Ex Parte Williams

Board of Patent Appeals and Interferences

Jul 27, 2012

12255557 (B.P.A.I. Jul. 27, 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.
12/255,557 10/21/2008 HILARY LYNDSAY WILLIAMS 8802.002.REDV01_P6250USR2 3543
77970 7590 07/30/2012
Apple Inc.
c/o Novak Druce + Quigg LLP
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
EXAMINER
NGUYEN, KEVIN M
ART UNIT PAPER NUMBER
2629
MAIL DATE DELIVERY MODE
07/30/2012 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 HILARY LYNDSAY WILLIAMS
____________

Appeal 2012-003407
Application 12/255,557
Technology Center 2600
____________

Before DEBRA K. STEPHENS, KRISTEN L. DROESCH and
MICHAEL R. ZECHER, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
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Application 12/255,557

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STATEMENT OF THE CASE
Appellant requests rehearing under 37 C.F.R. § 41.52 of the Decision
on Appeal entered March 28, 2012 (“Decision”).
BACKGROUND
Appellant’s disclosed invention relates to a portable computer having
a small display screen and arranged to rest comfortably in the hand. Abs.;
see col. 1, ll. 47-55. Accelerometers capable of detecting movement of the
portable computer with respect to gravity provide input to a microcontroller
which selects a response from a number of viewing modes. Abs. Appellant
also briefly discloses in the written description that use of the device as a
cellular telephone is also envisaged. Col. 10, ll. 9-12. Appellant’s claims
recite a handheld telephone including a cellular transceiver. See claims 37
and 50.
SUMMARY OF THE DECISION
In the Decision, we affirmed the Examiner’s rejections of claims 37-
49 and 51 over the applied prior art and reversed the rejection of claim 50
under 35 U.S.C. § 112, 1st paragraph. Decision 10.
THE REQUEST FOR REHEARING
Appellant seeks reconsideration of the part of the Decision affirming
the rejections of claims 37-49 and 51 over the prior art. Appellant requests
that the Board vacate that part of its Decision and reverse the Examiner’s
rejections of claims 37-49 and 51. Req. Reh’g. 2-11. Appellant’s Request for
Rehearing is DENIED.
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DISCUSSION
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. Arguments not raised
in the briefs before the Board are not permitted in the request for rehearing.
37 C.F.R. § 41.52(a)(1). A request for rehearing is not an opportunity to
express disagreement with a decision. The proper course for an applicant
dissatisfied with a Board decision is to appeal, not to file a request for
rehearing to re-argue issues that have already been decided. See 35 U.S.C.
§§ 141, 145.
Appellant alleges that the Board: (1) failed to recognize the claimed
invention (Req. Reh’g. 2, ll. 5-15, 9, l. 19 through 10, l. 4); (2) did not read
the Examiner’s finding that Burrell does not disclose that the case further
housing a cellular transceiver (Req. Reh’g. 4, l. 13 through 5, l. 7); and (3)
overlooked that Silva’s terminal 10 has no telephone capability (Req. Reh’g.
10, ll. 4-10) (emphasis in original). Appellant further raises new arguments
(Req. Reh’g. 2, l. 15 through 4, l. 12; 6, l. 3 through 9, l. 6) and re-argues
issues already raised in the Briefs (Compare Req. Reh’g. 5, l. 8 through 6, l.
2. with App. Br. 5, ll. 13-19, 7, ll. 3-7; and Req. Reh’g. 9, l. 7 through 10, l.
13 with App. Br. 9, ll. 3-8). Nevertheless, we address Appellant’s new
arguments and re-arguments to provide additional clarity to the record.
Appellant first argues that the Board failed to recognize the claimed
invention because the Decision refers to the invention, which is the subject
matter of the claims on appeal as “a portable computer.” Req. Reh’g. 2, 9-10
(citing Decision 2, ll. 6-16).
Appellant’s arguments are misplaced since the Background section of
the Decision refers to Appellant’s disclosed invention as a portable
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computer, not the Analysis section of the Decision. The brief summary
provided in the Background of the Decision merely provides an overview of
the Appellant’s written description, the claims on appeal and the rejections
of the claims, and does not form any part of the analysis of the issues raised
by Appellant.
Appellant next takes issue with the statement in the Decision “that
Appellant does not address the Examiner’s finding that Burrell describes a
case comprising a cellular transceiver based on Burrell’s description of a
cellular telephone, a transceiver and an antenna.” Req. Reh’g. 4 (emphasis
added by Appellant). Appellant asserts that there was no need to address the
Examiner’s finding because claim 37 recites that “the case further housing:
a cellular transceiver, etc.” Id. (emphasis added by Appellant). Appellant
argues that the Board did not read the following sentence in which the
Examiner recognized and conceded that “Burrell does not disclose exactly
the case further housing the cellular transceiver.” Req. Reh’g. 5 (emphases
added by Appellant). Appellant concludes that Appellant need only to dispel
any potential argument that Burrell inherently taught a case housing a
cellular transceiver, and asserts that Appellant clearly and unequivocally
argued that Burrell does not inherently disclose a handheld telephone with a
case housing a cellular transceiver. Id. (citing App. Br. 7, ll. 3-7); see also
Req. Reh’g. 6.
We are unpersuaded by Appellant’s arguments. Appellant chooses to
focus on certain findings by the Examiner, but does not sufficiently address
the Examiner’s findings along with the Examiner’s determination of
obviousness. More accurately, the Examiner finds that Burrell teaches a case
comprising a cellular transceiver, and although Burrell does not disclose
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explicitly the case housing the cellular transceiver, the Examiner determined
that it would have been a matter of obvious engineering design choice to
make integral the several parts that were rigidly secured together as a single
unit (i.e., the case and the cellular transceiver). Ans. 6-7. As pointed out in
the Decision, Appellant does not dispute the Examiner’s finding that Burrell
teaches a case comprising a cellular transceiver (i.e., Burrell’s teaching of a
cellular transceiver). Similarly, while we recognize that Appellant argues
that Burrell does not inherently disclose a case housing a cellular
transceiver, Appellant does not sufficiently address the Examiner’s
determination that it would have been an obvious design choice to make
Burrell’s case and cellular transceiver integral (i.e., Burrell’s case housing
the transceiver).
As to Appellant’s new arguments, Appellant argues that the portion of
Burrell describing cellular telephones are all described in connection with
electronic devices designed for fixed mount applications, such as in or on an
aircraft panel, boat panel, land vehicle panel and the like, with specific
mention of cellular telephones by Burrell being only in relation to
automobiles. Req. Reh’g. 6 (citing Decision 7, ll. 2-6; Burrell col. 1, ll. 49-
51); see Ans. 6, Final Office Action 7-8 (citing col. 1, ll. 49-50). Appellant
argues that there is no description of handheld cellular telephones anywhere
in Burrell. Req. Reh’g. 6.
We are unpersuaded by Appellant’s arguments as they narrowly focus
on the explicit description in Burrell, rather than what Burrell fairly teaches
or suggests to one with ordinary skill in the art at the time of the invention.
The teaching of cellular telephones in Burrell is not limited to fixed mount
applications or automobiles as suggested by Appellant. Rather, Burrell’s
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invention relates to an electronic device optimally configured for both fixed
mounting and hand-held operation. Col. 1, ll. 10-12 (emphasis added).
Burrell provides numerous examples of electronic devices including
communication transceivers, telephones and cellular telephones. Col. 1, ll.
15-50. Burrell additionally teaches: (1) “[p]ortable electronic equipment
with horizontal orientation optimized for dash mounted and console
mounted applications are inconvenient to use in hand-held applications,”
(col. 1, ll. 60-62); (2) “[p]ortable electronic equipment with vertical
orientation is inconvenient to mount in a car, boat or aircraft panel due to
physical constraints of the panel itself and other electronic devices that are
generally horizontally configured,” (col. 1, l. 66 through col. 2, l. 2); and (3)
“a need remains within the industry for a single device which meets the
needs and requirements for combination portable and fixed mount
applications,” (col. 2, ll. 42-47) (emphasis added). Based on the foregoing
teachings of Burrell, one with ordinary skill in the art at the time the
invention was made would understand that Burrell suggests that the
exemplary communications transceivers, telephones, and cellular telephones
are to be optimally configured for both fixed mount and hand-held operation
so as to fulfill the industry need for a single device which meets the needs
and requirements for combination portable and fixed mount applications.
Appellant further utilizes the argument that the Board failed to
recognize the claimed invention based on the reference to “a portable
computer” in the Background of the Decision as a springboard to: (1)
narrowly define Appellant’s field of the endeavor as handheld telephones,
and “smart phones” (Req. Reh’g. 2-3); and (2) distinguish the claimed
invention from “a portable computer”, “laptop”, “portable telephone”, and
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“bag phones” (Req. Reh’g. 2-4). Utilizing Appellant’s narrowly defined
field of endeavor, Appellant argues that the Board overlooked the fact that
there is no teaching in Silva, relied upon by the Examiner in rejecting claims
38-40, 44, 45, 47 and 48, that Silva’s terminal 10 has any telephone
capabilities. Req. Reh’g. 9-10. Appellant argues that since Silva’s terminal
10 has no telephone capability it should have been regarded as sufficient
evidence that Silva is non-analogous art. Id.
We are unpersuaded by Appellant’s arguments, particularly
Appellant’s new arguments narrowly defining the field of endeavor as
handheld telephones. While Appellant’s invention, as recited in the preamble
of the claims, is directed to a handheld telephone, Appellant’s written
description in the Specification provides evidence that the field of
Appellant’s endeavor is not limited to handheld telephones, but is instead
broadly directed to a portable computer arranged to rest comfortably in the
hand in which the use of the device as a cellular telephone is also envisaged.
Abs.; col. 1, ll. 47-55; col. 10, ll. 9-12. Indeed, Appellant titled their
invention “Portable Computers” (Title).
Furthermore,
[t]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.

In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (emphasis added).
Despite Appellant’s argument that Silva is from a different field of
endeavor, which we find unpersuasive, Appellant does not sufficiently
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address the second test--whether Silva is reasonably pertinent to the
particular problem with which the inventor is involved.
For the foregoing reasons, Appellant’s arguments are unpersuasive.
Accordingly, we decline to modify the Decision.
DECISION
Appellant’s request for rehearing is DENIED.
ORDER
REHEARING DENIED

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