Ex Parte 8418852 et al

Patent Trial and Appeal Board

Jul 31, 2017

90013486 (P.T.A.B. Jul. 31, 2017)

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.
90/013,486 04/10/2015 8418852 52253/526 8192
25901 7590 08/01/2017
ERNEST D. BUFF
ERNEST D. BUFF AND ASSOCIATES, LLC.
231 SOMERVILLE ROAD
BEDMINSTER, NJ 07921
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/01/2017 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 John T. Ziemba
____________________

Appeal 2017-006813
Reexamination Control 90/013,486
Patent US 8,418,852 B21
Technology Center 3900
____________________

Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to John T. Ziemba on April 16, 2013.
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STATEMENT OF CASE
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from
the Examiner’s rejection of claims 1 and 6, the only claims pending in
theappeal. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
An oral hearing with the representative of the Patent Owner was held
before the Patent Trial and Appeal Board on July 19, 2017. A transcript of
the oral hearing will be entered into the electronic record in due course.
We AFFIRM.

THE INVENTION
The Patent Owner’s claims are directed generally “to a
compartmentalized protective case for portable handheld electronic
devices.” Spec. col. 1, ll. 17-18. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A compartmentalized protective case for a portable
handheld electronic device, comprising:
a. a major compartment configured for receiving and
housing the electronic device, the major compartment defining
two major sides including an open major bottom side allowing
the electronic device to be viewed from an exterior of the
protective case when housed within the major compartment and
a generally closed major top side opposing the open major
bottom side, the open major bottom side defined at least in part
by first and second opposing sidewalls, wherein each of the first
and second sidewalls defines at least a portion configured to
overlie the electronic device when housed within the major
compartment so as to prevent the device from falling out of the
major compartment through the open major bottom side, wherein
a major side is defined as a side having a larger surf ace area than
a rest of the sides defined by the major compartment;
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b. a second compartment configured for receiving and
housing personal items, wherein the major compartment and the
second compartment are arranged parallel to and piggybacked
upon one another and wherein one of the major compartment and
the second compartment is enclosed with a hinged cover,
wherein the open major bottom side is defined by an opening that
encompasses a majority of a surf ace area of the open major
bottom side; and
c. a portable handheld electronic device housed within the
major compartment.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bianco
Longinotti-Buitoni
US 7,077,596 B1
US 8,381,904 B1
Jul. 18, 2006
Feb. 26, 2013
Holmes US 2006/0042971 A1 Mar. 2, 2006

REJECTIONS
The Examiner made the following rejections:
Claims 1 and 6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Bianco. Ans. 2.
Claims 1 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Longinotti-Buitoni and Holmes. Ans. 3, 4.

ANALYSIS
Obviousness over Holmes in view of Longinotti-Buitoni
The Examiner makes two obviousness rejections over the combination
of Holmes and Longinotti-Buitoni (hereinafter “Longinotti”). In the first
rejection, which we will not address, the Examiner states that Longinotti
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teaches the majority of the claim elements, but fails to teach the hinged
compartment and then modifies Longinotti accordingly based on the
teachings of Holmes. Ans. 3.
In the second obviousness rejection, the Examiner states that “the
outer removable cover of the Holmes electronic device may not include a
(major) compartment having an open side and a closed side,” but that
Longinotti “discloses an analogous electronic device 2 which further
includes an outer removable cover 10 having a major compartment defined
by an open side (Fig. 1A) and a closed side (Fig. 1B).” Ans. 4. The
Examiner goes on to explain that “it would have been obvious to one of
ordinary skill in the electronic device art to associate a major compartment
having an open side and a closed side, with the Holmes outer removable
cover, in order to allow convenient device access.” Id.
According to the Patent Owner, this basis fails “to provide the
requisite ‘rational underpinning’ in support of the conclusion that it would
be obvious to combine” Holmes and Longinotti. App. Br. 23. The Patent
Owner argues that “the Examiner’s interpretation that the ‘outer removable
cover of the phone 302’ [of Holmes] is tantamount to a case or separate
protective cover is overly broad.” Id. We disagree with this characterization
of the rejection. The Examiner clearly states that Holmes fails to provide the
kind of separate cover that is claimed, i.e., one having a major compartment
with an open side and a closed side. Ans. 4. What Holmes does disclose is
that a phone may have a storage compartment and that compartment may be
attached to the phone’s back cover. See Ans. 14-15. As the Examiner points
out, Longinotti also has a storage compartment in the form of a business or
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credit card holder that, rather being attached directly to the phone or its back
cover, is attached to a removable cover having the features described in the
claim of a major compartment with an open and a closed side. Id.
The Examiner merely takes this teaching from Longinotti and
concludes that in the context of Holmes, rather than attaching the hinged
compartment to the phone’s back cover, it would have been obvious to
attach the compartment to a removable protective cover as disclosed in
Longinotti and then that cover could be placed over the phone. Contrary to
the Patent Owner’s argument (App. Br. 23), Longinotti clearly teaches both
an electronic device and a second compartment suitable for housing personal
items that is arranged parallel and piggybacked upon a major compartment
by way of the card holder.2 In addition, in further support of the
combination of Holmes and Longinotti, during oral argument the Patent
Owner’s representative, Ms. La Croix even stated in regard to Holmes’
compartment, “it’s really more an independent accessory you can just snap
onto anything.” Hearing Trans. 25. When further pressed, she also stated,
“I supposed it could be added [to a protective case], but it’s an independent
structure.” Id. at 26. We see nothing in the claims that would bar the
addition of Holmes’ compartment in the manner admitted possible by the
Patent Owner.

2 We note that the Patent Owner’s exact argument states that Longinotti fails
to teach “a second compartment suitable for housing personal care items,”
but the claims do not recite personal care items, only personal items and we
see no basis not to consider business or credit cards personal items. App. Br.
23.
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Along these same lines, the Patent Owner appears to misunderstand
the Examiner’s rejection by stating that “the resulting device [of the
combination] would have Holmes’ compartment placed on top of a holding
pocket that was coextensively formed in the Longinotti-Buitoni case to
thereby form a triple-decker-case.” Reply Br. 11. This is simply incorrect.
The rejection shows that Longinotti teaches a personal item compartment on
a protective case in the form of a card holder that is both parallel and
piggybacked as claimed and that Holmes also teaches an analogous personal
item compartment that is affixed directly to the phone or to a back cover
thereof. See, e.g., Ans. 14. The rejection does not place Holmes’ personal
item compartment on top of Longinotti’s card case, but merely replaces the
card compartment with Holmes’ hinged compartment. This is nothing more
than a simple substitution of one kind of personal item compartment for
another.
The Patent Owner further argues that “Holmes does not teach a
protective case for an electronic device.” App. Br. 24 (emphasis omitted).
We agree with the Patent Owner, but find this point to be essentially
irrelevant because the Examiner specifically notes that this is a deficiency in
Holmes and turns to Longinotti for the protective case having the major
compartment as claimed. Ans. 3. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097, (Fed. Cir. 1986). Here, the protective case of Longinotti is
interposed between the phone and the minor compartment rather than being
affixed directly to the phone or its protective back cover as is taught in
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Holmes, so the lack of the claimed protective case in Holmes is cured by
Longinotti.
Lastly the Patent Owner asserts that “[m]odification of Holmes in
view of Longinotti-Buitoni would result in Holmes no longer being capable
of being utilized for flip phones and other devices” without any further
explanation. App. Br. 25. First, we see no reason for this to be true. The
compartment of Holmes could just as easily be added to a flip phone with a
protective case having the claimed major compartment as it could to a non-
flip phone.3 Second, even if the Patent Owner were correct, it does not
matter because the Examiner is not saying that all examples in Holmes have
to be used with a protective case, just that the configuration disclosed in
Longinotti of a smart phone with a protective case could be used to modify
the configuration in Holmes of attaching a minor compartment to the back of
a smart phone. Accordingly, for the reasons stated above, we are not
persuaded of error in the Examiner’s rejection of claims 1 and 6 as obvious
over Holmes and Longinotti.
Remaining Rejections and Issues
We decline to reach the remainder of the rejections and issues related
thereto, such as the substantial new question of patentability issue related to
the anticipation rejection in view of Bianco, because the rejection of claims
1 and 6 as obvious over Holmes and Longinotti encompasses all of the
pending claims. As such our affirmance of this rejection results in the

3 See supra Patent Owner’s admission that Holmes compartment could be
added to “anything.”
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rejection of all claims and renders the remaining rejections merely
cumulative.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1 and 6.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED