Fiori, Patrick J.

Patent Trials and Appeals Board

Sep 10, 2020

15109197 - (D) (P.T.A.B. Sep. 10, 2020)

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.
15/109,197 06/30/2016 Patrick J. Fiori FIORI-0001-01-US 1095
132414 7590 09/10/2020
Indiana University Maurer School of Law
Intellectual Property Legal Clinic
211 South Indiana Avenue
Bloomington, IN 47405
EXAMINER
GARFT, CHRISTOPHER
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
09/10/2020 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 PATRICK J. FIORI

Appeal 2019-005404
Application 15/109,197
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–11, 14, 18–20, 24, and 25. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Patrick J.
Fiori. Appeal Br. 4.
Appeal 2019-005404
Application 15/109,197

2
BACKGROUND
The Specification discloses that “[t]he present disclosure relates to
mounting devices. More particularly, the present disclosure relates to
mechanical mounting devices for handheld computers, for example
smartphones and tablet computers.” Spec. ¶ 2.

CLAIMS
Claims 1, 14, and 25 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A mounting device for supporting a handheld computer,
the mounting device including:
a housing that is operationally configured to support the
handheld computer, the housing having a top portion, a bottom
portion, a first side portion, a second side portion, and a rear
portion; and
at least one articulated assembly attached to the housing
through a connecting joint, the at least one articulated assembly
having a default position and including a plurality of articulated
members, a first of the plurality of articulated members being
resiliently biased toward the default position, and a second of the
plurality of articulated members being positioned distal to the
first of the plurality of articulated members relative to the
connecting joint, such that the default position of the articulated
assembly is flat to span across a region of the rear portion of the
housing with the plurality of articulated members positioned
collinear to one another.
Response to Notification of Non-Compliant Appeal Br. 2.
Appeal 2019-005404
Application 15/109,197

3
REJECTIONS
1. The Examiner rejects claims 1, 4, 7, 9,2 11, 14, 18, 19, 24, and 25 under
35 U.S.C. § 103 as unpatentable over Emsky3 in view of Lee.4
2. The Examiner rejects claims 5, 6, and 20 under 35 U.S.C. § 103 as
unpatentable over Emsky in view of Lee and Chen.5
3. The Examiner rejects claims 8 and 10 under 35 U.S.C. § 103 as
unpatentable over Emsky in view of Lee and Schmidt.6
DISCUSSION
Claim 1
With respect to claim 1, the Examiner finds that Emsky discloses a
mounting device as claimed, except that Emsky does not disclose that the
first articulated member is resiliently biased as claimed. Final Act. 2–3, 5–6.
However, the Examiner finds that Lee discloses a supporting device for an
electronic device that includes an articulated assembly that is resiliently
biased and forms a portion of the rear surface of the device. Id. at 6. The
Examiner determines that
[i]t would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to
modify the Emsky device to have the connecting joint be
resiliently biased as disclosed by Lee since Lee states that such a

2 The Examiner does not list claim 9 in the heading for this rejection, but the
Examiner discusses this claim in the body of the rejection. Final Act. 6.
Thus, we consider the Examiner’s omission of this claim in the rejection
heading to be an inadvertent error.
3 Emsky, US 8,016,107 B2, iss. Sept. 13, 2011.
4 Lee et al., US 8,695,939 B2, iss. Apr. 15, 2014.
5 Chen, US 8,132,670 B1, iss. Mar. 13, 2012.
6 Schmidt, US 2012/0083153 A1, pub. Apr. 5, 2012.
Appeal 2019-005404
Application 15/109,197

4
modification enables the device to be clipped onto an appropriate
article (Col. 5, Lines 40-46).
Id. The Examiner also explains that one of ordinary skill in the art would
have recognized that using a resiliently biased articulated member would
provide a more secure attachment mechanism for the device such that it may
be suitably clipped onto a surface. Ans. 9.
Appellant first argues that the reasoning provided by the Examiner for
making the proposed combination is insufficient because Emsky already
achieves the purpose for which the Examiner relies on Lee and does not
require any modification. Appeal Br. 9. More specifically, Appellant argues
that Emsky’s device is already “capable of clipping” without modification.
Id. We are not persuaded by this argument. We agree with the Examiner
that one of ordinary skill in the art would recognize that the use of a torsion
spring, as taught by Lee, to bias the articulated member toward the housing
back “would provide a more secure attachment to” a “surface . . . making it
less likely that the device unintentionally falls off or is removed from the . . .
surface.” Ans. 9. Thus, even though Emsky’s device may be clipped onto a
surface, we disagree that one of ordinary skill in the art would not have had
a reason to make the combination proposed by the Examiner. And because
the Examiner has set forth an adequate reason to support the proposed
combination, we are not persuaded that the motivation relied upon by the
Examiner suggests the rejection is based on hindsight, as Appellant
contends. See Appeal Br. 9.
Next, Appellant argues that the proposed combination “renders
Emsky unsatisfactory for its intended purpose” and destroys a stated
function of Emsky’s device. Appeal Br. 10. Appellant asserts that the
purpose of Emsky’s “hinged members is to provide for setting ‘the angular
Appeal 2019-005404
Application 15/109,197

5
position of hinge plate (31)’ to be ‘modified and held in various angular
positions.’” Id. (citing Emsky col. 3, ll. 36–38). Appellant also asserts that
“the stated purpose of Emsky [is] to provide indexed positions allowing the
user to select between the various predefined positions.” Id.
We disagree. Emsky discloses that “it would be desirable to provide a
device that provides various capabilities, such as carrying, mounting and
protective capabilities, that is adaptable to promote the use of portable
electronic devices in various environments.” Emsky col. 1, ll. 38–41.
Emsky further discloses that the device is designed such that is may be
mounted “against a vertical, nearly-vertical or non-horizontal surface.” Id.
at col. 1, ll. 58–59. To that end, Emsky discloses a hinge plate 31 and an
indexed hinge or friction hinge “such that the angular position of hinge plate
31 may be modified and held in various angular positions with respect to
tray 12.” Id. at col. 3, ll. 34–42. Emsky provides a second hinge member,
which is either an indexed or friction hinge, that allows for the second hinge
plate 34 to be held at various angular positions with respect to the hinge
plate 31. Id. Thus, Emsky teaches two hinges and that each may be either
an indexed hinge or a friction hinge, and one of ordinary skill in the art
would understand that the purpose of these hinges is to hold the device at
various angles. Accordingly, although Emsky teaches the use of indexed
positions, the device is not limited to such use. Further, Appellant fails to
explain adequately how Emsky’s purpose to hold the device at various
positions is destroyed or defeated by the modification of the hinges to
include tensioned hinges as proposed by the Examiner. One of ordinary skill
in the art would recognize that using a biased hinge as the Examiner
Appeal 2019-005404
Application 15/109,197

6
proposes would still allow the device to be held at various positions
depending on the surface to which it is attached.
Next, Appellant argues that the proposed combination would produce
insignificant clipping. Appeal Br. 11; see also Reply Br. 4–5. Yet, this
argument appears to be premised on the rejection relying on a direct
substitution of Lee’s hinges into Emsky’s device without further
modification, and from this, Appellant asserts that the resulting product
would only provide “resilient biasing [over] a short length” that would
provide insignificant clipping. Appeal Br. 11. “The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference. . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981). Here, the rejection makes clear that the Examiner is proposing that
Emsky be modified to include a connecting joint that is resiliently biased, as
taught by Lee. The Examiner does not indicate that such a modification
would occur by substituting any specific element of Lee into any specific
element of Emsky. Thus, Appellant’s argument, which appears to be based
on such a direct substitution, is not persuasive.
Appellant also argues that the rejection is based on impermissible
hindsight. Final Act. 12. In support, Appellant asserts that the Examiner has
not provided an adequate reason to support the modification of only one of
Emsky’s hinges and without modification of others. Id. We are not
persuaded. It is not clear what relevance this argument has to claim 1, which
requires only a single hinge that is resiliently biased and does not indicate
whether any other hinges are so biased. We note that the Examiner’s
Appeal 2019-005404
Application 15/109,197

7
rejection of claim 1 does not appear to preclude including other biased
hinges in the proposed modification of Emsky. See Final Act. 2–3, 5–6.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1. Accordingly, we sustain the rejection of claim 1. Appellant
relies on the same arguments with respect to the rejection of independent
claim 25 and dependent claims 4, 7, 9, 11, and 24. Appellant also does not
provide separate arguments regarding the rejections of claims 5, 6, 8, and 10.
Accordingly, we also sustain the rejections of claims 4–11, 24, and 25.
Claim 14
With respect to claim 14, Appellant argues that the Examiner erred in
finding that replacing only one of Emsky’s hinges with a biased hinge would
result in a first biased hinged and a second hinge that is less biased than the
first. Appeal Br. 12. In making this argument, Appellant appears to
interpret claim 14 to require that the second articulated member is resiliently
biased toward a default position. However, the plain language of the claim
requires only that the second articulated member is biased less than the first
articulated member. The Examiner indicates that this is the broadest
reasonable interpretation of the claim. See Ans. 14–15.
We agree with the Examiner’s interpretation. We see no indication in
the claim that the second articulated member must be resiliently biased.
Although Appellant points to a particular embodiment in the Specification
that “provides an example of the claimed resilient biasing of the second
articulated member,” Appellant does not explain adequately why the use of
an articulated member without resilient biasing is precluded by the claim
language as it would be interpreted in light of the Specification, and we are
Appeal 2019-005404
Application 15/109,197

8
not persuaded that the written disclosure excludes the use of second hinges
that are not resiliently biased. Appeal Br. 13.
Under the Examiner’s interpretation of the claim, we agree with the
Examiner that the proposed modification results in a first articulated member
that is resiliently biased and a second member that is not biased. Because
the second member is not resiliently biased, it necessarily is less biased than
the first member.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 14. Accordingly, we sustain the rejection of claim 14. Appellant
does not provide separate arguments regarding the rejections of claims 18–
20, and thus, we also sustain the rejections of those claims.
Other Arguments
Appellant raises other arguments that are not tied to the rejection of
any specific claims. Appellant argues that “the Examiner relies on basic
physics, but ignores the same basic physics as ‘opinion.’” Appeal Br. 14.
Appellant also argues that “the Examiner impermissibly introduces elements
that are not taught in the applied prior art.” Id. at 15. Further, Appellant
argues that “the Examiner both inconsistently rejected the claims and argued
in support of the claims,” which shows that the Examiner is relying on
impermissible hindsight. Id. at 15–17. To the extent these arguments have
been addressed above with respect to the rejection of independent claims 1
and 14, we are not persuaded for the reasons provided. And to the extent
these arguments have not been addressed, we are not persuaded of error
because they do not specifically address the claims and rejections before us.
CONCLUSION
We AFFIRM the rejections of claims 1, 4–11, 14, 18–20, 24, and 25.
Appeal 2019-005404
Application 15/109,197

9

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 4, 7, 9, 11,
14, 18, 19,
24, 25
103 Emsky, Lee 1, 4, 7, 9,
11, 14, 18,
19, 24, 25

5, 6, 20 103 Emsky, Lee, Chen 5, 6, 20
8, 10 103 Emsky, Lee,
Schmidt
8, 10
Overall
Outcome
1, 4–11, 14,
18,–20, 24,
25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136 (a)(l)(iv) (2017).

AFFIRMED