Ex Parte Leinonen et al

Patent Trial and Appeal Board

Jan 28, 2013

10982469 (P.T.A.B. Jan. 28, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/982,469 11/05/2004 Marko E. Leinonen 872.0208.U1(US) 1757
29683 7590 01/28/2013
HARRINGTON & SMITH
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
EXAMINER
PAN, YUWEN
ART UNIT PAPER NUMBER
2649
MAIL DATE DELIVERY MODE
01/28/2013 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 MARKO E. LEINONEN and PERTTI TOIVO KANGAS
____________

Appeal 2010-006638
Application 10/982,469
Technology Center 2600
____________

Before MAHSHID D. SAADAT, BRYAN F. MOORE, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 5-7, 9-11, 24-27, and 35.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 Claims 2-4, 8, 12-23, 28-34, and 36 have been cancelled.
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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a portable hand-held electronic device
and a cover for such a device having a movable section with an antenna.
Claims 1 and 24 are illustrative of the invention:
1. A portable hand-held electronic device
comprising:
a first section having electronic circuitry with a ground
plane and a first antenna adapted to communicate with a mobile
telephone system; and
a second section movably connected to the first section,
the second section comprising a second antenna, wherein the
second antenna is operably coupled to the electronic circuitry in
the first section, and wherein the second antenna is movable
with the second section away from the ground plane as the
second section is moved relative to the first section.
24. A protective cover for a portable hand-held
electronic device comprising:
a first cover section which is sized and shaped to cover at
least a portion of the portable hand-held electronic device;
a movable section adapted to move relative to the first
cover section at a movable junction;
an antenna connected to the movable section to move
with the movable section; and
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a connection extending from the antenna through the
movable junction for connection to electronic circuitry in the
portable hand-held electronic device, wherein the antenna is
adapted to be moved away from the first cover section when the
movable section is moved away from the first cover section to
thereby move the antenna away from a ground plane of the
portable hand-held electronic device located inside the first
cover section.
Rejections on Appeal
The Examiner rejected claims 1, 5-7, 24, 26, 27, and 35 under 35
U.S.C. § 102(e) as being anticipated by Ito (US 2005/0143151 A1, pub. June
30, 2005, filed Sept. 2, 2004).
The Examiner rejected claims 9-11 and 25 under 35 U.S.C. § 103(a)
as unpatentable over Ito and Tseng (US 2002/0027768 A1, pub. Mar. 7,
2002).
Appellants’ Contentions
Appellants contend that the Examiner erred in finding that Appellants’
declaration under 37 C.F.R. § 1.131 is insufficient to remove Ito as available
prior art. App. Br. 5-11. Specifically, Appellants contend that the Examiner
erred in finding that the declaration does not establish due diligence by
Appellants during the entire period from prior to the September 2, 2004,
effective date of Ito until the filing of Appellants’ application on November
5, 2004. Id.
With respect to the Examiner’s rejection under 35 U.S.C. § 102(e),
Appellants contend that the Examiner erred in finding that Ito discloses the
following claim limitations:
(a) “a cover with a substantially stationary cover section at least
partially enclosing the first section of the portable hand-held electronic
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device and a second movable cover section,” as recited in claim 5 (App. Br.
12);
(b) “wherein the second movable cover section is adapted to cover
over a display of the first section of the portable hand-held device,” as
recited in claim 6 (App. Br. 12-13);
(c) “wherein the second movable cover section comprises a flap,” as
recited in claim 7 (App. Br. 13); and
(d) “a first cover section which is sized and shaped to cover at least a
portion of the portable hand-held electronic device,” as recited in claim 24
(App. Br. 13-14).
With respect to the Examiner’s rejection under 35 U.S.C. § 103(a),
Appellants challenge the Examiner’s rationale for combining elements of Ito
and Tseng in the manner claimed, alleging that the combination is based on
hindsight reasoning. App. Br. 16, 17.
Issues on Appeal
1. Did the Examiner err in finding that Appellants’ declaration
under 37 C.F.R. § 1.131 is insufficient to remove Ito as available prior art?
2. Did the Examiner err in finding that Ito discloses the recited
limitations in claims 5-7 and 24?
3. Did the Examiner provide a sufficient rationale for combining
the references in the rejection under 35 U.S.C. § 103(a)?
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We are not persuaded by
Appellants’ arguments, and we concur with the conclusions reached by the
Examiner.
Declaration under 37 C.F.R. § 1.131
Under 37 C.F.R. § 1.131, an applicant may submit a declaration to
establish invention prior to the effective date of a reference applied in a
rejection and thus remove the reference as available prior art. One way in
which a declaration may establish prior invention is by a “showing of facts”
that is sufficient “in character and weight” to show “conception of the
invention prior to the effective date of the reference coupled with due
diligence from prior to said date . . . to the filing of the application.” 37
C.F.R § 1.131(b). In the declaration, the applicant “must ‘account for the
entire period during which diligence is required.’” Creative Compounds,
LLC v. Starmark Labs., 651 F.3d 1303, 1312-13 (Fed. Cir. 2011) (quoting
Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966)).
Here, the effective date of Ito is September 2, 2004, and Appellants’
filing date is November 5, 2004. Thus, in order to antedate Ito, Appellants
must establish conception prior to September 2, 2004, and due diligence
during the critical period from just before September 2, 2004, until
November 5, 2004.
Based on Appellants’ declaration, the Examiner finds that Appellants’
conception occurred as early as July 10, 2004. Ans. 7. The Examiner also
finds that the declaration shows due diligence by Appellants’ attorney in
preparing and filing the application between October 7, 2004, the date the
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invention disclosure was sent to the attorney for drafting the application, and
November 5, 2004, the date the application was filed. Ans. 8. The
Examiner, however, finds that Appellants’ declaration is not sufficient to
establish due diligence during the first part of the critical period—from just
before September 2, 2004, the effective date of Ito, until October 7, 2004,
when Appellants’ attorney received instructions to prepare and file an
application. Ans. 8-10. Appellants allege error in this finding. App. Br. 10-
11; Reply Br. 1-2.
We agree with the Examiner that Appellants’ declaration does not
provide sufficient evidence of due diligence by Appellants between
September 2, 2004, and October 7, 2004. Regarding that time period, the
declaration (p. 2) states only the following:
a. a description of the invention was submitted for review
by the applicants’ employer Nokia Corporation before
September 2, 2004 for a determination of whether or not a
patent application should be prepared and filed;
b. after a determination was made that a patent
application should be prepared and filed, on October 7, 2004
the invention disclosure form was sent by email to applicants’
attorney for drafting of the patent application[.]
Appellants argue that they have established due diligence because the
time period between September 2, 2004, and October 7, 2004, is less than
time periods in other cases in which due diligence was found. App. Br. 11.
The number of days, however, is not the determinative factor. Instead, the
critical question is whether Appellants have shown sufficient activity during
the period or provided reasons for inactivity. See Hull v. Davenport, 90 F.2d
103, 105 (CCPA 1937) (“Evidence of diligence during the critical period
may be shown either by affirmative acts or acceptable excuses or reasons for
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failure of action.”); see also Rebstock v. Flouret, 191 USPQ 342, 345 (BPAI
1975) (citing Hull). As the Examiner correctly finds, Appellants’
declaration fails to explain why their employer required several weeks to
decide whether to file a patent application. Ans. 9. For example, the
declaration provides no information regarding the employer’s procedures for
determining whether to file a patent application or any details as to who
reviewed Appellants’ invention disclosure and when. Without more than a
bare assertion that the employer was considering whether to file an
application, Appellants have not persuaded us that the Examiner erred in
finding that Appellants’ declaration does not provide sufficient evidence of
diligence from just before September 2, 2004, until October 7, 2004.
Accordingly, we conclude that Appellants’ declaration is insufficient to
antedate Ito, and therefore Ito is available as prior art against Appellants’
claimed invention.
35 U.S.C. § 102(e) Rejection – Claims 1, 5-7, 24, 26, 27, and 35
With respect to independent claims 1 and 35, Appellants’ only
argument is that they have overcome the rejection under 35 U.S.C. § 102(e)
by submission of a declaration under 37 C.F.R. § 1.131. App. Br. 11-12.
Because we conclude that Appellants’ declaration is insufficient to remove
Ito as available prior art, we sustain the Examiner’s rejection of claims 1 and
35 under 35 U.S.C. § 102(e) over Ito.
With respect to Appellants’ arguments that Ito fails to teach certain
limitations in the remaining claims rejected under 35 U.S.C. § 102(e), we are
not persuaded that the Examiner erred. Based on the broadest reasonable
interpretation, the Examiner properly reads the housing of Ito’s device as the
cover for the hand-held electronic device. Ans. 10. (We note that Figures
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1B and 1C, cited by the Examiner in the rejection, are simplified diagrams
that do not show many features of Ito’s device, such as a display. See Ito,
¶ [0022].) The Examiner identifies two sections of Ito’s housing (i.e.,
cover)—a first cover section that is substantially stationary and at least
partially encloses the first section (e.g., the display) of the device, and a
second cover section that moves relative to the first cover section, as recited
in claim 5. Ans. 4, 10. The second cover section identified by the Examiner
also covers over the first section (e.g., the display) of the device, as recited
in claim 6, when the device is in the closed position (see Fig. 1C of Ito).
Ans. 4, 10-11. Further, the second cover section can properly be described
as a flap, as recited in claim 7. Ans. 4, 11. We agree with these findings by
the Examiner and therefore sustain the Examiner’s rejection of claim 5-7
under 35 U.S.C. § 102(e) over Ito.
With respect to claim 24, Appellants argue that the housing in Ito is
part of the portable hand-held electronic device and therefore cannot be a
protective cover. App. Br. 13. Under a broadest reasonable interpretation,
however, the Examiner properly considers Ito’s housing to be a cover. Ans.
10. Therefore, the Examiner properly relies on a section of Ito’s housing as
a first cover section that is sized and shaped to cover at least a portion of the
portable hand-held electronic device, as recited in claim 24. Ans. 4, 11.
Thus, we sustain the Examiner’s rejection of claim 24 under 35 U.S.C.
§ 102(e) as well as the rejection of dependent claims 26 and 27, for which
Appellants have not made separate, detailed arguments.

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35 U.S.C. § 103(a) Rejection – Claims 9-11 and 25
Claim 9 recites “wherein the second section comprises a non-metallic
frame,” and claim 25 recites “wherein the first cover section and the
movable section are comprises [sic] of fabric or leather.” We disagree with
Appellants’ conclusion that combining the non-metallic cover of Tseng’s
handheld device with Ito’s device to achieve the claimed invention is based
on pure hindsight. App. Br. 16, 17. As stated by the Examiner, the purpose
of using Tseng in the § 103(a) rejection is to show that non-metallic
materials such as leather, molded plastic, or a polymer were used to either
provide a cover for a hand-held device or to embed an extra layer of
protection in the housing. Ans. 11. We concur with the Examiner’s
conclusion that it would have been obvious at the time of Appellants’
invention to combine the teachings of Tseng with Ito’s device in order to
provide anti-shock protection. Ans. 12. We therefore sustain the
Examiner’s rejection of claims 9 and 25 under 35 U.S.C. § 103(a) over Ito
and Tseng. We also sustain the Examiner’s rejection of claims 10 and 11,
which depend from claim 9 and for which Appellants have not made
separate, detailed arguments.
CONCLUSION
The Examiner did not err in rejecting claims 1, 5-7, 24, 26, 27, and 35
under 35 U.S.C. § 102(e).
The Examiner did not err in rejecting claims 9-11 and 25 under 35
U.S.C. § 103(a).
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DECISION
The Examiner’s decision rejecting claims 1, 5-7, 9-11, 24-27, and 35
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)(1)(iv).

AFFIRMED

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