Ex Parte Blust et alDownload PDFPatent Trial and Appeal BoardDec 26, 201311888593 (P.T.A.B. Dec. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DONALD BLUST and THOMAS DRISCOLL ____________ Appeal 2012-000988 Application 11/888,593 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and PHILIP J. HOFFMANN, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-5, 7-13, 15-19, and 21 under 35 U.S.C. § 103(a). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2012-000988 Application 11/888,593 2 CLAIMED SUBJECT MATTER Claims 1, 2, 3, and 21 are independent. Claim 3, reproduced below, is illustrative of the subject matter on appeal. 3. A hinge-less disc storage case comprising: a first housing; a second housing coupled to the first housing and forming a compartment therein; an opening through at least a portion of the first housing and the second housing, the opening adapted to provide access to the compartment and being sized for a digital video disc (DVD) disc; a channel in communication with the opening, the channel formed in one of the first housing and the second housing, a distal end of the channel being aligned with a portion of the DVD torus disc; and a member supported by one of the first housing and the second housing, at least a portion of the member adapted to flex during insertion and removal of the disc through the opening, the member contacting a surface of the disc when the disc is stored in the hinge-less disc storage case; a lining in the enclosure for protecting the disc from scratching; and a first pair of rails extending from the first housing and into the enclosure and a second pair of rails extending from second housing and into the enclosure, and wherein the first pair of rails and the second pair of rails are parallel to each other and cooperate to guide the optical disc into position in the enclosure. REJECTIONS Claims 1, 4, 5, 7, 8, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hunt (US 3,860,248, iss. Jan. 14, 1975) and Appeal 2012-000988 Application 11/888,593 3 Timpe (US 6,942,093 B2, iss. Sep. 13, 2005), and Kato (US 4,573,572, iss. Mar. 4, 1986). Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Hunt, Timpe, Kato, and Edwards (US 2007/0062828 A1, pub. Mar. 22, 2007). Claims 2, 3, 12, 13, 15-19, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hunt and Timpe. OPINION Obviousness based on Hunt, Timpe, and Kato and Hunt, Timpe, Kato, and Edwards At the outset we note that independent claim 1 calls for a hinge-less disc storage case including a first member adjacent the first side wall of a housing and a second member adjacent a third side wall of the housing. App. Br., Clms. App’x. The Examiner finds that Hunt substantially discloses the hinge-less disc storage case of claim 1, but lacks, among other things, “a second member adjacent a third side wall.” Ans. 5. Notably, the Examiner finds that Hunt discloses a first member 50 adjacent a first side wall (side wall opposite 3 in fig. 1). Ans. 5 (citing Hunt, figs. 1 and 8). The Examiner relies on Timpe to remedy the aforementioned deficiency of Hunt with regard to the rejection of claim 1, and finds that Timpe discloses in Figure 6 a first member 15 adjacent a first side wall and a second member 15 adjacent a third side wall. See Ans. 6. The Examiner concludes that it would have been obvious to modify Hunt’s hinge-less disc storage case in view of Timpe’s second member adjacent a third side wall “to provide multiple Appeal 2012-000988 Application 11/888,593 4 members that yield to permit complete insertion of a disc into the device to protect the disc.” Id. (citing Timpe, col. 4, ll. 1-9). The Appellants contend that the Examiner’s rejection is in error. The Appellants’ contention is persuasive. The Appellants assert that Hunt discloses an opening defined by cutouts 17 and 18, which are for “accommodating a loading apparatus for mechanically loading record members into apparatus 1.” App. Br. 13 (citing Hunt, col. 4, ll. 36-40); see also Hunt, figs. 1 and 8. The Appellants contend that the addition of a second member would block at least part of opening defined by cutouts 17 and 18. We agree. In response, the Examiner determines that the placement of a second member within the apparatus 1 and opposite leaf spring 34 would continue to permit cutouts 17 and 18 to accommodate a mechanical loading apparatus if the detents of the second member were positioned at a corresponding location of the cutouts 17 and 18. See Ans. 18. However, the Examiner’s determination is based on speculation. Further, the Examiner cites to case law to support this explanation (see id.), however without knowing more about the how the loading apparatus operates to load record members into Hunt’s apparatus it is speculative to conclude the that Hunt’s apparatus would not need to be completely redesigned if Hunt was modified as set forth by the Examiner’s reasoning. See App. Br. 13, Reply Br. 1-3. Thus, the rejection of claim 1, and its dependent claims, as unpatentable over Hunt, Timpe, and Kato is not sustained. Additionally, the rejection of claim 9 based on Hunt, Timpe, Kato, and Edwards relies on the Examiner’s flawed determination as discussed Appeal 2012-000988 Application 11/888,593 5 above. As such, we cannot sustain the rejection of claim 9 as unpatentable over Hunt, Timpe, Kato, and Edwards. Obviousness based on Hunt and Timpe Claims 2, 12, 13, 15, 16, and 21 Independent claims 2 and 21 are similar to claim 1 in that are both directed to a hinge-less disc storage case. App. Br., Clms. App’x. Additionally, among other things, claim 2 calls for a first member adjacent one of the walls of a housing and a second member adjacent a second one of the walls of the housing. See id. Similarly, claim 21 recites “a first saddle adjacent the left side wall and a second saddle adjacent the right side wall and opposing the first saddle.” See id. The Examiner’s rejection of claims 2 and 21 is similar to the rejection of claim 1. See Ans. 9-11 and 15-16. Accordingly, for similar reasons as those discussed above with regard to claim 1, the Examiner’s rejection of claim 2, and its dependent claims, and claim 21 is not sustained. Claims 3, 17, and 19 Although the Appellants’ argument that the addition of a second member would block the opening defined by cutouts 17 and 18 was persuasive for the rejection of independent claims 1, 2, and 21, claim 3 does not call a second member. See App. Br., Clms. App’x. Moreover, even though claim 17, which depends from claim 3, calls for a second member the Examiner’s rejection of claim 17 does not include the flawed determination discussed above. See Ans. 14. As such, the Appellants’ argument is unpersuasive for the rejection of claim 17 as well. With regard to the rejection of claim 3, the remaining arguments offered by the Appellants are unpersuasive of Examiner error. For example, Appeal 2012-000988 Application 11/888,593 6 the Appellants contend that the Examiner’s reliance on Timpe to disclose “a lining in the enclosure for protecting the disc from scratching,” as recited in claim 3, is in error. See App. Br. 14. The Examiner finds that Timpe discloses the use of a lining, i.e., a booklet 13 or other insert, in the enclosure for protecting the optical disc. Ans. 12 (citing Timpe, col. 1, ll. 60-65). The Appellants contend that a booklet or an insert “do[es] not inherently protect a disc . . . , and it appears that Timpe intends that such inserts be spaced from the disk.” App. Br. 14. Additionally, the Appellants contend that a user may dirty a booklet when perusing it and the booklet may later contact the disc and rubbing glossy paper may scratch a disk. Id. However, the foregoing does not explain error in the Examiner’s finding. Put simply, booklet 13 or other insert would protect a disc from scratching because the booklet 13 or other insert would act as safeguard (physical structure) between the disc and objects that would otherwise scratch the disc. See Ans. 18-19. As such, the Examiner’s rejection of claim 3 has rational underpinning. Thus, the rejection of claim 3, and claims 17 and 19 that depend therefrom, as unpatentable over Hunt and Timpe is not sustained. Claim 18 Claim 18 depends from claim 3, and calls for the first and second members to be “substantially semicircular-shaped with a generally flattened outer circumferential portion.” App. Br., Clms. App’x. The Examiner finds that Hunt’s detents 50 and 51 constitute first and second members, respectively, that are “substantially semicircular-shaped . . . with a generally flattened outer circumferential portion . . . .” See Ans. 14-15 (citing Hunt, fig. 8). The Appellants contend that Hunt’s “detents 50 and 51 clearly do[] Appeal 2012-000988 Application 11/888,593 7 not match” the limitation of claim 18. See App. Br. 15.1 Further, the Appellants acknowledge that the term “substantially semi-circular” may be a broad term (see Ans. 19-20), but that Hunt does not use the phrase “semi- circular” and Hunt’s triangular members (detents) 50 and 51 are not semi- circular. Reply Br. 3; see App. Br. 14. The Appellants’ contentions are unpersuasive. First, Hunt’s lack of disclosure concerning the term “semi-circular” is not dispositive of Examiner error because, among other things, claim 18 calls for the members to be “substantially semi-circular” and not “semi-circular.” Second, assuming arguendo that Hunt’s detents 50 and 51 are triangular, the Appellants do not adequately explain why these detents are not “substantially semi-circular” as understood by one of ordinary skill in the art using the broadest reasonable construction in light of the Specification. See Ans. 19-20. Thus, the rejection of claim 18 as unpatentable over Hunt and Timpe is sustained. DECISION We REVERSE the rejections of claims 1, 2, 4, 5, 7-13, 15, 16, and 21. We AFFIRM the rejections of claims 3 and 17-19. 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). 1 Although Appellants do not explicitly argue the limitation of claim 18, the Appellants explicitly argue the identical limitation of claim 15. App. Br., Clms. App’x. Appeal 2012-000988 Application 11/888,593 8 AFFIRMED-IN-PART Vsh Copy with citationCopy as parenthetical citation