14833513 (P.T.A.B. Jul. 24, 2018)

Ex Parte Lombardi et al

Patent Trial and Appeal BoardJul 24, 2018

14833513 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/833,513 08/24/2015 138858 7590 07/26/2018 Motorola/ Miller, Matthias & Hull LLP 1 North Franklin Street Suite 2350 Chicago, IL 60606 FIRST NAMED INVENTOR Michael J. Lombardi 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. 60043/MM01563-US-NP 7487 EXAMINER GILES, NICHOLAS G ART UNIT PAPER NUMBER 2662 NOTIFICATION DATE DELIVERY MODE 07/26/2018 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): ppippenger@millermatthiashull.com docketing.mobility@motorola.com ynunez@millermatthiashull.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL J. LOMBARDI, JOSEPH ALLORE, and PAUL FORDHAM Appeal2018-000338 Application 14/833,513 Technology Center 2600 Before: CARLA M. KRIVAK, ELENI MANTIS MERCADER, and JOHN P. PINKERTON, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1- 20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Appeal2018-000338 Application 14/833,513 CLAIMED SUBJECT MATTER The claims are directed to modular device docking with camera protrusion alignment. (See Spec., 1 Title). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A modular device system including: a base portable electronic communication device having at least a processor, a display, and a camera, the base portable electronic communication device having a substantially flat-shaped first surface, the camera forming a protrusion extending out of the first surface, the base device further including a contact array on the first surface, the contact array exposing a plurality of electrical contacts; and an add-on electronic device having at least a processor and a contact array on a second surface, the second surface having a camera opening therein sized to receive the camera protrusion extending out of the first surface of the base portable electronic communication device, such that the add-on electronic device is aligned with the base portable electronic device when the camera protrusion of the first surface of the base portable electronic communication device is inserted into the opening on the second surface of the add-on electronic device and the contact array on the second surface is mated with the contact array on the first surface. (Appeal Br., Claims Appendix, 10.) 1 We herein refer to the Specification, filed Aug. 24, 2015 ("Spec."); Appeal Brief, filed Jul. 5, 2017 ("App. Br."); and the Examiner's Answer, mailed Aug. 9, 2017 ("Ans."). 2 Appeal2018-000338 Application 14/833,513 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hautamaki et al. W02014/1846IO Al May 13, 2013 Hereinafter Hautamaki. "Samsung Galaxy S5 Review: Less is So Much More" (/web/2014041520033/http://gizmodo.com/Samsung-galaxy-s5- review-less-is-so-much-more-1563306790). Hereinafter NPLI. Sawh, M. "Best Samsung Galaxy S5 Cases 2014: Latest Cases Tried and Tested." Hereinafter NPL2. REJECTIONS Claims 1-20 stand rejected under 35 U.S.C Â§ I03(a) as being unpatentable over Hautamaki in view of "Samsung Galaxy S5 Review: Less Is So Much More" (NPL 1) and further in view of "Best Samsung Galaxy S5 Cases 2014: Latest Cases Tried and Tested" (NPL2). OPINION Appellants argue that the combination of Hautamaki and the Samsung references NPL 1 and NPL2 does not teach the limitation of "the add-on electronic device is aligned with the base portable electronic device when the camera protrusion of the first surface of the base portable electronic communication device is inserted into the opening" as recited in claim 1 (see App. Br. 6-7). Appellants explain that the opening in the add-on device keys into the camera protrusion and is used to align the two devices. App. Br. 6. Appellants further explain that the apparent alignment of the camera 3 Appeal2018-000338 Application 14/833,513 in the opening is not a by-product of having aligned the devices some other way, but is rather the very mechanism by which the devices are aligned. Id. Appellants also contend the cited prior art functions opposite that of the claimed invention because it is only after the devices are aligned through some other means that the camera and the opening happen to be aligned (App. Br. 6-7). Particularly, Appellants assert the camera alignment is a by- product of device alignment, not the cause of device alignment (App. Br. 7). Appellants explain the cited prior art "NPL2 teaches that once the case is 'oriented with respect to the camera,' then the 'camera and optics hump (protrusion) is aligned"' (App. Br. 7; bolding omitted). We do not agree with Appellants' argument. Appellants argue that the prior art alignment is done through some other means, but do not provide evidence to support such an assertion. On the contrary, the Examiner finds, and we agree, that the Galaxy S5 case in the NPL2 "document, only fits together with the Galaxy S5 as shown when the camera protrusion of the Galaxy S5 is aligned with the hole in the case as seen in the picture on page 2" (Ans. 3; see "(titled page Figure labeled "5 of 6"). Thus, it is clear that the same alignment mechanism is used wherein the protrusion of the camera inserted into the hole of the case causes the alignment. Summarizing the Examiner's findings, the Examiner relies on Hautamaki to show that an accessory 200 can include an opening aligned with the camera lens 112 to allow the camera of portable electronic device 100 to continue to function and be utilized when the accessory 200 and portable electronic device 100 are brought together (Ans. 3). The Examiner then relies on NPL 1 and NPL2 for showing that the camera of Hautamaki can include the camera protrusion, and that the camera and mod ( add-on 4 Appeal2018-000338 Application 14/833,513 electronic device) device can still be aligned and fitted together based on a position of the camera protrusion. Id. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413,425 (CCPA 1981). Thus, the combination of Hautamaki and the Samsung references NPL 1 and NPL2 teaches the limitation of "the add-on electronic device is aligned with the base portable electronic device when the camera protrusion of the first surface of the base portable electronic communication device is inserted into the opening" as recited in claim 1. Accordingly, we sustain the Examiner's rejection of independent claims 1, 10, and 1 7, which Appellants provide substantially the same arguments, and dependent claims 2-9, 11-16, and 18-20, which Appellants provide no arguments. DECISION The Examiner's rejection of claims 1-20 is affirmed. 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). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5