Ex Parte Lin et al

Patent Trial and Appeal Board

Oct 25, 2017

13819581 (P.T.A.B. Oct. 25, 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.
13/819,581 02/27/2013 Yi-Feng Lin 83200401 4988
22879
HP Tnr
7590 10/27/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
RATHOD, ABHISHEK M
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YI-FENG LIN, BARRY T. PHILLIPS, DAVID QUIJANO,
GREGORY A. STANDIFORD, and JOSH K. PETERSON
Appeal 2017-001356
Application 13/819,5811
Technology Center 2800
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’
rejections adverse to the patentability of claims 1—20.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify the real party in interest as the Hewlett-Packard
Development Co., L.P. App. Br. 1.
Appeal 2017-001356
Application 13/819,581
BACKGROUND
Claim 1 is illustrative of the subject matter on appeal, is taken from
the Claims Appendix of the Appeal Brief, and appears below, with the key
limitation italicized.
1. A handle module comprising:
a housing conforming to a disk drive form factor;
an installation feature set configured to securely install the
housing in a drive slot of a computer, the drive slot conforming
to the disk drive form factor; and
a finger-friendly recess extending from a front of the
handle module and into an interior of the housing,
wherein, when the handle module is installed in the drive
slot of the computer, the handle module provides an ergonomic
grip for a human hand to move the entire computer.
Claims App’x i.
REJECTIONS ON APPEAL
The following claims are rejected under 35 U.S.C. § 102(b):
Claims 1—4 and 16—19 as anticipated by Reiter (US 5,557,499 issued
Sept. 17, 1996). Final Act. 2-4.
The following claims are rejected under 35 U.S.C. § 103(a):
Claims 5—7 and 9-15 as unpatentable over Reiter in view of Sivertsen
(US 7,570,484 Bl, issued Aug. 4, 2009) (Final Act. 5—8); Claim 8 as
unpatentable over Reiter in view of Sivertsen and You (US 6,049,452,
issued Apr. 11, 2000) (Final Act. 8—9); and Claim 20 as unpatentable over
Reiter in view of Jasinski (US Des. 364,148, issued Nov. 14, 1995) (Final
Act. 9-10).
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OPINION
The Anticipation Rejection
We address the claims separately to the extent they are so argued by
Appellants. 37 C.F.R. § 41.37(c)(l)(iv)(2015).
Claims 1—3 and 16—18
Appellants contend that Reiter fails to disclose the limitation
“wherein, when the handle module is installed in the drive slot of the
computer, the handle module provides an ergonomic grip for a human hand
to move the entire computer.” App. Br. 6—8; Reply Br. 1—3. This argument
fails to persuade us of reversible error. In re Jung, 637 F.3d 1356, 1365—66
(Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring
Appellants to identify the alleged error in the Examiner’s rejection).
During examination, claims are given the broadest reasonable
interpretation that is consistent with the specification. See In re Am. Acad.
ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Construing claims
broadly during prosecution is not unfair to the applicant. . . because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage.” Id. Moreover, conditional steps need not be found in the
prior art if, under the broadest reasonable interpretation, such steps need not
be performed. See Ex parte Schulhauser, No. 2013-007847, 2016 WL
6277792 (PTAB April 28, 2016) (precedential).
In this case, claim 1 requires the handle module to provide an
ergonomic grip for a human hand to move the entire computer, but only
when a certain condition precedent is met (i.e., “when the handle module is
installed in the drive slot of the computer”). Thus, based on the claim
limitations as written, the broadest reasonable interpretation of claim 1
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encompasses instances wherein the condition precedent is not met. In such
situations, the claim does not require that “the handle module provide[] an
ergonomic grip for a human hand to move the entire computer.” Here,
Appellants’ arguments against the rejection of claim 1 are directed only to
situations where the condition precedent is satisfied. Such arguments are not
commensurate with the broadest reasonable interpretation of the claim, and
are, therefore, unpersuasive of reversible error.
It follows that we sustain the Examiner’s anticipation rejection of
claims 1—3 and 16—18.
Claims 4 and 19
The Examiner finds that Reiter discloses the limitation germane to
claims 4 and 19 requiring that the “recess is to accommodate at least three
finger tips and at least one knuckle of the human hand.” Final Act. 3, 4.
Appellants argue that claims 4 and 19 are not anticipated because Reiter fails
to disclose this limitation. App. Br. 9—10; Reply Br. 3^4.
Before we can determine whether the disclosure of Reiter anticipates
these claims, we must first construe the limitation requiring “at least one
knuckle of the human hand” to be accommodated in the recess. In this
regard, the claim is unclear on its face whether the recited “knuckle” is the
first, second, or third joint in a given finger on the human hand, starting from
the fingertip.
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). Additional sources useful in the claim construction
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analysis include “extrinsic evidence concerning relevant scientific principles
[and] the meaning of technical terms.” Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005).
In this regard, the Specification fails to shed much light on what
Appellants intended to claim when reciting the term “knuckle” in claims 4
and 19. Namely, the Specification only appears to mention this term once in
paragraph 20 and once in original claim 11. Neither recitation offers a
definition or other clarifying language helpful to ascertain the intended
meaning of “knuckle.” Figure 3 of the Specification, however, does indicate
the general positioning of a hand within the handle module, but does not
identify any knuckles on the hand.2 Merriam-Webster’s Dictionary defines
“knuckle” as “the rounded prominence formed by the ends of the two
adjacent bones at a joint—used especially of those at the joints of the
fingers”3 (emphasis added). When considering this definition in light of
Appellants’ Figure 3, it is not unreasonable to broadly construe the term
“knuckle” to include the first joint of a human finger after the fingertip.
Armed with this construction, we now turn to Reiter, which the
Examiner relied on for support in the rejection of claims 4 and 19—
specifically, Figure 2 and column 8, lines 26 and 27. Final Act. 3, 4. While
Figure 2 does not expressly show a hand with knuckles, the description of
2 It seems clear in Fig. 3, however, that the fingertips must first enter the
recess before the first, second, and third joints and remainder of the hand are
able to follow.
3 Definition of Knuckle by Merriam-Webster, Merriam-Webster.com
(October 24, 2017 9:38 AM), https://www.merriam-
webster.com/dictionan7knuckle.
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this Figure indicates that “[t]he front surface 31 has a recess 36 for allowing
the placement of one or more fingersReiter 7:2—3. Reiter furthermore
discloses that the user may securely grasp handle 44 “by inserting one or
more fingers into the recess 36.” Reiter 8:26—27 (emphasis added). Reiter
makes clear that the one or more fingers are curled “around handle 44” and
that the “outer edge of the handle 44” is grasped “with his or her thumb,”
and that only one hand is used during the operation. Id. at 8:27—31. Thus,
because Reiter allows for up to four fingers in the recess (i.e., all fingers
except for the thumb), and because four fingers necessarily have “at least
three finger tips and at least one knuckle,” Reiter inherently discloses the
disputed limitation. “A claim is anticipated [] if each and every element as
set forth in the claim is found, either expressly or inherently described, in a
single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d
628, 631 (Fed. Cir. 1987).
It follows that we sustain the rejection of claims 4 and 19.
The Obviousness Rejections
We again address the claims separately to the extent they are so
argued by Appellants. 37 C.F.R. § 41.37(c)(l)(iv)(2015).
Claims 9—11 and 13—15
Appellants’ sole argument against the rejection of these claims is that
the Examiner erred because the recited “gripping” step, when properly read
in light of the Specification, requires “inserting at least three finger tips and
at least one knuckle of a hand into” the recess, a feature not taught or
suggested in the prior art. App. Br. 11 (citing Spec. 120). This argument
does not persuade us of reversible error.
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First, even if claim 9 could be properly construed as narrowly as
Appellants urge, we would not be persuaded of reversible error for the same
reasons expressed with respect to claims 4 and 19. That is, Reiter inherently
discloses “inserting at least three finger tips and at least one knuckle of a
hand into” the recess.
Moreover, we are not persuaded that independent claim 9 is so
limited. In this regard, “[differences among claims can [] be a useful guide
in understanding the meaning of particular claim terms. For example, the
presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent
claim.” Phillips v. AWHCorp., 415 F.3d 1303, 1314—15 (Fed. Cir. 2005)
(en banc). A claim construction that results in a dependent claim having the
same scope as the independent claim from which it depends, and which thus
renders the dependent claim superfluous, is “presumptively unreasonable.”
Beachcombers, Inti Inc. v. Wildewood Creative Prods., Inc., 31 F.3d 1154,
1162 (Fed. Cir. 1994). See also In re Tanaka, 640 F.3d 1246, 1250 (Fed.
Cir. 2011) (“Claims of narrower scope can be useful to clarity the meaning
of broader, independent claims under the doctrine of claim differentiation.”).
Applying these concepts to the instant case, we note that claim 11,
dependent on independent claim 9, expressly recites the language that
Appellants would have us read into claim 9. With this in mind, we turn to
the portion of the Specification relied upon by Appellants in order to
properly construe the term “gripping” as recited in claim 9. The
Specification provides two explanations of the term “gripping”—one
reading requiring “holding a handle feature (e.g., the ridge) so that the host
computer can be moved without the hand being retracted from the recess,”
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and one, more specific, reading that “involves inserting at least three finger
tips and at least one knuckle into the recess.” Spec. 120.
Upon considering the portion of the Specification relied upon by
Appellants, guided by the presumptions provided within the doctrine of
claim differentiation, we determine that the broadest reasonable
interpretation of the term “gripping” as recited in claim 9 does not require
the more specific reading that Appellants urge. Rather, the term “gripping”
could encompass an instance where the handle module is gripped, for
example, by inserting only two fingers into the recess. As such, we
determine that such narrower definition of “gripping” is reserved only for
the claim which expressly requires it, i.e., claim 11.
Because Appellants’ arguments fail to reveal error in the Examiner’s
rejection of claim 9, we sustain the rejection of this claim, as well as the
rejection of claims 10, 11, and 13—15 dependent thereon and not separately
argued.
Claim 12
Appellants contend that the rejection of claim 12 is erroneous because
the prior art fails to teach or suggest the limitation requiring “said moving
involves lifting the computer.” App. Br. 12. This argument fails to identify
reversible error because it addresses only the teachings of the references
themselves. Conspicuous by its absence is a discussion of the level of skill
possessed by the ordinary skilled artisan as set forth in the rejection.
Specifically, the Examiner determined that the “desired action” recited in
claim 12 (i.e., “lifting the computer”) “is a matter of routine movement and
skills.” Final Act. 7. See also Ans. 3 (explaining that “the user may push
back and lift up from the recess for the fingers and thereby lift[] the
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computer.”). The obviousness analysis “need not seek out precise teachings
directed to the specific subject matter” recited in the claim, but “can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Id. at 421.
We furthermore observe that Appellants’ arguments directed to lifting
the “entire” computer (Reply Br. 5) fail because claim 12 does not require
such lifting. In re Self 671 F.2d 1344, 1348 (CCPA 1982) (“[Ajppellanf s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”).
It follows that we sustain the Examiner’s obviousness rejection of
claim 12.
Claims 5—8 and 20
Appellants present no substantive arguments directed to these claims
not already addressed herein. We therefore sustain the rejection of these
claims for the reasons already expressed.
SUMMARY
The Examiner’s anticipation rejection of claims 1—4 and 16—19 is
affirmed. The Examiner’s obviousness rejections of claims 5—15 and 20 are
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).
AFFIRMED
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