Ex Parte 6527241 et al

Patent Trial and Appeal Board

Oct 28, 2014

95001357 (P.T.A.B. Oct. 28, 2014)

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.
95/001,357 06/14/2010 6527241 09623L-084800US 3333
23990 7590 10/28/2014
DOCKET CLERK
P.O. DRAWER 800889
DALLAS, TX 75380
EXAMINER
CLARKE, SARA SACHIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
10/28/2014 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
____________________

LOGITECH, INC.
Requester, Respondent

v.

IGO, INC.
1

Patent Owner, Appellant
____________________

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Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1
iGo, Inc. is the Patent Owner and the real party in interest (Appeal Brief of
Patent Owner (hereinafter "App. Br.") 4).

2
Patent US 6,527,241 B1 (hereinafter "the '241 patent") issued March 4,
2003 to Lord. The '241 patent issued from Application 09/988,694 filed on
November 20, 2001.
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STATEMENT OF THE CASE
Claims 1-19 of the '241 patent are subject of the reexamination
proceeding and stand rejected (Right of Appeal Notice
3
(hereinafter "RAN")
Cover Sheet). Claims 17-19 were newly added during the reexamination
(App. Br., Claims App'x.). The Patent Owner appeals under 35 U.S.C.
§§ 134(b) and 315 from the Examiner's rejections with respect to all of the
rejected claims (App. Br. 10-11). We have jurisdiction under 35 U.S.C.
§§ 134(b) and 315.
We AFFIRM-IN-PART the Examiner's rejections.

The '241 patent is directed to an apparatus for cooling a laptop
computer (Title, Abstract). Figures 1 and 3 from the '241 patent are
illustrated below:

3
The Examiner's Answer incorporates the RAN by reference. Hence we cite
to the RAN herein.
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Figure 1 reproduced above shows a perspective view of laptop
computer stand 10 having first portion 14 and second portion 16, the
portions having contact surfaces 17, 18, 20 and 22 (col. 2, ll. 27-30, 50-64).
Figure 3 shows a side view of laptop computer stand 10 wherein air channel
34 is created between concave surface 40 of the concave laptop stand and
the supported laptop computer to facilitate cooling (col. 2, ll. 33-35; col. 3,
ll. 32-36).
Independent claims 1 and 17 read as follows (Claims App'x, italics
added, underlining removed in claim 17):
1. (Original) A laptop computer stand, comprising:
a member having a first portion and a second portion,
said first portion having a first height, said second portion
having a second height which is substantially higher than said
first height;
wherein said member is adapted to receive a laptop
computer so as to both angle and space said laptop above a
surface to facilitate the cooling thereof, wherein said member is
concave and opening upward to create space below the
supported laptop computer.

17. (New) A laptop computer stand, comprising:
a member having a first portion, a second portion and a
concave surface, the first portion having a first height, the
second portion having a second height which is substantially
higher than the first height;
wherein the concave surface opens upwards and wherein
said member is configured to receive a laptop computer so as to
form an air channel between the laptop computer and the stand
and both angle and space the laptop computer above the
concave surface to create space below the laptop computer so
as to permit air flow to facilitate the cooling thereof.

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The Examiner rejects the claims as follows:
1. Claims 1-3, 6, 8-10, 12-14 and 16-19 under 35 U.S.C. § 102(e)
as anticipated by Barberich.
4
(Rejections
5
1, 5, 7, 8, 11; see also RAN
3-5, 12-16).
2. Claims 4-6, 11 and 14 under 35 U.S.C. § 103(a) as obvious
over Barberich. (Rejections 6, 9; see also RAN 13-14).
3. Claims 1, 17 and 18 under 35 U.S.C. § 102(b) as anticipated by
Juster.
6
(Rejections 2, 12; see also RAN 5-7, 16-17).
4. Claims 9 and 19 under 35 U.S.C. § 103(a) as obvious over
Juster. (Rejections 3, 13; see also RAN 7, 16-17).
5. Claims 1, 7, 9, 15 and 17-19 under 35 U.S.C. § 103(a) as
obvious over Lim
7
in view of Ihara.
8
(Rejections 4, 14; see also RAN
8-10, 17).
6. Claims 17-19 as impermissibly enlarging the scope of the
claims of the patent.
9
(Rejection 10; see also RAN 15-16).

4
U.S. Patent No. 6,352,233 B1 issued to Barberich on March 5, 2002.

5
For clarity, the appealed rejections are identified herein as enumerated in
the Patent Owner's Appeal Brief (App. Br. 10-11).

6
U.S. Patent No. 5,143,341 issued to Juster on September 1, 1992.

7
U.K. Patent Application GB 2 347 489 A published September 6, 2000.

8
Japanese publication 2001-177279 A published June 29, 2001.

9
In regards to this rejection, the involved parties refer to 35 U.S.C. § 305,
which relates to ex parte reexaminations instead of to the corresponding 35
U.S.C. § 314, which relates to inter partes reexaminations. This discrepancy
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ANALYSIS
Barberich
The Examiner rejects claims 1-3, 6, 8-10, 12-14 and 16-19 as
anticipated by Barberich (Rejections 1, 5, 7, 8, 11), and rejects claims 4-6,
11 and 14 as obvious over Barberich (Rejections 6, 9). Barberich discloses a
portable stand for a laptop (Title). Figures 1 and 3 of Barberich are
reproduced below:

Figure 1 of Barberich shows a side view of first member 20 that
includes substantially u-shaped cut out portion 12, which includes tilt guard
7 and protrusion 19 (col. 2, ll. 36-38; col. 3, ll. 10-24). Figure 3 shows a
front view of first and second members of the portable stand connected
together (col. 2, ll. 42-44; col. 4, ll. 29-34).
In rejecting the claims, the Examiner refers to an annotated version of
Figure 6 of Barberich submitted by the Requester during the reexamination
proceeding, which is reproduced herein below:

is harmless because the prohibition against amendments or new claims
enlarging the scope of the claims of the patent is nearly identical in these
sections of the patent statute.
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The annotated version of Figure 6 of Barberich identifies substantially
u-shaped cut out portion (12 in original) with concave surfaces that are
annotated as creating an opening (RAN 4; see also Request, Claim Chart 2).
The Examiner also sets forth numerous definitions of the term
"concave"
10
and finds that because cut-out portion 12 is disclosed as being
"substantially U-shaped," each member 20, 30 "is concave and open[s]
upward to create space below the supported laptop computer." (RAN 4-5;
see also RAN 12, 13-14, 16). Hence, the Examiner finds that "portions of
areas 12 and 32 [] meet the claim limitation in question." (RAN 4). In
Rejections 6 and 9, the Examiner concludes that claims 4-6, 11 and 14
would have been obvious to a person of ordinary skill in the art relying on
the findings regarding Barberich (id. at 13, 14-15).

10
The Examiner produces various dictionary definitions of the term
"concave" including "hollowed or rounded inward like the inside of a bowl";
"arched in: curving in"; and "[m]aths (of a polygon) containing an interior
angle greater than 180º." According to the Examiner, "[a]pplying the
broadest reasonable interpretation standard, 'concave' encompasses all of the
definitions above." (RAN 3, citing Decision on Request for Inter Partes
Reexamination para. 2).
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The Patent Owner argues that the Examiner and the Requester are
improperly interpreting the claims merely to recite that the member
comprises a concave portion although claims 1 and 9 recite that the "claimed
member 'is' concave." (App. Br. 14). The Patent Owner argues that
although a back portion of the U-shaped cutout portion 12 in Barberich is
curved, such portion does not make the member itself concave as claimed
(id. at 15). According to the Patent Owner:
The proper construction of the terms 'member is concave'
means the member as a whole is substantially concave, and
does not cover a substantially non-concave member having a
curved recess portion somewhere in the member. The
disclosure of this concave surface is illustrated at 40 in Figure
3. There is no other disclosure of a concave surface, . . . and
rectangular recesses forming a portion of a member with
grooves or rounded corners are not reasonable definitions of a
concave member, even given the broadest reasonable definition.
(Id. at 14-15).
As to claims 17 and 18 subjected to Rejection 11, the Patent Owner
argues that "these claims are not anticipated for the reasons provided with
respect to Claim 1." (Id. at 20).
In support of the rejections, the Requester argues that the '241 patent
"shows the concave area as a portion of the member, and [because] there is
no recited limitation in the claims or the specification over how large the
portion has to be, any portion should satisfy this element." (Resp. Br. 5).
In particular, the Requester points out that "Fig. 3 [of the '241 patent] shows
flat portions 18 and 20 on either side of concave area 40, and thus area 40 is
clearly just a portion. Barberich, just like the '241 patent, shows portions
that are concave, and portions that are not." (Id. at 5).
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We find that the Examiner erred with respect to independent claims 1
and 9. Notwithstanding the dictionary definition of the term "concave" in
isolation, the limitation at issue that needs to be interpreted under the
broadest reasonable interpretation is the phrase "member is concave" as it
would be interpreted by a person of ordinary skill in view of the
Specification of the '241 patent. In this regard, we do not perceive any
difference between the broadest reasonable interpretation and the plain and
ordinary meaning of this limitation, which is that the member must be
configured in a manner that it can be reasonably described as being concave.
The interpretation of the claim by the Examiner and the Requester
focusing on the term "concave" in the abstract so as to encompass the stand
of Barberich is an unreasonably broad interpretation of the claim. While the
PTO is obligated to give claims their broadest reasonable interpretation,
"any such construction [must] be 'consistent with the specification, . . . and
. . . claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.'" In re Suitco Surface, Inc.,
603 F.3d 1255, 1259-60 (Fed. Cir. 2010). In this regard, "it would be
unreasonable for the PTO to ignore any interpretive guidance afforded by
the applicant’s written description." In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997).
While the Requester points out that the member of the '241 patent
itself includes flat contact surfaces, that does not detract from the fact that
the disclosed member is described therein as being concave, or that such
description is reasonable based on the configuration disclosed in the
specification of the '241 patent. In other words, the apparatus of the '241
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patent is configured in a manner that it is not unreasonable to state that the
"member is concave." To the contrary, while the stand of Barberich
includes a concave portion, it would be unreasonable to describe "portions
of areas 12 and 32" of Barberich's stand relied upon by the Examiner and the
Requester, as satisfying the limitation requiring the "member" to be
"concave."
Hence, when the broadest reasonable interpretation of the claim
limitation consistent with the Specification is applied, reading the claim
language in light of the Specification as it would be interpreted by one of
ordinary skill in view of the specification, Barberich fails to disclose "each
and every element of the claimed invention, arranged as in the claim." In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004);
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co.,
730 F.2d 1452, 1458 (Fed. Cir. 1984). Correspondingly, we reverse the
Examiner's anticipation rejection of claims 1 and 9 based on Barberich in
Rejection 1. We also reverse the rejections of claims ultimately depending
from claims 1 or 9 for the same reasons.
As noted, the Patent Owner relies on the same arguments with respect
to the Examiner's rejection of claims 17-19 (App. Br. 20). However, we
observe that claim 17 does not include the limitation that the "member is
concave," but instead, merely recites "a member having a first portion, a
second portion and a concave surface." Thus, the Patent Owner's arguments
are not applicable. Moreover, substantially u-shaped cut out portion 12 of
Barberich includes a portion having a concave surface. We agree with the
Examiner that Barberich discloses a member having a concave surface and
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affirm the rejection with respect to claim 17. The Patent Owner does not
submit separate arguments directed to claim 18, which depends from claim
17. Hence, claim 18 falls with claim 17. We decline to reach the rejection
with respect to independent claim 19 in view of our affirmance of the
Examiner's rejection infra for impermissibly broadening the scope of the
claims.

Juster
The Examiner rejects claims 1, 17 and 18 as anticipated by Juster
(Rejections 2, 12), and rejects claims 9 and 19 as obvious over Juster
(Rejections 3, 13). Juster discloses a resilient keyboard rest (Title). Figure 1
of Juster is reproduced below:

Figure 1 of Juster shows a perspective view of apparatus 10 having
main body 18 including recessed planar region 26 (col. 3, ll. 51-55; col. 4, ll.
6-11, 56-60).
In rejecting the claims, the Examiner finds that Figure 1 of Juster
"shows a recessed region 26 that is relatively planar. The recessed region 26
is concave in that it 'bends inward.'… It also opens upward to create space
below the supported laptop computer." (Request, Claim Chart 5
(incorporated by reference into RAN 5; Request, Claim Chart 33
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(incorporated by reference into RAN 16-17)). In Rejections 3 and 13, the
Examiner relies on the findings regarding Juster to conclude that claims 9
and 19 would have been obvious, or in the alternative, to conclude that
making the recessed region 26 would have been merely a matter of design
choice because one skilled in the art would have recognized that the recessed
region 26 could be curved inward (RAN 7, 17; see also Request, Claim
Chart 32-34).
The Patent Owner argues that the "Examiner and Requesting Party
ignore the explicit adjective 'planar' for portion 26." (App. Br. 16). In this
regard, the Patent Owner argues that:
Juster does not teach a member that 'is' concave. Rather, Juster
teaches a generally rectangular keyboard rest that has a
rectangular recess having a planar region 26 (see Col. 4 lines
56-58). The member 10 IS NOT concave. The rectangular
recess is not concave. Portion 26 is not concave. Junction 24
having curvature is a corner and does not make the member 10,
the recess, or the portion 26 concave.
(Id. at 16 (underlining omitted)).
Thus, the Patent Owner argues that "[w]hile the Examiner can apply
the broadest, reasonable construction, it is not reasonable to find that a large
rectangular recess with a planar bottom portion is concave, or that such a
feature makes the member concave." (Id. at 16-17). As to claims 9 and 19
of Rejections 3 and 13, the Patent Owner relies on the above submitted
arguments (Id. at 21).
The Requester argues that only a portion of the member is required to
be concave, that there is "no limit on the size of the portion," and because
"there is no definition of 'concave' in the patent that would exclude such a
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shape as being concave," the curved corners of the recess of Juster satisfies
the claim limitation at issue (Resp. Br. 6; see also Resp. Br. 7).
We again find that the Examiner erred with respect to independent
claims 1 and 9. For the reasons similar to those discussed supra relative to
Barberich, the assertion of the Examiner and the Requester that Juster
discloses an apparatus that is concave is unreasonably broad interpretation of
the limitation "member is concave." As argued by the Patent Owner, Juster
makes clear that portion 26 is planar. In addition, while the Requester points
out that the apparatus of Juster includes concave portions transitioning
between planar surfaces, it would be unreasonable to describe the apparatus
as having a "member [that] is concave" as required by claims 1 and 9 based
on such transitioning concave portions considering that the claims also
require the member to be adapted or configured to receive a laptop computer
so as to angle and space the laptop above a surface.
Moreover, even if the portion of the apparatus defining the recessed
planar region 26 is modified to be curved inward, we fail to see how such
modification would result in the invention of claims 1 and 9, which requires
the member to be adapted or configured to receive a laptop computer so as to
angle and space the laptop above a surface. It appears unlikely that the
recessed planar region 26, whether modified or not, can be said to be
adapted or configured to receive a laptop computer.
Therefore, in view of the above, we reverse the Examiner's rejections
of claims 1 and 9 based on Juster. However, as also discussed supra, claim
17 does not include the limitation that the "member is concave," but instead,
merely recites "a member having a first portion, a second portion and a
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concave surface." Thus, because the Patent Owner's arguments are not
applicable, and the apparatus of Juster has portions with concave surfaces,
we affirm the Examiner's rejection of claims 17-18 based on Juster. We also
again decline to reach this rejection as to claim 19 in view of our affirmance
of the Examiner's rejection infra based on impermissibly broadening.

Lim and Ihara
The Examiner rejects claims 1, 7, 9, 15 and 17-19 as obvious over the
combination of Lim and Ihara (Rejections 4, 14). Lim discloses a cooling
device for a computer (Title). Figures 1A and 1B of Lim are reproduced
below:

Figures 1A and 1B show a side view and an isometric view,
respectively, of the cooling device, which "comprises a corrugated sheet of
material." (Pg. 5, ll. 24-25; pg. 7, ll. 5-7).
The Examiner finds that the member of Lim "is concave and opens
upwards to create space below the supported laptop computer due [to] the
presence of the corrugated grooves shown in the Figs. 1A-8C." (RAN 8; see
also RAN 17). The Examiner relies on Ihara for disclosing a slanted
member 12 for supporting a notebook computer 13 at an angle to conclude
that "it would have been obvious to one of ordinary skill in the art at the time
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of invention to make the device of Lim slanted, as disclosed by Ihara."
(RAN 9; see also RAN 8, citing Ihara col. 1, ll. 40-45; Fig. 1).
The Patent Owner argues, inter alia, that "[t]he member disclosed by
Lim is not concave. Rather, it is generally rectangular with a planar surface
having grooved portions. The grooves do not make a rectangular member
concave, and it is not reasonable construction in the broadest context."
(App. Br. 17).
We again find that the Examiner erred with respect to independent
claims 1 and 9. For the reasons similar to those discussed supra relative to
Barberich, the assertion of the Examiner and the Requester that Lim
discloses an apparatus that satisfies the limitation "member is concave"
applies an unreasonably broad interpretation thereof. Whereas the device of
Lim includes concave portions by virtue of its corrugated grooves, it would
be unreasonable to describe the apparatus as having a "member [that] is
concave." Therefore, we reverse the Examiner's rejection of claims 1 and 9,
and claims ultimately depending therefrom, based on the combination of
Lim and Ihara.
The dispute between the parties as to whether the Patent Owner has
antedated Ihara via Declaration of Charles Lord (App. Br. 17; RAN 2; Resp.
Br. 4) is moot because even if Ihara was available prior art, that does not
cure the deficiency of the rejection.
As to claims 17 and 18, we observe that these claims stand rejected
supra based on Barberich as well as Juster. Hence, we decline to reach this
rejection with respect to claims 17 and 18. Furthermore, we decline to reach
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the rejection of independent claim 19 in view of our affirmance infra of the
Examiner's rejection based on impermissibly broadening.

Claim Broadening
The Examiner concludes that "[i]n Claim 1, the surface is not part of
the stand[,] whereas in claim 17 it is. Thus, claim 17 is broader than claim 1
because it contains within its scope a member that is NOT adapted to receive
a laptop computer so as to both angle and space said laptop above a surface."
(RAN 16). As to claim 19, the Examiner also points out that it is directed to
a laptop computer instead of a notebook computer as in claim 9, the
specification of the '241 patent teaching that laptop encompasses more than
a notebook computer (id.). The Examiner also notes that in contrast to claim
9, claim 19 does not require supporting the computer at an angle (id).
As to claims 17 and 18, we observe that these claims stand rejected
supra based on Barberich as well as Juster. Thus, we need not reach this
issue. Moreover, as to claim 19, the Patent Owner "concedes that this claim
broadens Claim 9 in one respect, although it is narrower in other respects."
(App. Br. 20). In determining whether a patentee broadened a reexamined
claim under 35 U.S.C. § 305, the same test as for reissue claims is used. See
In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994). In this regard, a "claim
that is broader in any respect is considered to be broader than the original
claims even though it may be narrower in other respects." Medtronic, Inc. v.
Guidant Corp., 465 F.3d 1360, 1374 (Fed. Cir. 2006). Correspondingly, the
Examiner's rejection of claim 19 as impermissibly broadening is affirmed.
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CONCLUSIONS
1. A. The Examiner's rejections of claims 1-3, 6, 8-10, 12-14 and 16
as anticipated by Barberich are REVERSED .
B. The Examiner's rejection of claims 17-18 as anticipated by
Barberich is AFFIRMED.
2. The Examiner's rejections of claims 4-6, 11 and 14 as obvious
over Barberich are REVERSED.
3. A. The Examiner's rejection of claim 1 as anticipated by Juster is
REVERSED.
B. The Examiner's rejection of claims 17 and 18 as anticipated by
Juster is AFFIRMED.
4. The Examiner's rejection of claim 9 as obvious over Juster is
REVERSED.
5. The Examiner's rejection of claims 1, 7, 9 and 15 as obvious
over Lim in view of Ihara is REVERSED.
6. The Examiner's rejection of claim 19 as impermissibly
enlarging the scope of the claims of the patent is AFFIRMED.
7. We decline to reach the remaining issues, reaching such issues
being unnecessary for the disposition of the present appeal. See 37
C.F.R. §41.77(a).

AFFIRMED-IN-PART

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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. In the event neither party
files a request for rehearing within the time provided in 37 C.F.R. § 41.79,
and this decision becomes final and appealable under 37 C.F.R. § 41.81, a
party seeking judicial review must timely serve notice on the Director of the
United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and
1.983.

ack

cc

Patent Owner:

DOCKET CLERK
P.O. DRAWER 800889
DALLAS, TX 75380

Third Party Requester:

TOWNSEND AND TOWNSEND AND CREW, LLP
TWO EMBARCADERO CENTER, EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834