11368892 - (D) (B.P.A.I. Oct. 12, 2010)

Ex Parte Clark

Board of Patent Appeals and InterferencesOct 12, 2010

11368892 - (D) (B.P.A.I. Oct. 12, 2010)

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. 11/368,892 03/06/2006 Jessica Woods Clark 16356.995 (DC-04890A) 9409 27683 7590 10/12/2010 HAYNES AND BOONE, LLP IP Section 2323 Victory Avenue Suite 700 Dallas, TX 75219 EXAMINER KIM, SANG K ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 10/12/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JESSICA WOODS CLARK ____________________ Appeal 2009-004327 Application 11/368,892 Technology Center 3600 ____________________ Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-004327 Application 11/368,892 STATEMENT OF THE CASE Jessica Woods Clark (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1, 2, 4, 8-12, 14, 18 and 19. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We REVERSE. THE INVENTION Appellant’s claimed invention is directed to a cable storage device for a keyboard cable (Spec. 1: para. [0002]). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A cable storage apparatus comprising: a standalone keyboard chassis having a first side and a second side opposite the first side; a plurality of keys on the first side; a recessed area defined by the second side; a cable support mounted in the recessed area and separated from the keys by the second side of the standalone keyboard chassis, whereby a keyboard cable is stored in the standalone keyboard chassis, the cable support having a first portion for wrapping the keyboard cable and a second portion for retaining the keyboard cable on the first portion; a receptacle formed in the second side of the standalone keyboard chassis; and the first portion including a flexible tab removably mounted in the receptacle. THE REJECTION The following rejection by the Examiner is before us for review: 2 Appeal 2009-004327 Application 11/368,892 Claims 1, 2, 4, 8-12, 14, 18 and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Damson (US 6,135,810, issued Oct. 24, 2000) in view of Grubb (US 5,513,816, issued May 7, 1996). ISSUE The issue before us is whether the Examiner erred in concluding that the combined teachings of Damson and Grubb would have led a person having ordinary skill in the art to a receptacle formed in the second side of the standalone keyboard chassis, as called for in independent claims 1, 10 and 11 (App. Br. 7). ANALYSIS Appellant contends that the combined teachings of Damson and Grubb do not describe a receptacle formed in the second side of the standalone keyboard chassis, as called for in independent claims 1, 10 and 11 (App. Br. 7). We agree with the Examiner’s finding regarding Damson and adopt them as our own. The Examiner found that (1) Damson describes L-shaped projections 60 that can be releasably connected or fastened to the housing (Ans. 3-4), and (2) Damson describes “the claimed invention except for explaining how the projections can be releasably connected or fastened to the housing” (Ans. 4). The Examiner found that Grubb describes a flexible tab 58 removably mounted in a receptacle 36 (Ans. 4). 3 Appeal 2009-004327 Application 11/368,892 The Examiner concluded that it would have been obvious to combine the teachings of Damson and Grubb by providing Damson’s projections 60 with a flexible feature as taught by Grubb (Ans. 4). The Examiner noted (1) that the claims call for “a receptacle formed in the second side” and (2) that “[t]he rejection clearly points to the element 36 [of Grubb] as the receptacle” (emphasis original and bold added) (Ans. 6). Independent claims 1 and 10 call for, inter alia, “a receptacle formed in the second side of the standalone keyboard chassis,” while independent claim 10, a method claim, calls for, inter alia, the step of “providing a receptacle in the second side of the standalone keyboard chassis.” We find that as noted supra, the Examiner has interpreted the element 36 of Grubb as the receptacle. Grubb describes element 36 as a flanged base adapted to be fixed to a support (col. 4, ll. 25-30). Figure 3 of Grubb shows unlabeled fasteners for fixing the flanged base 36 to a support. Thus, Grubb’s flanged base 36 is a separate element from the support to which it is attached. Since the receptacle, Grubb’s flanged base 36, is a separate element, we find that when the teachings of Damson are combined with the teachings of Grubb, the receptacle would be formed as a separate element and, therefore, not be formed in the second side, as called for in independent claims 1, 10 and 11. We reverse the rejection of independent claims 1, 10 and 11, and claims 2, 4, 8, 9, 12, 14, 18 and 19, which depend therefrom. 4 Appeal 2009-004327 Application 11/368,892 CONCLUSION The Examiner has erred in concluding that the combined teachings of Damson and Grubb would have led a person having ordinary skill in the art to a receptacle formed in the second side of the standalone keyboard chassis, as called for in independent claims 1, 10 and 11. DECISION The decision of the Examiner to reject claims 1, 2, 4, 8-12, 14, 18 and 19 is reversed. REVERSED JRG HAYNES AND BOONE, LLP IP SECTION 2323 VICTORY AVENUE SUITE 700 DALLAS, TX 75219 5