Ex Parte KU

Patent Trial and Appeal Board

Jan 27, 2016

13038420 (P.T.A.B. Jan. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/038,420 03/02/2011 ALLEN KU
85944 7590 01/27/2016
Mei & Mark LLP
P.O. Box 65981
Washington, DC 20035-5981
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.
20047.0002-00 8808
EXAMINER
MILLISER, THERON S
ART UNIT PAPER NUMBER
2835
MAILDATE DELIVERY MODE
01127/2016 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 ALLEN KU
Appeal2015-006933
Application 13/038,420
Technology Center 2800
Before JEAN R. HOMERE, DEBRA K. STEPHENS, and
SHARON PENICK, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON i\.PPEi\L
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 61--67, 69--78, and 80. Claims 1--60, 68, and 79 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE INVENTION
According to Appellant, the claims are directed to a protective
carrying apparatus for a portable keyboard and a portable electronic
Appeal2015-006933
Application 13/038,420
device.(Abstract). The protective carrying apparatus includes a magnetic
fixing mechanism for securely accommodating the detachable, portable
keyboard unit and the portable electronic device (id.; Spec. i-f 1 ). Claim 61,
reproduced below with key limitations emphasized, is representative of the
claimed subject matter:
61. A carrying case comprising:
a first accommodating portion comprising:
a planar surface; and
a holder comprising a window, the holder affixed to the
planar surface, the holder configured to removably
accommodate and surround at least a portion of a
portable electronic device such that the portable
electronic device is viewable through the window;
a second accommodating portion comprising:
a planar rectilinear coupling area bounded by two
unobstructed side portions, a front portion comprising a
lip, and a rear portion adjoining the first
accommodating portion; and
at least one magnetic member embedded in the planar
rectilinear coupling area; and
a keyboard unit comprising a top area, keys in the top area,
and a bottom area parallel to the top area, the bottom area
comprising a magnetic coupler,
wherein the planar rectilinear coupling area, the top area,
and the magnetic coupler of the bottom area are
substantially the same size,
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Application 13/038,420
wherein the at least one magnetic member 1s near an
extrema of the coupling area,
wherein the magnetic coupler is configured to magnetically
couple to the at least one magnetic member, and
wherein the magnetic coupler of the keyboard unit is sized
and positionable to magnetically couple to the coupling area
at any point on the coupling area.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Choi
Seo
Locker
Kim
US 2007 /0087794 Al
US 2007/0211415 Al
US 2010/0039764 Al
US 2011/0096513 Al
REJECTIONS
Apr. 19, 2007
Sep. 13,2007
Feb. 18,2010
Apr. 28, 2011
Claims 61, 64---67, 69, 70, 73-78, and 80 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Seo, Kim, and Choi (Final Act.
2-16), and
Claims 62, 63, 71, and 72 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Seo, Kim, Choi, and Locker (Final Act. 16-20).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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ISSUES
35 USC§ 103(a): Claims 61, 64-67, 69, 70, 73-78, and 80
Appellant asserts the invention is not unpatentable over the
combination of Seo, Kim, and Choi (App. Br. 6-12). The issues presented
by the arguments are:
Issue 1: Has the Examiner erred in finding the combination of Seo,
Kim, and Choi teaches or suggests "a planar rectilinear coupling area
bounded by two unobstructed side portions, a front portion comprising a
lip," as recited in independent claim 61 and commensurately recited in
independent claim 7 O?
Issue 2: Has the Examiner erred by improperly combining the
teachings of Seo and Kim?
ANALYSIS
We disagree with Appellant's conclusions and adopt as our own:
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken; and (2) the reasons set forth by the Examiner in
the Answer in response to the Appeal Brief. With respect to the claims
argued by Appellant, we highlight and address specific findings and
arguments for emphasis as follows.
Appellant first argues Seo' s coupling area, surface 41, is not bounded
by element 53 (App. Br. 6-7). Nor, according to Appellant, is the front of
Seo' s element 61 connected to the coupling area (id. at 7).
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The Examiner relied on only the portion of surface area 41 bounded
by elements 51 and 53 (together, 49) as the planar rectilinear coupling area
(Final Act. 2-3). Thus, we are not persuaded by Appellant's arguments.
In the Reply Brief, Appellant contends the Examiner's reliance on
elements 51 and 53 is misplaced as element 51, if serving as a rear
boundary, does not adjoin the first accommodating portion (element 21) as a
gap exists between elements 51 and 21 (Reply Br. 3).
Initially, we are not persuaded by Appellant's argument regarding the
definition of "adjoining" as Appellant has not shown the definition was the
plain and ordinary meaning at the time of the invention. The Examiner finds
"there are multiple portions between the inside surface of 41 and 3" that
teaches the "rear portion adjoining the first accommodating portion" (Final
Act. 2-3). The Examiner further finds element 51 acts as a boundary for the
planar rectilinear coupling area not the recited rear portion (Ans. 3).
Appellant is arguing element 51, if serving as a rear boundary, does not
adjoin the first accommodating portion (Reply Br. 3). However, the
Examiner has not relied on element 51 as teaching the recited rear portion.
Instead, the Examiner finds the rear portion is the portion between the planar
rectilinear coupling area (the inside surface of 41, which is the rectangular
area between elements 49) which includes element 51 on one of its edges or
boundaries (Final Act. 2-3; Ans. 3). Thus, Appellant's arguments that
element 51 does not adjoin the first accommodating portion are not directed
to the Examiner's relied-upon correspondence between Seo's teaching and
the recited limitation. (See also App. Br. 3--4 (identifying paragraphs 14, 24,
and 26 and Figures 1-5 of the Specification as disclosing the first and the
second accommodating portions, and the unlabeled area between the
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Application 13/038,420
identified first accommodating portion (element 12) and the identified
second accommodating portion (element 14) in Figures 1--4)).
Furthermore, Appellant contends Seo's element 53 is not the front
boundary as element 53 is not bounded at the surface of 41 (App. Br. 6-7;
Reply Br. 3--4). However, we are not persuaded by Appellant's argument.
As set forth by the Examiner, not just Seo's elements 53, but also elements
61, or the combination thereof, teach the front portion comprising a lip.
Appellant argues the Examiner's interpretation of the term "bounded" does
not support the Examiner's findings (id. at 4). We are not persuaded by this
argument but instead, agree with the Examiner's findings.
Accordingly, Appellant has not persuaded us the Examiner's erred in
finding that Seo teaches "a planar rectilinear coupling area bounded by two
unobstructed side portions, a front portion comprising a lip, a rear portion
adjoining the first accommodating portion," as recited.
Appellant additionally argues Choi's simple, single plate-and-clip
arrangement is different from the intended purpose or the principle of
operation in the combination of Seo and Kim (App. Br. 9--1 O; Reply Br. 6).
According to Appellant, the Examiner is picking and choosing various
features from numerous references (App. Br. 10). Furthermore, Appellant
disagrees with the Examiner's articulated motivation (id. at 10-12).
Appellant contends Kim does not offer a reason to use the detachable
structure of its mobile device in the keyboard, and the Examiner has not
pointed to a teaching or suggestion to give a device the coupling flexibility
of the recited invention (id. at 12). Instead, Appellant argues, an ordinarily
skilled artisan would use the same hooks and bands described in Kim if
modifying Seo' s device so the keyboard could also attach, as no motivation
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exists in either reference to do otherwise (Reply Br. 6). Thus, Appellant
asserts the prior art teaches away from the invention as recited in the claims
(App. Br. 12; Reply Br. 6).
We are not persuaded by Appellant's arguments. We agree with the
Examiner's findings and conclusions (Ans. 5-12). We emphasize the
Examiner has articulated reasoning with a rational underpinning (Final Act.
4--5; Ans. 10) and Appellant has not proffered sufficient evidence or
argument to persuade us an ordinarily skilled artisan would not have been
motivated to combine the teachings of Seo, Kim, and Choi. Moreover, we
are not persuaded by Appellant's argument that either Choi or Kim changes
the principle of operation of Seo (Ans. 10).
We conclude that such combination is no more than a simple
arrangement of old elements, with each performing the same function it had
been known to perform, yielding no more than one would expect from such
an arrangement (see KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007)). Appellant has not presented sufficient evidence to persuade us an
ordinarily skilled artisan would not have found it obvious to incorporate
Kim's teachings into the system of Seo and the argument that Kim must
offer a reason to use the detachable structure of its mobile device is
misplaced (see generally KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007)). Moreover, Appellant has not proffered sufficient evidence that
using Choi' s teaching of the sizing of the three recited sections, the
rectilinear coupling area, the top area, and the magnetic coupler, with the
teachings of Seo and Kim would have been obvious to an ordinarily skilled
artisan, by, for example, showing such a combination was "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
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unobvious step over the prior art" (see Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
418-19)).
We are also not persuaded by Appellant's argument that the prior art
as a whole teaches away from the invention as recited in the claims (App.
Br. 12). Indeed, we are not persuaded an ordinarily skilled artisan, upon
reading the references, would have been discouraged from following the
path set out in the reference or would have been led in a direction divergent
from Appellant's path (see In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)).
In the Reply Brief, Appellant for the first time presents arguments that
the Examiner used impermissible hindsight in combining the teachings of
Seo, Kim, and Choi. We find this argument to be untimely (3 7 C.F .R.
§ 41.41(b)(2) (2011); see McBride v. Merrell Dow and Pharms., Inc., 800
F .2d 1208, 1211 (D. C. Cir. 1986) (internal citations omitted)). See also Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)).
Thus, we are not persuaded the Examiner has improperly combined
the teachings and suggestions of Seo, Kim, and Choi.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Seo, Kim, and Choi teaches or suggests the limitations as
recited in independent claims 61 and 7 0 and dependent claims 64---6 7, 69,
73-78, and 80, not separately argued. Therefore, we sustain the rejection of
claims 61, 64---67, 69, 70, 73-78, and 80 under 35 U.S.C. § 103(a) for
obviousness over Seo, Kim, and Choi.
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35 US.C. § 103(a): Claims 62, 63, 71, and 72
Appellant asserts their invention is not obvious over Seo, Kim, Choi,
and Locker for the reasons set forth for independent claims 61 and 70 (App.
Br. 13). Appellant sets forth what Locker teaches and its purported
constraints; however, Appellant does not proffer any arguments as to why
Locker does not teach the claim limitations recited or why the teachings of
Locker are improperly combined with those of Seo, Kim, and Choi (id.).
Therefore, we sustain the rejection of claims 62, 63, 71, and 72 under
35 U.S.C. § 103(a) for obviousness over Seo, Kim, Choi, and Locker.
DECISION
The Examiner's rejection of claims 61, 64--67, 69, 70, 73-78, and 80
under 35 U.S.C. § 103(a) as being unpatentable over Seo, Kim, and Choi is
affirmed.
The Examiner's rejection of claims 62, 63, 71, and 72 under 35 U.S.C.
§ 103(a) as being unpatentable over Seo, Kim, Choi, and Locker 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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