Otter Products LLC

Patent Trials and Appeals Board

Nov 25, 2020

2019002024 (P.T.A.B. Nov. 25, 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.
15/408,973 01/18/2017 Curtis R. Richardson OTTR0083USC02 6438
95011 7590 11/25/2020
Otter Products IP: Todd Adelmann
Otter Products, LLC
209 S. Meldrum Street
Fort Collins, CO 80521
EXAMINER
MANOHARAN, MUTHUSWAMY GANAPATHY
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
11/25/2020 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):
docketing@otterproducts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CURTIS R. RICHARDSON, ALAN V. MORINE,
W. TRAVIS SMITH, JOHN H. LOUDENSLAGER, JAMIE L. JOHNSON
and MATTHEW M. GLANZER
____________

Appeal 2019-002024
Application 15/408,973
Technology Center 2600
____________

Before JOHN A. EVANS, CATHERINE SHIANG, and SCOTT E. BAIN,
Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4–12, 14–21, and 23, which are all the claims
pending and rejected in the application. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm in part.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Otter Products, LLC as the real party in interest.
Appeal Br. 2.

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Application 15/408,973

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STATEMENT OF THE CASE
Introduction
The present invention relates to protection cover for electronic
devices. See Spec. ¶ 2.
An embodiment of the present disclosure may therefore
include a protective case for an electronic device and having an
outer shell and a cushion cover. The outer shell may include a
back portion and at least two side walls. The back portion may
have a proximal edge, a distal edge, a first lateral edge and a
second lateral edge that is opposite the first lateral edge. The
side walls of the outer shell may be connected to, and extend
from, respective edges of the back portion.

Spec. ¶ 3. Claim 1 is exemplary:
1. A protective case for an electronic device, the protective case
comprising:
a rigid outer shell having:
a back portion having a proximal edge, a distal
edge, a first lateral edge, and a second lateral edge that is
opposite the first lateral edge, and
at least two arms connected to and extending from
respective edges of the back portion, each arm formed
from a resilient plastic material,
a cushion cover formed from an elastomeric material
configured to cover a portion of the electronic device when the
electronic device is installed in the protective case, the cushion
cover having an interior surface configured to contact an outer
surface of the electronic device and an exterior surface opposite
the interior surface, the cushion cover including:
at least two reduced thickness portions disposed in
predetermined areas of the cushion cover, wherein each
of the arms is configured to engage the surface of a
corresponding reduced thickness portion to securely hold
the reduced thickness portions of the cushion cover to the
electronic device,
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raised impact areas positioned at corners of the
cushion cover and having a thickness greater than a
thickness of the reduced thickness portions, the raised
impact areas configured to substantially absorb an impact
with a hard surface,
a raised pad corresponding to a control mechanism
of the electronic device, the raised pad configured to
interact directly with the control mechanism to provide
interactive access to the control mechanism through the
raised pad when the electronic device is installed in the
protective case, and
coring comprising recesses formed in the interior
surface of the cushion cover to allow portions of the
cushion cover surrounding the recesses to compress
substantially perpendicular to a plane of the openings
while expanding substantially parallel to the plane of the
openings to absorb impacts,
wherein the protective case is configured to be
assembled by placing the electronic device within the
cushion cover to form an assembly, and then by placing
the assembly within the rigid outer shell.

References and Rejection2
Claims
Rejected
35 U.S.C. § References
1, 2, 4–12,
14–21, 23
103 Mongan (US 8,204,561 B2; iss. June 19, 2012),
Tate (US 5,123,044; iss. June 16, 1992), Carnevali
(US 7,495,895 B2; iss. Feb. 24, 2009)

ANALYSIS
Claims 1–2 and 4–8

2 Throughout this Opinion, we refer to the (1) Final Office Action dated
March 20, 2018 (“Final Act.”); (2) Appeal Brief dated June 28, 2018
(“Appeal Br.”); (3) Examiner’s Answer dated November 2, 2018 (“Ans.”);
and (4) Reply Brief dated December 14, 2018 (“Reply Br.”).
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We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We agree with Appellant’s
contentions that the Examiner erred in finding the cited portions of Mongan
teach “the protective case is configured to be assembled by placing the
electronic device within the cushion cover to form an assembly, and then by
placing the assembly within the rigid outer shell,” as recited in independent
claim 1 (emphasis added). See Appeal Br. 7–9; Reply Br. 6–7.
The Examiner finds “Mongan . . . teaches [the disputed limitation]
(Figure 5; the cushion cover has to be fitted first before placing within the
rigid outer shell 12). It is to be noted that the claim is about protective case
and not about manufacturing of the case.” Final Act. 4; see also Ans. 3–4.
We have reviewed the cited Mongan portions, and they do not discuss
“the protective case is configured to be assembled by placing the electronic
device within the cushion cover to form an assembly, and then by placing the
assembly within the rigid outer shell,” as required by claim 1 (emphasis
added). Contrary to the claim requirement of a cushion cover that is
separate from the rigid outer shell, Morgan teaches permanently attaching
the interior elastomeric layer 13 to the external hard shell layer 12:
With further reference to FIG. 1, the external hard shell layer 12
is attached to the second interior elastomeric layer 13. The
external hard shell layer 12 and the interior elastomeric layer 13
may be attached in several ways, such as glue, chemical
bonding, heating, heat treated chemicals or any other means
know in the art which permanently attach the external hard
shell layer 12 to the interior elastomeric layer 13.
Mongan 3:42–49 (emphasis added).
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Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of independent claim 1.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2 and 4–8.

Claims 9–12 and 14–16
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We agree with Appellant’s
contentions that the Examiner erred in finding the cited portions of Mongan
teach “an elasticity of each of the curved flexible arms generates a force on
the cushion cover configured to hold the cushion cover to the electronic
device,” as recited in independent claim 1 (emphasis added). See Appeal Br.
9–10; Reply Br. 8–9.
The Examiner does not provide any findings about the above
limitation in the initial rejection. Responding to Appellant’s argument that
the Examiner fails to provide the requisite finding, the Examiner finds:
Elasticity is a property of material relates to reversibility of
deformation. Therefore, elasticity cannot generate a force.

Mongan teaches (Mongan: col. 4, lines 34-50), external
hard layer to be mounted on the device and flex away when the
device is inserted and snap back once it is in place (flex away
and snap back . . . . due to elasticity). Mongan further teaches
inner elastomer layer fills in the gaps and allow the external
hard layer to flex during mounting. Therefore, contact force is
being generated during contact and also flexing is generated by
force.
Ans. 4.
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We disagree. The Examiner’s assertion that “elasticity cannot
generate a force” (Ans. 4) is unsubstantiated. As pointed out by Appellant
(Reply Br. 8), the Specification describes generating force by elasticity:
“The force generated by the curved flexible arms 808, 810 on the reduced
thickness portions 822, 824 is a result of the elasticity of the curved arms
808, 810.” Spec. ¶ 58. Further, we agree with Appellant that the
Examiner’s above finding about Mongan are inadequate, as the finding does
not address the claimed “a force on the cushion cover configured to hold the
cushion cover to the electronic device.” See Reply Br. 9. In addition, we
have reviewed the cited Mongan portions, and they do not discuss “an
elasticity of each of the curved flexible arms generates a force on the
cushion cover configured to hold the cushion cover to the electronic device,”
as required by claim 1 (emphasis added).
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of independent claim 9.
We also reverse the Examiner’s rejection of corresponding dependent
claims 10–12 and 14–16.

Claims 17–21 and 23
On this record, the Examiner did not err in rejecting claim 17.
We have reviewed and considered Appellant’s arguments, but such
arguments are unpersuasive. To the extent consistent with our analysis
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below, we adopt the Examiner’s findings and conclusions in (i) the action
from which this appeal is taken and (ii) the Answer.3
I
Appellant argues it would not have been obvious to combine the
teachings of Mongan and Tate for the claim limitation “coring comprising
recesses formed on the interior surface of a first lateral edge of the cushion
cover.” See Appeal Br. 11–12; Reply Br. 9–11.
We disagree. The U.S. Supreme Court has held “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). Contrary to Appellant’s arguments about
Tate (Appeal Br. 12; Reply Br. 10), “[i]f the claim extends to what is
obvious, it is invalid under § 103” and “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418–19.
The Examiner has provided articulated reasoning with a rational
underpinning as to why one skilled in the art would have found it obvious to
combine the teachings of Mongan and Tate. See Final Act. 8; Ans. 5–6.
Appellant does not persuasively show why such reasoning is incorrect. In
particular, Appellant contends the proposed combination would not have

3 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).

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been obvious (Appeal Br. 12; Reply Br. 10), but does not persuasively
explain why.
The Examiner’s findings and conclusion are reasonable because the
skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle,” as the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420–21. Appellant does not
present adequate evidence that the resulting arrangements would have been
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418–19).
Accordingly, we agree with the Examiner that applying Tate’s coring
technique in the Mongan protective case would have predictably used prior
art elements according to their established functions—an obvious
improvement. See KSR, 550 U.S. at 417.

II
Appellant argues the proposed combination is motivated by
impermissible hindsight. See Appeal Br. 12; Reply Br. 11.
We disagree. Our reviewing courts have not established a bright-line
test for hindsight. The U.S. Supreme Court guides that “[a] factfinder
should be aware, of course, of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning.” KSR, 550
U.S. at 421 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
36 (1966)). “Rigid preventative rules that deny factfinders recourse to
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common sense, however, are neither necessary under our case law nor
consistent with it.” KSR, 550 U.S. at 421.
As discussed above, Appellant has not demonstrated the Examiner’s
proffered combination of references would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” Leapfrog Enters., 485 F.3d
at 1162. In particular, Appellant’s assertion about impermissible hindsight
(Appeal Br. 12; Reply Br. 11) is conclusory and unsubstantiated.
Further, after reviewing the respective teachings and suggestions of
Mongan and Tate, we find the weight of the evidence shows the proffered
combination is merely a predictable use of prior art elements according to
their established functions, because the combination uses prior art elements
of “coring comprising recesses formed on the interior surface of a first
lateral edge of the cushion cover” according to its well-known function of
achieving good grip and impact protection (Ans. 5). Therefore, on this
record, Appellant has not persuaded us the Examiner engaged in
impermissible hindsight.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 17.
We also sustain the Examiner’s rejection of corresponding dependent
claims 18–21, as Appellant does not advance separate substantive arguments
about those claims. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
For dependent claim 23, Appellant argues “[a]s discussed above with
respect to claim 17, one of ordinary skill in the art would not have been
motivated to position coring on a lateral edge of the cushion cover as recited
in claim 17, much less two lateral edges as recited in claim 23.” Appeal Br.
12; Reply Br. 11. As discussed above, Appellant’s arguments about claim
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17 are unpersuasive. Therefore, for similar reasons, we sustain the
Examiner’s rejection of corresponding dependent claim 23.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1, 2, 4–12, and
14–16 under 35 U.S.C. § 103.
We affirm the Examiner’s decision rejecting claims 17–21 and 23
under 35 U.S.C. § 103.
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–12,
14–21, 23
103 Mongan, Tate,
Carnevali
17–21, 23 1, 2, 4–12,
14–16

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)(1)(iv).

AFFIRMED IN PART