Ex Parte Saarikko

Board of Patent Appeals and Interferences

Sep 23, 2002

08661220 (B.P.A.I. Sep. 23, 2002)

1
The opinion in support of the decision being entered
today was not written for publication and is
not binding precedent of the Board
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ANSSI SAARIKKO
______________
Appeal No. 2000-1592
Application 08/661,220
_______________
ON BRIEF
_______________
Before THOMAS, FLEMING, and DIXON, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant has appealed to the Board from the examiner's
final rejection of claims 1 and 3-27. Representative claim 1 is
reproduced below:
1. A telephone and its holder, whereby the telephone has a
lower end and the holder contains a space, into which the
telephone can be placed with the lower end against a bottom of
the space, characterized in that the bottom having three support
points placed mutually in a triangular pattern and the lower end
Appeal No. 2000-1592
Application 08/661,220
1 Our understanding of this reference is based upon a
translation provided by the Scientific and Technical Information
Center of the Patent and Trademark Office. A copy of the
translation is enclosed with this decision.
2
of the telephone having three correspondingly placed
counterparts, which are fixed to the support points so that
lateral movement or overturning of the telephone is prevented
when the telephone is placed against the bottom, wherein the
support points are projections or cavities and correspondingly
the counterparts are mating cavities or projections.
The following references are relied on by the examiner:
Hellier et al. (Hellier) Des. 361,069 Aug. 8, 1995
(filing date June 21, 1994)
Léman et al. (Léman) 5,229,701 July 20, 1993
Hashimoto et al. (Hashimoto)
(Japanese) 1 2367531 Sep. 21, 1989
All claims on appeal, claims 1 and 3-27, stand rejected
under 35 U.S.C. § 103. In an initial rejection, the examiner
considers that claims 1, 3-9, 16-20, 22, 23, 25, and 27 would
have been obvious in view of Léman alone, with the addition of
Hashimoto as to claims 10 and 13, and with the separate addition
of Hellier to Léman as to claims 11, 12, 14, 15, 21, 24, and 26.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs, the final rejection
and the answer for the respective details thereof.
Appeal No. 2000-1592
Application 08/661,220
3
OPINION
From our consideration of the teachings and suggestions of
the applied prior art, taken in light of the claimed invention,
further in view of the positions set forth by the examiner and
appellant, we sustain the rejection of argued independent claims
1, 6, 7, and 18 and dependent claims 16, 21 and 24. and reverse
the rejection of independent claims 9 and 25, as well as
dependent claims 5, 8, 10, 13, 26, and 27. Because no arguments
have been presented in the brief and reply brief as to claims 3,
4, 9, 11, 12, 14, 15, 17, 19, 20, 22 and 23, they also fall with
our consideration of their respective parent claims.
In relying upon the final rejection for the examiner's
statement of the rejection, the examiner considers that the
recitation in each of the independent claims on appeal of three
support points in a triangular position is met by the two guide
fins 5 and the two charging contacts 3 in Figures 1 and 2 of
Léman. The examiner considers it would have been obvious to
have removed one of these support points in Léman since it was
known in the art that redundant components (from 4 to 3) in Léman
would still support and charge a mobile phone or equipment.
Appeal No. 2000-1592
Application 08/661,220
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Additionally, the examiner takes the view at pages 4 and 5 of the
answer that it would have been a mere design choice to have
reduced from 4 to 3 the number of support points in Léman, the
examiner urging that the omission of an element would have been
obvious if the function of the element is not desired.
We do not consider any of these arguments persuasive because
no evidence of obviousness has been provided and, in our
judgment, we are unpersuaded of the examiner's view as a mere
matter of design choice to omit one of the four labeled elements
since we remain unconvinced that the function of one of them
would not have been necessary. We are therefore in agreement
generally with appellant's arguments set forth initially at pages
4 and 5 of the principal brief on appeal and repeated in latter
portions of this brief, as well as the paragraph bridging pages 1
and 2 of the reply brief. As stated at the top of page 5 of the
principal brief on appeal, "it clearly would not be obvious to
eliminate one of these four points [3,3 and 5,5 in Léman] because
this would interfere with their separate and distinct functions."
Notwithstanding these considerations, we sustain the
rejection of independent claims 1, 6, 7, and 18 on appeal for
reasons independent of the positions of the examiner and do so as
Appeal No. 2000-1592
Application 08/661,220
5
a matter of claim interpretation. None of these claims require
only three support points. Clearly, the four support points 5,5
and 3,3 in Figures 1 and 2 of Léman include the recited 3 support
points recited in each of these independent claims on appeal.
Furthermore, the additional limitation with respect to them
recited in each of these independent claims on appeal, that of
they being placed in a triangular pattern, is still met by the
teachings and showings in Figures 1 and 2 of Léman as to the
relative location, generally speaking, of guide fins 5,5 with
respect to the general location of the charging contacts 3,3.
The fact that the reference teaches more than what is claimed
does not obviate its applicability to that which is positively
claimed. The claims do not exclude the additional teaching of
an additional point, that is, the fourth point among
corresponding structures 5,5 and 3,3 in Léman.
As to argued dependent 5 at page 5 of the principal brief on
appeal, we are persuaded by appellant's reasoning here. The ribs
5 in the battery charger base 1 of Léman and their corresponding
grooves 6 in the telephone 2 cannot also be construed by the
examiner as the additionally recited feature of the vertical rib
or groove in dependent claim 5 on appeal. As noted by appellant
Appeal No. 2000-1592
Application 08/661,220
6
at the bottom of page 5 of the principal brief on appeal the
"ribs (5) and grooves (6) cannot be interpreted as both claimed
features."
We reverse the rejection of dependent claim 8 and
corresponding limitations recited in independent claim 9 because,
as argued by appellant at pages 7 and 8 of the principal brief on
appeal, the feature of the battery itself having at least one of
the counterpart cavities in dependent claim 8 and a corresponding
feature recited in independent claim 9 cannot be met by this
reference since it simply does not disclose anything at all about
the physical location in Figures 1 and 2 or its written
description of the battery itself.
We sustain the rejection of dependent claim 16 notwith-
standing appellant's arguments at pages 9 and 10 of the principal
brief on appeal. The essential additional feature in dependent
claim 16 added over those in its parent independent 1 on appeal
is the means for holding different sizes of phones. The claim
goes on to recite that the holding means of claim 16 comprises
the same three support points recited in the parent claim 1.
Since we have already determined that the three support points of
independent claim 1, as interpreted earlier in this opinion, are
Appeal No. 2000-1592
Application 08/661,220
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met by the teachings and showings in Léman, we sustain the
rejection of dependent claim 16. Figure 2 of Léman shows two
different sized (that is two different thicknesses) of two phones
labeled 2 and 7. Appellant's argument at pages 9 and 10 of the
brief on appeal is misplaced to the extent it is argued that the
lateral distance between the sidewall portions 4 may not be
varied. This is not the manner in which the "family of phones"
of Léman may be accommodated in a single base element or battery
charger 1. It is the depth shown in Figure 2 accorded to the
different thicknesses of phone elements 2 and 7 that may be
accommodated and not any change in the width dimension between
the wall portions 4.
We also reverse the rejection of dependent claims 10 and 13
because we are unpersuaded by the examiner's reasoning at page 4
of the final rejection that it would have been obvious for the
artisan to have utilized the teachings of Hashimoto incorporated
into the system of Léman. Each of dependent claims 10 and 13
require electrical contacts which are separate from the three
support points recited in their respective parent independent
claims. The examiner's proposal to utilize the charging elements
contacts 11 and 12 of the base 8 in Figure 1 of Hashimoto, along
Appeal No. 2000-1592
Application 08/661,220
8
with the tube-shaped protrusion 16 therein to provide the
separate contacts of the dependent claims 10 and 13 on appeal
apparently make no sense to us from an artisan's perspective. As
noted at the top of page 9 of the principal brief on appeal Léman
already has contact points 3, which the examiner is utilizing in
part as a basis for the claimed 3 contact points. The artisan
would not have been persuaded by Hashimoto to have added
additional electrical contacts for charging purposes to Léman
based upon Hashimoto's teachings. As noted by appellant, the
examiner's reasoning appears to be based on pure prohibited
hindsight.
On the other hand, we note in passing that components 11, 12
and 16 in the Figures 1 and 2 embodiments of Hashimoto appear to
plainly teach only three support elements in a shaped triangular
configuration to the extent required by the independent claims on
appeal.
Finally, we reverse the rejection of independent claim 25
and its respective dependent claims 26 and 27. This rejection,
as set forth by the examiner is logically flawed because
independent claim 25 in part requires an open-front wall, which
feature is plainly not met by Léman alone. Therefore, the
Appeal No. 2000-1592
Application 08/661,220
9
examiner's rejection of claims 25 and 27 is logically flawed
because claim 25 cannot be met by Léman and its dependent claim
27, dependent through intermediate dependent claim 26, cannot be
met as well. Additionally, the inclusion of claim 26 in the
third stated rejection of the claims on appeal under 35 U.S.C.
103, that involving Léman in view of Hellier, also cannot be
sustained because we have not sustained the rejection of its
parent independent claim 25.
On the other hand, we do sustain the rejection of dependent
claims 11, 12, 14, 15, 21, and 24 in light of the collective
teachings and showings of Léman in view of Hellier as argued by
the examiner's on pages 4 and 5 of the final rejection. Figures
1 and 5 of Hellier do provide persuasive teachings of the claimed
concave shape as argued by the examiner and the overall
ornamental design of Hellier would have been a persuasive
teaching in our view for the artisan to have modified the front
portion of Léman's battery charger 1 to achieve a more ornamental
design for this battery charger in light Hellier's showings in
Figures 1 and 5. Additionally, it is apparent to us that with
such a combination, it would have been easier for the user of the
phones 2, 7 in Léman to have placed or removed them from the base
1 utilizing the base design of Hellier.
Appeal No. 2000-1592
Application 08/661,220
10
We are therefore unpersuaded by appellant's arguments as to
the rejection of dependent claims 21 and 24 as argued at page 11
of the principal brief on appeal. We do not agree with
appellant's assertion that the removal of one of the two walls 4
would have been necessary in Léman due to the teachings of
Hellier. On the contrary, only the front wall 9 would have been
necessary to have been shaped according to the showings in
Figures 1 and 5 of Hellier. Advantageously, since Léman is
designed to accommodate phones of different depth, as represented
by phones 2 and 7 in Figure 2 of this reference, the artisan
would have found it obvious as well to have incorporated the
design teachings of Hellier into the front portion of Léman's
base 1.
Because of the earlier noted logical flaws of the rejection
of independent claim 25 and because of our decision to sustain
the rejection of claims 11, 12, 14, 15, 21, and 24, which contain
similar features of an open front wall, we institute a new
rejection under 37 CFR § 1.196(b) of independent claim 25 and its
dependent claims 26 and 27 consistent with the examiner's
reasoning initially advanced for obviousness of claims 11, 12,
Appeal No. 2000-1592
Application 08/661,220
11
14, 15, 21 and 24 of Léman in view of Hellier. As to dependent
claims 26 and 27, the use of the word "proximate" with respect to
the front and rear walls in a relative term which is subject to
many interpretations and, in our view, clearly met by the
combined teachings and showings of Léman in view of Hellier as
argued earlier.
Finally, because we sustain the rejection of the earlier
noted claims on appeal in accordance with the line of reasoning
not advanced by the examiner before in the answer, we will also
denominate this affirmance a new ground of rejection.
We have sustained the rejection of claims 1, 3, 4, 6, 7, 11,
12, and 14-24. The affirmance of these claims has been
denominated as a new ground of refection within 37 CFR §
1.196(b). We have reversed the rejection of claims 5, 8, 9, 10,
13, and 25-27. We have also instituted a separate, new rejection
of claims 25-27 under this rule as well. Accordingly, the
decision of the examiner is affirmed-in-part.
Appeal No. 2000-1592
Application 08/661,220
12
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, “A new
ground of rejection shall not be considered final for purposes of
judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 2000-1592
Application 08/661,220
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
James D. Thomas )
Administrative Patent Judge )
)
)
)
Michael R. Fleming ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Joseph L. Dixon )
Administrative Patent Judge )

JDT/cam
Appeal No. 2000-1592
Application 08/661,220
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