Ex Parte Reale

Board of Patent Appeals and Interferences

Mar 20, 2012

11393760 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANTHONY REALE

Appeal 2010-006443
Application 11/393,760
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, EDWARD A. BROWN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006443
Application 11/393,760

2
STATEMENT OF THE CASE
Anthony Reale (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1, 3, 4, 6, 9-11, 13, 14, 16, 19, and 20.
(App. Br. 2). Claims 2 and 12 were canceled (Id. at 3), and claims 5, 7, 8,
15, 17, 18, and 21 were withdrawn from consideration by the Examiner as
being directed to non-elected subject matter (Final Rej. 1-2; see also Ans.
4).1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We dismiss the appeal.
THE INVENTION
The invention is directed to an apparatus for protecting an electronic
device. (Spec. 1, para. [0001]). Independent claim 1, reproduced below, is
illustrative of the appealed subject matter.
1. An apparatus for protecting an
electronic device, the apparatus comprising:
a skeletal frame to at least partially
surround the device, with the skeletal frame
having projecting external frame members;
a resilient body member configured to
receive the skeletal frame and at least
partially surround the skeletal frame; and
wherein the electronic device has a
display region and the apparatus provides
visibility of the display region.

1 Appellant indicates that claim 18 is also on appeal. (App. Br. 2).
Appellant contends that the Examiner's restriction of claims 8 and 18 is
improper, and that these claims should be rejoined. (Id. at 12). However,
Appellant's response to the restriction requirement is a petitionable matter,
not an appealable matter. Thus, the relief sought by Appellant should have
been presented by a petition to the Technology Center Director. See,
Manual of Patent Examining Procedure §§ 1002.02(c)(2), 1201 (8th ed.,
Rev. 8, July 2008).
Appeal 2010-006443
Application 11/393,760

3
Independent claim 11 is directed to an apparatus for protecting an
electronic device and also recites the limitation "the electronic device has a
display region and the apparatus provides visibility of the display region."
REJECTIONS
The following rejections are before us on appeal for review.
1. Claims 1, 6, 9, 11, 16, and 19 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Lord (US 7,359,184 B2, issued Apr. 15, 2008).
2. Claims 3, 4, 10, 13, 14, and 20 are rejected under 35 U.S.C. §
103(a) as unpatentable over Lord and Richardson (US 7,158,376 B2, issued
Jan. 2, 2007).
ANALYSIS
Claims 1, 6, 9, 11, 16, and 19 – anticipation by Lord
The Examiner indicated "that in the Examiner's rejections, a new
interpretation of the prior art has been added in bold letters." (Ans. 4; see
also Id. at 5). Regarding independent claims 1 and 11, the Examiner found
Lord discloses an apparatus for protecting an electronic device comprising a
skeletal frame (i.e., body member 10) to at least partially surround "an
electronic device (12; fig 1, 8-12, 15, 16 and also electronic device 40 in
fig 1)." (Ans. 5; see also Lord, col. 2, ll. 41-45). The Examiner also found:
the electronic device (40) has a display region
(as described in col. 3, ll. 9-13 Lord discloses:
'One configuration of the security device 40
may include a proximity sensor that may be
armed/disarmed by an IR programming device,
by the entering of a passcode, or other suitable
activation device as desired.' The electronic
device has a display region in figure 1 that
interacts with a programming device) and the
apparatus provides visibility of the display
Appeal 2010-006443
Application 11/393,760

4
region (figure 1 shows that the apparatus
provides visibility of the electronic device 40).

(Id. at 5-6; see also Id. at 8).
In the Answer, this rejection is designated as a New Ground of
Rejection because it relies on a new interpretation of Lord (with new
findings) regarding "electronic device 40." (Ans. 8, 9; see also Office
Comm. dated Jan. 5, 2010). 37 C.F.R. § 41.39(b) provides that:2
If an examiner's answer contains a new
ground of rejection, appellant must within two
months from the date of the examiner's answer
exercise one of the following two options to avoid
sua sponte dismissal of the appeal as to the claims
subject to the new ground of rejection:
(1) Reopen prosecution. Request that
prosecution be reopened before the primary
examiner by filing a reply under § 1.111 of this
title . . . . Any amendment or submission of
affidavits or other evidence must be relevant to the
new ground of rejection. . . .
(2) Maintain appeal. Request that the
appeal be maintained by filing a reply brief as set
forth in § 41.41. Such a reply brief must address
each new ground of rejection as set forth in
§ 1.37(c)(1)(vii). . . .
Appellant did not exercise option (1) or (2) to address the New
Ground of Rejection within two months of the date of the Examiner's
Answer dated December 2, 2009. Accordingly, we dismiss the appeal as to
the rejection of claims 1 and 11. We also dismiss the appeal as to the
rejection of claims 6 and 9 which depend from claim 1, and claims 16 and
19 which depend from claim 11. (See also M.P.E.P. § 1207.03(V)(C).

2 The language of 37 C.F.R. § 41.39(b) is reproduced in the Examiner's
Answer. (Ans. 8-9).
Appeal 2010-006443
Application 11/393,760

5
Claims 3, 4, 10, 13, 14, and 20 – obviousness over Lord and Richardson
Claims 3, 4, and 10 depend from claim 1, and claims 13, 14, and 20
depend from claim 11. The Examiner's new interpretation of Lord also
affects claims 3, 4, 10, 13, 14, and 20, and this rejection is also designated as
a New Ground of Rejection. (Ans. 8, 9; see also Office Comm. dated Jan. 5,
20103). Appellant relies on the dependency of claims 3, 4, 10, 13, 14, and
20 from claim 1 or 11 for patentability. (App. Br. 11). Accordingly, we also
dismiss the appeal as to the rejection of claims 3, 4, 10, 13, 14, and 20.
DECISION
In view of the foregoing, the appeal of claims 1, 3, 4, 6, 9-11, 13, 14,
16, 19, and 20 is DISMISSED for failure to respond to the Examiner's
Answer. The application is being returned to the Examiner for further action
as may be appropriate.
DISMISSED

mls

3 This Office Communication states "that in the Examiner’s rejections, a
new interpretation of Lord . . . has been added in bold letters." (Emphasis
added). The use of the plural "rejections" further indicates that both
rejections based on the new interpretation of Lord are designated as "NEW
GROUND(S) OF REJECTION."