Ex Parte Carnevali

Patent Trial and Appeal Board

Sep 14, 2017

12799659 (P.T.A.B. Sep. 14, 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.
12/799,659 04/28/2010 Jeffrey D. Carnevali NPI-110 3760
24692 7590
Charles J. Rupnick
4742 - 42nd Ave. SW
Suite 494
Seatlle, WA 98116-4553
09/18/2017 EXAMINER
DUCKWORTH, BRADLEY
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
rupnick@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY D. CARNEVALI
Appeal 2015-002430
Application 12/799,659
Technology Center 3600
Before LISA M. GUIJT, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
20, 21, 23—25, and 29. Claims 1—7, 9-19, 22,1 and 26—28 stand allowed.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Examiner’s objection to claim 22 is withdrawn, and the Examiner
determines claim 22 is allowable. See Ans. 5. Claim 8 is cancelled. Appeal
Br. 35 (Claims App’x).
Appeal 2015-002430
Application 12/799,659
ILLUSTRATIVE CLAIM
Claim 20, reproduced below, is illustrative of the claimed subject
matter:
20. A method for securing a support apparatus at variable
security levels, the method comprising:
structuring a tray for receiving a portable electronic
device, the structuring of the tray further comprising a structuring
mounting interface on the tray;
with the portable electronic device releasably retained in
the tray, variably securing the device in the tray by the method
of:
changing a securable latching element between a latched
configuration relative to the tray for securably latching the
portable electronic device in the tray, and an unlatched
configuration for releasing the portable electronic device;
changing a security element between a secured
configuration for alternatively securing the latching element in
each of the latched and unlatched configurations thereof, and an
unsecured configuration for permitting the latching element to
change between the latched and unlatched configurations
thereof; and
changing a locking element between a locked
configuration relative to the security element for locking the
security element in the secured configuration thereof, and an
unlocked configuration for permitting the security element to
change between the secured and unsecured configurations
thereof.
THE REJECTION
Claims 20, 21, 23—25, and 29 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Yang (US 6,711,921 Bl; issued Mar. 30, 2004).
2
Appeal 2015-002430
Application 12/799,659
ANALYSIS
We have reviewed the Examiner’s rejection in light of each of
Appellant’s arguments, and we disagree with Appellant that the Examiner
erred. To the extent consistent with the analysis below, we adopt the
Examiner’s reasoning, findings, and conclusions set forth in the Final Office
Action, Advisory Action, and the Examiner’s Answer. We sustain the
Examiner’s rejection and provide the following analysis primarily for
emphasis.
As an initial matter, several arguments in the Appeal Brief and Reply
Brief address aspects of Appellant’s invention that are not recited in the
claims on Appeal as currently pending. See, e.g., Appeal Br. 15—17, 19—20,
23; Reply Br. 4, 9-10, 13. Where Appellant’s remarks address previous
versions of the claims that differ from the pending claims on appeal or are
otherwise not commensurate with the scope of the claims, such remarks are
not persuasive of error. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability). Similarly, where Appellant’s remarks do not point to any
specific claim limitation within the pending claims, those remarks amount to
a general allegation that the claims define a patentable invention and do not
constitute an argument for separate patentability. 37 C.F.R. §
41.37(c)(l)(vii). Further, Appellant has waived arguments Appellant failed
to timely raise or properly develop. See 37 C.F.R. §§ 41.37(c)(l)(iv),
41.41(b)(2).
In addition, Appellant contends that the Examiner’s Answer includes
positions not previously expressed by the Examiner that amount to new
grounds of rejection. Reply Br. 4—5. However, allegations that an
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Appeal 2015-002430
Application 12/799,659
examiner’s answer contains undesignated new grounds of rejection must be
resolved by filing a petition to reopen prosecution under 37 C.F.R. § 1.181,
the absence of which constitutes waiver of such arguments. 37 C.F.R.
§41.40 (“Failure of appellant to timely file such a petition will constitute a
waiver of any arguments that a rejection must be designated as a new ground
of rejection.”); accord MPEP § 1207.03. Appellant did not file a petition
and, therefore, waived any argument that the Examiner’s Answer includes
new grounds of rejection.
Claim 20
In the rejection of claim 20, the Examiner finds Yang discloses a
locking device for a PDA that includes a cable 60 and hook 61 (collectively
cited as the claimed “latching element”), a latch 321 (the “security
element”), and a locking assembly 30 (the “locking element”). Final Act. 2—
3. The Examiner interprets the claimed “latched configuration” to include
Yang’s hook 61 engaged with the upper tab 55 of the positioning frame 50,
and the Examiner interprets the claimed “unlatched configuration” to include
Yang’s disclosures of hook 61 disengaged from upper tab 55. Advisory Act.
1 (“the latched configuration as seen in [Fjigure 6 is when the latching
element (60,61) is [attached] at 55, and the unlatched configuration is when
the latching element is not attached at 55”); accord Final Act. 2 (stating that
Figure 6 discloses the latched configuration and Figure 3 discloses the
unlatched configuration). Further, the Examiner interprets the claimed
“secured configuration” to include Yang’s disclosure of security element
321 in a position to secure the latching element by preventing movement of
cable 60 (Advisory Act. 1; Final Act. 2 (citing Yang Fig. 5)), and the
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Appeal 2015-002430
Application 12/799,659
Examiner interprets the claimed “unsecured configuration” to include
Yang’s disclosure of the security element 321 positioned to allow movement
of cable 60 and movement the latching element between the latched
configuration and the unlatched configuration (Advisory Act. 1; Final Act. 2
(citing Yang Fig. 7)).
Yang’s Figures 4 and 6, copied below, depict the “latching element”
connected to upper tab 55, with Figure 4 depicting cable 60 in a “loose”
condition and Figure 6 depicting cable 60 in a “tightened” condition. Yang
col. 4,11. 18—65. Yang’s Figures 4 and 6 are reproduced below:
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Yang describes Figure 4 as “a side plan view ... of the locking device in
[Figure] 1 showing that PDA [70] and charging base [71] are put on the base
[10] and the cable [60] is in a loose condition.” Col. 2,11. 4—6. Yang
describes Figure 6 as “a side plan view of the locking device in [Figure] 1
showing that the charging base and the PDA are securely held on the base by
means of pulling the cable [60].” Col. 2,11. 10-13.
With the Examiner’s interpretation of the claimed latched
configuration as Yang’s disclosures of hook 61 engaged with upper tab 55,
both Figures 4 and 6 depict a latched configuration. With the Examiner’s
interpretation of the claimed unlatched configuration as Yang’s disclosures
of hook 61 not engaged with upper tab 55, both of Yang’s Figures 5 and 7,
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Appeal 2015-002430
Application 12/799,659
copied below, depict an unlatched configuration. Further, Yang’s Figure 5
depicts the “secured configuration” with cable 60 held securely, and Yang’s
Figure 7 depicts the “unsecured configuration” (with the right arrow
depicting security element 321 in an actuated position) that allows
movement of cable 60.
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A; FIG 5 FIG,7
The Examiner and Appellant agree that Yang teaches a locking
element having a “locked configuration” and an “unlocked configuration.”
Ans. 5; Reply Br. 3. Appellant argues, however, that Yang does not disclose
locking the security element in an unsecured configuration. See Appeal Br.
15; Reply Br. 4, 8—10, 12—13. Specifically, Appellant argues “[i]n contrast
to Yang, the lock element of the present invention is coupled for locking the
security element in either of the secured and unsecured configurations
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Appeal 2015-002430
Application 12/799,659
thereof.” Reply Br. 9 (emphasis omitted); accord Appeal Br. 13—15; Reply
Br. 3^4.
We find Appellant’s argument unpersuasive, as method claim 20 does
not require locking the security element in an unsecured configuration.
Contrary to Appellant’s arguments, the plain language of claim 20 recites
“changing a locking element between a locked configuration ... for locking
the security element in the secured configuration thereof, and an unlocked
configuration for permitting the security element to change between the
secured and unsecured configurations thereof.” Appeal Br. 38 (Claims
App’x) (emphasis added). Nothing in claim 20 requires locking the security
element in the unsecured configuration, and we agree with the Examiner that
Yang discloses “changing a locking element between a locked configuration
. . . and an unlocked configuration” as claimed.
Appellant additionally argues that because the cited “security
element” 321 of Yang must be manually actuated and automatically returns
to the “secured configuration,” Yang does not disclose the recited
“unsecured configuration.” Reply Br. 11—13. Nothing in claim 20, though,
distinguishes a security element that must be “manually” changed between
the secured and unsecured configurations or that automatically reverts to the
secured configuration, as disclosed in Yang. To the contrary, we agree with
the Examiner that Yang’s Figure 7 depicts the claimed “unsecured
configuration,” with Yang’s Figures 5 and 7 and related decriptions
disclosing the step of “changing a security element between a secured
configuration . . . and an unsecured configuration.” See Ans. 2—3, 6.
We similarly disagree with Appellant’s arguments that because
“security element” 321 automatically returns to the “secured configuration”
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Appeal 2015-002430
Application 12/799,659
for securing the latching element, Yang cannot have a secured configuration
for alternatively securing the latching element in its unlatched configuration.
Appeal Br. 22—24; Reply Br. 11—12. As the Examiner finds, Yang discloses
that its security element will be in the secured configuration any time the
security element is not actuated such that cable 60 is secured both when
hook 61 is engaged with upper tab 55 (e.g., Figures 4, 6) and when hook 61
is not engaged with upper tab 55 (e.g., Figure 5).
Accordingly, having considered the Examiner’s rejection of claim 20
in light of each of Appellant’s arguments and the evidence of record, we
disagree with Appellant and sustain the Examiner’s rejection.
Claims 21, 23, and 25
The Appeal Brief describes the Examiner’s findings regarding claims
21, 23, and 25, but the Appeal Brief does not advance an individual
argument for patentability of claims 21, 23, and 25 beyond those advanced
for claim 20. Appeal Br. 25—26. Appellant argues for the first time in the
Reply Brief, however, that certain limitations of claim 21 are not disclosed
in Yang. Reply Br. 13—14.
Appellant has not shown good cause for failing to raise those
arguments in the Appeal Brief, and Appellant, therefore, waived such
arguments. See 37 C.F.R. §§ 41.37(c)(l)(iv), 41.41(b)(2). Moreover, the
untimely arguments advanced in the Reply Brief do not address claim 21 as
currently pending and are unpersuasive for this additional reason. Compare
Reply Br. 13—14 (arguing claim 21 recites “the low security configuration of
the variable level security mechanism the lock element is further arranged in
the locked configuration thereof for locking the security element in the
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Appeal 2015-002430
Application 12/799,659
unsecured configuration thereof’) (emphasis omitted), with Appeal Br. 38
(Claims App’x (claim 21 reciting, in relevant part, “a low security
configuration wherein the security element is in the unsecured configuration
thereof’)). Accordingly, we sustain the Examiner’s rejection of claims 21,
23, and 25 for the same reasons discussed above regarding claim 20.
Claim 24
Claim 24 depends from claim 21 and additionally recites:
operating the securable latching element, the security element,
and the locking element between each of: i) the low security
configuration; ii) the high security configuration; and iii) an
unsecured configuration wherein the latching element is in the
unlatched configuration thereof, and the security element is in
the unsecured configuration thereof[.]
Appeal Br. 40 (Claims App’x). Appellant repeats the arguments advanced
for claim 20, namely, that because Yang’s security mechanism automatically
returns to a “secured configuration,” Yang does not teach a secured
configuration for securing the latching element in the unlatched
configuration. Appeal Br. 26—27.
As explained by the Examiner and as addressed above, we disagree
with Appellant and agree with the Examiner that Yang’s Figure 5, for
example, discloses the security element securing the latching element
(specifically, cable 60) in an unsecured configuration (e.g., with hook 61
disengaged from upper tab 55). Compare Yang Fig. 5 (depicting engaging
element 13 and security element 321 in the “secured configuration” with
hook element 61 disengaged from upper tab 55), with Yang Fig. 7 (depicting
engaging element 13 and security element 321 in the “unsecured
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Appeal 2015-002430
Application 12/799,659
configuration” with hook element 61 disengaged from upper tab 55).
Accordingly, we sustain the Examiner’s rejection of claim 24.
Claim 29
Regarding claim 29, Appellant again argues Yang does not disclose
securing the latching element in the unlatched configuration. Appeal Br.
27—32 (advancing the same arguments as those advanced for claims 20 and
24). We disagree with Appellant for the same reasons addressed above
regarding claims 20 and 24.
In addition, Appellant argues Yang does not disclose a “variable level
security mechanism being ‘positioned for engaging the portable electronic
device’” as recited in claim 29. Reply Br. 15. Appellant argues Yang
instead discloses a PDA 70 on a charging base 71 and supported by holding
plate 72, while “the security mechanism of Yang only engages elements of
the base (10), . . . not in any way ‘engaging]’ the PDA (70) or the charging
base (71).” Reply Br. 16 (emphasis omitted); accord Appeal Br. 32.
The Examiner finds, and we agree, that Yang’s security mechanism
includes elements positioned for engaging a portable electronic device as
claimed. See Ans. 8. Moreover, Appellant’s arguments are not
commensurate with the scope of claim 29, as nothing in claim 29 excludes a
security mechanism that includes a base, holding plate, or other structures
for engaging a portable electronic device. Accordingly, we sustain the
Examiner’s rejection of claim 29.
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Appeal 2015-002430
Application 12/799,659
DECISION
We affirm the Examiner’s rejection of claims 20, 21, 23—25, and 29
under 35 U.S.C. § 102(b).
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
11