Ex parte DUFF

Board of Patent Appeals and Interferences

Mar 24, 2000

08273813 (B.P.A.I. Mar. 24, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARK B. DUFF
_____________
Appeal No.1998-0073
Application 08/273,813
______________
HEARD: MARCH 9, 2000
_______________
Before HAIRSTON, FLEMING, and DIXON, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 9, 11, 12, 15 through 17, and 21 through 25.
Claims 10, 13, 14, 18 through 20, and 26 have been allowed by
the Examiner. An amendment after final rejection was filed
August 29, 1996, canceling claims 21 through 23 and amending
claims 1 through 3 and 25 which was entered by the Examiner as
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Application 08/273,813
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stated in the Advisory Action mailed September 12, 1996.
Therefore, the objections to the specification under 35 U.S.C.
§ 112, first paragraph, and the rejection of claims 1 through
3, 5 through 9, 11, 12, 15 through 17, 22, and 25 under 35
U.S.C. § 112, second paragraph, have been overcome.
The invention is directed generally to a portable and
waterproof computer having a clam shell case and more
specifically, to a computer with a sealant between the top and
the bottom portions. The computer is sealed from the outside
environment by the sealant when the top and the bottom
portions are closed. A handle and stabilizing strips are also
attached to the outside of the bottom housing.
Representative independent claim 1 is reproduced as
follows:
1. A portable computer including a keyboard and a
display, and comprising:
a clam shell case comprising:
hinges;
a bottom housing comprising a battery pack and an
interior surface containing the keyboard;
a top housing containing the display, one end of
said top housing being connected to a corresponding end of
said bottom housing by the hinges; and
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a sealant, placed continuously between the bottom
housing and the top housing when the top housing is closed
against the bottom housing, to seal the portable computer,
wherein the sealant is malleable and compresses when the top
housing is closed against the bottom housing.
The Examiner relies on the following references:
Chang 4,839,837 June 13, 1989
Hsieh 4,926,365 May 15, 1990
Chadima, et al. (Chadima) 5,023,824 June 11, 1991
Katz 5,336,848 Aug. 9, 1994
(Filed Aug. 24, 1993)
Bird 5,341,154 Aug. 23, 1994
(Filed Dec. 27, 1991)
Claims 1 through 3, 5, 6, 11, 16, 24, and 25 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Hsieh and Chadima. Claims 7, 8, 12, and 17 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Hsieh,
Chadima, and Katz. Claim 9 stands rejected under 35 U.S.C. §
103 as being unpatentable over Hsieh, Chadima, Katz, and
Chang. Claim 15 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Hsieh, Chadima, and Bird. Claim 4
stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hsieh and Katz.
Appeal No. 1998-0073
Application 08/273,813
Appellant filed an appeal brief on February 28, 1997. 1
Appellant also filed a reply brief on June 16, 1997. On July
3, 1997, the Examiner mailed a communication stating that the
reply brief has been entered and considered.
4
Rather than repeat the arguments of Appellant and the
Examiner, we make reference to the briefs and the answer for1
the details thereof.
OPINION
It is our view, after careful review of the evidence
before us, that claims 2 through 4 are properly rejected under
35 U.S.C. § 103. We reach the opposite conclusion with
respect to claims 1, 5 through 9, 11, 12, 15 through 17, 24,
and 25. Accordingly, we affirm-in-part.
Turning to the rejection of claims 1, 5, 6, 11, 16, 24,
and 25 under 35 U.S.C. § 103, Appellant argues on page 10 of
the brief that neither Hsieh nor Chadima teaches Appellant’s
inventive concept which is directed to a clam shell portable
computer with a malleable sealant between the top and the
bottom housing as defined in independent claims 1, 3, and 24.
Appellant on pages 11, 12, and 15 points out that Chadima’s
top and bottom housings remain closed with the sealant
permanently installed in between during the operation of the
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Application 08/273,813
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portable computer. Appellant further argues that Chadima’s
sealed housing cannot be used for sealing Hsieh’s clam shell
computer.
With respect to claims 1, 5 through 9, 11, 12, 15 through
17, 24, and 25, the Examiner has failed to set forth a prima
facie case. It is the burden of the Examiner to establish why
one having ordinary skill in the art would have been led to
the claimed invention by the express teachings or suggestions
found in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983). “Additionally, when
determining obviousness, the claimed invention should be
considered as a whole; there is no legally recognizable
‘heart’ of the invention.” Para-Ordnance Mfg. v. SGS
Importers Int'l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 519 U.S. 822 (1996)
(citing W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984)).
The Examiner on page 4 of the answer states that Chadima
teaches the placing of a sealing gasket that is malleable and
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compresses between the top and bottom housings to form a
“water tight housing” and a “sealed environment within the
housing.” The Examiner further points out that it would have
been obvious to one of ordinary skill in the art to modify the
portable computer of Hsieh with the sealing gasket of Chadima.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992)(citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). The Federal Circuit
reasons in Para-Ordnance Mfg. Inc. v. SGS Importers Int’l
Inc., 73 F.3d 1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed.
Cir. 1995), cert. denied, 519 U.S. 822 (1996), that for the
determination of obviousness, the court must answer whether
one of ordinary skill in the art who sets out to solve the
problem and who had before him in his workshop the prior art,
would have been reasonably expected to use the solution that
is claimed by the Appellants.
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Chadima teaches in col. 13, lines 54 through 64 and Fig.
17 that the gasket 100 seals the top and the bottom housing
portions 41 and 42 and is permanently held in place with the
fasteners 101. Chadima further shows the display 14 and the
keyboard 12 on the exterior surface of the top housing.
Therefore, we find that Chadima teaches a portable computer
with top and bottom housings where the display and the
keyboard are on the outside surface of the top housing and are
accessible without opening the top and the bottom housings
once they are permanently sealed in closed position.
In view of these teachings, we find that Chadima is
concerned with permanently sealing a portable computer and
forming a sealed unit with the display and the keyboard on the
exterior of the top housing which is not opened during its
operation. Chadima is not addressing the problem of sealing a
computer housing with two parts which open and close against
one another as taught by Hsieh. Therefore, we fail to find
any suggestion or desirability of placing Chadima’s sealant in
between Hsieh’s top and bottom housings of a clam shell
computer. Accordingly, we reverse the rejection of claims 1,
5 through 9, 11, 12, 15 through 17, 24, and 25.
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Application 08/273,813
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Turning to the rejection of claim 2, Appellant argues on
pages 15 and 16 that Chadima teaches an end cap for sealing a
data communication port. Appellant further argues, on pages
20 and 21, that Chadima’s end cap is sealed from the housing
using an O-ring by securing connectors to the housing. On
page 3 of the reply brief, Appellant adds that the invention
as in claim 2 is not implemented using “end caps” made of
metal, but with detachable port covers form-fitted to
respective ports by being made of “soft rubber.”
The Examiner responds to Appellant’s arguments on pages 3
and 4 of the answer by stating that Hsieh teaches a clam shell
case with the top and the bottom housings connected by hinges
while Chadima teaches the sealing of external ports using a
sealing gasket to environmentally seal a portable computer.
In particular, the Examiner points to the abstract of Chadima
that teaches a “water tight housing” and a “sealed environment
within the housing” for a portable computer. The Examiner
further argues that Chadima uses O-rings which can be made of
different materials such as rubber.
As pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is
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Application 08/273,813
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the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). Claims will be given their
broadest reasonable interpretation consistent with the
specification, and limitations appearing in the specification
are not to be read into the claims. In re Etter, 756 F.2d
852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985).
We note that Appellants’ claim 2 recites
[a] portable computer including a keyboard and a display,
and comprising: a clam shell case comprising: hinges; a
bottom housing comprising a battery pack and an interior
surface containing the keyboard; a top housing containing
the display,. . . at least one external port located
within the bottom housing; and at least one port sealing
unit corresponding to and selectively sealing said at
least one external port, wherein the at least one port
sealing unit comprises soft rubber.
Appellant’s claim 2, in addition to “a clam shell case,”
recites “at least one external port located within the bottom
housing” and “one port sealing unit corresponding to and
selectively sealing said at least one external port.” We find
that the external port and the sealing unit of Appellant’s
claim 2 merely require that one external port be located in
the bottom housing and be selectively sealed. The claim
requires neither any particular form of sealing of the
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external port nor a form-fitted cover for the port. Hsieh
clearly teaches a clam shell configuration in col. 3, lines 15
through 27 and Fig. 2 and hinges are shown at the location
where the cover is attached to the bottom housing and where a
battery pack is attached to its back. Hsieh in col. 5, lines
23 through 27 further discloses external ports in the bottom
housing for connection with peripheral devices. Chadima in
col. 14, lines 8 through 14 teaches the connection of
connectors 93 and 94 via the end cap 95 to the housing where
an O-ring 106 which is usually made of rubber and a gasket 109
seal the external ports 108. Chadima in col. 14, lines 20
through 23 indicates that the completion of the above assembly
seals off the data terminal from the environment. We conclude
that Hsieh teaches the clam shell portable computer with an
external port in the bottom housing while Chadima’s end cap
95, O-ring 106, and gasket 109 together form a “port sealing
unit” which seals the external ports 108.
Chadima is concerned with sealing the housing of a
portable computer and sealing off the external ports from the
outside environment such as dust and moisture. In particular,
Chadima in col. 3, lines 1 through 9 discloses:
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But even while being carried about, many practical work
environments for hand-held data terminals seem to subject
the terminals to greater hazards than a typical office
computer environment. For example, the terminals are
likely to be used in dusty warehouses. The terminals may
also be affected by inclement weather conditions in
conjunction with certain outdoor uses, such as at
airports or in truck yards. The desirability of rugged
and weather resistant terminals seems apparent (emphasis
added).

Hsieh’s computer is also portable which allows the user to
carry it to different locations other than a controlled office
environment and subject the computer to adverse conditions
such as those addressed above by Chadima. Therefore, we find
that the Examiner has provided sufficient reason for one of
ordinary skill in the art to combine a reference providing a
sealing unit with Hsieh’s external ports in the bottom housing
of a portable computer. Since Appellant’s claim 2 does not
preclude external ports that are sealed using rubber O-rings
and gaskets, we affirm the Examiner’s rejection of claim 2
under 35 U.S.C. § 103 over Hsieh and Chadima.
In regard to the rejection of claim 3, Appellant on page
21 of the brief and page 5 of the reply brief argues that
Chadima’s handle is a resilient strap for holding the computer
by the user. Appellant adds that Hsieh does not disclose a
“multiple-mounting” handle as recited in claim 3. Appellant
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specifically points to the recitation of a “multiple-mounting”
handle on page 9, lines 20 through line 2 of page 10, page 11,
lines 10 through 13, and Figs. 1 and 5. Appellant further
argues that Hsieh in Fig. 1 shows the handle connected to the
top of the computer and not to the bottom housing.
The Examiner argues on page 4 of the answer that Hsieh
does show a portable computer with a “multiple-mounting”
handle. The Examiner on page 5 of the answer specifically
points out that Hsieh’s handle is “multiple-mounting” in the
sense that it has mounts on both ends.
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Appellant’s claim 3, in addition to the “clam shell case”
and a “battery pack in the bottom housing,” recites “at least
one multiple-mounting handle attached to the bottom housing.”
After a review of the specification, particularly page 4,
lines 5 through 9, page 9, lines 20 through line 2 of page 10,
and page 11, lines 10 through 13, we fail to find a clear
definition for a “multiple-mounting” handle other than what it
reasonably means to one of ordinary skill in the art. The
specification only suggests that the handle may be attached to
different sides of the bottom portion. Appellant also points
to Figs. 1 and 5 for the handle configuration as in claim 3
which is depicted merely as a handle attached at its two ends
to the bottom housing. We therefore find that Appellant’s
claim 3 only requires a handle attached at both ends to
different locations of the bottom housing of a portable
computer.
Hsieh, in addition to a clam shell portable computer with
a battery pack in the bottom housing, clearly teaches in col.
3, lines 31 through 34 and in Figs. 2 and 7 the handle 5
mounted at its both ends on the front side of the bottom
housing. Chadima
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in Figs. 16 and 17 also teaches the handle 30 attached to the
bottom housing of a portable computer using fasteners 85 and
86. Both Hsieh and Chadima show handles mounted at both ends
which are therefore multiple-mounting.
Chadima is concerned with the specific location of the
handle for ease of handling and transportation which is
comparable to Hsieh’s rationale for providing a handle on the
front side for holding and carrying the computer. We conclude
that the Examiner has provided sufficient reason for one of
ordinary skill in the art to combine Chadima’s portable
computer having a different location for the handle with
Hsieh’s clam shell computer having a multiple-mounting handle
attached to the front side of the bottom housing. Because
Appellant’s claim 3 does not require a particular handle other
than one that is mounted on its two ends at different
locations on the bottom housing, we affirm the Examiner’s
rejection of claim 3 under 35 U.S.C. § 103 over Hsieh and
Chadima.
In regard to the rejection of claim 4, Appellant argues
on pages 28 and 29 of the brief that Katz teaches a separate
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stabilizing tray from the portable computer. Appellant
further states that Katz uses VELCRO to attach the computer to
the tray where claim 4 requires stabilizing strips on the
exterior surface of the bottom housing.
The Examiner on page 6 of the answer responds to
Appellant’s arguments by stating that it would have been
obvious to one of ordinary skill in the art to add the
stabilizing strips to the bottom of Hsieh’s computer. The
Examiner further argues that stabilizing strips are known
means to prevent slippage and Katz teaches adding such means
to the bottom of a portable computer.
Claim 4 in addition to the “clam shell case” and an
"exterior surface on which the portable computer rests,"
merely requires “stabilizing strips located on said exterior
surface.” We find that Katz teaches the addition of means to
prevent slippage to the bottom of the portable computer. Katz
discloses in col. 3, lines 22 through 27 and in col. 4, lines
53 through 55 that VELCRO strips may be affixed to the
computer and the tray to hold it in place. We find that Katz
is concerned with stabilizing a portable computer while it is
being used and
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provides means to be attached to the bottom housing to
stabilize the computer and prevent it from moving. Katz does
not disclose any specific location for the stabilizing strips.
However, VELCRO strips were common means for removably
attaching and stabilizing objects to any surface such as signs
to partition walls, name-tags to clothes, and speakers to the
sides of computer monitors. The VELCRO strips are usually
placed on the side on which the object rests. Thus, we find
that it would have been reasonable to attach stabilizing
strips to the bottom surface of the Katz’ computer.
Katz is concerned with stabilizing a portable computer by
attaching stabilizing means to the computer housing to prevent
slippage which would have been applicable to Hsieh’s portable
computer. In view of the analysis above, we find that the
Examiner has provided sufficient reason for one of ordinary
skill in the art to combine a reference teaching stabilizing
strips on the exterior surface of the bottom housing with
Hsieh’s clam shell portable computer. Therefore, we affirm
the Examiner’s rejection of claim 4 under 35 U.S.C. § 103 over
Hsieh and Katz.
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In view of the forgoing, the decision of the Examiner
rejecting claims 1, 5 through 9, 11, 12, 15 through 17, 24,
and 25 under 35 U.S.C. § 103 is reversed. The decision of the
Examiner rejecting claims 2 through 4 under 35 U.S.C. § 103 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).
AFFIRMED-IN-PART

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )

Appeal No. 1998-0073
Application 08/273,813
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Staas & Halsey
700 Eleventh St., N.W.
Ste. 500
Washington, DC 20001
Appeal No. 1998-0073
Application 08/273,813
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MRF/mds/dal