David K. Lim et al.

Patent Trials and Appeals Board

Dec 26, 2019

14716950 - (R) (P.T.A.B. Dec. 26, 2019)

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.
14/716,950 05/20/2015 David K. Lim MM01256 2868
138858 7590 12/26/2019
Motorola/
McKinney Phillips LLC
1440 W. Taylor St.
Suite 749
Chicago, IL 60607
EXAMINER
DEPEW, KEITH A
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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.mobility@motorola.com
pipp@mckinneyphillips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID K. LIM, JOSEPH ALLORE, and
MICHAEL J. LOMBARDI

Appeal 2018-008950
Application 14/716,950
Technology Center 2800
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and JAMES C.
HOUSEL, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 timely requests rehearing of our Decision sustaining the
Examiner’s § 102(a)(1) rejection of claims 1, 3, 6, 8, 10, and 12 as
anticipated by Yamada (US 2015/0062460 A1; published Mar. 5, 2015).
In the subject Request, Appellant states that the Decision
“misconstrues the Appellant’s argument [presented in the Reply Brief] as to
why [the independent claim phrase] ‘affixed to’ cannot mean simply
‘move[] as one’ [as interpreted in the Examiner’s Answer]” (Req. Reh’g 2).
Appellant argues that favorable reconsideration of our Decision is warranted

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
MOTOROLA MOBILITY LLC. Appeal Br. 2
Appeal 2018-008950
Application 14/716,950

2
because “the Examiner’s interpretation of ‘affixed to’ [in the Examiner’s
Answer] was dispositive to the Board’s affirmance of the Examiner’s
rejection[]” (id. at 3).
As background, the Decision notes that, “in the Final Office Action,
the Examiner interprets the claim term ‘affixed’ as ‘fail[ing] to specify . . .
directly affixed . . . with no intervening elements’ (Final 5; see also id. at 6)”
(Dec. 4). The Decision also notes that, “[i]n the Answer, the Examiner
embellishes this claim interpretation by stating ‘the claim term ‘affixed’ . . .
in broad interpretation is taken to mean things which are assembled together
so as to move as one’ (Ans. 3)” (id.). The Request correctly indicates that
the Decision addresses the argument presented in the Reply Brief contesting
the Examiner’s interpretation in the Answer of “affixed” as meaning “move
as one” (Dec. 4–5). However, in sustaining the Examiner’s rejection, the
Decision adopts the Examiner’s interpretation of “affixed” in the Final
Office Action and emphasizes that “Appellant [in the Appeal and Reply
Briefs] does not show error in, or even acknowledge, this claim
interpretation” (id. at 5). Furthermore, the Decision explicitly states, “[w]e
express no opinion regarding the embellished claim interpretation made by
the Examiner in the Answer” (id. at n. 3).
Significantly, Appellant’s above quoted statement and argument in the
Request involve only the claim interpretation in the Answer about which the
Decision expresses no opinion. Indeed, the subject Request, like the Appeal
and Reply Briefs, does not address, and, therefore, fails to show error in, the
Final Office Action claim interpretation that forms the basis of our Decision
to sustain the Examiner’s rejection.
Appellant’s Request for Rehearing is Denied.
Appeal 2018-008950
Application 14/716,950

3
CONCLUSION
Outcome of Decision on Rehearing:
Claims 35 U.S.C § Reference(s)/Basis Denied Granted
1, 3, 6, 8, 10, 12 102(a)(1) Yamada 1, 3, 6, 8, 10,
12

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C § Reference(s)/Basis Affirmed Reversed
1, 3, 6, 8, 10,
12
102(a)(1) Yamada 1, 3, 6, 8, 10,
12

DENIED