Ex Parte Gandhi

Patent Trial and Appeal Board

Sep 8, 2017

12765949 (P.T.A.B. Sep. 8, 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.
12/765,949 04/23/2010 Dinesh Gandhi PSION3542 1475
126568 7590 09/12/2017
'Zebra Teehnnlnaies; Pnmnratinn
EXAMINER
3 Overlook Point
Lincolnshire, IL 60069
WU, JERRY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
09/12/2017 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):
docketing @ zebra, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DINESH GANDHI1
Appeal 2016-001832
Application 12/765,949
Technology Center 2800
Before PETER F. KRATZ, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 3—6, 11, 12, 15—17, and 23. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
BACKGROUND
The subject matter on appeal relates to a variable form factor multi­
portion housing of a mobile computer. E.g., Claim 1. Claim 1 is reproduced
below from page 14 (Claims Appendix) of the Appeal Brief (some
formatting added):
1 According to the Appellant, the real party in interest is Psion, Inc., a
wholly owned subsidiary of Zebra Technologies, Corp. Br. 1.
Appeal 2016-001832
Application 12/765,949
1. A variable form factor multi-portion housing of a mobile
computer comprising:
a first housing portion to provide a first interior for mounting a
first electronic component, the first housing portion having a
common first mating surface;
a secondary housing portion selectable from a family of different
secondary housing portions of different volumes, each of the
different secondary housing portions of the family of different
secondary housing portions having a same second mating surface
that is configured to couple to the common first mating surface,
the secondary housing portion being configured to facilitate
at least one of housing a portion of the first electronic
component and housing at least a portion of a second
electronic component that is interconnected with the first
electronic component,
the secondary housing portion being releasably secured to the
first housing portion; and
a resilient seal positioned between the common first mating
surface and the second mating surface of the secondary housing
portion, the resilient seal configured to inhibit penetration of
foreign contaminants into the interior of the multi-portion
housing.
ANALYSIS
Claims 1, 3—6, 11, 12, 15—17, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mangaroo (US 2010/0019044 Al, published
Jan. 28, 2010) in view of Cargin (US 5,747,786, issued May 5, 1998).
The Appellant generally argues the claims as a group, with additional
arguments directed to claims 11, 15, and 17. We select claim 1 as
representative of the grouped claims, and we limit our discussion to claims
1, 11, 15, and 17. The remaining claims on appeal will stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/765,949
Claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the rejection for reasons set forth below, in the Final
Action, and in the Examiner’s Answer. See generally Final Act. 2—12; Ans.
2-8.
Relying largely on Mangaroo’s figures, the Examiner finds that
Mangaroo teaches a variable form factor multi-portion housing comprising,
inter alia, first housing portion 23 and second housing portion 34. Final
Act. 2—3 (citing Mangaroo Figs. 1,18, and 135). Mangaroo describes
element 34, which the Examiner identifies as the second housing portion, as
a “communications module.” Mangaroo 135. The Examiner further finds
that Mangaroo teaches “a resilient seal positioned between two mating
surfaces between two housing [portions]” that is “configured for inhibiting
penetration of foreign contaminants into an interior of the multi-portion
housing.” Final Act. 3. However, the Examiner finds that (1) Mangaroo
teaches a different location for its resilient seal (i.e., not between the first
and second housing portions that the Examiner identifies as elements 23 and
34, respectively), (2) Mangaroo fails to teach that the secondary housing
portion is selectable from a family of different secondary housing portions of
different volumes having a same second mating surface that is configured to
couple to a common first mating surface, and (3) Mangaroo fails to teach the
secondary housing portion is releasably secured to the first housing portion.
Id. at 2—3.
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Application 12/765,949
Concerning (2) and (3), the Examiner finds that Cargin teaches
secondary housing portions of different volumes having a same second
mating surface that is configured to couple to a common first mating surface
of a first housing portion. Id. at 4 (citing Cargin Figs. 14—16). In particular,
the Examiner relies on Cargin’s teaching of communications modules 348
and 355, which have different volumes, but have mating surfaces that attach
to the mating surface of the first housing portion. See id.; see also Cargin
Figs. 14, 15, and 21:43—50. The Examiner finds that Cargin’s secondary
housing portions are releasably secured to Cargin’s first housing portion.
Final Act. 4. The Examiner concludes that it would have been obvious to
modify Mangaroo to include releasably secured communications modules of
different volume that mate to a common mating surface of the first housing
portion “to provide replaceable data and communications module and/or
with different function [sic].” Id. at 4—5.
Concerning (1) the location of the resilient seal, the Examiner finds
that the use of “resilient seal technologies” was “well known in the art at the
time of invention” as evidenced by Mangaroo. Id. at 4. The Examiner
concludes that it would have been obvious to include a resilient seal between
the first and second mating surfaces (which, as discussed above, the
Examiner determines would be created by the combination of Mangaroo and
Cargin, in that the Examiner proposes modifying Mangaroo’s
communications module 34 to be releasably secured to Mangaroo’s first
housing portion) to “inhibit penetration of foreign contaminants into the
interior of the multi-portion housing.” Id. at 3^4.
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Application 12/765,949
In view of those and other findings, the Examiner determines that the
subject matter of claim 1 would have been obvious to a person of ordinary
skill in the art. Id. at 2—5.
As an initial matter, we note that the Appellant appears to
misunderstand the Examiner’s rejection, and the Appellant’s arguments do
not address the Examiner’s rationale. In particular, the Appellant
erroneously treats the Examiner’s rejection as finding that element 20 of
Mangaroo’s Figure 1 (a handle) is the second housing portion. See, e.g.,
Br. 8. As set forth above, however, that is not the Examiner’s rationale. The
Examiner finds that communications module 34 is Mangaroo’s second
housing portion, and that Cargin would have motivated modifying
Mangaroo’s communications module 34 to be releasably secured to first
housing portion 23 and to have different volumes, such as the
communications modules 348 and 355 of Cargin, “to provide replaceable
data and communications module and/or with different function [sic].” Final
Act. 4—5. Thus, in general, the Appellant’s arguments attack an obviousness
rationale on which the Examiner did not rely. Nevertheless, below we
address the Appellant’s arguments to the extent that they are relevant to the
Examiner’s rejection.
The Appellant argues that Cargin “fails to disclose mating surfaces
between a first and second housing or that different second housings all have
the same second mating surface.” See Br. 9. We are not persuaded by that
argument. A person of ordinary skill in the art would have understood that
Cargin’s depiction of common base module 316 (first housing portion) to
which different communications modules may be attached reasonably
suggests that the mating surfaces of the different communications modules is
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Application 12/765,949
the same in order to attach to the common mating surface of the first housing
portion. See, e.g., CarginFigs. 14—16, 21:24—35. Indeed, Cargin expressly
teaches that the communications module “can be removed and replaced with
another similar module without requiring any tuning adjustments.” Id. at
5:55—57. Thus, we are persuaded that a person of ordinary skill in the art,
through the use of only ordinary creativity, would have understood that
Cargin teaches or suggests the disputed limitation. See KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 418—19 (2007) (“[T]he [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”).
The Appellant also argues that Mangaroo “discloses that the
connectors can be sealed, clearly implying the two modules, when attached,
are not sealed or mated.” Br. 10. That argument is not persuasive. Claim 1
requires only that “a resilient seal” is “positioned between the common first
mating surface and the second mating surface.” The Appellant’s do not
persuasively explain why the Examiner’s proposal of including a resilient
seal, as taught by Mangaroo, between the first and second housing portions
identified by the Examiner, would not fall within the scope of that claim
language.
On this record, we are not persuaded of reversible error in the
Examiner’s rejection of claim 1. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that, even if the examiner had failed to make a prima
facie case, the Board would not have erred in framing the issue as one of
reversible error because “it has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections”).
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Application 12/765,949
Claims 11 and 17.
Claim 11 depends from claim 1 and recites “further comprising a third
housing portion, the third housing portion releasably secured to the
secondary housing portion.”
The Examiner finds that handle 20 of Mangaroo’s Figure 1 constitutes
the third housing portion, and that it is releasably secured to the secondary
housing portion (which, as discussed above, the Examiner identifies as
element 34 of Figure 1). Final Act. 8.
Although the Appellant apparently continues to misunderstand that
the Examiner identifies element 34 of Mangaroo Figure 1 as the second
housing portion, the Appellant argues that Mangaroo does not teach “a third
housing portion detachable from or releasable secured to the secondary
housing portion.” See Br. 11. We agree. The Examiner does not adequately
explain how element 20 of Figure 1, which the Examiner identifies as the
third housing portion, is releasably secured to the second housing portion,
which the Examiner identifies as element 34 of Figure 1. Mangaroo’s
figures suggest that handle 20 is connected to first housing portion 23 rather
than to secondary housing portion 34. See Figs. 1, 2. The accompanying
text confirms that to be true: “The portable terminal 10 can have an optional
handle 20, connected via a release securable connection 22, to an enclosure
23 of a handheld computer 24.” Mangaroo 134. Thus, Mangaroo’s handle
is releasably secured to what the Examiner identifies as the first housing
portion, not to what the Examiner identifies as the second housing portion,
as required by claim 11. The Examiner provides no explanation as to why or
how Mangaroo’s arrangement, which is different from the claimed
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arrangement, would have rendered the claimed arrangement obvious. On
this record, we must reverse the Examiner’s rejection of claim 11.
Because claim 17 depends from claim 11, and the Examiner’s
rejection of claim 17 does not remedy the error identified above, we likewise
must reverse the Examiner’s rejection of claim 17.
Claim 15.
Concerning claim 15, the entirety of the Appellant’s argument is as
follows:
Regarding claim 15, appellant respectfully submits that it
is not obvious to have first housing portion with another mating
surface on the upper surface facilitating housing of a portion of
a user interface in an interior of the first housing portion.
Br. 12.
That argument is simply a recitation of the language of claim 15
accompanied by a naked assertion that claim 15 would not have been
obvious to a person of ordinary skill in the art, and it fails to address the
Examiner’s specific findings concerning the subject matter of claim 15. See
id.; see also Final Act. 9 (addressing claim 15). Such arguments are
unpersuasive and fail to identify reversible error in the Examiner’s rationale.
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that “the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”); see also Jung, 637 F.3d at 1365. We affirm the Examiner’s
rejection of claim 15.
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Application 12/765,949
CONCLUSION
We AFFIRM the Examiner’s rejection of claims 1, 3—6, 12, 15, 16
and 23.
We REVERSE the Examiner’s rejection of claims 11 and 17.
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-IN-PART
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