Ex Parte Senatori et al

Patent Trial and Appeal Board

Jun 28, 2016

13260129 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/260, 129 09/23/2011
22879 7590 06/30/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Mark David Senatori
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.
82853052 6379
EXAMINER
TRAN, BINH BACH THANH
ART UNIT PAPER NUMBER
2848
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK DAVID SENATOR! and CAMERON C. DUNCAN
Appeal2014-009380
Application 13/260, 129
Technology Center 2800
Before CARL W. WHITEHEAD JR, JEFFREYS. SMITH and
JOHN F. HORVATH, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the Final Rejection of claims 1-9 under 35
U.S.C. § 134(a). 1 Appeal Brief 7. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Claims 1-9 stand objected to for lack of antecedent basis. Final Rejection
2. Notwithstanding Appellants' arguments (Appeal Brief 8), this matter is
not before us since we lack jurisdiction over petitionable matters. See, e.g.,
MPEP § 706.01 ("[T]he Board will not hear or decide issues pertaining to
objections and formal matters which are not properly before the Board.");
see also MPEP § 1201 ("The Board will not ordinarily hear a question that
should be decided by the Director on petition .... ").
Appeal2014-009380
Application 13/260, 129
Introduction
The invention is directed to "a perimeter edge seal for external
element protection of a portable electronic device having a clam-shell
design." Specification i-f 11.
Representative Claim (disputed limitations emphasized)
1. A portable electronic device comprising:
a first housing of the portable device and a second
housing of the portable device coupled at a common end;
an engaging member formed continuously around an
interior surface of the first housing; and
a receiving member formed continuously around an
interior surface of the second housing,
wherein the engaging member is configured to fit
hermetically within the receiving member so as to seal the first
housing with the second housing.
Rejections on Appeal
Claims 1--4 and 7-9 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Holzhausen (US Patent Application Publication Number
2009/0303673 Al; published December 10, 2009). Final Rejection 2--4.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Holzhausen and Kawasaki (US Patent Application
Publication Number 2008/0081679 Al; published April 3, 2008). Final
Rejection 6.
Claim 6 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Holzhausen and Camevali (US Patent Number 7,464,814
B2; issued December 16, 2008). Final Rejection 7.
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Appeal2014-009380
Application 13/260, 129
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed April 2, 2014), the Reply Brief (filed
August 28, 2014), the Answer (mailed June 30, 2014) and the Final
Rejection (mailed November 26, 2013) for the respective details. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs.
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. 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 in response to Appellants' Appeal Brief, except where
noted.
Anticipation Rejection
Appellants argue "the device described in Holzhausen is 'a protective
enclosure for an electronic device.' (Holzhausen, para. 1 )" and
"[ c ]onsequently, the enclosure of Holzhausen cannot be a portable electronic
device as suggested by the Office Action." Appeal Brief 9. Claim 1 's
preamble states that the invention is directed to a portable electronic device.
"If the claim preamble, when read in the context of the entire claim, recites
limitations of the claim, or, if the claim preamble is 'necessary to give life,
meaning, and vitality' to the claim, then the claim preamble should be
construed as if in the balance of the claim." Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (citations omitted).
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Appeal2014-009380
Application 13/260, 129
The Examiner finds:
Regarding claim 1, Holzhausen discloses, in figures 2--4, a
portable electronic device comprising: a first housing (front
cover 10) of the portable electronic device and a second housing
(back cover 16) of the portable electronic device coupled at a
common end (hinge 46); an engaging member (first continuous
edge 14) formed continuously around an interior surface of the
first housing (edge 14 formed around the interior of front cover
1 O); and a receiving member (groove 42) formed continuously
around an interior surface of the second housing (groove 42
formed continuous around an interior of the back cover 16),
wherein the engaging member is configured to fit hermetically
within the receiving member so as to seal the first housing with
the second housing (see Holzhausen's claim 1).
Final Rejection 2-3.
Appellants further argue:
[T]he claim language (i.e., a "portable electronic device")
conveys to a person of ordinary skill in the pertinent art that the
first and second housings form parts of the electronic portable
device with each housing being part of the electronic device. In
contrast, Holzhausen is merely "a protective enclosure for an
electronic device" and thus any parts thereof cannot be
electronic. (Holzhausen, para. 1) (emphasis added).
Appeal Brief 10.
Appellants rely upon paragraph 12 of their Specification to provide
support for the preamble "a portable electronic device" recited in claim 1.
Appeal Brief 6. "[T]he notebook computer 100 includes a top housing 102
and lower housing 104 connected at a common end via a pivot mechanism
105 (e.g. hinge)." Specification i-f 12 (referring to Figure 1). However, there
is no mention of the housing forming the electronic device in a manner that
is patentably distinguishable over Holzhausen. Most importantly, claim 1
does not support Appellants' position that the claimed invention is
patentably distinguishable over Holzhausen because the claim does not
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Appeal2014-009380
Application 13/260, 129
indicate that the housing itself is electronic. We do not find Appellants'
arguments commensurate with the scope of the claim. Although the housing
of Holzhausen, by itself, is not electronic, Appellants have not persuasively
distinguished the housing, together with commonly used media players
placed within the housing as disclosed by Figure 3 and paragraphs 2 and 42
of Holzhausen, from a "portable electronic device comprising" the housing
of claim 1. We therefore find Appellants' housing is a protective enclosure
for an electronic device in the same manner as Holzhausen's housing.
Appellants also argue Holzhausen's edges 14 and 20 are not formed
continuous around and do not hermetically seal the first and second housings
because Holzhausen discloses an aperture 36 in edges 14 and 20. Appeal
Brief 11. However, Holzhausen describes edges 12 and 14 as continuous
edges, and discloses when the front and back covers (housings) are closed,
the enclosure is "capable of resisting water and moisture." Holzhausen i-fi-1
39, 42.
Accordingly, for the reasons discussed above, we sustain the
Examiner's anticipation rejection of claim 1, as well as, claims 2-4 and 7 -9
not separately argued. See Appeal Brief 12.
Obviousness Rejection
Appellants argue that "Holzhausen and Kawasaki fail to teach or
suggest that 'the exterior sides of the protruding portion of the engaging
member are adapted to expand the side walls of the receiving member such
that the side walls of the receiving member rub along exterior sides of the
protruding portion"' as recited in claim 5. Appeal Brief 12 (citing Final
Rejection 6). Appellants argue it is actually Kawasaki's peripheral part
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Appeal2014-009380
Application 13/260, 129
( 431) that deforms to fit into the recess while the recess remains rigid.
Appeal Brief 13.
The Examiner further finds "Kawasaki teaches, in figures 9 and 10,
the exterior side of the wall part (42) having a projection (441) that engages
the side wall of the receiving member (casing 2) such that the wall of the
receiving member rub along exterior sides of the projection ( 441 ). " Answer
4. "Appellant notes that the Examiner has failed to again show where within
Kawasaki the projection or any other device 'are adapted to expand the side
walls of the receiving member' as argued previously." Reply Brief 9. The
Examiner also finds that even though Holzhausen is silent about the
interconnection of the first and second housing forming a seal:
Holzhausen discloses that the engaging member of the housing
is made of thermoplastic material. In order to ensure the water
resistant property of electronic housing, the engaging member
(edge 14 of housing 10) of the housing, which is made by
thermoplastic material, is inherently expand to contact to the
receiving member (groove 42) in a tightly manner. In addition,
Kawasaki is teaching the obviousness of having the exterior side
of the protruding portion (43) of the engaging member are
adapted to expand (expand to 441) the side walls of the receiving
member such that the side walls of the receiving member rub
along exterior sides of the protruding portion (figure 4) in order
to ensure the water resistant property of the electronic device
housing.
Final Rejection 9-10.
We do not find Appellants' arguments persuasive and agree with the
Examiner's findings. We sustain the Examiner's obviousness rejection of
claim 5.
Appellants argue in regard to claim 6:
Camevali teaches that "grooves 236 sized to engage the
circumferential teeth 228 of the ridge portion 226." (Camevali,
col. 21, 11. 62-63). Clearly, as can be seen in Figs. 24 and 25 of
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Appeal2014-009380
Application 13/260, 129
Camevali, elements 236 and 228 fit together snuggly but the side
walls of element 232 do not "come toward each other as a bottom
portion of the engaging member presses into the concave area of
the receiving member." (Claim 6) (emphasis added).
Appeal Brief 16.
The Examiner finds:
[T]hat an engaging member having two sidewalls clamping on a
protruding portion is known in the art as taught by Camevali.
Camevali teaches the side walls (234, 234 figure 25) of the
receiving member are configured to contract and come toward
each other (two portions 234 curve toward each other to engage
the main body 230) as a bottom portion (228) of the engaging
member (main body 230) presses into the concave area (surface
of the groove 23 6) of the receiving member such that at least a
portion of each of the side walls of the receiving member clamp
onto the exterior sides of the engaging member (figure 24).
Final Rejection 10.
We do not find Appellants' arguments persuasive and agree with the
Examiner's findings. We sustain the Examiner's obviousness rejection of
claim 6.
DECISION
The Examiner's anticipation rejection of claims 1--4 and 7-9 is
affirmed.
The Examiner's obviousness rejections of claims 5 and 6 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
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