Ex Parte Smith

Patent Trial and Appeal Board

Mar 12, 2018

13998301 (P.T.A.B. Mar. 12, 2018)

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.
13/998,301 10/18/2013 Stephen Lorance Smith SS011.US 6228
7590
Robert E. Wise
660 Oakmont Ct.
Fairview, TX 75069
EXAMINER
PEREZ GUTIERREZ, RAFAEL
ART UNIT PAPER NUMBER
2642
MAIL DATE DELIVERY MODE
03/12/2018 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 STEPHEN LORANCE SMITH
Appeal 2017-007788
Application 13/998,301
Technology Center 2600
Before BRUCE R. WINSOR, JEREMY J. CURCURI, and
ADAM J. PYONIN, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 9-11. Final Act. 1 h We have jurisdiction under 35 U.S.C.
§ 6(b).
1 It is noted that the rejection under 35 U.S.C. § 101 has been withdrawn.
See Advisory Action, mailed Aug. 4, 2016, 6, first paragraph. In addition,
pending claims 3—8 and 12—19, cited on the Final Office Action, are
withdrawn from consideration. (See Final Office Action, mailed Mar. 2,
2016 (“Final Act.”)).
Appeal 2017-007788
Application 13/998,301
Claims 9—11 are rejected under 35 U.S.C. § 103(a) as obvious over
Richardson et al. (US 8,314,883 B2; Nov. 20, 2012; hereinafter
“Richardson”) and Iwai et al. (US 2004/0253972 Al; Dec. 16, 2004;
hereinafter “Iwai”). Final Act. 3^42.
We reverse.
STATEMENT OF THE CASE
Appellant’s invention relates to “grips that help the human hand(s) to
better grasp mobile devices.” (Specification, | 6). Claim 9 is illustrative and
reproduced below:
9. A handle for holding an electronic device with the human hand,
comprising:
1) a relatively flat electronic device having four edges, a first broad
flat surface having a display, and a second broad flat surface; and
2) a first long and narrow concavity in the second broad flat surface
wherein the surface of the concavity is curved along the narrower aspect of
the concavity.
(App. Br., Claims Appendix, 20.)
2 We herein refer to the Final Act., the Appeal Brief, filed Nov. 14, 2016
(“App. Br.”); Examiner’s Answer, mailed Feb. 22, 2017 (“Ans.”); and the
Reply Brief, filed Apr. 24, 2017 (“Reply Br.”).
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Application 13/998,301
ANALYSIS
Contentions
The Examiner finds Richardson teaches the recited (claim 9) “a
relatively flat electronic device having four edges, a first broad flat surface
having a display, and a second broad flat surface.” See Final Act. 3 (citing
Richardson Figures 1 and 2C). The Examiner finds Iwai teaches the recited
(claim 9) “a first long and narrow concavity in the second broad flat surface
wherein the surface of the concavity is curved along the narrower aspect of
the concavity.” See Final Act. 3 (citing Iwai 46, 50, 55). The Examiner
reasons
it would have been obvious to add Iwai’s long and narrow
concavity in the second broad flat surface wherein the surface of
the concavity is curved along the narrower aspect of the
concavity to Richardson’s electronic device with a grip. The end
result of the combination obviously is the claimed subject matter
of claim 9.
The motivation behind the combination is to put forth a
more defined and secure handler mechanism for a phone or
electronic device, thereby enhancing the user interaction.
Final Act. 4.
Appellant presents, among other arguments, the following principal
arguments:
[T]he Iwai reference does not show a “long and narrow concavity
in the second broad flat surface” of the device. The Iwai
reference shows two indented edges 502a and 502b. The
indentations are clearly shown to be in the edges of the device
and not on either of the two broad flat surfaces.
App. Br. 14.
[T]he concavity taught by Iwai is clearly not “long and narrow”
as is claimed by the appellant. The concavity is not disposed in
[] any broad flat surface of the Iwai device, as is claimed by the
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Application 13/998,301
appellant, but on an edge of the device. The surface of the
concavity shown in Iwai is not curved along the narrower aspect
of the concavity, but is actually curved in the opposite aspect.
The two concavities shown in the Iwai reference are nothing
more than a narrowed waist which the user grasps — both at the
same time, unlike the appellant’s invention — by wrapping the
hand around the narrowed waist of part of the device’s body.
App. Br. 15; see also App. Br. 16 (“The Iwai reference shows in Figs. 5A
and 5B concavities 502a and 502b in the edges of the device, and both
concavities are curved along the broader aspect of the concavity.”) and
Reply Br. 7 (“No reasonable person would describe the semi-concavity of
Iwai as being Tong and narrow’ even using the broadest reasonable sense of
those terms.”).
In response to these arguments, the Examiner elaborates “the broad
flat surface is considered the surface where the concave indentations 502a
and 502b of Iwai are located.” Ans. 10. The Examiner further elaborates
“this ‘narrowed waist’ of Iwai reads on the broadly claimed Tong and
narrow’ concavity.” Ans. 11; see also Ans. 13—14.
Our Review
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Iwai’s Figures 5A and 5B depict “‘502a’ a first finger grip portion,
‘502b’ a second finger grip portion.” Iwai 146; see also Iwai 1 50 (“concave
first finger grip portion 502a or the concave second finger grip portion 502b
on the lower housing 502 as shown in FIGS. 5A and 5B.”) and Iwai 1 55
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Application 13/998,301
(“the finger grip portion is concave as observed in a front elevational view of
FIG. 5A.”)•
Thus, Iwai does teach first and second concave finger grip portions.
However, we do not agree with the Examiner that, for example, Iwai’s first
finger grip portion 502a is “a first long and narrow concavity ... wherein the
surface of the concavity is curved along the narrower aspect of the
concavity” as recited in claim 9. Rather than being long and narrow,
assuming a reasonable thickness for the phone, the concavity in Iwai appears
short and wide. See Iwai Fig. 5A. Finally, we do acknowledge that the
concavity (first finger grip portion 502a) in Iwai is curved; however, again
assuming a reasonable thickness for the phone, the curve is along the wider
aspect of the concavity rather than along the narrower aspect of the
concavity.
In short, the Examiner erred in finding Iwai teaches (claim 9) “a first
long and narrow concavity in the second broad flat surface wherein the
surface of the concavity is curved along the narrower aspect of the
concavity.”
We, therefore, do not sustain the Examiner’s rejection of claim 9. We
also do not sustain the Examiner’s rejection of claims 10 and 11, which
depend from claim 9.
ORDER
The Examiner’s decision rejecting claims 9—11 is reversed.
REVERSED
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