Ex Parte Ishihara et alDownload PDFPatent Trial and Appeal BoardSep 17, 201311358743 (P.T.A.B. Sep. 17, 2013) Copy Citation 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. 11/358,743 02/22/2006 James Alec Ishihara 005127.00529 5458 22907 7590 09/17/2013 BANNER & WITCOFF, LTD. 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 EXAMINER HOEY, ALISSA L ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 09/17/2013 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JAMES ALEC ISHIHARA, YEONGKYU YOO, and EDWARD LANG BOYD ____________________ Appeal 2011-009978 Application 11/358,743 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and BART A. GERSTENBLITH, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009978 Application 11/358,743 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 23, 24, 26, 33, 34, and 39.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Invention Appellants’ claimed invention relates to “an article of apparel that incorporates an electronic device that is hidden by and viewed through material.” Spec., para. [01]. Claims 23 and 39 are the independent claims on appeal. Claim 39, reproduced below, is illustrative of the claimed subject matter: 39. An article of apparel comprising: an electronic device that includes a display; and a covering material element extending over the electronic device, wherein the electronic device cannot be seen though[2] the covering material, except the display being at least partially visible through the material element when the display is activated. App. Br., Claims App’x, v, claim 39 (emphasis added). 1 Appellants correctly acknowledge the claims appealed in the Status of Claims on the second page (unnumbered) of the Appeal Brief dated January 4, 2010, and also in the Reply Brief at page 1. All other references to the Appeal Brief are to the brief filed November 17, 2009, unless otherwise stated. In the Status of Claims, the Examiner mistakenly lists claim 29 as rejected rather than claim 39, but correctly identifies claim 39 in the Grounds of Rejection. Ans. 2-4. 2 We assume “though” is a typographical error, and meant to be “through.” Appeal 2011-009978 Application 11/358,743 3 Evidence Relied Upon Chen Kim Matsukage US 4,761,835 US 4,766,611 US 4,769,799 Aug. 9, 1988 Aug. 30, 1988 Sep. 6, 1988 The Rejections The following rejections are before us on appeal: I. Claim 39 under 35 U.S.C. § 102(b) as anticipated by Chen; II. Claims 23, 24, 26, and 33 under 35 U.S.C. § 103(a) as unpatentable over Matsukage and Chen;3 and III. Claim 34 under 35 U.S.C. § 103(a) as unpatentable over Matsukage, Chen, and Kim. OPINION I. Anticipation by Chen The Examiner found that Chen discloses a covering material element (observation cover 31, observation slot 32, transparent plate 33) extending over the electronic device (watch 35), wherein the electronic device (watch 35) cannot be seen through the covering material (observation cover 31, observation slot 32, transparent plate 33), except the display (liquid crystal display screen 36 of watch 35) being at least partially visible through the material element (observation slot 32) when the display is activated. Ans. 4 (citing Figures 1 and 2, and noting that the “display is always activated”); see also Chen, col. 2, ll. 19-35 for element nomenclature). 3 The Examiner and Appellants both mistakenly list claims 25 and 28 as subject to this ground of rejection (Ans. 4; App. Br. 5, 8; Reply Br. 2); however, claims 25 and 28 are withdrawn (Ans. 2; App. Br., Claims App’x, iv, claims 25, 28). Appeal 2011-009978 Application 11/358,743 4 This finding is premised upon the Examiner’s claim interpretation that independent claim 39 does “not require that the entire electronic device is obscured from view by the covering material.” Ans. 7. Appellants assert that a person of ordinary skill in the art, in light of the Specification, would interpret claim 39 to call for an article of apparel having two states of operation: a first state in which the display of the electronic device cannot be seen through the covering material (Figure 1), and a second state, when the display is activated, in which the display of the electronic device is seen or partially visible through the material element (Figure 3). Reply Br. 2. According to Appellants, the Examiner’s interpretation does not consider each word in the claim and in doing so, fails to give weight to an explicitly recited feature. Reply Br. 3. In light of this claim construction, Appellants argue that the display of Chen’s electronic device is visible through observation slot 32 whether the device is activated or not, and therefore Chen does not disclose a covering material as claimed. Id. We construe claim 39 and then assess the prior art. Claim Construction Claim 39 is directed to an article of apparel that includes a covering material element “extending over the electronic device, wherein the electronic device cannot be seen though the covering material, except the display being at least partially visible through the material element when the display is activated.” App. Br., Claims App’x, v, claim 39. Claim 39 does not recite that the covering material extends over the entire electronic device, nor does the Specification provide a lexicographical definition of the claim term “extending over.” Appeal 2011-009978 Application 11/358,743 5 Claim 39 calls for the electronic device not to be visible through the covering material with the exception that the display of the electronic device must be at least partially visible through the material when the display is activated. This language suggests that when the display of the electronic device is not activated, no portion of the electronic device is visible through the covering material element. This interpretation is consistent with the Specification. See, e.g., Spec., paras. [05], [06], [18], and [21]. Notably, claim 39 does not recite that the entire electronic device must not be visible; rather, claim 39 recites that the electronic device “cannot be seen through the covering material.” App. Br., Claims App’x, v, claim 39 (emphasis added). Given that claim 39 does not call for the covering material to extend over the entire electronic device, and given that the device must not be visible through the covering material, any portion of the electronic device that does not have covering material extending over it is not subject to the restriction that it cannot be seen. That is, any portion of the electronic device that does not have covering material extending over it may be seen (visible). To summarize, claim 39 calls for: (1) the covering material to extend over some portion of the electronic device; (2) any portion of the electronic device not having covering material extending over it may be visible; (3) the portion of the electronic device having covering material extending over it must not be visible when the display of the electronic device is not activated; and Appeal 2011-009978 Application 11/358,743 6 (4) at least a portion of the display of the electronic device must be visible through the covering material when the display is activated. Prior Art In light of this, we agree with the Examiner that the covering material of claim 39 need not extend over the electronic device so that the entire electronic device cannot be seen. See Ans. 7-8. However, claim 39 requires that the portion of the electronic device having covering material extending over it must not be visible when the display of the electronic device is not activated. The portion (screen 36) of Chen’s electronic device (watch 35) having covering material (observation cover 31 and transparent plate 33)4 extending over it is visible whether the electronic device is activated or not, while in contrast, claim 39 calls for such portion not to be visible when the display of the electronic device is not activated. Chen, col. 2, ll. 24-36 (plate 33 is transparent and thus display 36 of watch 35 may be seen through it whether activated or not); figs. 1-3. Consequently, we do not sustain the rejection of claim 39 as anticipated by Chen. II. Obviousness over Matsukage and Chen Claims 24, 26, and 33 depend from independent claim 23. Independent claim 23 is directed to an article of apparel and is similar to claim 39 in that it recites a covering material “covering the electronic device, 4 The Examiner included observation slot 32 as also corresponding to covering material as claimed. However, observation slot 32 is a hole in observation cover 31, and the absence of material cannot correspond to covering material as claimed. See Chen, col. 2, ll. 19-22. Appeal 2011-009978 Application 11/358,743 7 wherein the electronic device cannot be seen though5 the covering material except, when a display of the electronic device is activated, the display is seen through the covering material.” The Examiner relies upon Chen as disclosing covering material as claimed. Ans. 5. Therefore, the rejection of claims 23, 24, 26, and 33 suffers from the same shortcoming as that of claim 39, as discussed supra. See App. Br. 8-10; Reply Br. 2-5. III. Obviousness over Matsukage, Chen, and Kim Claim 34 depends from independent claim 23. The Examiner relies upon Chen as disclosing covering material as claimed (Ans. 6), and therefore the rejection of claim 34 suffers from the same shortcoming as claim 23, as discussed supra. See App. Br. 10; Reply Br. 2-5. DECISION We reverse the Examiner’s decision to reject claims 23, 24, 26, 33, 34, and 39. REVERSED hh 5 We assume here, as in claim 39, that “though” was meant to be “through.” Copy with citationCopy as parenthetical citation