Ex Parte Karamuk

Patent Trial and Appeal Board

Aug 25, 2016

11558096 (P.T.A.B. Aug. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111558,096 11109/2006 Erda! Karamuk
86378 7590 08/29/2016
Pearne & Gordon LLP
1801East9th Street
Suite 1200
Cleveland, OH 44114-3108
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TSW-41566 1642
EXAMINER
DUCKWORTH, BRADLEY
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
08/29/2016 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERDAL KARAMUK
Appeal2014-008790 1
Application 11/558,0962
Technology Center 3600
Before JAMES A. WORTH, BRUCE T. WIEDER, and KENNETH G.
SCHOPPER, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1, 2, 4, 6-8, 10-13, 15, 18, 19, and 21. We have
jurisdiction under 35 U.S.C. §§ 134 and 6(b).
We AFFIRM-IN-PART.
1 Our decision refers to the Appellant's Appeal Brief ("Appeal Br.," filed
Mar. 24, 2014) and Reply Brief ("Reply Br.," filed Aug. 6, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Sept. 24, 2013) and
Answer ("Ans.," mailed June 6, 2014).
2 According to Appellant, the real party in interest is PHONAK AG (Appeal
Br. 2).
Appeal2014-008790
Application 11/558,096
Introduction
Appellant's disclosure relates to "a system for the cushioned support
of electronic components ... and to a method for producing such integrated,
cushioned support mounts by means of said system." (Spec. 1, 11. 1-3).
Claims 1, 10, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. System for the cushioned support of electronic components in a
multi-part mounting enclosure (3) that is to receive a miniaturized
electronic device, the multi-part mounting enclosure (3) comprising a
plurality of separate enclosure portions that collectively form an
exterior periphery of the mounting enclosure (3) that encloses the
miniaturized electronic device when assembled, characterized by an
elastic and/or flexible retaining element (15) attached to an interior
surface of the mounting enclosure (3), said retaining element (15)
having a Shore hardness of> 25 and extending at least along parts of
an inner wall of the plurality of portions of the mounting enclosure (3)
and comprising inward-protruding support sections ( 17), wherein the
retaining element (15) comprising the inward-protruding support
sections ( 17) is bonded to the interior surface of the mounting
enclosure (3) by a two-component injection-molding technique with a
polymeric material that forms the portions of the mounting enclosure
(3) together with the retaining element (15), the inward-protruding
support sections (17) comprising a prominence that extends generally
inward, towards an interior of the mounting enclosure and extends
less than an extent of a retaining element portion extending along a
cavity defined by the mounting enclosure (3) in which the
miniaturized electronic device is to be received, serving to position
and retain the electronic component ( 1) within the mounting enclosure
(3).
(Appeal Br., Claims App.)
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Application 11/558,096
Rejections on Appeal
The Examiner maintains, and the Appellant appeals, the following
rejections:
1. Claims 1, 2, 4, 6-8, 10-13, 15, 18, and 19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Brander (US
4,729,451, iss. Mar. 8, 1988).
2. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brander and Goschke (US 4,854,415, iss.
Aug. 8, 1989).
ANALYSIS
Independent claims 1 and 15
Appellant argues independent claims 1 and 15 together. We select
independent claim 1 as representative, such that independent claim 15 stands
or falls with independent claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
We are unpersuaded by Appellant's argument that Brander fails to
disclose "inward-protruding support sections (17) comprising a prominence
that extends generally inward, towards an interior of the mounting enclosure
and extends less than an extent of a retaining element portion extending
along a cavity defined by the mounting enclosure (3) in which the
miniaturized electronic device is to be received," as recited by independent
claim 1 (Appeal Br. 11-15). Appellant argues that Brander's ribs 48 are not
"inward-protruding support sections" based on Appellant's claim
construction of "inward-protruding support sections (17)" (Appeal Br. 13),
and argues further that making Brander's device with cone-shaped
protrusions or prominences would be incompatible with Brander's method
of manufacture (Reply Br. 6). To this end, Appellant asserts that inward-
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Application 11/558,096
protruding support sections (17) must be cone-shaped based on the shape of
item 17 in Fig. 7a and the shape of thin point 27 in Figure 3, which
Appellant identifies as the apex of the recited "prominence" of which the
"inward-protruding support sections" are comprised. (Appeal Br. 14--15).
We disagree with Appellant's claim interpretation. Although Figure
7 a of the Specification depicts "inward-protruding support sections" 17 as
cone-shaped, Figure 7b of the Specification, depict "inward-protruding
support sections" 17 with a ridge-shape, like that of Brander's ribs 48. As
such, we disagree with Appellant that "inward-protruding support sections"
must be cone-shaped with a single-point apex, and determine that "inward-
protruding support sections" may be ridge-shaped with a ridge-shaped
"prominence." In this connection, we agree with the Examiner that Brander
discloses "inward-protruding support sections" as recited by independent
claim 1 (see Ans. 8).
We are also unpersuaded by Appellant's argument that Brander fails
to disclose a "multi-part mounting enclosure (3) comprising a plurality of
separate enclosure portions," as recited by independent claim 1 (Appeal Br.
11-12). Appellant asserts that Brander is a monolithic structure and argues
that this claim limitation requires that the mounting enclosure be formed
from a plurality of pieces (id.). However, we agree with the Examiner that
as a product claim, even as a product-by-process claim, the structure is not
limited by the method of manufacture (Ans. 8). See Greenliant Sys., Inc. v.
Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012) ("'[i]n determining
validity of a product-by-process claim, the focus is on the product and not
the process of making it."). Further, nothing in the claim language, or
Specification, limits the meaning of "portions" to pre-assembly portions.
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Application 11/558,096
We, therefore, agree with the Examiner that Brander's mount includes
multiple portions (see Final Act. 2).
To the extent that Appellant is arguing that the portions are delimited
by the prominences (Appeal Br. 12), we find above that Brander discloses
ridge-shaped prominences. As such, Brander discloses portions separated by
the ridge-shaped protrusions.
We, therefore, sustain the Examiner's rejection of independent claims
1 and 15.
Dependent claims 2, 4, 6--8, 12, 13, 18, 19, and 21
Appellant does not argue the patentability of claims 2, 4, 6-8, 12, 13,
18, 19, and 21, separately from independent claims 1 and 15. We, therefore,
sustain the Examiner's rejection of claims 2, 4, 6-8, 12, 13, 18, 19, and 21,
for similar reasons as for independent claims 1 and 15.
Independent claim 10 and dependent claim 11
The Examiner acknowledges that Brander does not disclose the
following limitation of the method of independent claim 10:
forming a at least one of the enclosure portions of the mounting
enclosure (3) for the electronic component (1) together with the
retaining element ( 15) comprising the support sections ( 1 7) in a
single molding operation by utilizing a two-component
injection-molding technique to bond the retaining element to
the at least one of the enclosure portions of the mounting
enclosure (3), during which the retaining element (15) and the
support sections (17) are molded from a thermoplastic
elastomer.
(Appeal Br. 8, Reply Br. 3--4). Rather, the Examiner relies on a statement
by Appellant's affiant that two-component injection molding was well-
known, and relies on the principle of design choice, in concluding that it
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Application 11/558,096
would have been obvious to form the support mount of Brander according
such a technique and with different materials (see Final Act. 4; Ans. 7).
We are persuaded by Appellant that the Examiner does not provide an
adequate articulated rationale as to why a person of ordinary skill would
have used the two-component injection molding technique for this particular
application (see Appeal Br. 7-8, Reply Br. 3). As such, we do not sustain
the Examiner's rejection under § 103 of independent claim 10, or claim 11
which depends therefrom.
DECISION
The Examiner's decision to reject claims 1, 2, 4, 6-8, 12, 13, 15, 18,
19, and 21under35 U.S.C. § 103(a) is affirmed.
The Examiner's decision to reject claims 10 and 11 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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