Ex Parte Nash

Patent Trial and Appeal Board

Apr 10, 2017

12876804 (P.T.A.B. Apr. 10, 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.
12/876,804 09/07/2010 Michael Nash 3723157-00002 2016
24573 7590 04/12/2017
K&T Oates T T .P-Phiraan
EXAMINER
P.O. Box 1135
CHICAGO, IL 60690
ORTIZ, RAFAEL ALFREDO
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
04/12/2017 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL NASH
Appeal 2015-0024411
Application 12/876,8042
Technology Center 3700
Before MICHELLE R. OSINSKI, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1—17 and 23—26. We have jurisdiction under 35 U.S.C. § 6(b). We
held an oral hearing on March 23, 2017.
We REVERSE.
1 Our decision references Appellant’s Specification (“Spec.,” filed Sept. 7,
2010), Appeal Brief (“Appeal Br.,” filed Aug. 8, 2014), and Reply Brief
(“Reply Br.,” filed Dec. 15, 2014), as well as the Examiner’s Answer
(“Answer,” mailed Oct. 14, 2014).
2 According to Appellant, “[t]he real party in interest... is Caged Idea’s
LLC.” Appeal Br. 2.
Appeal 2015-002441
Application 12/876,804
According to Appellant, the invention “relates to personal data
transmitting and receiving devices, such as cellular phones, and[,] more
particularly^] to enclosures for [the] same.” Spec. 11. We reproduce
independent claim 1, below, as illustrative of the claims on appeal.3
1. A personal communication device PCD holder comprising:
an at least semi-rigid housing having a base wall and at
least one side wall extending from the base wall so as to form a
housing into which a user can place a PCD, at least one of the
base wall and the at least one side wall including a conductive
material so that the at least one of the base wall and the at least
one side wall are data signal blocking;
a lid configured to be moveable with respect to the housing
so as to enable the user to (i) place the PCD into the housing and
(ii) securely and releasably close the lid onto the housing, the lid
also including a conductive material so that when the lid is closed
onto the housing, the holder is data signal blocking, preventing a
data signal from reaching the PCD;
a separate material secured to and extending out from an
interfacing edge of one of the housing and the lid so as to extend
into the other of the lid and the housing when mated, the separate
material (i) structured to have the same shape as an opening
formed by the other of the lid and the housing and sized so as to
fit snugly within each inner surface forming the opening and (ii)
being conductive and data signal blocking, providing additional
signal blocking protection between the lid and the housing; and
an illumination source configured to illuminate when the
lid is closed onto the housing to indicate the PCD holder is data
signal blocking.
We correct “(PCD)” to read “PCD” in the claim’s first line.
2
3
Appeal 2015-002441
Application 12/876,804
REJECTIONS AND PRIOR ART4
The Examiner rejects claims 1, 3—5, 11—14, 23, and 24 under
35 U.S.C. § 103(a) as unpatentable over Foegelle (US 6,657,214 Bl, iss.
Dec. 2, 2003) and Ramsey (US 5,594,200, iss. Jan. 14, 1997).
The Examiner rejects claims 2, 9, and 10 under 35 U.S.C. § 103(a) as
unpatentable over Foegelle, Ramsey, and McDonagh (US 7,134,552 Bl, iss.
Nov. 14, 2006).
The Examiner rejects claims 6—8 under 35 U.S.C. § 103(a) as
unpatentable over Foegelle, Ramsey, and Diaferia (US 2003/0057131 Al,
pub. Mar. 27, 2003).
The Examiner rejects claims 15—17, 25, and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Foegelle and Wang (US 2005/0029137 Al,
pub. Feb. 10, 2005).
ANALYSIS
Rejections of independent claim 1 and its dependent claims 2—14, 23,
and 24
Independent claim 1, from which claims 2—14, 23, and 24 depend,
recites, among other recitations, “an illumination source configured to
illuminate when the lid is closed onto the housing.” Appeal Br., Claims
App. Appellant argues that the Examiner errs in finding that Ramsey
discloses such an illumination source. Id. at 12—13. Based on our review of
the record, we agree with Appellant.
4 In the Answer, the Examiner withdraws the other obviousness rejections
set forth in the Final Office Action. Answer 10.
3
Appeal 2015-002441
Application 12/876,804
More specifically, in the rejection, the Examiner finds that “Ramsey
discloses an electromagnetic isolation chamber (10) including an
illumination source (32) configured to illuminate when the lid is closed into
[sic] the housing,” citing Ramsey’s column 3, lines 24—35. Answer 3.
However, this portion of Ramsey does not disclose anything about when
light 32 illuminates. Ramsey col. 3,11. 24—35. In the Response to
Arguments section of the Answer, the Examiner does not cite any other
portion of Ramsey, or any portion of any other reference. Instead, the
Examiner determines that
[n]owhere in claim 1 is a recitation indicating the light source
[is] automatically turned on when the lid is closed onto the
housing. [The] Examiner point[s] out that Ramsey discloses
an electromagnetic isolation chamber comprising a lid (12)
and a housing (14), the lid including a light source (32) that
illuminate[s] inside a chamber when the chamber is under
testing/closed, helping the user to view inside the chamber
when a device has been tested, wherein the illumination
source could manually be turned on and off. The illumination
source disclosed by Ramsey is capable [of] illuminat[ing]
when the lid is closed onto the housing, as required in claim 1.
Answer 10. We note, however, that claim 1 recites that the “illumination
source [is] configured to illuminate when the lid is closed onto the housing.”
Appeal Br., Claims App. Thus, even if we agree with the Examiner that
“[t]he illumination source disclosed by Ramsey is capable [of] illuminat[ing]
when the lid is closed onto the housing” (Answer 10), this evidence is
insufficient to support a rejection based on a finding that Ramsey discloses a
light source that is configured to illuminate when the housing lid is closed.
Thus, based on the foregoing, we do not sustain the rejection of claim 1. We
also do not sustain any of the rejections of dependent claims 2—14, 23,
4
Appeal 2015-002441
Application 12/876,804
and 24, inasmuch as the Examiner does not establish that any other reference
remedies the deficiency in the rejection of claim 1.
Rejection of independent claim 15 and its dependent claims 16, 17,
25, and 26
Independent claim 15, from which claims 16, 17, 25, and 26 depend,
recites, among other recitations, “the first housing further including structure
that is . . . structured inside the at least one side wall... to form-fit to a
shape of a particular PCD to inhibit movement of the PCD within the first
housing, providing at least one of scratch and impact protection to the PCD.”
Appeal Br., Claims App. Appellant argues that the Examiner errs in finding
that Foegelle discloses such a structure. Id. at 14—16. Based on our review
of the record, we agree with Appellant.
The Examiner finds that
Foegelle discloses ... the first housing further including structure
that is sized based upon a size of the PCD and structured/material
(126) inside the at least one side wall so as to form-fit to a shape
of a particular non-claimed PCD capable to inhibit movement of
the PCD within the first housing, providing at least one of scratch
and impact protection to the PCD[,]
but does not provide a citation as to where this is taught in Foegelle.
Answer 8. In the Response to Arguments section of the Answer, the
“Examiner points out that any cellphone with the exact dimensions of the
opened area of housing (102) of Foegelle could be placed within the
housing.” Id. at 11. While this is indeed correct, this is insufficient to
support a rejection based on a finding that Foegelle discloses a housing
including a material that is structured to form-fit to a shape of a particular
PCD, as recited by claim 15. Further, we determine that Foegelle’s
inclusion of additional structure, such as circuit board 116, test antenna 104,
5
Appeal 2015-002441
Application 12/876,804
test set 108, clamp assembly 128, alignment post 145, and fasteners
prohibits Foegelle from being structured to form-fit to a PCD. See Reply
Br. 5. Thus, based on the foregoing, we do not sustain the rejection of claim
15. We also do not sustain the rejection of any of dependent claims 16, 17,
25, and 26, inasmuch as the Examiner does not establish that any other
reference remedies the deficiency in the rejection of claim 15.
DECISION
We REVERSE the Examiner’s obviousness rejections of claims 1—17
and 23—26.
REVERSED
6