Ex Parte Ramsdell et al

Patent Trial and Appeal Board

Aug 16, 2016

12944837 (P.T.A.B. Aug. 16, 2016)

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.
12/944,837 11/12/2010 Blake Charles Ramsdell RPS920100052USNP(710.148) 6499
58127 7590 08/16/2016
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
SYED, NABIL H
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
08/16/2016 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BLAKE CHARLES RAMSDELL
and ROBERT DEMING DICKINSON III

____________________

Appeal 2015-004054
Application 12/944,837
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, JOHN P. PINKERTON and
GARTH D. BAER, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2015-004054
Application 12/944,837

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, and 4–19. Claim 3 has been cancelled. App. Br. 19. We have
jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claims
Exemplary claims 1 and 2 under appeal read as follows (emphasis
added):
1. An apparatus comprising:
a convertible wireless remote control including:
an upper portion that has a rectangular side profile with
a substantially flat upper and lower surface;
the upper surface including a touchpad that is
inactive when the convertible wireless remote
control is in a closed orientation and that is
activated responsive to the convertible wireless
remote control being slid open; and
a lower portion slidably connected to the upper portion,
wherein the lower portion comprises a QWERTY
keyboard;
the lower portion having a substantially flat upper
surface and substantially angular edges extending
therefrom terminating in a substantially flat
bottom surface.

2. The apparatus according to claim 1, wherein the lower
portion has a substantially trapezoidal shape including a volume
accommodating two AA batteries

Appeal 2015-004054
Application 12/944,837

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Rejections on Appeal
1. The Examiner rejected claims 1, 10, and 17 provisionally on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1 of copending U.S. Application No. 12/751,933.1
2. The Examiner rejected claim 1, 4, and 5 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Van der Byl (US
2011/0128228 A1, published June 2, 2011), Oksman et al. (US
2011/0151935 A1, published June 23, 2011), and Griffin et al. (US
2011/0248933 A1, published Oct. 13, 2011).2
3. The Examiner rejected claims 2, 6–8, and 10–19 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Van der
Byl, Oksman, Griffin, and Henty (US 7,123,242 B1, issued Oct. 17, 2006).3
4. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Van der Byl, Oksman, Griffin,
Henty, and Gates et al. (US 2005/0078087 Al, published Apr. 14, 2005).4

1 Separate patentability is not argued for claims 10 and 17. Except for our
ultimate decision, the Examiner’s rejection of these claims is not discussed
further herein.
2 Separate patentability is not argued for claims 4 and 5. Except for our
ultimate decision, the Examiner’s rejection of these claims is not discussed
further herein.
3 As to this rejection, our decision as to the rejection of claim 1 is
determinative. Therefore, except for our ultimate decision, the rejection of
claims 2, 6–8, and 10–19 is not discussed further herein.
4 As to this rejection, our decision as to the rejection of claim 1 is
determinative. Therefore, except for our ultimate decision, the rejection of
claim 9 is not discussed further herein.
Appeal 2015-004054
Application 12/944,837

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Appellants’ Contentions5
1. Appellants contend that the Examiner erred in rejecting claim 1
provisionally on the ground of nonstatutory obviousness-type double
patenting because:
Applicants respectfully submit that the double patenting
rejections are improper at least because they contain the
following conclusory statement that is not supported by any
evidence of record:
Further with regards to the shape of the remote
control it would have been obvious to one having
ordinary skill in the art to choose different designs
of the top and bottom of the remote control since
that would involve mere change of shape of the
remote.
App. Br. 12. Appellants contend that as in an obviousness rejection under
§ 103, “there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id.
2. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
Applicants respectfully submit that the combination of
references do not teach or suggest all the claimed limitations, as
is required. Ex parte H. Garrett Wada et al., Slip Opinion, p. 7,
Appeal No. 2007-3733 (BPAI January 14, 2008).
App. Br. 12.
3. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
Applicants[’] prior arguments remain relevant as the Office has
not used Griffin to correct many of the inaccuracies previously

5 These contentions are determinative as to the rejections on appeal.
Therefore, Appellants’ other contentions are not discussed herein.
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Application 12/944,837

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pointed out by Applicants. See Remarks of December 23, 2014
(incorporated by reference herein).
App. Br. 13.
4. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
The Office . . . appears to simply conclude that, while Van der
Byl does not teach “the lower portion having substantially
angular edges terminating in a bottom portion,” claim 1, that “it
would have been obvious to one having skill in the art to
choose different designs of the bottom of the remote control
since that would involve mere change of shape of the remote”.
Office Action, p. 5. Applicants respectfully disagree initially
because there is no support given for this allegation, which is
improper.
App. Br. 14.
[T]he Office’s conclusory statement regarding design choice,
Office Action, p. 5, is insufficient to support an obviousness
rejection.
App. Br. 16.

Issues on Appeal
Did the Examiner err in provisionally rejecting claim 1 on the ground
of nonstatutory obviousness-type double patenting?
Did the Examiner err in rejecting claim 1 as being obvious?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
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As to Appellants’ above contention 2, we disagree. Appellants’
argument that the references must teach or suggest all the claimed
limitations overlooks the Court’s decision in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007). Appellants cite to Wada arguing that a teaching or
suggestion is required, without acknowledging that the Court specifically
repudiated that such a “teaching or suggestion” is required to show
obviousness. KSR, 550 U.S. at 415 (“We begin by rejecting the rigid
approach of the Court of Appeals.”). Rather, the requirement is only that the
Examiner show “the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art
to which said subject matter pertains.” KSR, 550 U.S. at 406 (quoting 35
U.S.C. § 103) (emphasis added); id. at 418 (“[T]he analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”).
As to Appellants’ above contention 3, we disagree. Appellants
attempt to incorporate by reference non-specified arguments made on
December 23, 2014. First, December 23, 2014 is after the Appeal Brief filed
on August 27, 2014. Second, 37 C.F.R. § 41.37(c) provides the appropriate
content for an Appeal Brief before this Board. No subsection thereof
provides for incorporation by reference. Rather, as subsection (1) thereof
states, “[e]xcept as otherwise provided in this paragraph, the brief shall
contain the following items under appropriate headings and in the order
indicated in paragraphs (c)(1)(i) through (v) of this section.” We conclude
that contention 3 fails to constitute an argument on the merits. See 37 C.F.R.
§ 41.37(c)(1)(iv) (“Except as provided for in
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§§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the
appeal brief will be refused consideration by the Board for purposes of the
present appeal.”). Further, the Board may interpret its regulations. In re
Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011) (“As we held in Sullivan, we
accept the Board’s interpretation of PTO regulations unless that
interpretation is ‘plainly erroneous or inconsistent with the regulation.’ 362
F.3d at 1326.”).
As to Appellants’ above contentions 1 and 4, we agree. We conclude,
consistent with Appellants’ argument, there is insufficient articulated
reasoning to support the Examiner’s findings. Rather, the Examiner is
relying on a per se rule that “mere change of shape” (Final Act. 4 and 5) is
obvious without further explanation being required. We disagree.
The use of per se rules, while undoubtedly less laborious than a
searching comparison of the claimed invention--including all its
limitations--with the teachings of the prior art, flouts section
103 and the fundamental case law applying it. Per se rules that
eliminate the need for fact-specific analysis of claims and prior
art may be administratively convenient for PTO examiners and
the Board. Indeed, they have been sanctioned by the Board as
well. But reliance on per se rules of obviousness is legally
incorrect and must cease.
In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).

CONCLUSIONS
(1) Appellants have established that the Examiner erred in
provisionally rejecting claims 1, 4, and 5 on the ground of nonstatutory
obviousness-type double patenting.
(2) Appellants have established that the Examiner erred in rejecting
claims 1, 2, and 4–19 as being unpatentable under 35 U.S.C. § 103(a).
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(3) On this record, these claims have not been shown to be
unpatentable.

DECISION
The Examiner’s rejection of claims 1, 2, and 4–19 as being
unpatentable under 35 U.S.C. § 103(a) is reversed.
The Examiner’s provisional rejection of claims 1, 4, and 5 on the
ground of nonstatutory obviousness-type double patenting is reversed.

REVERSED