Ex Parte Lehmann

Patent Trial and Appeal Board

Sep 27, 2017

14149604 (P.T.A.B. Sep. 27, 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.
14/149,604 01/07/2014 Harry V. Lehmann GRE01 010 1029
39290 7590 09/28/2017
DTTANF MORRIS TIP- DC
EXAMINER
505 9th Street TRANDAI, CINDY HUYEN
Suite 1000
WASHINGTON, DC 20004-2166 ART UNIT PAPER NUMBER
2647
MAIL DATE DELIVERY MODE
09/28/2017 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 HARRY V. LEHMANN
Appeal 2017-003015
Application 14/149,604
Technology Center 2600
Before JAMES R. HUGHES, JOHNNY A. KUMAR and
JAMES W. DEJMEK, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—16, which constitutes all the claims
pending in this application. Final Act. 1; App. Br. I.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 We refer to Appellant’s Specification (“Spec.”), filed Jan. 7, 2014
(claiming benefit of US 61/749,693, filed Jan. 7, 2013); Appeal Brief (“App.
Br.”), filed June 30, 2016; and Reply Brief (“Reply Br.”), filed Dec. 14,
2016. We also refer to the Examiner’s Answer (“Ans.”), mailed Oct. 14,
2016 and Final Office Action (Final Rejection) (“Final Act.”), mailed Sept.
30, 2015.
Appeal 2017-003015
Application 14/149,604
Appellant’s Invention
The invention at issue on appeal generally concerns mobile telephone
cases and use of high-density organic materials containing DNA in the
composition of mobile telephone cases to absorb microwave radiation. In
particular, the invention on appeal concerns mobile phone cases, for the
protection of the user from non-ionizing radiation, including a back plate
that receives a back side of the mobile phone, where the back plate includes
a layer of DNA material in an area adjacent to a transmitting antenna of the
mobile phone. (Spec. 17—20, Abstract.)
Representative Claim
Independent claim 1, reproduced below with key disputed limitation
emphasized, further illustrates the invention:
1. A mobile phone case for the protection of the user
from non-ionizing radiation comprising:
a back plate configured to receive a back side of the
mobile phone, the back plate including a layer of DNA material
at least in an area adjacent to a transmitting antenna of the
mobile phone;
a plurality of sides attached to the back plate and
configured to reversible retain the mobile phone within the case.
Rejections on Appeal
1. The Examiner rejects claims 1—8 under 35 U.S.C. § 103(a) as
being unpatentable over Finegold (US 2014/0159980 Al, published June 12,
2014 (filed Nov. 25, 2013, claiming benefit of US 61/729,589 filed Nov. 24,
2012)) and Dandurand (US 2008/0017812 Al, published Jan. 24, 2008).
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Application 14/149,604
2. The Examiner rejects claims 9 and 10 under 35 U.S.C. § 103(a)
as being unpatentable over Finegold, Dandurand, and Toyoda et al. (US
2001/0053673 Al, published Dec. 20, 2001) (“Toyoda”).
3. The Examiner rejects claims 11—13 and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Dandurand and Nguyen et al. (US
2011/0256391 Al, published Oct. 20, 2011) (“Nguyen”).
4. The Examiner rejects claims 14 and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Dandurand, Nguyen, and Toyoda.
ISSUE
Based upon our review of the record, Appellant’s contentions and the
Examiner’s findings and conclusions, the issue before us follows:
Did the Examiner err in construing Appellant’s claim limitations to
DNA material (and DNA rich materials) and in finding that the cited prior
art (Finegold and Dandurand and alternately Dandurand and Nguyen) would
have collectively taught or suggested a mobile phone case or mobile phone
case insert comprising such material within the meaning of Appellant’s
claim 1 and the commensurate limitations of claims 6 and 11?
ANALYSIS
The Examiner rejects independent claim 1 and independent claim 6 as
being obvious in view of Finegold and Dandurand. See Final Act. 2—5;
Ans. 13—14. The Examiner rejects independent claim 11 as being obvious in
view of Dandurand and Nguyen. See Final Act. 7—8. Appellant contends
the Examiner improperly construes Appellant’s disputed claim limitations
and, as a result, Finegold and Dandurand, as well as Dandurand and Nguyen,
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Application 14/149,604
do not teach the disputed features of the independent claims. App. Br. 4—7;
Reply Br. 1—4. Specifically, Appellant contends the Examiner’s
“construction of the terms DNA material and DNA rich materials is divorced
from both the plain meaning of the claims and the specification and further
the adopted construction is abhorrent to . . . Philips’ standard as well as the
broadest reasonable interpretation standard governing claim construction at
the Office.” App. Br. 4 ; see also App. Br. 4—7; Reply Br. 1^4.
The Examiner finds:
Finegold does not specifically teach the materials that
capture/absorb non-ionizing electromagnetic radiation and
redirect the radiation away from the user as taught above is DNA
material.
In the same field of endeavor, Dandurand teaches the
mobile phone case (Figs. 1-21, corresponding text in spec.)
wherein any material redirect/counteract the nonionizing
electromagnetic radiation away from the user is DNA material or
i.e. is DNA material is any materials that prevent non-ionizing
electromagnetic radiation from wireless devices on Human DNA
(Figs. 11-12 & Pars. 10, 36-38 and 74-80).
Final Act. 3 (emphasis omitted). The Examiner further finds:
Dandurand teaches the layers of paramagnetic (DNA) material is
any materials that prevent electromagnetic or non-ionizing
radiation from wireless devices on Human DNA such as water,
wood, plants, animals, diamonds, fingers, and so on (Figs. 11-12
& Pars. 10, 36-38 and 53-54, 139). Therefore, the combination
of Finegold and Dandurand as a whole would read on the claimed
limitation.
Ans. 14 (emphasis omitted).
Dandurand describes paramagnetic materials (substances having a
magnetic susceptibility greater than zero (135)), diamagnetic materials
(non-magnetic materials that are repelled by a strong magnetic field flflf 36—
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Application 14/149,604
37), DNA being a diamagnetic material (136), and using paramagnetic
and/or diamagnetic techniques (materials) to transform electromagnetic
frequency (“EMF”) radiation and counteract the harmful effects of EMF
radiation on human DNA (see 38, 151, 160, 169, 192, 196, 199).
Therefore, we find Dandurand fairly teaches or at least suggests utilizing
paramagnetic and/or diamagnetic materials to limit/prevent/reduce/
counteract exposure of human DNA to EMF radiation.
We disagree, however, with the Examiner’s overly broad statement
{supra) that “DNA material is any material[] that prevents] non-ionizing
electromagnetic radiation from wireless devices on Human DNA” (Final
Act. 3) and the Examiner’s inaccurate finding that DNA is paramagnetic
material (Ans. 14, supra). We cannot agree with the Examiner’s
construction (to the extent the Examiner makes such a construction) that the
term “DNA material” means “any materials that prevent non-ionizing
electromagnetic radiation ... on Human DNA” (App. Br. 4).
The Examiner’s cited portions of Dandurand do not explicitly
describe DNA (generally) being utilized to prevent EMF radiation exposure.
At most, Dandurand fairly suggests DNA (generally) is a diamagnetic
material and that certain diamagnetic materials (techniques) may reduce or
prevent exposure of human DNA to EMF radiation {supra). The Examiner
does not provide a clear explanation or mapping of the disputed claim
features to the disclosures of Dandurand and fails to sufficiently show that
Dandurand in combination with either Finegold or Nguyen teaches or
suggests using the disputed “DNA material” in a mobile phone case, a
mobile phone case including a layer of “DNA material,” or an insert for a
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mobile phone case including a layer of “DNA material” as recited in
Appellant’s claims.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that Dandurand in combination with either
Finegold or Nguyen teach the disputed limitations of Appellant’s claims.
Accordingly, we reverse the Examiner’s obviousness rejections of
independent claims 1, 6, and 11, and dependent claims 2—5, 7—10, and 12—16
that depend on claims 1, 6, and 11, respectively.
CONCLUSION
Appellant has shown the Examiner erred in rejecting claims 1—16
under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner’s rejections of claims 1—16.
REVERSED
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