in claim 1.
3. Whether the Examiner erred in concluding that it would have
been obvious to one of skill in the art to provide the carrying case of
Alexander with tabs disclosed in Genest to result in the invention claimed.

PRINCIPLES OF LAW
"The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results."
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007). If a technique
has been used to improve one device and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill. Id. at 417.

ANALYSIS
In rejecting all of the claims at issue, the Examiner adopted the
positions of the Requester as set forth in pages 19-21 and 27-28 of the

6 U.S. Patent No. 6,405,881B1 issued June 18, 2002.
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Request for Inter Partes Reexamination (RAN 5). The Examiner finds that
Alexander discloses most of the structural limitations of independent claim
1, including the limitation "the second elastic planar element being separate
and independent from the first elastic planar element." (RAN 8). The
Examiner concedes that Alexander fails to disclose the recited tabs but relies
on Genest for teaching "a protective case having retaining tabs 44 located on
a raised edge" which function to retain the handheld computer (RAN 8-9).
The Examiner further reproduces a portion of the Request for Inter Partes
Reexamination adopted to reject the claim which concludes that:
[i]t would have been obvious to a person of ordinary skill
in the art at the time the invention was made to add the tabs
described in Genest to the raised edges of the protective cover
in Alexander (e.g., front wall, rear wall, and side walls of the
case cover 202 and/or lowercase body 200) so that the
protective cover can be more securely attached to the laptop. A
person of ordinary skill in the art would be motivated to
combine the laptop cover of Alexander with the tabs of Genest
because the resulting laptop cover would be more desirable as
an improvement on the prior art technique of Alexander using
only friction to hold the cover in place, and the resulting cover
would have enhanced commercial opportunities over Alexander
because it would be more secure and adding tabs involves only
routine skill in the art.
(RAN 9).

The Patent Owner disagrees with the Examiner's findings and
conclusion in its appeal for the reasons set forth in its brief. We address the
various arguments of the Patent Owner infra. Only those arguments actually
made by the Patent Owner have been considered and any arguments not
made are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii).
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Independent Claim 1
Separate and Independent
The Patent Owner argues that the Examiner erred because "[n]either
Alexander nor Genest, either alone or in combination, disclose, teach, or
suggest" the clam 1 limitation "the second elastic planar element being
separate and independent from the first elastic planar element." (App. Br.
5). The Patent Owner asserts that "Alexander discloses a one-piece form
fitting briefcase for a laptop computer" and "two connection methods, i.e.,
hinges and clips, to join the top and bottom sections of the laptop case."
(App. Br. 6, emphasis in original). In particular, according to the Patent
Owner, because Alexander discloses a connector clasp 300 mounted to the
lower case body 200 that engages a connector stud 310 on the case cover
202, the case body 200 and the case cover 202 are "connected." (App. Br. 6,
emphasis in original). This argument is unpersuasive.
Implicit in the Patent Owner's argument is that the limitation "separate
and independent" should be interpreted to require the first elastic planar
element to be "unconnected" from the second elastic planar element, even by
intervening structure or components such as the locking mechanism of
Alexander (i.e., connector clasp 300 and the connector stud 310).7 However,
even if the Patent Owner's implicit claim construction is considered to be

7 We also note that the Patent Owner's implied interpretation of the
limitation "separate and independent" so as to preclude any intervening parts
that may serve to connect the first and second elastic planar elements is
problematic because the cover of the '400 patent also relies on intervening
display portion and keyboard portion of the laptop that are hinged together
to function, these components "connecting" the first and second elastic
planar elements together.
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correct, Alexander discloses this limitation because, in the operative
configuration wherein the portable computer system of Alexander is in use,
the locking mechanism (i.e., connector clasp 300 and the connector stud
310) is not used. As such, the case body 200 and the case cover 202 are
"separate and independent" as well as "unconnected" from each other.
Furthermore, claim 1 is also open ended because it uses the transitional term
"comprising," thereby allowing inclusion of additional components such as a
locking mechanism (i.e., connector clasp 300 and the connector stud 310).
Correspondingly, the Patent Owner's argument based on the locking
mechanism of Alexander is unpersuasive.
The Patent Owner also argues that in Alexander, "the upper case is
connected to the lower case by a moveable connection mechanism that is
part of the laptop case." (App. Br. 7, citing Alexander, col. 5, ll. 37-47). We
presume that unlike the locking mechanism discussed supra, such
connection mechanism is asserted to permanently connect the lower case
body 200 and the case cover 202 together. The Patent Owner's assertion is
based on a single statement in Alexander which states that "case cover 202
… is movably mounted to the case body 200 at a connector mechanism
which is a part of the case C of the laptop computer L." (Alexander, col. 5,
ll. 37-41). Hence, the Patent Owner's position is that because Alexander
discloses a connector mechanism, it does not disclose "separate and
independent" planar elements as required by the claims (App. Br. 7). As
noted supra, the Examiner's position is that "Fig. 3 of Alexander clearly
discloses an exterior cover for a laptop computer, the exterior cover
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comprising a lower case body 200 and a separate and independent case
cover 202." (RAN 8, emphasis in original).
We agree with the Examiner's findings and we are not persuaded by
the Patent Owner's arguments for various reasons. Firstly, it would be
apparent to a person of ordinary skill in the art that the statement of
Alexander relied upon by the Patent Owner includes a typographical error
because the laptop computer L does not have a carrying case C. See In re
Yale, 434 F.2d 666, 668-69 (CCPA 1970) (holding that an obvious
typographical error in a chemical formula was not a disclosure of the
compound identified by the erroneous formula). The specification and
Figure 3 of Alexander discloses that the portable computer system "P"
includes a "carrying case C," and that the disclosed "laptop computer L" is
contained in a "housing H" which is "engagingly fitted" into the carrying
case C (see Alexander, col. 2, ll. 52-56; col. 5, l. 37; Fig. 3).
Correspondingly, it is the portable computer system P that includes a
carrying case C into which the laptop L is received, and it is clear that the
laptop computer L does not have a carrying case C. Thus, the statement of
Alexander relied upon by the Patent Owner stating "case C of the laptop
computer L" is internally inconsistent with the remainder of the specification
and Figure 3 (Alexander col. 5, l. 41).
The error in the singular statement of Alexander relied upon by the
Patent Owner is further confirmed by the immediately following sentence of
Alexander which states "[a] suitable connector mechanism, for example, is
provided in the form of a pair of hinged or pivoted connectors 204 (FIG. 3)
at rear side portions of the laptop computer." (Alexander, col. 5, ll. 41-47;
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Figure 3; see also Comments by Third Party Requester, filed August 9,
2012, pgs. 3-4). The pivoted connectors 204 identified are the hinges that
pivotably connect the display panel 280 of housing H of the laptop L to the
remainder (i.e., keyboard portion) of the laptop L (see Alexander, col. 7, ll.
15-18; Fig. 3).
The Patent Owner also directs our attention to claim 1 of Alexander
which recites "a case cover movabl[y] mounted with said lower case body"
and asserts that this limitation evinces that Alexander fails to disclose a first
elastic planar element that is separate and independent from a second elastic
planar element (App. Br. 7-8). The Patent Owner asserts that "the case
cover and lower case body must be mounted to each other in order to operate
as recited, i.e., they must be connected via, e.g., a hinge so that these two
pieces of the case can open and close," as also recited in claim 1 (App. Br. 9,
emphasis in original).
However, the Patent Owner overlooks the fact that the recited
movable mounting of the case cover/case body, and opening/closing thereof,
are entirely attainable in the apparatus of Alexander without a separate
hinge therebetween because the Alexander patent and its claim 1 are directed
to "[a] portable computer system" which not only includes the carrying case
C but also includes the laptop computer L itself. There is no dispute that the
case cover 202 is movable relative to the lower case body 200 when these
components are attached to the laptop L which is a component of
Alexander's portable computer system P. Indeed, the specification of
Alexander discloses that "the display panel housing 280 and its fitted case
cover 202 are … pivotally movable upwardly at hinged connectors 204 with
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respect to the remainder of the housing H and case C." (Alexander, col. 7, ll.
25-28). Correspondingly, the carrying case C does open and close as
mounted to the laptop L of the portable computer system P, both the
carrying case C and the laptop L being components thereof and the subject
of claim 1 of Alexander. Hence, it is entirely consistent and natural that
claim 1 (of Alexander) would recite that the case cover is movably mounted
with the lower case body, and that the case C opens and closes, the pivoted
connectors 204 being part of the portable computer system P.
The Patent Owner further asserts that "Examiner has misinterpreted
Figure 3 of Alexander" because Figure 3 merely shows an exploded view, so
it cannot support the finding that the case body 200 and the case cover 202
are separate and independent parts (App. Br. 9). The Patent Owner also
argues that "the hinged connector mechanisms 204 are an example of the
type of connector mechanism that can be used to movably mount the case
body 200 to the case cover 202." (App. Br. 8-9, emphasis in original).
However, these arguments are unsupported by the preponderance of
the evidence and would require us to accept the unlikely proposition that
Figure 3 which illustrates in detail the numerous features of the carrying
case C (and discusses them in the specification) would omit an illustration of
a hinge that connects the case body 200 and the case cover 202 and performs
the critical function of opening and closing the carrying case C. As noted,
Figure 3 and the detailed discussion thereof in Alexander do not illustrate or
identify any "connector mechanism" other than the pair of pivoted
connectors 204 that are part of the laptop computer L of the portable
computer system P to which Alexander is directed (see Alexander, col. 7, ll.
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15-18; Fig. 3). Thus, a person of ordinary skill in the art would understand
that Alexander and Figure 3 disclose pivoted connectors 204 of the laptop L
as functioning to movably open and close the case body 200 and the case
cover 202 of the carrying case C. See In re Aslanian, 590 F.2d 911, 914
(CCPA 1979) (drawings can be relied upon for what they reasonably
disclose and suggest to one of ordinary skill in the art). Importantly, while
acknowledgement in Alexander that the pivoted connectors 204 are an
"example" leaves open the possibility that other embodiments of the portable
computer system P may use different configurations of the pivoted
connectors (i.e., hinges) in order to effectuate the opening and closing of the
carrying case C, that invitation for variation does not detract from the
disclosure of Alexander that discloses the use of pivoted connectors 204 of
the laptop L for this very purpose.
Thus, in view of the above, as the Examiner found, we likewise find
that the lower case body 200 and the case cover 202 of Alexander are
"separate and independent" as shown in Figure 3.

Tabs
The Patent Owner also asserts that the Examiner erred in rejecting
claim 1 asserting deficiencies with respect to the secondary reference
Genest. In particular, the Patent Owner notes that Genest discloses "a device
using a combination of retaining tabs 44 and a movable housing portion 49
complete with a locking mechanism 50 and a slide switch 52 to retain the
handheld computer." (App. Br. 11, emphasis in original). According to the
Patent Owner, the retaining tabs 44 therefore "do not deform or move with
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the body of the case" but instead, "are stationary protrusions." (App. Br. 12,
emphasis in original). The Patent Owner argues that in contrast, claim 1 of
the '400 patent recite that the first and second planar elements are "elastic"
and, thus, it is this "elastic nature of the planar elements [that] allows the
tabs to move with the body of the case for entry of the electronic device."
(App. Br. 13, quoting col. 9, ll. 41-48).
However, the Patent Owner's argument is not persuasive because, as
noted by the Examiner, "none of the claims under reexamination recite the
language 'the tabs deform or move with the body of the case …', nor do any
claims recite the particular manner of entry of an electronic device." (RAN
10). Indeed, the Patent Owner argues limitations not present in the claims
and imports limitations of the embodiment described in the specification of
the '400 patent to assert that Genest fails to disclose the claimed invention.
See In re Self, 671 F.2d 1344, 1348 (CCPA 1982); see also Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004):
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.

Clearly, the retaining tabs 44 of Genest are disclosed therein as
functioning to retain the handheld computer as required by claim 1 (Genest,
col. 9, ll. 55-62; Fig. 1). Whereas the locking mechanism 50 is used in
conjunction therewith, claim 1 of the '400 patent does not preclude other
components being used in combination with the recited plurality of tabs to
retain the first and second planar elements. The claim also does not require
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that the recited tabs deflect during insertion of the retained computer
component.
The Patent Owner also asserts that because Alexander states that
"[b]oth the lower case body 200 and the cover 202 are preferably formed of
a molded synthetic resin, preferably a suitable polypropylene, of a suitable
rigidity and strength," it discloses a rigid carrying case. (App. Br. 13,
quoting Alexander, col. 5, ll. 44-47 with emphasis added). The Patent
Owner's argument is unpersuasive.
Firstly, contrary to the Patent Owner's assertion, suggesting "suitable
rigidity and strength" (id.) does not mean that the material should be
absolutely "rigid" so as to be non-deformable or inelastic. Rather, the
teaching of Alexander is that the material should be selected so that it is
"suitable" in both rigidity and strength so that the components of the case
perform their intended function described therein. Secondly, Alexander
discloses that the appropriate material is "polypropylene" which is one of the
materials that the specification of the Patent Owner's '400 patent describes as
being suitable for the first and second elastic planar elements disclosed
therein (compare Alexander, col. 5, ll. 44-47 with '400 patent, col. 5, ll. 7-
10). In this regard, in describing the planar sheets, the specification of the
'400 patent refers to these sheets as "rigid planar sheets 102 and 112" that
may be manufactured using various plastics (col. 5, l. 66-col. 6, l. 12,
emphasis added). Correspondingly, it is clear that even the inventors of the
Patent Owner's '400 patent considered rigidity and elasticity to be a matter of
degree and that a component/material may be accurately described as being
rigid while also being described as elastic.
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Finally, the Patent Owner appears to argue that the Examiner has
failed to articulate an obviousness rationale in support of the rejection based
on the combination of Alexander and Genest (App. Br. 12). However, as
noted supra, the Examiner adopted the rationale articulated in the Request
for Inter Partes Reexamination (see RAN 8-9). In this regard, as reproduced
supra, the rationale is that the combination suggested would have been
obvious, inter alia, "so that the protective cover can be more securely
attached to the laptop," that it would "improve[] on the prior art technique of
Alexander using only friction to hold the cover in place," and that "adding
tabs involves only routine skill in the art." (RAN 9). We agree and find the
articulated rationale sufficient to support the conclusion of obviousness.
In view of the above, we conclude that the Examiner did not err in
rejecting claim 1 as obvious over the combination of Alexander and Genest.
The invention of claim 1 is merely a "combination of familiar elements
according to known methods" and "does no more than yield predictable
results." KSR, 550 U.S. at 415-16. The provision of tabs in a protective case
is a known technique and would be within the skill of those in the art. Id. at
417. Therefore, the Examiner's rejection of claim 1 is affirmed.

Dependent Claims 2, 4-8 and 26-38
The Patent Owner asserts the patentability of these claims based on
their ultimate dependency on independent claim 1 (App. Br. 14). Hence,
these claims fall with claim 1.

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Independent Claim 39
The Patent Owner repeats substantively the same arguments as those
proffered with respect to independent claim 1 to assert patentability of claim
39 (App. Br. 14-23). For the reasons discussed supra, these arguments are
unpersuasive. Hence, we affirm the Examiner's rejection of claim 39.

Dependent Claim 3
The Patent Owner asserts the patentability of claim 3 based on its
ultimate dependency on independent claim 1 (App. Br. 14). Hence, claim 3
also falls with claim 1.

CONCLUSIONS
1. The Examiner did not err in finding that Alexander discloses a
case body 200 that is separate and independent from a case cover 202.
2. The Examiner did not err in finding that Genest discloses a case
having "a plurality of tabs" as recited in claim 1.
3. The Examiner did not err in concluding that it would have been
obvious to one of skill in the art to provide the carrying case of Alexander
with tabs disclosed in Genest to result in the invention claimed.

ORDER
The Examiner's rejections of claims 1-8 and 26-39 are AFFIRMED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956.
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AFFIRMED

peb

Third Party Requester:

MITCHELL + COMPANY, LAW OFFICES
ATTN: JIGANG JIN
4 EMBARCADERO CENTER, SUITE 1400
SAN FRANCISCO, CA 94111

Patent Owner:

THOMAS HORSTEMEYER, L.L.P.
400 INTERSTATE NORTH PARKWAY
SUITE 1500
ATLANTA, GEORGIA 30339