Ex Parte Nuovo et al

Board of Patent Appeals and Interferences

Jun 6, 2012

10451693 (B.P.A.I. Jun. 6, 2012)

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.
10/451,693 01/09/2004 Frank Nuovo 852.0046.U1(US) 4500
10948 7590 06/07/2012
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
EXAMINER
LU, ZHIYU
ART UNIT PAPER NUMBER
2618
MAIL DATE DELIVERY MODE
06/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK NUOVO and MARK HUTCHISON
____________

Appeal 2010-003715
Application 10/451,693
Technology Center 2600
____________

Before JEAN R. HOMERE, GREGORY J. GONSALVES, and ANDREW
J. DILLON, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003715
Application 10/451,693

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-13 and 16-31 (App. Br. 2). Claims 14and 15 were cancelled (Id.).
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary Claim 1 follows:
1. A method for enabling production of a customized casing for a
personal portable communication device defining an internal space for
accommodating an engine, the casing having a user interface including a
plurality of user input elements for user input, the method comprising:

designating a plurality of casing elements capable of individual
formation, the character of which is selectable by a commissioning party,
wherein the character of at least one of the casing elements, which is
configured to be spaced from a front of a display region of the device, is
adapted to be selected from precious or semi-precious materials consisting
of a precious metal and/or a precious or semi-precious stone;

allowing the character of each of the plurality of casing elements to be
respectively selected by the commissioning party; and

communicating the selections for realisation of the customized casing.

The Examiner rejected claims 1, 3, 6-9, 11-13, 16, 27 and 28 under 35
U.S.C. 103(a) as being unpatentable over Slipy (U.S. 5,848,152) and Adler
(U.S. 6,256,015 B1) (Ans. 4-7).
The Examiner rejected claims 2, 4, 5, and 10 under 35 U.S.C. § 103(a)
as being unpatentable over Slipy, Adler, and Maeda (U.S. 5,966,310) (Ans.
8-9).
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Application 10/451,693

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The Examiner rejected claims 19 and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Slipy, Adler, and D’Andrade (U.S. 5,233,845) (Ans.
9-11).
The Examiner rejected claims 21-23 and 28 under 35 U.S.C. § 103(a)
as being unpatentable over Slipy, Adler, and Gaither (U.S. 5,731,808) (Ans.
11-12).
The Examiner rejected claims 24, 25 and 29 under 35 U.S.C. § 103(a)
as being unpatentable over Slipy, Adler, Gaither, and Lockhart (U.S.
5,306,439) (Ans. 12-13).
The Examiner rejected claims 17, 18, 28, and 31 under 35 U.S.C. §
103(a) as being unpatentable over Slipy, Adler, and Lockhart (Ans. 13-15).

ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in finding that Slipy teaches that the
character of a plurality of casing elements is selectable by a commissioning
party, as required by independent claims 1, 16, 19, and 27?
2. Did the Examiner err in finding that Slipy teaches selecting
casing elements from a list of options, as required by dependent claim 3?
3. Did the Examiner err in finding that Slipy teaches “selecting an
engine having a desired functionality,” as recited in dependent claim 6?

Appeal 2010-003715
Application 10/451,693

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ANALYSIS
We disagree with Appellants’ conclusion regarding the Examiner’s
rejection of the claims on appeal. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer (Ans. 4-27) in response to arguments made in the Appellants’
Appeal Brief and Reply Brief. We concur with the conclusion reached by
the Examiner. We highlight and address certain findings and arguments
below.
Appellants assert that the Examiner erred in finding that independent
claim 1 is obvious because “there is no disclosure or suggestion in Slipy et
al. of a character of a plurality of casing elements being selectable by a
commissioning party” (App. Br. 7). Appellants argue that the “plain and
ordinary meaning of ‘commissioning party’ is a party who commissions
another party to perform a task” (Reply Br. 3). Appellants then argue that
under that meaning, the manufacturer or assembler in Slipy does not qualify
as a commissioning party (Id. at 4). But in addition to teaching that a
manufacturer or assembler may select elements for a communication device,
Slipy also teaches that a user may select elements such as a faceplate and
keypad (Ans. 16 citing Slipy, col. 1, ll. 34-48; col. 8, ll. 4-13; col. 10 ll. 26-
29 and col. 13, ll. 36-38). And under Appellants’ own claim construction,
the user in Slipy qualifies as a commissioning party because the user
commissions a manufacturer to perform the task of constructing a
communicating device in accordance with the user’s selections (Ans. 16).
Appellants also argue that the elements in Slipy that are identified by
the Examiner as selectable in Slipy such as the display and keypad, “are not
Appeal 2010-003715
Application 10/451,693

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part of the casing” (App. Br. 8). As explained by the Examiner, however,
Appellants’ own claim indicates that the casing includes “a user interface
including a plurality of user input elements for user input” (Ans. 17). Thus,
we find that the Examiner, giving the claim its broadest reasonable meaning
consistent with the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997), properly relies on the selection of the keypad elements by a user
in Slipy as the selection of casing elements by a commissioning party, as
required by claim 1.
Appellants also assert that claim 1 is not obvious in light of the
teachings of Adler because Adler is not analogous art (App. Br. 9).
Appellants argue that Adler is in a different field because it is directed to a
cover for a computer mouse, which “is clearly much different from a mobile
telephone or similar portable communication device” (Id.). A computer
mouse, however, is also a communication device because it communicates
signals corresponding to button clicks to a computer. Thus, we find that
Adler is in the same field as Appellants’ invention and therefore, is
analogous art. Accordingly, we find no error in the Examiner’s rejection of
claim 1 and sustain that rejection.
Appellants argue that the Examiner erred in finding that claim 3 is
obvious because Slipy teaches away from selecting casing elements from a
list of options because the Slipy’s housing “is not readily changeable” (App.
Br. 13 (emphasis omitted)). As explained supra, however, the keypads of
Slipy meet the claimed casing elements under the broadest reasonable
construction of that term consistent with the specification. And as explained
by the Examiner (Ans. 18-19), Slipy teaches that the keypads are selectable
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Application 10/451,693

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(Slipy col. 4, ll. 12-60). Accordingly, we find no error in the Examiner’s
rejection of claim 3 and sustain that rejection.
Appellants argue that the Examiner erred in concluding that claim 6 is
obvious because Slipy does not teach “selecting an engine having a desired
functionality” (App. Br. 13). We agree with the Examiner’s response to
these assertions (See Ans. 19-20). As explained by the Examiner, Slipy
discloses control circuitry within a portable communication device that
provides operational capabilities and therefore, is considered to be an engine
of the device (Ans. 19 citing Slipy, col. 1, ll. 49-52 and col. 4, ll. 64-67).
Moreover, the control circuitry or engine of the communication device
would necessarily need to be selected by the manufacturer prior to
constructing and assembling the device (Ans. 20). Thus, we find no error in
the Examiner’s rejection of claim 6 and sustain that rejection. We also
sustain the Examiner’s rejection of the remaining claims on appeal because
Appellants did not set forth any separate or different patentability arguments
for those claims (See App. Br. 12-24).

DECISION
We affirm the Examiner’s decision rejecting claims 1-13 and 16-31.
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
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