Ex Parte Mathew et al

Patent Trial and Appeal Board

Feb 24, 2017

13620009 (P.T.A.B. Feb. 24, 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.
13/620,009 09/14/2012 Dinesh Mathew P6141USC1 7250
62579 7590
APPLE INC.
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
EXAMINER
LIN, HANG
ART UNIT PAPER NUMBER
2696
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
patentdocket @ bhfs. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DINESH MATHEW, CHRIS LIGTENBERG,
BRETT WILLIAM DEGNER, THOMAS W. WILSON JR.,
and JOHN BROCK
Appeal 2016-002037
Application 13/620,009
Technology Center 2600
Before MICHAEL J. STRAUSS, AMBER L. HAGY, and
DAVID J. CUTITTAII, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002037
Application 13/620,009
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 19-26, 28—30, 32, 33, 35—39, and 41—43. Claims 1—18 are
canceled.1 Claims 27,31, 34, and 40 are allowable if rewritten in
independent form. We have jurisdiction over the rejected claims under
35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a touchpad and pick button assembly for a
computing device. Spec., Title. Claim 19, reproduced below, is
representative of the claimed subject matter:
19. An electronic device comprising:
a housing comprising an opening;
a pick button positioned within the opening; and
a first spring that laterally extends from the pick button such
that a first end of the first spring is removably attached to the
pick button and a second end of the first spring is removably
attached to the housing.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Long US 5,349,737 Sept. 27, 1994
Zallo US 5,494,176 Feb. 27, 1996
Sun US 2006/0164400 A1 July 27, 2006
Lin US 2008/0055839 A1 Mar. 6, 2008
Mathew US 8,294,675 B2 Oct. 23, 2012
1 Because Appellants’ Amendment filed June 26, 2015, canceling claim 24
was denied entry (Advisory Action of August 4, 2014), claim 24, indicated
to be cancelled in Appellants’ Appendix of Claims to the Appeal Brief, is
still pending at the time of this Decision.
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REJECTIONS
The Examiner made the following rejections:
Claims 19, 25, 27, 31, 34, and 40 stand rejected on the ground of
nonstatutory double patenting as being unpatentable over claim 9 of
Matthew in view of Zallo. Final Act. 2—6.
Claim 26 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 6—7.
Claim 26 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. Final Act. 7.
Claims 19—26 and 28—30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lin, Sun, and Zallo. Final Act. 8—15.
Claims 32, 33, and 35—39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sun and Zallo. Final Act. 15—21.
Claims 41—43 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sun, Long, and Zallo. Final Act. 21—24.
APPELLANTS’ CONTENTIONS
1. Appellants contend, because it is undisputed Zallo is not within
Appellants’ field of endeavor and the Examiner has failed to show
Zallo is reasonably pertinent to the particular problem with which the
invention is concerned, the double patenting rejection and rejections
under 35 U.S.C. § 103(a) relying on Zallo are improper. App. Br. 4—
6, 9.
2. Appellants contend Sun’s U-shaped spring section, frame, and button
portions are manufactured as one plastic element such that spring
sections 109a and 109b are not coupled to both a pick button assembly
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and a housing, removably or otherwise, as required by claim 19. App.
Br. 8.
3. Appellants contend, when the term “laterally extend” is properly
interpreted as meaning extending from the side, Sun’s U-shape spring
sections 109a and 109b do not laterally extend from Sun’s buttons as
required by claim 19. Id.
4. Appellants contend the combination of references applied in rejecting
claim 19 is improper because modifying the unitary U-shaped plastic
element of Sun to include the removable springs of Zallo “would
change the entire structure, and thus the principle [of] operation, of
the touch pad assembly disclosed in Sun.” App. Br. 9.
5. Appellants contend the Examiner erred by relying on design choice as
a basis for finding a rib extending along a length of the bottom surface
of the pick button to be obvious, as required by claim 32, rather than
citing to appropriate prior art.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 2—27)
and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 2—8) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
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Double Patenting
The Examiner finds claim 9 of Mathew teaches or suggests the subject
matter of claims 19, 25, 27, 31, 34, and 40 of the subject application except
for the claimed spring being removably attached to the pick button and
housing, for which the Examiner relies on Zallo. Final Act. 2—6. The
Examiner further “takes official notice that. . . making parts removable [is]
not novel and is obvious to one of ordinary skilled in the art as the
knowledge of fastener and screws and other attachment methods are well
known.” Final Act. 6. Appellants argue Zallo’s description of a child-safe
cutlery set holder including a flat spring, the ends of which are attached with
fasteners, is non-analogous art because Zallo is neither (i) from the same
field of invention as the rejected claims, nor (ii) reasonably pertinent to the
problem faced by the inventor. App. Br. 5. In the absence of the Examiner’s
reliance on alternative (i), Appellants address alternative (ii), asserting
The child safe cutlery set holder disclosed in Zallo is not
“reasonably pertinent” to a pick button assembly for an
electronic device as the child safe cutlery set holder, and any
components of the child safe cutlery set holder, would not
“logically commended itself’ to any problem that may be present
in a pick button assembly for an electronic device.
App. Br. 5. Addressing the Examiner’s official notice, Appellants argue
“features claimed in claim 19 are not merely directed to fasteners and screws
nor merely making parts removable” but provide benefits such as “to retain
the pick button within a housing of the electronic device.” App. Br. 6. The
Examiner responds by finding substituting a removably attached spring
according to Zallo in the device of Lin and Sun “would mitigate production
issue[s] as there is now another way to manufacture the device in the case of
the parts used in Lin and Sun is short on supplies.” Ans. 3. The Examiner
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further finds “making parts removable is obvious to one of ordinary skilled
in the art as the knowledge of fastener and screws and other attachment
methods.” Ans. 5 (citing MPEP § 2144.04 (V)(C)2).
We are unpersuaded by Appellants’ arguments for lack of sufficient
evidence or reasoning supporting Appellants’ conclusions. In particular,
other than making the naked assertion Zallo’s teachings are not reasonably
pertinent, Appellants do not explain why removably attaching a spring in a
cutlery set holder would not logically commend itself to a problem of
attaching a similar spring in an electronic device. We note, using the
terminology of claim 19, a spring can only be attached removably (as
claimed) or non-removably (e.g., permanently). With only two possible
solutions and no evidence the claimed removable method provides
unexpected results, the modification from non-removable to removable is
obvious. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(“When there is a design need or market pressure to solve a problem and
there are a finite number of identified, predictable solutions, a person of
ordinary skill [in the art] has good reason to pursue the known options
within his or her technical grasp. If this leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and common
sense.”).
2 Making Separable In re Dulberg, 289 F.2d 522, 523, 129 USPQ
348, 349 (CCPA 1961) (The claimed structure, a lipstick holder
with a removable cap, was fully met by the prior art except that
in the prior art the cap is “press fitted” and therefore not manually
removable. The court held that “if it were considered desirable
for any reason to obtain access to the end of [the prior art’s]
holder to which the cap is applied, it would be obvious to make
the cap removable for that purpose”).
MPEP § 2144.04 (V)(C).
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Appellants’ argue “the features claimed in claim 19 are not merely
directed to fasteners and screws nor merely making parts removable” but to
“retain[ing] the pick button within a housing of the electronic device” (App.
Br. 6). We are not persuaded, based on Appellants’ argument, the Examiner
erred by taking official notice that “making parts removable [is] not novel
and is obvious to one of ordinary skill[] in the art” (Final Act. 6). Although
the Examiner finds “knowledge of fastener[s] and screws and other
attachment methods are well known” (Ans. 6), Appellants do not explain
why, based on such knowledge, it was improper to take official notice that
making parts removable was well known at the time of the invention.
Appellants argue claim 19 requires a particular pick button assembly without
challenging the noticed fact of making parts removable was well known at
the time of the invention. Furthermore, although the Examiner first took the
disputed official notice in the Non-Final Action of May 8, 2014 (in response
to the Amendment after Final Action filed March 27, 2014, and subsequent
RCE of April 28, 2014, resulting in entry of the amendment adding the
“removably” limitation), Appellants have not properly traversed the
underlying finding by clearly demanding the Examiner produce authority for
the finding. See MPEP § 2144.03(C) and In re Chevenard, 139 F.2d 711,
713 (CCPA 1943) (“In the absence of anything in the record to contradict the
examiner’s holding, and in the absence of any demand by appellant for the
examiner to produce authority for his statement, we will not consider this
contention.”).
We further note in passing, and without reliance in arriving at our
ultimate decision, Appellants’ Specification does not appear to disclose that
the spring is “removably” attached. Instead, the Specification discloses only
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that “[sjprings 140 may be coupled to pick button 130 and frame 102 using
any suitable approach, including, for example, an adhesive, tape, mechanical
fastener (e.g., a screw), an engagement mechanism (e.g., a snap), or any
other suitable approach.” Spec. 125. Therefore, it is not clear either the
written description and definiteness requirements of 35 U.S.C. § 112, first
and second paragraphs are satisfied.
35 U.S.C. § 112
Appellants do not contest the rejections of claim 26 under 35 U.S.C.
§ 112, first and second paragraphs. Therefore, we summarily affirm those
rejections. See MPEP § 1205.02 (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain it
. . . .”); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(“If an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”).
35 U.S.C. § 103
Appellants’ contention 1, contesting applicability of the Zallo
reference as it applies to the rejections under 35 U.S.C. § 103, is
unpersuasive for the reasons discussed supra in connection with the double
patenting rejection.
In connection with contention 2, Appellants argue Sun’s “spring
sections 109a and 109b are integrated with the suspension arm 107 to form a
single, unitary structure” and are not removably coupled as required by
claim 19. App. Br. 8. The Examiner responds by finding Appellants’
argument is an attack on the references individually rather than on the
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combination asserted and, therefore, is unpersuasive. Ans. 4. In particular,
the Examiner finds the limitations of claim 19 are taught or suggested by the
combination of the springs of Sun coupled to the pick button and housing of
Lin by being removably attached (rather than integral) as disclosed by Zallo
or was well known at the time of the invention according to official notice.
Ans. 4—5.
We also find Appellants’ contention 2 unpersuasive for the reasons
given by the Examiner. In particular, Appellants’ argument that Sun
discloses a single, unitary structure fails to address the Examiner’s finding
the disputed limitation of removably attaching the spring to the pick button
and housing is taught or suggested, not by Sun, but by either (i) Zallo or
(ii) official notice of the well-known methods of removably attaching
components. That is, it is the combination of Lin, Sun, and Zallo that
teaches or suggests the disputed limitation, not the argued Sun reference
individually. As recognized by the Examiner (Ans. 4), “[n]on-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (CCPA1981)).
In connection with contention 3, Appellants argue Sun’s spring 109a
and 109b do not laterally extend from the pick button but, instead, are
positioned along a portion of a U-shape structure at an angle of 90 degrees
with respect to the pick button. App. Br. 8. The Examiner responds by
finding “Sun clearly teaches that [first and second springs] 109a and 109b
are laterally extended as shown on Fig. 1 of Sun.” Ans. 6.
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Appellants’ contention 3 is unpersuasive. When construing claim
terminology during prosecution before the Office, claims are to be given
their broadest reasonable interpretation consistent with the specification,
reading claim language in light of the specification as it would be interpreted
by one of ordinary skill in the art. In re Am. Acad, of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). Sun’s spring sections 109a and 109b are
positioned to the side of button portions 105a and 105b, respectively and
connected via suspension arms 107a and 107b, which the Examiner
interprets to be part of the button portions. Ans. 5. Thus, under a broad but
reasonable interpretation of the claimed “pick button,” spring sections
109a/109b extend from the side of the pick buttons, the pick button
including both button portion 105a/105b and suspensions arm 107a/107b,
respectfully. We note, alternatively, Sun’s spring sections 109a/109b in
combination with suspension arms 107a/107b may be read as constituting
the first spring of claim 19, in which case a horizontal portion of the
suspension arm 107a/107b laterally extends from button portion 105a or
105b, the latter corresponding to the claimed pick button. Under either
broad but reasonable construction, Appellants’ argument is unpersuasive of
Examiner error.
Appellants’ contention 4 is unpersuasive for lack of persuasive
evidence or reasoned explanation in support of the asserted conclusion. In
particular, Appellants rely on attorney argument asserting modifying Sun’s
unitary construction to include removable springs would change the
structure and operation of Sun’s touch pad module, presumably by
interfering with “a comfortable and suitable click action.” App. Br. 9. Such
argument is afforded little weight in the absence of persuasive evidence in
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support of the conclusion. It is well settled that mere attorney arguments
and conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(attorney argument is not evidence).
In connection with contention 5, alleging error in the rejection of
claim 32, Appellants further argue none of the references discloses a rib
extending along a length of the bottom surface of the pick button as required
by the claim. App. Br. 10. Appellants assert the rib functions to reduce
button travel necessary to close switch 632 when a user presses pick button
630 near distal end 636. Id. The Examiner responds by finding the argued
functional features of the rib are not recited by the claims. Ans. 8. The
Examiner further finds
it would have been obvious to one of skilled in the art at the time
of the invention to have a rib extending along the length of the
bottom surface of the pick button as it is a simple design choice
to have a rib extending along a length of the bottom surface of
the pick button.
Final Act. 16.
Appellants’ contention 5 is unpersuasive of error. Appellants fail to
provide sufficient evidence or reasoning explaining why the Examiner’s
finding that including a rib would have been a matter of simple design
choice, i.e., effectively taking official notice it was well known at the time of
the invention to use a rib structure to strengthen or stiffen a structural
member such as the claimed pick button. Furthermore, Sun discloses “rib
[106] and a suspension arm [107] . . . support a button portion [105.]” Sun
Fig. 1,118; Advisory Action of April 7, 2015 at page 2. Thus, under a
broad but reasonable interpretation and in the absence of persuasive rebuttal,
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Sun’s rib 106 at least suggests the disputed “pick button comprising] a rib
extending along a length of the bottom surface of the pick button” as
required by claim 32.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the rejections of independent claims 19 and
32 under 35 U.S.C. § 103(a) and, for similar reasons, the rejection of
independent claim 41, which was not separately argued, together with the
rejections of dependent claims 20-26, 28—30, 33, 35—39, 42, and 43, which
were also not separately argued with particularity.
DECISION
We affirm the Examiner’s decision to reject claims 19, 25, 27, 31, 34
and 40 on the ground of nonstatutory double patenting.
We affirm the Examiner’s decision to reject claim 26 under 35 U.S.C.
§112, both first and second paragraphs.
We affirm the Examiner’s decision to reject claims 19—26, 28—30, 32,
33, 35-39, and 41^13 under 35 U.S.C. § 103(a).
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
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