Ex Parte Galie et al

Patent Trial and Appeal Board

Nov 9, 2017

12394459 (P.T.A.B. Nov. 9, 2017)

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.
12/394,459 02/27/2009 Louis M. Galie A0848A 2586
34238 7590 11/14/2017
ARTHUR G. SCHAIER
CARMODY TORRANCE SANDAK & HENNESSEY LLP
195 CHURCH STREET
P.O. BOX 1950
NEW HAVEN, CT 06509-1950
EXAMINER
COLLINS, JASON M
ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
11/14/2017 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):
patents @ carmodylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIS M. GALIE, WOLFGANG BURKHARDT,
GERHARD STOTZ, HANS G. SCHNELL, and ROLAND BURGHAUSEN
Appeal 2015-001861
Application 12/394,459
Technology Center 2800
Before KEN B. BARRETT, KRISTEN L. DROESCH, and
MELISSA A. HAAPALA, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Louis M. Galie et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1—9 and 12—16. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-001861
Application 12/394,459
THE INVENTION
Appellants’ claimed invention pertains to wearable electronic devices,
such as wristwatches, having individual modules each of which can be
assembled independently and then brought together in a common frame.
Spec. 1:6—7, 1:27—2:4. Claims 1 and 14 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A wearable electronic device for conveying information
using one or more display indicators, wherein the electronic
device comprises:
a housing;
a nest positioned in the housing;
a plurality of independently insertable and removable
modules coupled to the nest, wherein each of the plurality of
modules comprise (i) a gearing arrangement comprising at least
one rotatable gear and (ii) a stepper motor, the stepper motor
comprising a rotor rotatably coupled to the at least one rotatable
gear, and (iii) a separate and independent frame and a separate
and independent bridge, for encapsulating at least part of the
stepper motor and gearing arrangement, for facilitating insertion
into and removal from the housing of the module as an
independent unit;
a controller operatively coupled to the stepper motor of
each module, for causing the rotation of the rotor of each module;
wherein each of the plurality of modules has associated
therewith and mechanically coupled thereto one or more display
indicators;
whereby the positioning of the one or more indicators
conveys information by referring to particular indicia.
Br. 12 (Claims Appendix).
THE REJECTIONS
The following Examiner’s rejections are before us for review:
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Application 12/394,459
1. Claims 1—6, 8, 9, and 12—16 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Plancon (US 2007/0008823 Al, pub.
Jan. 11, 2007) and Matatov (US 2005/0083789 Al, pub. Apr. 21, 2005).
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Plancon, Matatov, and Schanz (US 2,221,413, iss.
Nov. 12, 1940).
ANALYSIS
A. The Rejection of Claims 1—6, 8, 9, and 12—16 as
Being Unpatentable Over Plancon and Matatov
Appellants argue the rejected claims as a group. Br. 7, 10. We select
claim 1 as representative, and decide the appeal as to this rejection on the
basis of that claim. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1 calls for each of the modules to have a gearing arrangement, a
stepper motor, and “a separate and independent frame and a separate and
independent bridge, for encapsulating at least part of the stepper motor and
gearing arrangement, for facilitating insertion into and removal from the
housing of the module as an independent unit.” The claim also recites a
controller coupled to the motor of each module.
The Examiner finds that Plancon discloses a watch having
subassemblies each having a gear arrangement and a stepper motor, but that
Plancon does not disclose modules each having an independent frame and
bridge. Non-Final Act. 3, 8. The Examiner further finds that Matatov
teaches a watch with independent modules that are each independently
insertable and removable and each having a frame and bridge. Id. at 3, 9;
see also Matatov 120, Fig. 6 (showing a modular unit being removed). The
Examiner reasons that one of ordinary skill in the art would have found it
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obvious to encapsulate each module, including the motor, of Plancon as
taught by Matatov so as to facilitate insertion and removal of independent
units “which allows each module to continue operating] in the event one of
the other modules malfunctions.” Id. at 3^4; see also Matatov 121 (“Each
movement is capable of operating independently of each other movement.
Each movement is capable of being removed from the watch independently
of each other movement. Each movement is capable of operation following
the removal of one or more other movements.”).
Appellants argue that, because Matatov does not explicitly disclose
each module having a motor, the combined teachings of Plancon and
Matatov would lack a stepper motor within each of the plurality of modules,
and that one combining the teachings would only encapsulate the gearing
arrangement of Plancon. Br. 7, 8. Appellants argue that it is only through
hindsight that one would modify Plancon so as to encapsulate both the motor
and gearing assembly. Id. These arguments are not persuasive as the
Examiner relies on Plancon for the disclosure of a motor (and gearing
arrangement) in the subassembly and relies on Matatov for the modular
portability which, according to the Examiner, suggests that the motor would
be part of the module. Non-Final Act. 3; Ans. 2. Thus, the Examiner’s
proposed combination yields a modular subassembly of Plancon, including a
motor, encapsulated as taught by Matatov. We are not persuaded that the
proposed modification would result from only hindsight as the Examiner’s
reasoning has rational underpinnings based on the teachings of the cited
prior art references.
Appellants contend, in the alternative, that, if Matatov requires each
module to contain everything to operate independently, then each module
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must also have a separate controller. Br. 8—9. Thus, argue Appellants,
Plancon teaches away from such a configuration because it discloses a single
controller for multiple motors. See id. This is not persuasive as the
Examiner’s proposed modification merely involves encapsulating the
existing subassemblies of Plancon. Non-Final Act. 3. We fail to see how
Plancon’s existing controller would be affected by this modification.
Accordingly, we determine that Plancon does not teach away from this
application of Matatov’s teaching of encapsulating.
Appellants do not apprise us of error in the Examiner’s determination
that the subject matter of claim 1 would have been obvious. Accordingly,
we sustain the rejection of claim 1, and of claims 2—6, 8, 9, and 12—16
falling therewith, as unpatentable over Plancon and Matatov.
B. The Rejection of Claim 7 as
Being Unpatentable Over Plancon, Matatov, and Schanz
Dependent claim 7, as Appellants note (Br. 10), depends from
independent claim 1. Claim 7 recites a display indicator that moves linearly.
Br. 13 (Claims Appendix). The Examiner relies on Schanz for this feature.
Non-Final Act. 8. Appellants do not offer separate arguments against this
rejection. See Br. 10. Having not been apprised of error in the underlying
rejection of its independent claim, we also sustain the rejection of claim 7 as
being unpatentable over Plancon, Matatov, and Schanz.
DECISION
The decision of the Examiner to reject claims 1—9 and 12—16 is
affirmed.
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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)(l)(iv).
AFFIRMED
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