Ex Parte Lu

Board of Patent Appeals and Interferences

Jun 10, 2009

10841517 (B.P.A.I. Jun. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KUO-PING LU
____________

Appeal 2008-004725
Application 10/841,517
Technology Center 2100
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Decided:1 [Date of mailing]
____________

Before JAMES D. THOMAS, JEAN R. HOMERE,
and STEPHEN C. SIU, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
Appeal 2008-004725
Application 10/841,517

Statement of the Case

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part and enter new grounds of rejection within 37 C.F.R
41.50(b).
Invention
A mobile phone includes an outer metal casing an antenna of
relatively small thickness, and a shelter member of a non-metal material
mounted in such manner as to conceal the antenna underneath. (Abstract,
Spec., p. 13, and figure 2).

Representative Claim
1. An electronic instrument comprising:

an outer metal casing:

a mother board disposed within said outer metal casing;

a coupling wire;

an antenna disposed on said outer metal casing and electrically
connected to said mother board by said coupling wire; and

a shelter member disposed on said outer metal casing in such a
manner to conceal said antenna thereunder.

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Application 10/841,517

Prior Art and Examiner’s Rejections
The Examiner relies upon the following references as evidence of
anticipation and unpatentability:
Kobayashi US 5,722,055 Feb. 24, 1998
Tendler US 2002/0103002 A1 Aug. 1, 2002
Meng US 6,597,319 B2 July 22, 2003
Hani US 2004/0201527 A1 Oct. 14, 2004
(Filing data April 8, 2003)

Claims 1, 3 through 5, 7, 8, 18, 19, and 21 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Meng. This reference is utilized in
each of the succeeding rejections under 35 U.S.C. § 103. As to claims 2, 9,
and 20, the Examiner relies upon Meng alone. Meng is used in combination
with Hani as to claim 6. Independent claim 10, along with its dependent
claims 11, 13 through 15, and 17 are rejected under 35 U.S.C. § 103 as being
obvious over Meng in view of Tendler. These two references are utilized
together, further in view of Kobayashi as to claim 12, and further in view of
Hani as to claim 16.
Claims Grouping
Based on Appellant’s arguments in the Appeal Brief (no Reply Brief
has been filed), we will consider independent claim 1 as representative of the
subject matter of independent claims 1 and 18. As to the separate rejections
of the dependent claims pending from these independent claims, Appellant
relies for patentability upon this subject matter recited in the respective
parent independent claims. Lastly, as to independent claim 10, Appellant
relies for patentability upon the arguments presented as to independent claim
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1 with addition arguments to be noted infra. Correspondingly, no arguments
are presented as to the dependent claims that depend from independent claim
10 since they rely for patentability upon a subject matter of this independent
claim.

Issue
1. Has Appellant shown that the Examiner erred in concluding
that Meng teaches the outer metal casing of representative
independent claim 1 on appeal?
2. Has Appellant shown that the Examiner erred in concluding
that the combination of Meng and Tendler teaches a casing enclosing a
plurality of electronic parts as recited in independent claim 10 on appeal?

Findings of Fact
1. In addition to Appellant’s prior art figures 1A, 1B, the background
of the invention portion of the Specification teaches the following:
High efficiency of the central processing unit in the mobile
phone enables the user to take pictures, play music or to connect with
the network.

In order to solve the aforesaid problem and to enhance the
outward appearances thereof, the antenna can be a patch type and is
confined within the outer casing of the mobile phone so as not to be
visible, and includes a printed circuit board. Under this condition, no
antenna is visible in the mobile phone of the newest production.

The first and second halves 10a, 10b of the conventional mobile
phone 10 are generally made from metal material or are electroplated.
Since metal can interfere with sending and receiving signals of the
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Application 10/841,517

antenna mounted with the first and second halves 10a,10b, an opening
is formed through one of the first and second halve 10a,10b. A non-
conductive material can be provided in the opening so as to retain the
antenna free from being disturbed by the electromagnetic fields.

A non-metal casing 22 is provided on an upper portion of the
second half 10b to retain an antenna of the conventional mobile phone
10 such that the incoming and outgoing signals are not hindered.
However, the difference in colors of the non-metal casing 22 and the
metal casing 10 adversely affect the entire appearance of the
conventional mobile phone 10.

2. Meng teaches at column 2, line 56 through column 3, line 2;

Other objects, features and advantages of the present invention
will be more apparent from the following detailed description when
read in conjunction with the accompanying drawings in which:

FIG. 1 is a diagram showing constructions of Model-1 and Model-2
portable telephones in one embodiment of the present invention;

FIG. 2 is a perspective view of the Model-1 portable telephone;
FIG. 3 is a perspective view of the Model-2 portable telephone;

Additionally Meng teaches at column 3, lines 11 through 13:
FIG. 8 is a perspective view of the shield case which is turned upside
down;

FIG. 9 is a bottom view of the shield case;

3. Tendler shows in figure 3 a phone motherboard 20 completely
in closed within the housing or outer casing of his phone. It also shows a
semi-rigid coax 48 connected to the antenna 14 of the phones housing pod
40. Additionally, Tendler teaches:
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Application 10/841,517

For eliminating this source of interference, a high quality coaxial
cable is utilized between the GPS antenna and the GPS receiver. In
one embodiment, the coax is a so-called semi-rigid coax which in
volves the utilization of a flexible copper providing the maximum
shielding and grounding so as to eliminate the interference path.

Also, in order to more thoroughly shield the GPS receiver from
the interfering radiation a semi-rigid coaxial cable 48 connects the
GPS antenna 14 to GPS receiver 12.

Principals of Law
Obviousness
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007). To be nonobvious, an
improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 417. Appellant has the
burden on appeal to the Board to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On
appeal to the Board, an applicant can overcome a rejection [under § 103] by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Therefore,
we look to Appellant’s Briefs to show error in the proffered prima facie
case.

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Analysis
We reverse the standing rejection of independent claims 1 and 18 on
appeal. We do not agree with the Examiner’s views that if the claimed outer
metal casing of representative independent 1 comprises elements 29 and 26
in figure 3. Although element 29 is taught to be the ground plain of the
antenna 24 it is also the shield of the Printed Circuit Board (PCB) as noted in
Findings of Fact 2. This finding of fact is utilized by us as well to note that
the antenna blank 21 in figure 3 is made of thermoplastic, which is the same
material utilized to fabricate inner cover (frame) 26. Element 27 shown at
figure 3 appears not to be discussed in the written description of Meng.
Elements 26 and 29 may not fairly and reasonably be construed by the
artisan to be outer casings to the extent claimed. Even though element 29 is
metal by its very nature, it is not fairly characterized as an outer metal
casing. Moreover, element 26 is not described as metal at all. Element 26 is
aptly described an inner frame of the phone. That portion of column 3 at
lines 12 through 14 reproduced in Findings of Fact 2 makes clear that there
is, as illustrated in figure 1, a front and rear covers of the phone itself. The
nature of these covers is described in a cross-reference Great Britain Patent
not made of record by the Examiner in this appeal. Thus, it is not apparent
to us that the shown front and rear covers in figure 1 of Meng are comprised
of metal.
In view of the foregoing, we must reverse the rejection of independent
claims 1 and 18 on appeal as being anticipated by Meng as well as their
respective dependent claims rejected under 35 U.S.C. §§ 102 and 103.
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On the other hand, we do sustain the rejection of independent claim
10 for the reasons set forth by the Examiner in the Answer. Significantly,
the claimed “a casing” of independent claim 10 is not recited to be a metal
casing, let alone an outer metal casing. In these respects then Appellant’s
arguments at page 12 that adopt the portion set forth with respect to claim 1
on appeal are not pertinent here. Moreover, contrary to the position at page
12 of the Brief that Meng fails to teach a casing enclosing a plurality of
electronic parts, the Examiner’s position is correct that element 26, which
Appellant recognized as a inner frame of Meng and as taught in Meng and
shown in figure 3 provides an inner housing or casing for the antenna cavity
28 which receives the printed circuit board as we noted in findings of fact 2.
It goes without said that the claimed plurality of electronic parts are
contained within the housing or casing 26 because the printed circuit board
is contained therein.
In addition to these findings, Appellant does not argue that Tendler is
not properly combinable with Meng within 35 U.S.C. § 103 and essentially
does not contest what the Examiner relies upon in that reference. As we
note in Findings of Fact 3, Tendler does show and emphases even more
clearly that there is a casing that encloses a plurality of electronic parts. This
finding also illustrates a strong motivation for combining the teachings as
indicated in the portions of paragraphs 13 and 29 we reproduced in Findings
of Fact 13.
We therefore, conclude that the subject matter of independent claim
10 as representative of all the claims depending from it as well, would have
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been obvious to the artisan in accordance with the Examiner’s rejections of
records.
New rejections within 37 C.F.R. 41.50(b)
We rejection independent claims 1 and 18 on appeal and their
respective dependent claims in a corresponding manner as set forth by the
Examiner in the Answer. But based upon the admitted prior art of Appellant
set forth in Findings of Fact 1 alone, or in view of Meng.
A study of the reproduced portions of Appellant’s admitted prior art in
Findings of Fact 1 make clear that the outer metal casing of independent
claims 1 and 18 on appeal was well known in the art. A non-conductive
material shown in figures 1a, 1b was also known in the art to effectively
shelter the antenna which was contained within an opening within the metal
casing or housing of the phone in such a manner that the shelter member 22
retained the antenna therein. Although not expressly indicated in these
admissions, the artisan would have found it obvious that the antenna must be
electrically connected by conductor of some kind to the print circuit board
material that was also admitted by Appellant to be in the prior art.
Moreover, independently of our easement of the admitted prior art alone, the
artisan clearly would found it obvious to have utilized these teachings and
conjunctions with the teachings of Meng as relied upon by the Examiner to
have render obvious the subject matter of representative independent claims
1 and 18 on appeal. We leave it to the Examiner to address the feature of the
respective dependent claims depending from these independent claims.

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Conclusions
1. Appellant has shown that the Examiner erred in concluding that
Meng teaches an outer metal casing to the extent recited in representative
independent claim 1 on appeal
2. Appellant has not shown that the Examiner erred in concluding
that the combination of Meng and Tendler taught a casing enclosing a
plurality of electronic parts of a phone.

Summary and Decision
We have reverse the Examiner’s rejection of independent claims 1 and
18 under 35 U.S.C. § 102 as well as they respective dependent claims
rejected under 35 U.S.C. §§ 102 and 103. On the other hand, we have
instituted new grounds of rejection of these claims under 35 U.S.C. § 103
over Appellant’s admitted prior art alone or in view of the teachings of
Meng. Lastly, the Examiner’s original stated rejection of independent claim
10 and it dependent claims 11 through 17 are affirmed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) that provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

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Application 10/841,517

(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .

(2) Request that the proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

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).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

APJ’s Initials

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