Ex Parte Maier et al

Patent Trial and Appeal Board

Feb 27, 2017

13522509 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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.
13/522,509 07/17/2012 Matthias Maier 2010P00131WOUS 4422
24737 7590 03/01/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue WAGGENSPACK, ADAM J
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS MAIER and MARKUS HETZEL
Appeal 2015-0058871
Application 13/522,5092
Technology Center 3700
Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1—14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed Oct.
15, 2014) and Reply Brief (“Reply Br.,” filed May 22, 2015), and the
Examiner’s Answer (“Ans.,” mailed Mar. 24, 2015) and Final Office Action
(“Final Act.,” mailed May 16, 2014).
2 According to Appellants, the real party in interest is Koninklijke Philips
Electronics N V. Appeal Br. 1.
Appeal 2015-005887
Application 13/522,509
BACKGROUND
According to Appellants, “[t]he invention relates to a module retainer
for accommodating a functional module, and in particular for a module
retainer that is attachable to a supporting belt. The invention further relates
to a system comprising a module retainer and a functional module.” Spec. 1,
11. 2-4.
CLAIMS
Claims 1—14 are on appeal. Claim 1 is illustrative of the appealed
claims and recites:
1. A module retainer for accommodating a functional
module, the module retainer comprising:
a clamp configured for attaching the module retainer to a
supporting belt, the clamp having a first side that is pivotally
attached to a main structure of the module retainer and at least
one snap-fit configured for operably attaching a second side of
the clamp to the main structure of the module retainer and fixing
the clamp in a closed position in which the supporting belt is
embraced, wherein the snap-fit is configured and positioned such
that the snap-fit:
is obstructed from being released by a functional
module inserted in the main structure of the module
retainer; and
secures the clamp in the closed position to secure
the module retainer to the supporting belt.
Appeal Br. 16.
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Appeal 2015-005887
Application 13/522,509
REJECTIONS3
1. The Examiner rejects claims 1—10 under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. The Examiner rejects claims 1—4, 7, 9, 10, and 144 under 35 U.S.C.
§ 102(b) as anticipated by Castilla.5
3. The Examiner rejects claims 1—4, 7, 9, 10, and 146 under 35 U.S.C.
§ 103(a) as unpatentable over Castilla.
4. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Castilla in view of Shetler.7
5. The Examiner rejects claims 5 and 138 under 35 U.S.C. § 103(a) as
unpatentable over Castilla in view of Blackman.9
6. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Castilla in view of Methot10 or Gulley.11
7. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Castilla in view of Blackman and Bell.12
3 The rejection with respect to claims 11 and 12 has been withdrawn, and
thus, there are no pending rejections with respect to these claims. See Ans.
10.
4 The heading for this rejection does not list claim 14, but the body of the
rejection includes a discussion of this claim. See Final Act. 4, 6.
5 Castilla et al., US 5,528,770, iss. June 18, 1996.
6 The heading for this rejection does not list claim 14, but the body of the
rejection includes a discussion of this claim. See Final Act. 4, 6.
7 Shetler et al., US 2004/0155079 Al, pub. Aug. 12, 2004.
8 The heading for this rejection does not list claim 13, but the body of the
rejection includes a discussion of this claim. See Final Act. 7—8.
9 Blackman et al., US 7,131,214 Bl, iss. Nov. 7, 2006.
10 Methot, US 2009/0124459 Al, pub. May 14, 2009.
11 Gulley, US 4,936,499, iss. June 26, 1990.
12 Bell et al., US 4,285,554, iss. Aug. 25, 1981.
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Appeal 2015-005887
Application 13/522,509
8. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Castilla in view of Bell.
DISCUSSION
Indefiniteness
The Examiner finds that the language of claims 1 and 3 is indefinite
because it is not clear if the claims require the functional module or if the
functional module is only functionally claimed. Final Act. 2. We agree and
are not persuaded otherwise by Appellants’ arguments. Although the
preamble of claim 1 recites the intended use of the module retainer as “for
accommodating a functional module,” the body of the claim itself appears to
affirmatively recite a functional module, i.e., the claim states that the snap fit
“is obstructed from being released by a functional module inserted in the
main structure.” We agree with the Examiner that such language could be
taken to structurally require a functional module or could arguably be
considered to be merely functional.
In this matter, we are also guided by our reviewing court which has
stated “during patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed. . . . [T]his way . . . uncertainties of claim scope [can]
be removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 321—22 (Fed. Cir. 1989). Thus, if Appellants wish to
limit the claims to more clearly exclude or include a functional module, the
appropriate procedure for doing so while prosecution is open is through an
amendment to the claims.
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Application 13/522,509
The Examiner also finds that claim 9 is indefinite because the
limitation “the main structure” lacks antecedent basis. Final Act. 2. In the
Answer, the Examiner elaborates, stating that it is unclear if the main
structure in claim 9 is the same structure referred to in claim 1. Claim 1
recites “a main structure of the module retainer.” We are not persuaded by
the Examiner that there is any other reasonable interpretation of the claims
other than that this recitation in claim 1 provides antecedent basis for “the
main structure” recited in claim 9.
Based on the foregoing, we sustain the rejection insofar as the
Examiner has identified indefinite language in claim 1.
Anticipation and Obviousness Rejections
Claim 1
With respect to claim 1, the Examiner finds that Castilla discloses a
module retainer including, inter alia, “that 300 is a snap-fit as the bump 309
will snap-fit into the groove 42 ... or alternatively that 306 will operate as a
snap-fit with an appropriately sized and shaped functional module 40.”
Final Act. 4 (citing Castilla, Fig. 2). As discussed below, we are persuaded
of reversible error in the rejection based on this finding.
In order to assess whether Castilla discloses a snap-fit structure as
claimed, we must first interpret the claim. The claim requires a module
retainer including a clamp and a main structure. The claim further requires
that the clamp is pivotally attached to the main structure at a first side and
that the clamp includes a snap-fit connector “configured for operably
attaching a second side of the clamp to the main structure.” Specifically, we
interpret the claim to require that the snap-fit is a part of the clamp.
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Application 13/522,509
Turning to the rejection before us, the Examiner relies on Castilla’s
belt clip 310 as the clamp and Castilla’s clip 300 as including the snap-fit
configured to operably attach the clamp to the main structure. However, the
Examiner does not adequately explain how the identified structure of
Castilla anticipates or renders obvious the clamp as claimed, i.e., the
Examiner has not identified any snap-fit structure on the belt-clip, i.e.,
clamp, itself or otherwise explained why it would have been obvious to
include a snap-fit structure on Castilla’s clamp/belt-clip. Accordingly, on
the record before us, we find reversible error in the rejections of claim 1, and
thus, we do not sustain those rejections.
Claim 13
With respect to claim 13, the Examiner finds, inter alia,
In response to Appellant’s arguments with respect to claim 13’s
requirement of a notch, see the response to arguments above with
respect to claim 5 regarding the notch. Examiner notes that the
claim requires a snap-fit (taken to be 300 including the spring
structure 308 as modified by Blackman) comprising an elastic
part (the spring 308) and a notch (the lower opening of the S is a
notch to the extent broadly claimed), and that the elastic part is a
flat tongue (per Blackman) integral with a side wall of the main
structure (it is integral as the flat tongue/spring forms a unit with
the main structure or alternately it is obvious to make it integral,
based on case law (MPEP 2144.04(B)) or in view of Bell.
Although Appellant argues that the lever 300 of Castilla is rigid,
the rigid lever portion of the structure is not considered the elastic
part of the snap-fit.
Ans. 17. Thus, although the rejection itself does not specifically indicate
how the art renders the claimed snap-fit obvious, the Examiner clarifies that
the rejection relies on the clip 300 and spring as the snap-fit claimed. As
discussed below, we are persuaded of reversible error in the rejection based
on this finding.
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Application 13/522,509
In order to assess whether Castilla discloses a snap-fit structure as
required by claim 13, we must first interpret the claim. In contrast to
claim 1, claim 13 does not require that the snap-fit itself is a part of the
clamp because the clamp and snap-fit are recited as separate structures.
However, the claim requires that the snap-fit is configured for operably
attaching the second side of the clamp to the main structure, fixes the clamp
in a closed position, and also is obstructed from being released when a
functional module is inserted in the module retainer. Based on these claim
requirements, we find that the claim requires that the snap-fit connection
provides the attachment point between the clamp and the main structure and
not between the main structure and the module retainer. In particular, we
find that the requirement that the snap-fit is obstructed from being released
when the functional module is inserted requires that the snap-fit connection
is something other than the connection between the functional module and
the main structure. Thus, we consider the language of the claim as a whole
to require that the clamp and main structure are directly attached by the
snap-fit connection.
Turning to the rejection before us, based on the interpretation of the
claim provided herein, we find that the Examiner has erred in relying on the
self-locking clip 300 and spring structure 308 between Castilla’s belt-clip
310 and an inserted functional module as the claimed snap-fit. Castilla
discloses that the belt-clip 310 is pivotally secured to the holster 330, i.e. the
main structure, at a point 322. See Castilla Fig. 2. Castilla additionally
discloses an abutting relationship between the belt-clip and the self-locking
clip 300 when a call receiver 40 is inserted into the holster. See id. at Fig. 2,
col. 4,11. 34—36. Castilla does not appear to disclose any other means of
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Application 13/522,509
attachment between the belt-clip and the holster. Thus, we find that Castilla
does not disclose, and the Examiner has not explained why it would be
obvious to include, a snap-fit attachment point between the belt-clip/clamp
and the holster/main structure, as required by the claim as interpreted above.
Accordingly, on the record before us, we find reversible error in the
rejections of claim 13, and thus, we do not sustain those rejections.
Claims 2—10 and 14
With respect to dependent claims 2—10 and 14, the Examiner relies on
the same erroneous findings discussed above with respect to the rejection of
claim 1. Thus, for the reasons discussed above, we do not sustain the
rejections of claims 2—10 and 14.
CONCLUSION
For the reasons set forth above, we conclude as follows:
We affirm the rejection of claims 1—10 under 35 U.S.C. § 112, second
paragraph, as indefinite.
We reverse the rejection of claims 1—4, 7, 9, 10, and 14 under 35
U.S.C. § 102(b) as anticipated by Castilla.
We reverse the rejection of claims 1—4, 7, 9, 10, and 14 under 35
U.S.C. § 103(a) as unpatentable over Castilla.
We reverse the rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Castilla in view of Shetler.
We reverse the rejection of claims 5 and 13 under 35 U.S.C. § 103(a)
as unpatentable over Castilla in view of Blackman.
We reverse the rejection of claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Castilla in view of Methot or Gulley.
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Application 13/522,509
We reverse the rejection of claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Castilla in view of Blackman and Bell
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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