Ex Parte Williams

Board of Patent Appeals and Interferences

Mar 28, 2012

12255557 (B.P.A.I. Mar. 28, 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 03/28/2012
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
03/28/2012 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 APPEAL
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STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 37-51.1 We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing was held on March 06, 2012. We AFFIRM-IN-PART.
BACKGROUND
Appellant’s disclosed invention relates to a portable computer having
a small display screen and arranged to rest comfortably in the hand.
Accelerometers capable of detecting movement of the pen (i.e. portable
computer) with respect to gravity provide input to a microcontroller which
selects a response from a number of viewing modes. The pen (i.e. portable
computer) may be held in either hand and the output message to the screen
will be oriented according to the location of the pen (i.e. portable
computer). Full personal digital assistance functionality may be
incorporated in a relatively small plastic casing with functions, such as
calendar, contracts and the like incorporated. Abs.
Independent claims 37 and 50 are illustrative and are reproduced
below:
37. A handheld telephone comprising:
a case, the case being sized and shaped to be held in one
hand of a user; the case being of a non-clam shell design und
without any hinge;
the case further housing:
a cellular transceiver;
a rechargeable battery;
at least one movement detector that produces an output
signal representative of detected movement of the telephone;
and

1 This is a Divisional Reissue Application filed under 35 U.S.C. § 251.
Claims 1-36 have been cancelled.
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a processor responsive to the output signal to determine a
most likely orientation to view information on a display in
correspondence with a user's intent in moving the telephone.

50. A handheld telephone comprising:
a case, the case being sized and shaped to be held in one
hand of a user; the case being of a non-clam shell design und
without any hinge; the case further housing:
a display;
a cellular transceiver;
a rechargeable battery;
at least one accelerometer that produces an output signal
representative of detected movement of the telephone; and,
a processor responsive to the output signal to determine a
most likely orientation of the telephone to view information on
the display in correspondence with a user's intent in moving the
telephone.

Claim 50 is rejected under 35 U.S.C. § 112, 1st paragraph.
Claims 37, 46 and 49 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Burrell (U.S. 5,910,882, June 8, 1999).
Claims 38-40, 44, 45, 47 and 48 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Burrell and Silva (U.S. 5,996,080,
Nov. 30, 1999).
Claims 41-43 and 51 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Burrell and Motosyuku (U.S. 5,602,566, Feb. 11, 1997).
ISSUES
Did the Examiner err in rejecting claim 50 under 35 U.S.C. § 112, 1st
paragraph as failing to comply with the written description and enablement
requirements?
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Did the Examiner err in concluding that the invention of claims 37-49
and 51 would have been obvious over the teachings of Burrell alone, Burrell
and Silva, and Burrell and Motosyuku?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments in the Appeal Brief presented in response to the Final Office
Action (“FOA”) and the arguments in the Reply Brief presented in response
to the Examiner’s Answer. Only those arguments actually made by
Appellant in the Appeal Brief and Reply Brief have been considered in this
decision. Arguments not made in the Briefs have not been considered and
are deemed to be waived. See 37 C.F.R. §§ 41.37(c)(1)(vii), 41.47(e).
We agree with Appellant’s conclusions regarding the Examiner’s
rejections of claim 50 under 35 U.S.C. § 112, 1st paragraph. However, we
disagree with Appellant’s conclusions regarding the rejections over the prior
art and adopt as our own: (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (FOA p. 3, line 11
through p. 8, line 16); and (2) the reasons set forth by the Examiner in the
Answer in response to the Appeal Brief (Ans. p. 6, line 14 through p. 9, line
22; p. 11, line 7 through p. 12, line 13; p. 14, line 17 through p. 16, line 3).
With respect to the claims argued by Appellant, we highlight and address
specific findings and arguments for emphasis as follows.
Claim 50
We agree with Appellant’s arguments that the Examiner erred in
finding that claim 50 does not comply with the written description and
enablement requirements of 35 U.S.C. § 112, 1st paragraph. The Examiner
asserts that the recitation of a “the case further housing a display” introduces
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new matter because it is not clearly supported by the original disclosure.
Ans. 5. The Examiner also asserts that the claim in not enabled on the basis
that the limitation “the case further housing a display” prevents a user from
seeing displayed information since the display is enclosed by the case. Ans.
5-6. In particular, we agree with Appellant that the Examiner incorrectly
interprets claim 50 as reciting that “the display being enclosed by the case,”
when there is no such recitation in claim 50. App. Br. 4; Reply Br. 5.
Instead, claim 50 recites: “the case further housing: a display . . . .” We
further agree with Appellant that the disclosed touch screen is in front of the
display screen (Spec. 12, ll. 16-18) and, therefore, does not make the display
invisible to the user or prevent the user from seeing displayed information.
App. Br. 4-5.
For these reasons, we do not sustain the rejection of claim 50 under
35 U.S.C. § 112, 1st paragraph. Moreover, we note that the Examiner for the
first time in the Answer rejects claim 50 under 35 U.S.C. § 251 for
introducing new matter and failing to comply with the enablement
requirement. Ans. 4-5. For the same reasons as those addressing the
rejection of claim 50 under 35 U.S.C. § 112, 1st paragraph, we do not sustain
the Examiner’s rejection of 50 under 35 U.S.C. § 251.2
Claims 37, 46 and 49
Appellant argues that Burrell’s description is directed to a Global
Positioning System (GPS) device (citing Burrell col. 4, l. 36), but Burrell
does not provide an enabling disclosure for a cellular transceiver. App. Br. 5.

2 Our decision does not address the propriety of introducing this rejection in
the Answer.

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Appellant argues that Burrell’s discussion of the prior art briefly mentions
communication transceivers, e.g., two-way radio or telephones, but does not
mention the term “cellular.” App. Br. 5. Appellant argues that wireless line
of sight two way radios do not have cellular transceivers. App. Br. 5-6.
Appellant further argues that a cellular telephone is a special type of
telephone, and directs attention to a figure reproduced from The Cellular
Concept, 1979 by V.H. MacDonald which depicts the basic layout of a
mobile phone network composed of cells which are defined by the
transmission ranges of the towers at their centers. App. Br. 5-7. Appellant
further argues that Burrell does not inherently disclose a hand held telephone
with a case housing a cellular transceiver because Burrell neither mentions
cellular telephones or cellular transceivers. App. Br. 7.
We are unpersuaded by Appellant’s arguments. In particular, we note
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. Ans. 6, 11 (citing col. 1, ll.
17, 49-50; Fig. 1).
We are also unpersuaded by Appellant’s arguments because the
arguments narrowly focus on Burrell’s description as directed to GPS
satellite navigation systems with line of sight radio communication.
Contrary to Appellant’s arguments, Burrell’s description is not limited to
GPS devices as Appellant suggests. “A reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect.” EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis
omitted). Instead, Burrell is directed to electronic devices 2, which are useful
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in both portable and fixed mount applications. Col. 2, ll. 49-51; col. 3, ll. 45-
50; col. 4, ll. 8-10; Figs. 1-2; see also claim 9. Burrell further provides
examples of numerous electronic devices that are available, such as GPS
satellite navigation systems, communications transceivers, telephones,
personal digital assistants (col. 1, ll. 15-21) and cellular telephones (col. 1,
ll. 49-51)(emphasis added).
Contrary to Appellant’s argument that Burrell does not inherently
disclose a hand held telephone, based on Burrell’s description, one with
ordinary skill in the art at the time the invention was made would have
recognized that Burrell suggests that the electronic device 2 with antenna 6
can include a cellular telephone and the associated communication
transceivers for cellular telephone communications.
Appellant further argues that Burrell’s circuit 44 is not responsive to a
user’s intent in moving the telephone because Burrell’s sensor 64 is not
dynamic, i.e., it does not respond to movement by a user nor does the central
processing unit (CPU) respond to a user’s intent in moving the telephone.
App. Br. 7-8. We are not persuaded by Appellant’s arguments because they
are not commensurate in scope with the claim language. Claim 37 does not
require the movement detector or the processor (i.e., sensor 64, circuit 44, or
CPU) to be dynamic, to produce output signals representative of dynamic
movement, or to be responsive to output signals representative of dynamic
movement. All that is required by claim 37 is a movement detector that
produces an output signal representative of detected movement and a
processor that is responsive to the output signal to determine the most likely
orientation to view the information on the display in correspondence with a
user’s intent.
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Appellant further argues that: (1) more than 128 million iPhones have
been sold since 2007, as reported in the Wall Street Journal on October 3,
2001; and (2) one of the features of the iPhones is the use of a movement
detector that produces an output signal representative of the detected
movement of the telephone. App. Br. 7. To the extent that Appellant argues
that the commercial success of the iPhone is a secondary consideration of
non-obviousness to rebut the Examiner’s prima facie case of obviousness,
we do not give Appellant’s secondary considerations substantial weight. In
order to be accorded substantial weight, there must be a nexus between the
merits of the claimed invention and the evidence of secondary
considerations. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed.
Cir. 1983); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996); Cable Elec.
Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985); In re
GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir, 1995). A “nexus” is a legally and
factually sufficient connection between the objective evidence and the
claimed invention such that the objective evidence should be considered in
the determination of obviousness. In re Paulsen, 30 F.3d 1475, 1482 (Fed.
Cir. 1994). The burden of showing that there is a nexus lies with the patent
owner. Id. It is also well settled that evidence of secondary considerations
must be commensurate in scope with the claims in which the evidence is
offered to support. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983).
Appellant does not sufficiently demonstrate a nexus between the
claimed features (i.e., the movement detector that produces an output signal
representative of the movement of the telephone and the processor
responsive to the output signal to determine a most likely orientation to view
information on a display in correspondence with a user’s intent in moving
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the telephone) and the sale of 128 million iPhones since 2007. That is,
Appellant does not sufficiently show that the sale of 128 million iPhones is
related to the features recited in the claims at issue, rather than due to
extraneous factors, such as marketing or additional features of the iPhone
not encompassed by the claims at issue.
For all these reasons, we sustain the Examiner’s rejection of claims
37, 46 and 49 as obvious over Burrell.
Claims 38-41, 43-45, 47, 48 and 51
Appellant argues that neither Silva nor Motosyuku remedy the
deficiencies of Burrell. App. Br. 8. Appellant specifically argues the Silva
does not disclose a handheld telephone but is directed to a portable data
capture terminal 10 that has a plurality of modules which plug into various
ports of the terminal. App. Br. 9. Appellant further argues that there is no
teaching that Silva’s terminal 10 comprises any telephone communication
capabilities, but only through the use of a pod module endcap 40 having
multiple data ports is it possible for a phone jack 42 to be connected or
alternatively for the phone jack 42 to be replaced with an radio frequency
(RF) link which is not a cellular transceiver. Id. Appellant further concludes
that Silva is non-analogous art. App. Br. 9.
We are unpersuaded by Appellant’s arguments. Appellant’s
arguments focus too narrowly on Silva’s description of the device as a
portable data capture terminal. While Appellant acknowledges that Silva’s
portable data capture terminal can be connected to a phone jack 42 or RF
link via the use of a module, Appellant does not persuasively explain why
Silva is non-analogous art, that is, why Silva is not from the same field of
endeavor, regardless of the problem addressed, or why Silva is still not
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reasonably pertinent to the particular problem with which the inventor is
involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Appellant’s argument that Motosyuku does not embody a handheld
telephone comprising a case housing a cellular transceiver (App. Br. 9) is
misplaced since the Examiner relies on Burrell for this description; not
Motosyuku. App. Br. 9.
For all these reasons, in addition to those explained above with respect
to claims 37, 46 and 49, we sustain the rejections of claims 38-40, 44, 45, 47
and 48 as obvious over Burrell and Silva, and claims 41-43 and 51 as
obvious over Burrell and Motosyuku.
DECISION
We REVERSE the rejection of claim 50 under 35 U.S.C. § 112, 1st
paragraph as failing to comply with the written description and enablement
requirements.
We AFFIRM the rejection of claims 37, 46 and 49 under
35 U.S.C. § 103(a) as unpatentable over Burrell.
We AFFIRM the rejection of claims 38-40, 44, 45, 47 and 48 under
35 U.S.C. § 103(a) as unpatentable over Burrell and Silva.
We AFFIRM the rejection of claims 41-43 and 51 under
35 U.S.C. § 103(a) as unpatentable over Burrell and Motosyuku.
TIME PERIOD
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).
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AFFIRMED-IN PART

ke