Ex Parte Calco et alDownload PDFPatent Trial and Appeal BoardFeb 14, 201312127005 (P.T.A.B. Feb. 14, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WAYNE A. CALCO, GAREY DE ANGELIS, JEFF GRADY, and ANDREW GREEN ____________________ Appeal 2010-011780 Application 12/127,005 Technology Center 3700 ____________________ Before: BIBHU R. MOHANTY, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011780 Application 12/127,005 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 1-211. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The rejected claims are directed to a protective case for a portable digital device (Spec. [0025]). Claims 1 and 14 are the sole independent claims. Claim 1 is reproduced below. 1. A protective case for a portable digital media device having at least one associated input element controllable by a user, the protective case defining a cavity sized and shaped to conform to at least a portion of a portable digital media device, wherein: the case comprises a hinged element selectively moveable between an open position and a closed position; the hinged element is adapted to support (i) the case, and (ii) a portable digital media device containable in the cavity thereof, in an upright position relative to an underlying support surface when said hinged element is disposed in an open position; and the case defines at least one aperture registered with said at least one input element to permit user access to said at least one input element when said hinged element is disposed in a closed position. 1 Our decision will refer to Appellants’ Specification (“Spec.,” filed May 26, 2008), Appeal Brief (“App. Br.,” filed May 17, 2010), and Reply Brief (“Reply Br.,” filed Aug. 16, 2010), as well as the Examiner’s Answer (“Ans.,” mailed Jun. 14, 2010). Appeal 2010-011780 Application 12/127,005 3 THE REJECTIONS The Examiner rejects the claims as follows: Claims 1-3, 6-11, 14-17, and 19-21 stand rejected under 35 U.S.C. § 102(b) as anticipated by Sirichai (US 2007/0235492 A1, pub. Oct 11, 2007); claims 1-7, 9-17, and 19-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tynyk (US 2008/0053770 A1, pub. Mar. 6, 2008) in view of Schmid (US 3,913,711, iss. Oct. 21, 1975); and claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tynyk in view of Schmid and Hu (US 7,559,427 B2, iss. Jul. 14, 2009). ANALYSIS The current application was filed on May 26, 2008, and is identified as a continuation-in-part of Design Patent Application Number 29/252,488, which was filed on January 24, 20062. Appellants argue that the design application discloses all of the features of each of the claims in the current application, and as a result the claims are entitled to the priority date of the design application such that neither Sirichai nor Tynyk is prior art (App. Br. 8-14, Reply Br. 2-8). Appellants further argue that each of the rejections therefore must be withdrawn (App. Br. 15-17, Reply Br. 7-8). We disagree with Appellants’ arguments that the design application discloses all of the features of the claims. 2 We do not reach the issue as to whether a continuation-in-part application may claim priority to a design application, because even if this is otherwise permissible, we find that in this case the design application does not disclose all of the features of the claims, as discussed below. Appeal 2010-011780 Application 12/127,005 4 Independent claim 1 recites a “case [that] defines at least one aperture registered with said at least one input element [of a portable digital media device within the case,] to permit user access to said at least one input element when said hinged element is disposed in a closed position.” We agree with the Examiner that even [a]ssuming arguendo that design application no. 29/252,488 has a circular outline that defines an aperture extending completely through the cover, nothing in that design application discloses the at least one aperture is registered with at least one input element to permit user access to said at least one input element. Insofar as the design application discloses, the protective assembly is for a portable digital media storage and playback device. Nothing is mentioned regarding the device having at least one associated input element, an input element controllable by a user, or the aperture being registered with said input element. As mentioned on page 7, of the final rejection mailed December 16, 2009, the design application fails to describe the [claimed features of a] “case [that] defines at least one aperture registered with said at least one input element to permit user access to said at least one input element when said hinged element is disposed in a closed position” (emphasis added) (Ans. 10). Appellants’ Reply Brief alleges similarities between the portable digital media device shown in broken line in the design application, and specific portable digital media devices sold prior to the filing of the design application (Reply Br. 4-7). Notwithstanding these allegations, we find that Appellants have not conclusively demonstrated that the design application figures conclusively illustrate a “case [that] defines at least one aperture registered with said at least one input element [of a Appeal 2010-011780 Application 12/127,005 5 portable digital media device within the case]” as recited in independent claim 1. Therefore, we find that claim 1 is not entitled to the priority date of the design application for subject matter in that regard. Appellants have not submitted any arguments regarding why the references do not disclose or suggest the features of independent claim 1. Thus, we sustain the rejections of claim 1 under 35 U.S.C. §§ 102(b) and 103(a). Similarly, independent claim 14 recites “the case defines at least one aperture registered with said at least one input element to permit user access to said at least one input element when said hinged element is disposed in a closed position.” For reasons similar to those discussed above with respect to claim 1, we find that claim 14 is not entitled to the priority date of the design application for subject matter in that regard. Appellants have not submitted any arguments regarding why the references do not disclose or suggest the features of independent claim 14. Thus, we sustain the rejections of claim 14 under 35 U.S.C. §§ 102(b) and 103(a). Claims 2-13 and 15-21 depend from independent claims 1 and 14. Therefore, we sustain the rejections of claims 2-13 and 15-21 under 35 U.S.C. §§ 102(b) and 103(a) for the same reasons as the independent claims. DECISION The Examiner’s rejection of claims 1-3, 6-11, 14-17, and 19-21 under 35 U.S.C. § 102(b) as anticipated by Sirichai is AFFIRMED; the Examiner’s rejection of claims 1-7, 9-17, and 19-21 under 35 U.S.C. § 103(a) as unpatentable over Tynyk in view of Schmid is AFFIRMED; and Appeal 2010-011780 Application 12/127,005 6 the Examiner’s rejection of claims 8 and 18 under 35 U.S.C. § 103(a) as unpatentable over Tynyk in view of Schmid and Hu is AFFIRMED. 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). AFFIRMED mls Copy with citationCopy as parenthetical citation