Ex Parte AVGANIM

Patent Trial and Appeal Board

Mar 18, 2019

14849803 (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/849,803 09/10/2015 Meir AVGANIM
2352 7590 03/20/2019
OSTROLENK FABER LLP
845 THIRD A VENUE
NEW YORK, NY 10022
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P/4222-108 9930
EXAMINER
THAKER, NIDHI VNEK
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
03/20/2019 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEIR A VGANIM
Appeal2018---006023
Application 14/849,803
Technology Center 2800
Before JEFFREY B. ROBERTSON, GEORGIANNA W. BRADEN, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-16, and 18. (Appeal Br. 1.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
1 This Decision includes citations to the following documents:
Specification filed September 10, 2015 with amended drawings filed on
April 10, 2017 ("Spec."); Final Office Action dated May 24, 2017 ("Final
Act."); Appeal Brief filed December 4, 2017 ("Appeal Br."); and
Examiner's Answer dated March 21, 2018 ("Ans.").
2 Appellant identifies the inventor, Meir A vganim, as the real party in
interest. (Appeal Br. 1.)
Appeal2018---006023
Application 14/849,803
We AFFIRM-IN-PART the Examiner's rejection. Because our
rationale differs from the Examiner's, we designate our affirmance as NEW
GROUNDS OF REJECTION pursuant to 37 C.F.R. § 4I.50(b).
THE INVENTION
Appellant states that the invention relates to devices for hindering the
theft of relatively small, but expensive pieces of equipment. (Spec. ,r 2.)
Claim 1, the only independent claim on appeal, is representative and
reproduced below from the Claims Appendix to the Appeal Brief:
1. A portable electronic device with a locking system,
compnsmg:
a printed circuit board securely anchored to a housing of
said electronic device;
a security locking component in the form of a lock
opening defined in a material slab, said lock opening being
configured to receive a locking head of a lock system; and
wherein said locking component is physically anchored
to the printed circuit board in the housing of the electronic
device, in a manner that is sufficiently sturdy to receive and
hold said locking head of said lock system anchored to said
printed circuit board via said locking component, and wherein
the housing comprises an access opening that is registered with
and located directly adjacent to the lock opening, so as to
enable passage of the locking head to the lock opening.
(Appeal Br. 8, Claims Appendix.)
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Appeal2018---006023
Application 14/849,803
REJECTIONS
The Examiner rejected claims 1, 3-16, and 18 under 35 U.S.C. § 103
as follows:
1. Claims 1, 3, 4, and 7-16 as obvious over Pate et al. (US 6,389,853
B 1, issued May 21, 2002, "Pate") and Zhang et al. (US 9,152,826
B2, issued on October 6, 2015, "Zhang");
2. Claims 5 and 6 as obvious over Pate, Zhang, and Hung et al. (US
2011/0122551 Al, published on May 26, 2011, "Hung"); and
3. Claims 1, 4--6, and 18 as obvious over Pate and Hung.
(Final Act. 2-10.)
Appellant argues only the limitations of claim 1, indicating that the
rejection of the dependent claims should be reversed for the reasons relied
upon for claim 1. (Appeal Br. 6.) Accordingly, we select claim 1 as
representative for disposition of this appeal. 37 C.F.R. § 4I.37(c)(l)(iv).
Rejection 1
ISSUE
The Examiner found that Pate discloses a portable electronic device
including a printed circuit board anchored securely to a housing, where the
portable electronic device includes a locking system. (Final Act. 2.) The
Examiner found that Pate fails to disclose a locking system including a
locking component physically anchored to the printed circuit board in the
housing of the device, which is sufficiently sturdy to receive and hold the
locking head of the locking system. (Id. at 3.)
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Application 14/849,803
The Examiner found that Zhang discloses a portable electronic device
including a locking system comprising a security locking component, and a
conductive material, which is physically anchored to a printed circuit board
in a manner that is sufficiently sturdy to receive the locking head of the
locking system. (Id.) The Examiner determined that it would have been
obvious to provide a security locking component as disclosed in Zhang to
the device of Pate "in order to provide strength to the lock opening structure
and prevent it from easily breaking." (Id. at 4.)
Appellant argues that contrary to the position of the Examiner, Zhang
does not disclose that the conductive material plays any role or is
sufficiently sturdy to receive and hold the locking head of the locking
system anchored to the printed circuit board. (Appeal Br. 4--6.)
Accordingly, the issue on appeal is:
Did the Examiner err in rejecting claim 1 as obvious over the
combined disclosures of Pate and Zhang?
DISCUSSION
Although we agree with Appellant that Zhang does not disclose
expressly that the conductive material disclosed therein provides a role in
receiving and holding the locking head, we are not persuaded that the
Examiner erred in rejecting the claims as obvious over Pate and Zhang.
In this regard, Pate discloses a continuity detection apparatus in
conjunction with a locking system for a portable electronic device. (Pate,
col. 4, 11. 45-54; Fig. 8.) Pate discloses that the continuity detection
apparatus is electronically connected to a motherboard (printed circuit
board). (Id.) Pate discloses that when unauthorized removal of the portable
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Appeal2018---006023
Application 14/849,803
electronic device occurs and electrical continuity is broken, an alarm is
activated. (Pate, col. 2, 11. 18-50; col. 5, 11. 15--41.) Pate does not disclose
the particular details of how the continuity detection apparatus, electrical
contacts and printed circuit board are physically connected to each other.
(See Pate, col. 4, 11. 26-54, disclosing generally that the continuity detection
apparatus may be "mounted" in the enclosure and a portion "attached" to a
motherboard and "electrically connected" to contact terminals.)
Zhang discloses a portable electronic device with a locking system,
and a conductive material that is electrically connected to a printed circuit
board, which detects damage when the electrical connection is broken.
(Zhang, col. 4, 11. 9--48; Figs. 3, 4.) In particular, Zhang discloses a
conductive material 220 includes a metallic plate with pins 224 "that can be
soldered to a printed circuit board (PCB) 210." (Zhang, col. 4, 11. 20-24;
Fig. 3.)
One of ordinary skill in the art would have turned to Zhang for
guidance in providing suitable electrical connections in locking systems
involving portable electronic devices with printed circuit boards, and would
have implemented the arrangement disclosed in Zhang in the device of Pate.
The combination of Pate and Zhang would result in a locking component
that is anchored to the printed circuit board "in a manner that is sufficiently
sturdy to receive and hold said locking head ... " as recited in claim 1 as a
result of the presence of the metal plate and soldered pins. (See Spec. ,r 26,
describing that pins are sufficient to anchor the housing to the printed circuit
board with or without screws or bolts.) As stated by the Supreme Court in
KSR, "[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
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Application 14/849,803
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under§ 103." KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398,419 (2007). The Supreme Court also explained,
"[ w ]hen a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability." KSR Int'! Co., 550 U.S. at 417.
We incorporate the Examiner's discussion of claims 3, 4, and 7-16
from the Final Action (pp. 4--7) and affirm the Examiner's rejection of those
claims, not argued separately by Appellant, as well. As stated above,
however, because our rationale differs from the Examiner, we designate our
affirmance as a new ground of rejection.
Appellant's Additional Arguments
We agree with the Examiner that Appellant's argument that the
locking component must be of sufficient strength to prevent physical theft is
not persuasive, as this function is not recited in the claim. (Appeal Br. 5---6;
Ans. 3--4.) As discussed above, the metal plate in combination with the
soldered pins disclosed in Zhang would provide the function of being
sufficiently sturdy to receive and hold the locking head recited in claim 1.
We are also not persuaded by Appellant's argument that Zhang discloses
that the conductive material can be any shape, size, or material (Appeal Br.
5), because, as discussed above, Zhang expressly discloses a conductive
metal plate with pins that can be soldered to the printed circuit board.
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Application 14/849,803
Rejection 2
Appellant does not provide separate arguments with respect to the
rejections of claims 5 and 6, which further rely on Hung. (See Appeal Br.
4.) Accordingly, we affirm the Examiner's rejection of claims 5 and 6
relying on the Examiner's findings and conclusions set forth in the Final
Action (p. 7) and for the reasons discussed above, also designating our
affirmance as a new ground of rejection as the rejection of claims 5 and 6,
which depend from claim 1, also rely on the combination of Pate and Zhang.
Rejection 3
In rejecting claims 1, 4---6, and 18, the Examiner relies on similar
findings with respect to Pate as discussed above. (Final Act. 8.) The
Examiner found that Hung discloses a locking system in a portable
electronic device, including a locking component, lock interface member
306, which is physically anchored to a chassis 201, in the housing of the
portable electronic device in a manner that is sufficiently sturdy to receive
and hold the locking head of the lock system anchored to the chassis via the
locking component. (Id.) The Examiner determined that it would have been
obvious to have provided a locking component as disclosed in Hung to the
device of Pate in order to provide additional strength and to prevent the lock
opening structure from breaking. (Id. at 9.)
The Examiner also determined:
since the locking component of Pate has components ( 48, 46 in fig 8)
that are connected on the printed circuit board ( 44), providing a
separate housing for the locking component to accommodate all of its
components connected to the printed circuit board would position the
locking component housing on the printed circuit board; thus, the
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Application 14/849,803
locking component housing can be anchored to the printed circuit
board for stability.
(Id.)
Appellant argues that there is no mention or contention that the
locking element disclosed in Hung is located on a PC Board as required in
claim 1. (Appeal Br. at 4.)
In reply, the Examiner stated that "Hung is used merely to teach a
separate security locking component in the form of a lock opening defined in
a material slab. The limitation of locating the locking components on the PC
board is disclosed in the references of Pate and Zhang." (Ans. 5.)
We agree with Appellant. As the Examiner admits, Hung does not
disclose anchoring the locking component housing on the printed circuit
board. Although the Examiner provides a rationale for securing the locking
component housing to the printed circuit boards, we are of the view that
there is insufficient rational underpinning for the Examiner's reasoning, to
support the position that applying the disclosure of Hung to Pate would have
rendered the arrangement recited in claim 1 obvious to one of ordinary skill
in the art. That is, we do not see how the disclosure of components
connected on the printed circuit board in Pate provides a sufficient reason to
locate the locking component housing of Hung on the printed circuit of Pate.
"' [R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."' KSR Int 'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Accordingly, we reverse the Examiner's decision to reject claims 1,
4---6, and 18 as obvious over the combination of Pate and Hung.
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DECISION
We affirm the Examiner's decision rejecting claims 1 and 3-16, but
designate our affirmance as new grounds of rejection.
The Examiner's rejection of claim 18 is reversed.
New grounds of rejection of claims 1 and 3-16 are entered for reasons
set forth herein. 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides that,
"[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review." 37 C.F.R. § 4I.50(b) provides that
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of proceedings as to the
rejected claims:
( 1) submit an appropriate amendment of the rejected claims or new
evidence relating to the rejected claims, or both, and have the matter
reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner; or
(2) request that the proceeding be reheard under 37 C.F.R. § 41.52 by
the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED-IN-PART; 37 C.F.R.§ 4I.50(b)
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