Ex Parte Lowles

Board of Patent Appeals and Interferences

Jun 4, 2012

10787173 (B.P.A.I. Jun. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT J. LOWLES
____________

Appeal 2010-002762
Application 10/787,173
Technology Center 2600
____________

Before JOHN A. JEFFERY, BRUCE R. WINSOR, and ANDREW
CALDWELL, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 6-14, and 17-23. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellant’s invention relates to holsters for mobile devices and
associated peripherals, and includes structures for supporting peripherals to
allow them to be charged by the mobile device. See generally Abstract;
Spec. ¶¶ 0001, 0018; Figs. 4A-4C. Claim 1 is illustrative:
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1. A holster for receiving and retaining a mobile device and a
peripheral device, the holster comprising:

a sleeve for retaining the mobile device,

a mating structure for releasably retaining the peripheral device such
that a charging contact integral with the peripheral device is in direct
physical and electrical contact with the mobile device retained in the sleeve
so as to permit the mobile device to charge a battery in the peripheral device
through the charging contact of the peripheral device.

THE REJECTIONS
1. The Examiner rejected claims 21 and 22 under 35 U.S.C. § 102(a)1
as anticipated by Christal (DE 101 34 830 A1; February 6, 2003). Ans. 5.2,3
2. The Examiner rejected claims 1, 2, 6-9, 11-14, 17-20, and 23 under
35 U.S.C. § 103(a) as unpatentable over Christal and Kim (KR 2002-
0041098 A; June 1, 2002). Ans. 6-12.
3. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Christal, Kim, and Grivas (US 2004/0116161 A1; June
17, 2004 (filed Dec. 13, 2002)). Ans. 12-13.

1 Although this reference also qualifies as prior art under § 102(b) since it
published more than one year before Appellant’s filing date (February 27,
2004), we deem this error harmless since it does not affect our assessment of
the Examiner’s anticipation rejection.
2 The Examiner includes a Derwent Abstract for the cited Christal reference
as well as a complete English translation for the Kim reference. Although a
complete English-language translation of Christal does not appear in the
record (which runs counter to the guidelines in MPEP §§ 706.02 (II) and
1207.02), we nonetheless refer to the documents provided in the record
before us to decide this appeal.
3 Throughout this opinion, we refer to (1) the Appeal Brief filed May 7,
2009; (2) the Examiner’s Answer mailed August 19, 2009; and (3) the Reply
Brief filed October 16, 2009.
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THE ANTICIPATION REJECTION
The Examiner finds that Christal’s peripheral device (microphone
headset unit 3) has every recited feature of representative claim 22 including
an integral charging contact for providing a charge to the battery when
placed in direct physical and electrical contact with a charging port of a
“mobile device” which the Examiner equates to Christal’s telephone and
holster collectively. Ans. 5, 14-15.
Appellant argues that Christal’s peripheral device does not include an
integral charging contact, let alone that this contact permits the mobile
device to charge the peripheral device’s battery as claimed. App. Br. 13-15;
Reply Br. 2-3.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 21 by finding
that Christal’s peripheral device includes an integral charging contact for
providing a charge to its battery when placed in direct physical and electrical
contact with a charging port of a mobile device to permit the mobile device
to charge the peripheral device’s battery?

ANALYSIS
We begin by noting that the recited integral charging contact is for
providing a charge to the peripheral device’s battery when placed in direct
physical and electrical contact with a charging port of a mobile device. We
emphasize “for” here, for this term merely indicates an intended use of the
contact and, as such, the contact in the cited prior art need only be capable of
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this intended use to meet the limitation. See In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997).
Turning to the rejection, the Examiner maps the recited “mobile
device” to Christal’s telephone 2 and “holster” 8 collectively (Ans. 14-15)—
a finding that is undisputed. As shown in Christal’s Figure 2A, the “holster”
8 is a battery charger that (1) holds both telephone 2 and headset 3, and (2)
includes “intermediary electrical conductors” 19 that electrically contact the
telephone and headset via contacts 14 and 15 to enable charging both
devices simultaneously. See Christal, Title; Abstract; Figs. 2A-2C; App. Br.
14 (acknowledging “intermediary electrical conductors” 19).
Based on these findings, we see no error in the Examiner’s position
that when the headset 3 (i.e., the peripheral device) is mounted in Christal’s
“holster” 8, the peripheral device’s integral charging contact is in direct
physical and electrical contact with the mobile device’s charging port by (1)
being mounted within the holster (which is part of the “mobile device” as
noted above), and (2) electrically contacting contact 14 of “intermediary
electrical conductor” 19 located in this “mobile device.” Although Christal
does not show the integral contact on headset 3 that electrically connects
with the contact 14 in the holster to enable recharging the headset battery,
there must nevertheless be some sort of integral contact on the headset to
enable recharging its battery when the headset is mounted to the holster 8 as
the Examiner correctly indicates. Ans. 15-16.4 Otherwise, there would be
no electrical connection to the headset’s batteries when the headset is

4 Although this discussion is in connection with the Examiner’s rejection of
claim 1, the Examiner’s analysis regarding the peripheral device’s inherent
integral charging contacts to permit recharging nonetheless also applies here.
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mounted to the holster and, consequently, headset recharging would not
occur—a circumstance that runs counter to the very point of Christal’s
invention, namely to simultaneously recharge both the phone and headset via
the holster. See Christal, Title, Abstract; Figs. 2A-2C.
Since this holster is also part of the “mobile device” according to the
Examiner’s mapping, it therefore charges the headset’s battery due to the
peripheral device’s direct physical and electrical contact with the mobile
device’s charging port as noted above. To the extent that Appellant’s
arguments are based on the recited “mobile device” as limited to solely
Christal’s phone 2 (see App. Br. 14-15; Reply Br. 3), such arguments are
unpersuasive, for they are not commensurate with the Examiner’s position
which maps the recited “mobile device” to both the phone and the holster as
noted above.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 21, and claim 22 not separately argued with
particularity.

THE OBVIOUSNESS REJECTION OVER CHRISTAL AND KIM
The Examiner finds that Christal discloses every recited feature of
independent claim 1 except for permitting the mobile device (which is
mapped to telephone 2) to charge a battery in the peripheral device through a
charging contact extending from the peripheral device, but cites Kim as
teaching this feature in concluding that the claim would have been obvious.
Ans. 6-7, 15-16.
Appellant argues that since the cited references use intermediary
conductors, there is no direct physical contact between the peripheral and
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mobile devices and, in any event, Christal’s mobile device does not charge
the peripheral device’s battery. App. Br. 16-18; Reply Br. 3-4.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Christal and Kim collectively would have taught or suggested a holster
for receiving and retaining a mobile device and a peripheral device, where
the peripheral device includes an integral charging contact that is in direct
physical and electrical contact with the mobile device retained in a sleeve to
permit the mobile device to charge the peripheral device’s battery?

ANALYSIS
We begin by noting that, unlike claim 22, independent claim 1 recites
a holster for retaining a mobile device and peripheral device. This recited
distinction between the holster and the mobile device is reflected in the
Examiner’s mapping in the rejection, for unlike claim 22, the Examiner
maps the recited “mobile device” in connection with claim 1 to solely
Christal’s phone 2—not the “holsters” 8 or 11 in Figures 1A and 2A,
respectively. See Ans. 6.
This distinction, however, highlights the problem with the Examiner’s
rejection: when placed in either “holster,” the peripheral device (headset 3)’s
integral charging contact does not directly physically contact the “mobile
device” according to the Examiner’s mapping (i.e., phone 2), but rather the
holster. See Christal, Title; Abstract; Figs. 1A-2C. While the peripheral
device’s integral contact directly electrically contacts the mobile device
(phone) via the intermediary conductors 1 or 19 shown in Christal’s Figures
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1D and 2C, respectively, there is no direct physical connection between the
mobile device and peripheral device’s integral contact as claimed.
Kim fares no better in this regard. Although Kim electrically connects
a headset battery 40 to a phone’s charger circuit in the phone’s battery part
20 to enable the phone to charge the headset battery, it does so via an
intervening “connector” 30 which, as shown in Figure 2, separates the
headset battery from the phone’s battery part 20 as Appellant indicates.
Kim, Abstract; ¶ 14; Fig. 2; Reply Br. 3. Although Kim notes that this
connector can be a cable with a jack (Kim, ¶ 14; emphasis added) which
suggests that it is not so limited, we cannot say—nor has the Examiner
shown—that replacing this intervening cable with direct electrical and
physical connections between the mobile and peripheral devices (e.g., by
mounting one device directly to the other) would have been an obvious
variation. Nor will we speculate in that regard here in the first instance on
appeal. What we can say, however, is that the Examiner’s position is
untenable on this record.
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 11 and 12 which recite
commensurate limitations; and (3) dependent claims 2, 6-9, 13, 14, 17-20,
and 23 for similar reasons.

THE OBVIOUSNESS REJECTION OVER CHRISTAL, KIM, AND GRIVAS
Since the Examiner has not shown that the cited prior art cures the
deficiencies noted above regarding independent claim 1, we reverse the
obviousness rejection of dependent claim 10 (Ans. 12-13) for similar
reasons.
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CONCLUSION
The Examiner did not err in rejecting claims 21 and 22 under § 102,
but erred in rejecting claims 1, 2, 6-14, 17-20, and 23 under § 103.

ORDER
The Examiner’s decision rejecting claims 1, 2, 6-14, and 17-23 is
affirmed-in-part.
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-IN-PART

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