Ex Parte Lev et al

Patent Trial and Appeal Board

Jun 28, 2016

13003007 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/003,007 01107/2011
22879 7590 06/30/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Jeffrey A. Lev
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.
82600629 5968
EXAMINER
CRUM, JACOB R
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JEFFREY A. LEV, PAUL J. DOCZY, and
MARKS. TRACY
Appeal2015-001242
Application 13/003,007
Technology Center 2800
Before: ROMULO H. DELMENDO, JULIA HEANEY, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our decision below, we refer to the Final Office Action appealed from,
mailed December 19, 2013 (Final Act.), the Appeal Brief filed May 19, 2014
(Appeal Br.), the Examiner's Answer mailed August 27, 2014 (Ans.) and the
Reply Brief filed October 27, 2014 (Reply Br.).
2 Appellants identify the real party in interest as Hewlett-Packard
Development Company LP, a wholly-owned affiliate of Hewlett-Packard
Company.
Appeal2015-001242
Application 13/003,007
STATEMENT OF CASE
The claims are directed to tablet computers having an internal
antenna. Spec. 2. Specifically, the claims include a metal-free zone-
located at the base of the tablet and adjacent to the internal antenna when
operating in tablet mode-to avoid interference with the antenna. Id. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A tablet computer comprising:
a display panel including a display screen surrounded by
an outer housing that defines a top edge of the display panel, the
display panel further including an internal antenna positioned
within the housing adjacent the top edge; and
a base to which the display panel is pivotally connected,
the base comprising a metal-free zone extending from and
including a top surface of the base to and including a bottom
surface of the base adjacent a front edge of the base, wherein the
front edge of the base is positioned adjacent the top edge of the
display panel when the tablet computer is placed in a tablet mode
orientation, wherein the metal-free zone facilitates operation of
the antenna.
Claims Appendix at Appeal Br. 18.
REJECTIONS
The Examiner made the following rejections:
A. Claims 1--4 and 8-10 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kitahara3 in view of
Matsunaga.4 Final Act. 2.
3 Kitahara et al., JP 2002-232220 A, published August 16, 2002 (hereinafter
"Kitahara").
4 Matsunaga et al., US 2007/0037619 Al, published February 15, 2007
(hereinafter "Matsunaga").
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Appeal2015-001242
Application 13/003,007
B. Claims 5-7 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kitahara in view of Matsunaga
and further in view of Merz. 5 Id. at 6.
C. Claims 11-15 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Kitahara in view of Matsunaga
and Merz. Id. at 7.
Appellants seek our review of Rejections A---C. However, Appellants'
positions with respect to Rejections Band C provide no additional argument
separate from what is argued for Rejection A. Appeal Br. 13-16. Therefore,
we focus on Rejection A to resolve the issues on appeal.
OPINION
Rejection A- Obviousness (claims 1-4 and 8-10)
The Examiner rejects claims 1--4 and 8-10 as unpatentable under
35 U.S.C. §103(a) over Kitahara and Matsunaga. Final Act. 2. Appellants
separately argue claims 1, 3, and 9. Appeal Br. 7 and 12. Because the issues
arising for claim 1 and 3 are the same, in relevant part, we discuss only
claims 1 and 9 below.
Claim 1:
The Examiner finds that Kitahara teaches a computer having each of
the enumerated elements of claim 1 with the exception that the computer of
Kitahara is not a tablet computer. Appeal Br. 2-3. However, the Examiner
finds that Matsunaga teaches a tablet computer. Id. at 3. According to the
Examiner, one of ordinary skill in the art at the time would have found the
combination obvious "to improve the device of Kitahara et al. with the
5 Merz et al., US 6,900,984, issued May 31, 2005 (hereinafter "Merz").
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Appeal2015-001242
Application 13/003,007
teachings of Matsunaga et al., in order to provide a computer with touch
screen and tablet mode capabilities." Id.
Appellants argue that the Examiner has failed to make a prima facie
case of obviousness because the combination Kitahara and Matsunaga
does not disclose a tablet computer as claimed in independent
claim 1 including ... [a] base comprising a metal-free zone
extending from and including a top surface of the base to and
including a bottom surface of the base adjacent a front edge of
the base, wherein the front edge of the base is positioned adjacent
the top edge of the display panel when the tablet computer is
placed in a tablet mode orientation.
Appeal Br. 11-12. Specifically, Appellants argue that Kitahara discloses
a "palm rest part of a palm rest side housing body 10 where the antenna
element 22 approaches when the display part housing body 20 is closed, is
made to be a non-conductive body housing structure (see Kitahara,
Abstract)" and that "housing portion lOb [is] constituted by insulator parts,
such as non-electrical conduction object plastic." Id. at 8. Appellants refer
to Figures 1 and 4 (reproduced below including Appellants' annotations).
Figure 1 Figure 4
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Appeal2015-001242
Application 13/003,007
Id. at 9 and 10. Appellants explain, with respect to Figure 1, that the
"nonconducing [sic] housing portion 1 Ob is simply provided along the top of
the front housing 1 O" and is not "provided along a bottom surface of housing
10," as required by the claims. Id. at 8. Similarly, Appellants explain that
Figure 4 shows a "nonconducing" housing portion 1 Ob only along the top
and front of the housing and that "[t]he bottom surface of housing 10 is not
illustrated or described as being part of the nonconducing [sic] housing
portion." Id. at 10. Appellants explain their argument with the following
demonstrative illustration:
t10r)C';QfW ~c.~r;g
t1oussrm pottlori
(10b)
front ~dg~ of
boltQm ~rn ri~oo
-conductor r1out~ri1J
po0rfo;m ( 1 ~)
Reply Br. 3. Therefore, Appellants argue the combination of references
does not teach or suggest all limitations of claim 1. Appeal Br. 12.
The Examiner disagrees and finds that Figures 4 and 5 of Kitahara
"clearly show at least the front edge of the metal-free zone 1 Ob extending
completely from the top surface to the bottom surface. Therefore, the metal-
free zone must include a bottom surface of the base, even though it is only a
bottom edge of the front edge." Ans. 3--4. The Examiner further finds that
if the metal-free zone did not extend to a bottom surface, it would be
illustrated as in Figures 1 and 3. Id.
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Appeal2015-001242
Application 13/003,007
Appellants have not convinced us of reversible error. The test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCP A 1981 ). One of ordinary skill can use his or her ordinary skill,
creativity, and common sense to make the necessary adjustments and further
modifications to result in a properly functioning device. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) ("a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ").
We agree, for the reasons expressed by the Examiner, that the subject
matter of claim 1 would have been obvious to a person having ordinary skill
in the art in light of the teachings of Kitahara and Matsunaga. Appellants'
argument that Kitahara does not explicitly illustrate the bottom surface of the
housing or describe the bottom surface as nonconducting (i.e., metal-free as
required by the claims) in Figure 4 is unavailing. Appeal Br. 10. Kitahara
plainly depicts a nonconducting housing portion that extends to a bottom
surface of the base. See Figures 4 and 5. Any adjustments to extend the
nonconducting portion beyond the edge of the bottom surface and
underneath the base would have been well within the ordinary knowledge
and creativity of the skilled artisan. See KSR, 550 U.S. at 418. Furthermore,
and as the Examiner finds, "[i]f the metal-free zone (as embodied in Figures
4--5) did not include a bottom surface ... then it would be illustrated as in
Figures 1 and 3 ... which clearly show a metal-free zone that does not
extend to the bottom surface." Ans. 4.
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Appeal2015-001242
Application 13/003,007
Accordingly, a preponderance of the evidence supports the
Examiner's findings.
Claim 9:
Claim 9, which depends from claim 1, additionally requires that the
"metal-free zone extend[s] from and include[s] a lateral edge of the base to
and including an opposite lateral edge of the base, and the metal-free zone
extend[ s] a depth into the base from the front edge of the base." Claims
Appendix at Appeal Br. 19. The Examiner finds that Kitahara teaches this
limitation. Final Act. 5. Specifically, the Examiner finds that "Figures 4-5
clearly show a metal-free zone lOb extending from a top surface to a bottom
surface of the base 1 O" and that "Figure 6 of Kitahara et al. discloses a
metal-free zone 61b for a portable electronic device 60, [where] the metal-
free zone 61 b extend[ s] from and include[ s] a lateral edge of the base 61 to
and include[s] an opposite lateral edge of the base." Id. The Examiner also
notes that the figures of Kitahara describe "only examples, and do not
prohibit combinations made between them." Ans. 7.
Appellants argue that Figure 6 of Kitahara "simply illustrates the
nonconducing [sic] housing portion 61 b as being provided along the top of
housing 61." Appeal Br. 13. Appellants offer an annotated Figure 6 and an
additional demonstrative illustration to provide further explanation of their
position.
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Appeal2015-001242
Application 13/003,007
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Reply Br. 5. According to Appellants, because Kitahara "does not disclose a
base with a metal-free zone extending from and including a lateral edge of
the base to and including an opposite lateral edge of the base, as recited in
dependent claim 9," the Examiner has failed to make a prima facie showing
of obviousness. Appeal Br. 13.
Again, we do not find Appellants' arguments persuasive of reversible
error by the Examiner. The Examiner aptly finds that Figure 6 of Kitahara
discloses a metal free zone that extends from and includes one lateral edge
of the base to and including an opposite lateral edge of the base. Final Act.
5. And, Appellants' argument that Figure 6 "simply illustrates the
nonconducing housing portion 61 b as being provided along the top of the
housing 61" and does not depict a metal-free zone from one lateral edge to
an opposite lateral edge is unconvincing. Appeal Br. 13. Rather, it is
whether the subject matter of the claim-i.e., a metal-free zone extending
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Appeal2015-001242
Application 13/003,007
from and including a lateral edge of the base to and including an opposite
lateral edge of the base-would have been obvious to one of skill in the art
in light of the totality of teachings in Kitahara. Keller, 642 F.2d at 425. The
Examiner explains that the figures of Kitahara are "only examples, and do
not prohibit combinations made between them." Ans. 7. We agree with the
Examiner and find that the figures collectively teach the added subject
matter of claim 9.
CONCLUSION
The Examiner did not err in rejecting claims 1-15.
DECISION
For the above reasons, the Examiner's rejection of claims 1-15 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)(l )(iv) (2009).
AFFIRMED
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