14692087 (P.T.A.B. Sep. 18, 2018)

Ex Parte Fraser et al

Patent Trial and Appeal BoardSep 18, 2018

14692087 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/692,087 04/21/2015 138908 7590 09/18/2018 Burrus Intellectual Property Law Group (MM Files) 222 12th Street NE Suite 1803 Atlanta, GA 30309 FIRST NAMED INVENTOR Nicholas A. Fraser 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 ATTORNEY DOCKET NO. CONFIRMATION NO. MM01164 1057 EXAMINER WICKLUND, DANIEL PM ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 09/18/2018 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 NICHOLAS A. FRASER, KENT ALLEN CAMPBELL!, BRETT A. COAKLEY, ERIC J. DAYRINGER, STEVE C. EMMERT, THOMAS GITZINGER, and MICHAEL L. NEAU Appeal2017-010185 Application 14/692,087 Technology Center 2800 Before GEORGE C. BEST, N. WHITNEY WILSON, and DEBRA L. DENNETT, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL 1 The Examiner finally rejected claims 1-20 of Application 14/692,087 under 35 U.S.C. Â§ 103 as obvious. Final Act. (November 25, 2016). 1 Appellants have indicated that the '087 Application is related to US Application 14/692,118, which is also before the PTAB. Br. 2. We are deciding the appeal in the '118 Application (PT AB Appeal 2017-010186) contemporaneously with this appeal. Appeal2017-010185 Application 14/692,087 Appellants seek reversal of these rejections pursuant to 35 U.S.C. Â§ I34(a). 2 We have jurisdiction under 35 U.S.C. Â§ 6. For the reasons set forth below, we affirm. BACKGROUND The '087 Application describes a locking housing for a portable electronic device. Spec. ,r 2. In particular, the Specification describes a housing for a portable electronic device that is wearable on the user's wrist, e.g., a smart watch. Id. ,r,r 4--6. The Specification further explains that "[ w ]hen an electronic device is configured to be wearable on a wrist for instance, it can be desirable for the user to be able to change the look of [or] appearance of such a device so as not to disrupt their desire to employ a wrist-worn objects as fashion accessories." Id. ,r 6. An electronic device designed in accordance with the Specification's description and the subject matter of the '087 Application's claims allows a user to partially disassemble the device and change various components thereof at will. This permits the user to customize the look or appearance of the electronic device. We reproduce Figure 1 from the Specification below: 2 Motorola Mobility LLC is identified as applicant and real party in interest. Br. 2. 2 Appeal2017-010185 Application 14/692,087 A ' '/:_k~''' ~=:p==:=~""---- ,,.::: .JJ1(2 1 Figure 1 depicts an assembled electronic device in accordance with an embodiment of the claimed invention. Spec. ,r 43. As shown in Figure 1, device 100 comprises case 101, bezel 102, device body 103, and crown stem 104. Id. Appellants' Brief contains a helpful series of annotated versions of the Specification's Figures showing how a user can assemble the electronic device after selecting the desired bezel and case combination. See Br. 13- 16. To assemble the electronic device, bezel 102 is placed on device body 103 and the combination is inserted into case 101. To insert the combination of bezel 102 and device body 103, the orientation of case 101 is rotated with respect to the assembly of bezel 102 and device body 103 relative to its orientation in the fully assembled device: 3 Appeal2017-010185 Application 14/692,087 Flfr 9 Annotated version of Figure 9 illustrating insertion of bezel 102 and device body 103 into case 101. Br. 14. After bezel 102 and device body 103 are inserted into case 101, case 101 is rotated relative to bezel 102 and device body 103: Annotated versions of Figures 12 and 13 illustrating rotation of case 101 relative to bezel 102 and device body 103. Br. 15. 4 Appeal2017-010185 Application 14/692,087 This rotation causes complementary engagement members located on bezel 102 and case 101 to engage with each other, holding the assembly together. Br. 13-15. The rotation also causes device body 103's receiving aperture to come into alignment with case 101 's aperture. Crown stem 104 is then inserted through case lOl's aperture and into device body 103's receiving aperture to secure the relative rotational positions of the assembly's components. FIG. JtJ Annotated version of Figure 10, illustrating insertion of crown stem 104 through aperture in case 101 and into the receiving aperture in device body 103. Br. 16. Claim 1 is representative of the '087 Application's claims and is reproduced below from the Claims Appendix of the Brief. 1. A device, comprising: a case comprising a case sidewall defining a circular receiver having a receiving opening at a central axis, the case sidewall defining at least one aperture having an aperture access oriented substantially orthogonal he with the central axis, an inner wall of the case comprising one or more engagement members; 5 Appeal2017-010185 Application 14/692,087 a device body comprising a sidewall defining a receiving aperture, the device body to insert into the circular receiver along a central axis at a first rotational alignment about the central axis relative to the case; a bezel coupled to the device body, the bezel to couple to the case at the receiving opening, the bezel comprising an annular engagement ring defining one or more complementary engagement members to engage the one or more engagement members when the device body is inserted into the circular receiver and rotated to a second rotational alignment about the central axis relative to the case; and a crown stem to extend through the at least one aperture into the receiving aperture when the device body is inserted into the circular receiver and in the second rotational alignment about the central axis relative to the case; the crown stem comprising an axial retention device to retain the device body in the second rotational alignment about the central axis relative to the case. Br. 30 ( emphasis added). REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1, 8-10, 14, 17, and 18 are rejected under 35 U.S.C. Â§ 103 as unpatentable over the combination of Tamaro 3 and Li. 4 Final Act. 2. 3 US 6,762,976 Bl, published July 13, 2004. 4 US 5,598,383, issued January 28, 1997. 6 Appeal2017-010185 Application 14/692,087 2. Claims 2-7, 19, and 20 are rejected under 35 U.S.C. Â§ 103 as unpatentable over the combination of Tamaro, Li, and Shiffman. 5 Final Act. 8. 3. Claim 11 is rejected under 35 U.S.C. Â§ 103 as unpatentable over the combination of Tamaro, Li, and Byun. 6 Final Act. 12. 4. Claim 12 is rejected under 35 U.S.C. Â§ 103 as unpatentable over the combination of Tamaro, Li, Byun, and Kelly. 7 Final Act. 12. 5. Claim 13 is rejected under 35 U.S.C. Â§ 103 as unpatentable over the combination of Tamaro, Li, and Luk. 8 Final Act. 13. 6. Claim 15 is rejected under 35 U.S.C. Â§ 103 as unpatentable over the combination of Tamaro, Li, and Isono. 9 Final Act. 14. 7. Claim 16 is rejected under 35 U.S.C. Â§ 103 as unpatentable over the combination of Tamaro Li, and Hyun. 1Â° Final Act. 15. DISCUSSION Rejection 1. The Examiner rejected claims 1, 8-10, 14, 17, and 18 as unpatentable over the combination of Tamaro and Li. Final Act. 2-8. Appellants have stipulated that claims 8-10, 14, and 17 may be grouped with independent claim 1 and that claim 1 may serve as representative of the group of claims. Br. 12. Thus, claims 8-10, 14, and 17 5 US 3,386,239, issued June 4, 1968. 6 US 2011/0221688 Al, published September 15, 2011. 7 US 2008/0062819 Al, published March 13, 2008. 8 US 2011/0235471 Al, published September 29, 2011. 9 US 3,789,606, issued February 5, 1974. 10 US 2006/0291336 Al, published December 28, 2006. 7 Appeal2017-010185 Application 14/692,087 stand or fall with independent claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). We shall discuss independent claim 18 separately. Claim 1. In rejecting claim 1, the Examiner found that Tamaro describes each element of the claim except for: (A) a device comprising a device body to insert into a circular receiver along a central axis at a first alignment about the central axis relative to the case; (B) a bezel coupled to the case at the receiving opening; (C) a crown stem extending through the case sidewall's aperture into the device body's receiving aperture; and (D) the crown stem comprising an axial retention device to retain the device body in the second rotational alignment about central axis relative to the case. Final Act. 3--4; see also Br. 17. The Examiner further found that Li describes two of the four claim elements----elements (A) and (B}-not described by Tamaro. Final Act. 4; see also Br. 17-18. The Examiner's rejection of claim 1 concluded: c. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to replace the corresponding complementary engagement members of screws and screw holes of Tamaro at et al. with screw threads as suggested by Li because simply replacing one known means of attaching a bezel/device body assembly to a case with another means of attaching a bezel/ device body assembly to a case divides the predictable result that the device will be able to be assembled and disassembled relatively easily for repair and maintenance. Although [the combination ofJ Tamaro et al. and Li does not specifically disclose a crown stem to extend through the at least one aperture into the receiving aperture when the device body is inserted in the second rotational alignment about the central axis relative to the case; the crown stem comprising an axial retention device to retain the device body in the second rotational alignment about the central axis relative to the case, it is inherent that if the screw 8 Appeal2017-010185 Application 14/692,087 arrangement of Tamaro et al. is replaced with a similar screw threading as suggested by Li that the push button would only be able to be assembled in the particular second rotational alignment as the aperture is a both the device body and the case must line up for the crown stem to be assembled as seen in Tamaro et al. Fig. 7, 8. Final Act. 4--5. Appellants argue that the rejection of claim 1 should be reversed because: (1) the combination of Tamaro and Li does not teach each and every limitation of claim 1, Br. 16-18; (2) the Examiner erred by finding that it would have been obvious to a person of ordinary skill in the art to combine Tamaro and Li by replacing Tamaro's screw assembly with Li's threaded case, id. at 19-20; (3) the Examiner's proposed modification would render Tamaro's device unsuitable for its intended purpose, id. at 20-25; and ( 4) the Examiner erred by finding that the use of the crown stem as an axial retention device to retain the device body in rotational alignment relative to the case is inherent if the screw arrangement of Tamaro et al. is replaced with a similar screw threading as suggested by Li. , Id. at 25-26. For the following reasons, we are not persuaded that Appellants have identified reversible error in the Examiner's rejection of claim 1. First, Appellants argue that "there is agreement between the Examiner and Applicant that the combination of Tamaro and Li fails to teach each and every limitation of claim 1. Accordingly, the rejection is in error and should be withdrawn." Br. 16. This argument is not persuasive of reversible error. As Appellants acknowledge, "[fJor a proper rejection of the claim underÂ§[ ]103, the cited combination of references must disclose, teach, or suggest all of the elements of an applicant's claim." Id. (emphasis added) (citing In re Dow 9 Appeal2017-010185 Application 14/692,087 Chem. Co., 837 F.2d 469 (Fed. Cir. 1988); In re Keller, 642 F.2d 413 (CCPA 1981)). Thus, a proper understanding of the law is that the prior art need not explicitly describe each limitation of a claim for that claim to be obvious. Rather, the claim is obvious if the differences between the claimed subject matter and the combined teaching of the prior art would have been obvious to a person of ordinary skill in the art at the time of the invention. As the Supreme Court has explained: Under Â§ 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Limitations not expressly described in the prior art constitute differences between the prior art and the claims at issue. Furthermore, Appellants and the Examiner disagree about precisely which limitations recited in claim 1 are not described by either Tamaro or Li. Appellants argue that the combination of Tamaro and Li does not describe the entirety of the following limitations: [A] a crown stem to extend through the at least one aperture into the receiving aperture when the device body is inserted into the circular rotation and in the second rotational alignment about the central axis relative to the case; 10 Appeal2017-010185 Application 14/692,087 [BJ where the crown stem comprises an axial retention device to retain the device body in the second rotational alignment about the central axis relative to the case. Br. 18. The Examiner, however, finds that [t]he only difference between the disclosure of Tamaro and the claimed invention lies in how the bezel and device body are engaged with the case. . . . The difference is that, in Tamaro, the recited features are not necessarily rotationally aligned and the complementary engagement members are not located on the bezel. Answer2-3. The Examiner further explains that Li teaches a device body (the main unit of element 1 inside where the control elements located) coupled to a bezel (the outer portion of element 2 which is inserted into element 1) with an alternate means ( elements 4/5 of element 1 engaging with screw threads of element 2) of engaging with the case than Tamaro. Much like the claimed invention, Li teaches complementary engagement members [that] are rotationally aligned and the complementary engagement members are located on the bezel to engage with the engagement members of the case, see Li Fig. 1. . . . Because Tamaro already discloses [that] the crown 10 must be assembled in the second alignment (shown in Figures 6, 7, and 12 where the apertures of the case and the device body align), it follows that if the screws in screw holes are replaced with screw threads, the crown will necessarily be assembled in the second rotational alignment. Id. at 3--4. We determine, based upon the arguments and evidence of record before us, that the Examiner has sufficiently explained how the combination of Tamaro and Li describes or suggests all of claim 1 's features. 11 Appeal2017-010185 Application 14/692,087 Second, Appellants argue that the Examiner erred by finding that it would have been obvious to a person of ordinary skill in the art to combine Tamaro and Li by replacing Tamaro's screw assembly with Li's threaded case. Br. 19--20. In particular, Appellants argue that the Examiner has not provided an adequate explanation of the reason why a person of ordinary skill in the art would have modified Tamaro in the manner suggested in the rejection. Id. We are not persuaded by this argument. As the Supreme Court has explained "[ t ]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). As the Examiner has explained, a person of ordinary skill in the art at the time of the invention would have considered a variety of alternative means to attach the device body and bezel to the case. See Answer 4. Such a person would have recognized that Li's means of attachment would perform the same function as Tamaro's use of screws to attach the bezel/device body to the case. See id. at 4--6. If Appellants are arguing that the rejection of claim 1 should be reversed because the Examiner has not identified an explicit suggestion for replacing Tamaro's screws with Li's means of attachment in the prior art, this argument is not persuasive. "Express suggestion to substitute one equivalent for another need not be present [in the prior art] to render such substitution obvious." In re Fout, 675 F.2d 297,301 (CCPA 1982). On the record before us, we determine that the Examiner has provided an adequate explanation why a person of ordinary skill in the art would have made the modification proposed in the Examiner's rejection. 12 Appeal2017-010185 Application 14/692,087 Third, Appellants argue that the Examiner's proposed modification Tamaro in view of Li would render Tamaro's device unsuitable for its intended purpose. Br. 20-25 (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). In particular, Appellants argue that Tamaro's purpose is to provide a shockproof watch. Id. at 21 (citing Tamaro col. 1, 11. 10-13). According to Appellants, the shock absorption capability of Tamaro's disclosed embodiment "is predicated upon mechanical isolation of the metallic inner middle and metallic outer middle by shock absorber, and upon mechanical isolation of the bezel and the metallic inner middle by another shock absorber. Without the separation, there is no shock absorption." Id. at 23. Tamaro's Figure 5, reproduced below, shows how the metallic inner middle and metallic outer middle portions of Tamaro's watch are mechanically isolated from each other. FIG. 5 -?7 34 3.,3. 1Â· 20b 26 ~6 / / , I I 21Â·---- ) i l / / 37 / 30 31 20c 44 Tamaro's Figure 5 is a sectional view of a watch according to an embodiment of Tamaro's invention. As can be seen in Figure 5, inner middle 20 is separated from outer middle 21 by shock absorber 35. Tamaro col. 6, 11. 36-46. Inner middle 20 13 Appeal2017-010185 Application 14/692,087 is held in place relative to outer middle 21 by a plurality of fixing screws 36. Id. at Fig. 11. Each fixing screw 36 engages threads in outer body 21 and has an end portion 36c that extends through shock absorber 35 into shock absorber 38 which, in tum, is inserted in hole 37 of inner middle 20. Id. at col. 6, 11. 52-59. In the rejection of claim 1, the Examiner proposes replacing Tamaru's fixing screws 36 with the screw threads shown in Li. Final Act. 4--5. These screw threads are depicted in Li's Figure 1, a portion of which is reproduced below. FIG.1 Figure 1 is an exploded view showing the double- threaded coupling arrangement provided between casing 2 and bottom cover 1. Li Abstract; col. 2, 11. 9-11. In Li's Figure 1, the bezel portion of casing 2 has threads which allow casing 2 to be screwed into the complementary threaded portions 4 and 5 of 14 Appeal2017-010185 Application 14/692,087 bottom cover 1. According to Li, when casing 2 is screwed into bottom cover 1, packing ring 6 is compressed between casing 2 and bottom cover 1, creating an air-tight seal for the watch. Li col. 1, 11. 57---60. According to Appellants, coupling either Tamaru's metallic inner middle to its metallic outer middle, or its bezel to its metallic outer middle, with a double threaded, would render the desired operation of its shock absorbers unsatisfactory for their intended purposes, namely the absorption of shock and [provision of] additional comfort. This is true because Li's double threads are applied with sufficient force as to make an airtight and watertight seal where parts are held "tightly and strongly" together. Such pressure would simply not allowed Tamaru's shock absorbers to function, as there would no longer be any room between the hermetic threaded seal for any shock absorbers to be included. As such, the combination would render Tamaru's shock absorbers unsatisfactory for their intended purpose .... According to MPEP Â§2143.01, there is thus no motivation to make the combination. The rejection is therefore in error and should be withdrawn. Br. 25. This argument is not persuasive of reversible error. Appellants' argument is based upon the premise that Tamaro as modified in view of Li would not have any room for the inclusion of shock absorbers. However, a person of ordinary skill in the art is also a person of ordinary creativity. KSR, 550 U.S. at 421. Such a person would understand the necessity of leaving sufficient space for shock absorbers to accomplish the goals set forth in Tamaro. After all, "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." 15 Appeal2017-010185 Application 14/692,087 Keller, 642 F.2d at 425; see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) ("It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements."). Fourth, Appellants argue that the Examiner erred by finding that use of the crown stem as an axial retention device to retain the device body in rotational alignment relative to the case is inherent if Tamaro' s screw arrangement is replaced with Li's screw threading. Br. 25-26. In particular, Appellants argue that the Examiner's finding is erroneous because both Tamaro and Li "require movement of the crown stem relative to their casings for their devices to be operational." Id. at 26. Appellants' arguments are not persuasive of reversible error in the rejection of claim 1. In rejecting claim 1, the Examiner found that Tamaro describes a crown stem to extend through the at least one aperture into the receiving aperture when the device body is inserted into the circular receiver and in the second alignment about the central axis relative to the case (Fig. 8, element 13 of element 1 O; i.e. the crown can only be assembled once the device body has its engagement members in line with the screw engagement members of the case) .... Final Act. 3 ( emphasis added); see also Answer 8 ("Tamaro discloses all of the positively claimed structural features (Figs. 7, 8 crown 10, crown stem 13 and axial retention device 42) including a particular alignment in which 16 Appeal2017-010185 Application 14/692,087 the crown is assembled into the watch which is the same second alignment required [by claim 1]. "). For ease of reference, we reproduce Tamaro's Figure 8 below. FIG. 8 Tamaro's Figure 8 is an exploded sectional view of a watch according to an embodiment of Tamaro' s invention. Tamaro col. 4, 11. 10-23. As illustrated in Figure 8, Tamaro's screw-lock crown assembly comprises support pipe 17, which is securely mounted in hole 16a in the inner middle portion of the watch. Crown head 10 is connected to support pipe 17 by screw thread 18. Stem connecting member 13 is connected to stem 11 of the watch and is rotatably mounted in support pipe 17. Coil spring 14 is located between crown head 10 and stem connecting member 13. When crown head 10 is rotated so that screw thread 18 is released from the corresponding threads on support pipe 17, coil spring 14 urges crown head 10, causing engaging polygonal hole 15 to engage a corresponding polygonal portion 16 formed on the outer wall of stem connecting member 13. Thus, when crown head 10 is rotated, stem 11 is rotated by way of stem 17 Appeal2017-010185 Application 14/692,087 connecting member 13. See Tamaro col. 1, 11. 36-52; col. 6, 11. 21-28; col. 6, 1. 60-col. 7, 1. 3. As can be seen more clearly in Tamaro's Figure 7, which we reproduce below in annotated form, when screw-lock crown assembly 40 is inserted into guard pipe 41, stem connecting member 13 (shown with yellow crosshatching in the annotated version of Figure 7 reproduced below}- which the Examiner has found corresponds to the claimed crown stem- extends through an opening in the outer middle 21 (red crosshatching) and is received in an opening in the body portion 20a of inner middle 20 (blue crosshatching). 14---Â· 10Â· 10â€¢------ 15 / / 13 I 17 FIG. 7 l \ 11 42 i 30 Tamaro's Figure 7 is a sectional view of a watch according to an embodiment of Tamaro's invention. Tamaro col. 4, 11. 10-22. We have added the colored crosshatching. Thus, when screw-lock crown assembly 40 is inserted into guard pipe 41, stem connecting member 13 retains the device body in the second rotational alignment about the central axis relative to the case. Appellants have not convinced us that the Examiner reversibly erred by finding that the 18 Appeal2017-010185 Application 14/692,087 combination of Tamaro and Li describes or suggests the claimed crown stem comprising an axial retention device. Claim 18. Appellants' arguments for reversal of the rejection of claim 18 are substantially the same as those presented for reversal of the rejection of claim 1. See Br. 27. As discussed above, we have affirmed the rejection of claim 1 as unpatentable over the combination of Tamaro and Li. Thus, we also affirm the rejection of claim 18. Rejection 2. The Examiner rejected claims 2-7, 19, and 2 0 as unpatentable over the combination of Tamaro, Li, and Shiffman. Final Act. 8-11. Appellants have stipulated that claims 2-7 may be grouped with claim 1 and that claim 1 may serve as representative of the group of claims. Br. 12. Appellants have further stipulated the claims 19 and 20 may be grouped with claim 18 and that claim 18 may serve as representative of the group of claims. Id. Accordingly, claims 2-7 stand or fall with claim 1, and claims 19 and 20 stand or fall with claim 18. 37 C.F.R. Â§ 4I.37(c)(l)(iv). For the reasons set forth above, we have affirmed the rejection of claim 1 and a claim 18. Thus, we also affirm the rejection of claims 2-7, 19, and 20. Rejections 3--7. These rejections cover claims 11-13, 15, and 16. Appellants have stipulated that these claims may be grouped with claim 1, with claim 1 serving as a representative claim. Br. 12. Accordingly, these claims stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Because we have affirmed the rejection of claim 1, we also affirm the rejection of claims 11-13, 15, and 16. 19 Appeal2017-010185 Application 14/692,087 CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1-20 of the '087 Application. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 20