Ex Parte Hamilton et al

Board of Patent Appeals and Interferences

Jan 5, 2009

10930503 (B.P.A.I. Jan. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALISTAIR HAMILTON, SUDHIR BHATIA,
and JORG SCHLIEFFERS
____________

Appeal 2008-5142
Application 10/930,503
Technology Center 2600
____________

Decided: January 5, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and THOMAS S.
HAHN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-3, 6-13, and 16-21. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Appellants invented an accessory for a mobile computing device. The
accessory includes plural interfaces, one of which mates with a
corresponding interface on the mobile device. The other accessory interface
is mounted such that it faces outward when the device and accessory are
mated.1 Claim 1 is illustrative with the key disputed limitation emphasized
for clarity:
1. An accessory for a mobile computing device, the device having a
first interface disposed on a proximal portion of the device,
comprising:

a second interface disposed on a distal surface of the accessory and
complementing the first interface for mating therewith to enable
communication between the device and the accessory; and

a third interface substantially similar to the first interface for mating
with accessories adapted to mate with the first interface, wherein the third
interface is mounted on a first outward facing surface of the accessory so
that, when the first and second interfaces are mated, the third interface faces
outward, wherein a profile of the proximal portion of the accessory
substantially matches that of the proximal portion of the device.

The Examiner relies on the following prior art references to show
unpatentability:
Barvesten US 6,714,802 B1 Mar. 30, 2004
von Mueller US 6,944,782 B2 Sep. 13, 2005
(filed Feb. 12, 2002)

1. The Examiner rejected claims 1-3, 6, 8-13, 16, 18, and 19 under 35
U.S.C. § 102(e) as anticipated by Barvesten (Ans. 3-6).

1 See generally Spec. ¶ 0004; Figs. 1, 2a, and 2b.
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2. The Examiner rejected claims 20 and 21 under 35 U.S.C. § 103(a) as
unpatentable over Barvesten (Ans. 6-7).
3. The Examiner rejected claims 7 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Barvesten and von Mueller (Ans. 7-8).
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer2 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

THE ANTICIPATION REJECTION
Regarding the Examiner’s anticipation rejection of representative
claim 1,3 Appellants argue that Barvesten does not disclose that a profile of
the proximal portion of the accessory substantially matches that of the
proximal portion of the device as claimed. According to Appellants,

2 Throughout this opinion, we refer to (1) the Appeal Brief filed June 19,
2007; (2) the Examiner’s Answer mailed Aug. 7, 2007; and (3) the Reply
Brief filed Oct. 4, 2007.
3 Appellants present arguments for independent claim 1, but do not
separately argue dependent claims 2, 3, 6, 8, and 9 (App. Br. 6-7). Although
Appellants nominally argue independent claims 10 and 11 (and dependent
claims 12, 13, 16, 18, and 19) separately (App. Br. 7-8), these arguments
merely reiterate the same arguments made with respect to claim 1 and
pertain to commensurate limitations. Accordingly, we consider independent
claims 1, 10, and 11 (and dependent claims 2, 3, 6, 8, 9, 12, 13, 16, 18, and
19) as a group and select claim 1 as representative. See 37 C.F.R. §
41.37(c)(1)(vii).

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Barvesten’s accessory 2 has a larger profile than that of device 1 (App. Br.
7).
The Examiner acknowledges that the profile of the proximal portion
of Barvesten’s accessory appears to be “slightly thicker” than that of the
device. The Examiner, however, notes that there are similarities in these
respective proximal portions, namely with respect to the connectors
associated with those portions and the width of the proximal portions (Ans.
8-9).
Appellants, however, contend that in light of definition of the term
“profile,” the recited accessory profile must be interpreted to encompass
both width and thickness. As such, Appellants argue, the proximal portions
of Barvesten’s accessory and device do not substantially match since the
accessory’s proximal portion is not merely slightly thicker than that of the
device as the Examiner contends, but rather significantly thicker (Reply Br.
2-3).
The issue before us, then, is as follows:

ISSUE
Have Appellants shown that the Examiner erred in rejecting claim 1
under § 102 by finding that the profile of the proximal portion of the
accessory in Barvesten substantially matches that of the associated mobile
computing device as claimed?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
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1. Barvesten discloses a portable communication apparatus 1 (e.g., a
mobile telephone) and an accessory device 2 detachably connected thereto
(Barvesten, col. 3, ll. 29-40; Abstract; Fig. 1).
2. The accessory device 2 comprises two separate housing portions
20 and 30 that are hingedly coupled together (Barvesten, col. 4, ll. 7-11;
Figs. 2 and 3).
3. The mobile phone comprises an accessory connector 15 at the
lower end of its housing (Barvesten, col. 3, ll. 63-67; Fig. 1).
4. The accessory device has an external connector detachably inserted
in the connector 15 of the mobile telephone (Barvesten, col. 4, ll. 1-6; col. 5,
ll. 10-14).
5. The accessory device has another connector 25 at lower end of the
first housing portion 20. Connector 25 is essentially identical to the
connector 15 on the mobile telephone (Barvesten, col. 4, ll. 21-27; Figs. 2
and 3).

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Appl.
Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
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obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am.
Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).

ANALYSIS
We begin our analysis by noting that Appellants do not dispute the
Examiner’s findings regarding Barvesten’s disclosure of the three recited
interfaces and the claimed structural and functional relationship of these
interfaces. Rather, Appellants dispute the Examiner’s finding that the
profiles of the proximal portions of the accessory and device in Barvesten
substantially match. We therefore focus our discussion on this limitation.
We further note that claim 1 does not require that these profiles match
exactly, but rather that they substantially match. Given this broader
recitation, we find no error in the Examiner’s findings with respect to
Barvesten regarding the “substantially matching” profiles of the accessory
and device given their structural similarities in width and connector structure
as the Examiner indicates (Ans. 8). Even if we assume, without deciding,
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that a profile must account for thickness in addition to width under the
definitions provided by Appellants (Reply Br. 2-3), the scope and breadth of
the claim nonetheless does not preclude the structure of Barvesten,
notwithstanding the thickness differences between the device and the
accessory.
In short, if the claim specified that these profiles matched, then we
would have a different situation before us. But here, all that is required is
that the profiles substantially match—a broader recitation that allows for
some variance in the respective profiles. As such, we are not persuaded that
the Examiner erred in finding this limitation fully met by the structure of
Barvesten.
We also find this limitation fully met by Barvesten for yet another
reason. Significantly, apart from merely reciting a “proximal portion” with
respect to the device and accessory, claim 1 does not further detail any
structural aspects of these respective proximal portions. Nor does
Appellants’ Specification specifically define what is meant by a “proximal
portion.” Accordingly, we construe this term with its broadest reasonable
interpretation in light of the Specification. Am. Acad., 367 F.3d at 1364.
Turning to Barvesten, the accessory device 2 comprises two separate
housing portions 20 and 30 that are hingedly coupled together (FF 2). This
coupling is shown in Figure 2 and reproduced below:

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Figure 2 of Barvesten Showing Hinged Coupling of Housing Portions of
the Accessory Device

From this perspective, the profile of the proximal portion of the
accessory’s first housing portion 20—the housing portion that contains the
connector 25 (FF 5)—substantially matches that of the device 1. Although
this proximal portion of the housing portion 20 is slightly thicker than that of
the device, its profile nonetheless substantially matches that of the device to
which it is connected, even under Appellants’ definitions in the Reply Brief
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(Reply Br. 2-3). This relationship can also be seen in Figure 3 reproduced
below:

Figure 3 of Barvesten Showing Relative Thicknesses of Proximal
Portions of Housing Portion 20 and Device 1

In short, nothing in the claim precludes the “proximal portion” of the
accessory to be defined with respect to the housing portion 20 of the
accessory that contains the connector 25. As such, the profile of this
proximal portion substantially matches that of the device and therefore fully
meets the disputed limitation.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 2, 3, 6, 8-13, 16,
18, and 19 which fall with claim 1.

THE OBVIOUSNESS REJECTIONS
Likewise, we will sustain the Examiner's obviousness rejections of (1)
claims 20 and 21 over Barvesten, and (2) claims 7 and 17 over Barvesten
and von Mueller. We find that Appellants have not particularly pointed out
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errors in the Examiner’s reasoning to persuasively rebut the Examiner's
prima facie case of obviousness, but merely reiterate that the cited prior art
fails to disclose that the profiles of the proximal portions of the accessory
and the device substantially match as claimed (App. Br. 8-10; Reply Br. 4).
We are therefore not persuaded that the Examiner erred in rejecting these
claims for the same reasons discussed above in connection with claim 1.
The obviousness rejections are therefore sustained.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-3, 6, 8-13, 16, 18, and 19 under § 102. Nor have Appellants shown that
the Examiner erred in rejecting claims 7, 17, 20, and 21 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-3, 6-13, and 16-21 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED

Eld

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