Ex Parte Schlesener et al

Patent Trial and Appeal Board

Dec 17, 2012

12034831 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARIA CARMEN SCHLESENER
and ANGELA GAIL STERN
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Appeal 2010-003559
Application 12/034,831
Technology Center 2800
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Before JOHN A. JEFFERY, JEFFREY S. SMITH, and
ANDREW CALDWELL, Administrative Patent Judges.

CALDWELL, Administrative Patent Judge.

DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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STATEMENT OF CASE
Appellants describe the present invention as a bumper extending from
a portable information handling system chassis. The bumper aligns with a
recess on a lid of the information handling system to maintain the lid in
position when the lid closes against the chassis, such as in a closed position
or a tablet position. The bumper has a rigid material that couples to the
chassis covered at the exposed portion of the bumper by a non-rigid material
that interacts with the lid. The non-rigid material absorbs shocks translated
through the lid and chassis, and reduces the risk of damage to lid cosmetic
features. The rigid portion provides a secure coupling of the bumper to the
chassis. Abstract.
Appellants claim an information handling system including the
bumper, a method for manufacture of an information handling system
including the bumper, and the bumper itself. Independent claims 1, 8, and
16 are illustrative:
1. An information handling system comprising:
a chassis;
plural processing components disposed in the chassis, the processing
components operable to process information;
a lid rotationally coupled to the chassis, the lid having one or more
recesses;
a display integrated in the lid and interfaced with the processing
components, the display operable to present the information as visual
images; and
one or more bumpers extending from the chassis and aligned to insert
in the one or more lid recesses, the bumpers having a rigid portion
coupled to the chassis and a non-rigid portion covering the rigid
portion extending from the chassis.
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8. A method for manufacture of an information handling system chassis,
the method comprising:
forming a chassis having a pocket;
forming a bumper sized to couple in the chassis pocket, the bumper
having a rigid portion integrated with a non-rigid portion;
coupling the rigid portion to the chassis in the pocket to expose
substantially only the non-rigid portion at the chassis.
16. A system for managing the position of a rotationally-coupled lid
relative to an information handling system chassis, the system
comprising:
a bumper having a rigid portion integrated with a non-rigid portion,
the rigid portion adapted to couple to the information handing system
chassis, the non-rigid portion adapted to fit into a recess formed in
the lid.

THE REJECTIONS1
Claims 1-6, 8, 13, 16, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Skillman (US Patent 7,382,607 B2; June 3, 2008;
filed Feb. 16, 2006), Huang (US Patent 6,870,732 B2; Mar. 22, 2005), and
Russell (US Publication 2004/0025993 A1; Feb. 12, 2004). Ans. 3-7.2

1 In the Grounds of Rejection to be Reviewed upon Appeal and the
Argument, Appellants do not repeat the grounds of rejection. Instead,
Appellants only address independent claims 1, 8, and 16 and dependent
claim 9. App. Br. 3-6. However, Appellants’ Notice of Appeal indicates
that claims 1-20 are appealed. Notice of Appeal filed Apr. 21, 2009.
Moreover, Appellants conclude the Appeal Brief with an argument that the
rejections of all claims should be reversed. Id. at 6. We therefore review all
grounds of rejection presented in the Final Office Action.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Final Rejection (Final Rej.) mailed March 17, 2009; the Appeal
Brief (App. Br.) filed June 5, 2009; the Examiner’s Answer (Ans.) mailed
August 20, 2009; and the Reply Brief (Reply Br.) filed October 20, 2009.
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Claims 7, 11, 12, and 17 stand rejected under 35 U.S.C. § 103(a) as
obvious over Skillman, Huang, Russell, and Radloff (US Patent 5,808,863;
Sep. 15, 1998).3 Final Rej. 9-10.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as obvious
over Skillman, Huang, Russell, and Sterling (US Publication 2008/0064265
A1; Mar. 13, 2008; filed Sep. 12, 2006). Ans. 7-8.
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Skillman, Huang, Russell, and Love (US Patent 7,133,280 B2; Nov. 7,
2006).4 Final Rej. 12-13.

THE OBVIOUSNESS REJECTION – SKILLMAN, HUANG, AND RUSSELL
Claims 1-65
The Examiner concludes that Skillman, Huang, and Russell
collectively teach the invention of claim 1. Ans. 3-5, 8-10.
Appellants argue:
(1) No motivation exists to combine Huang’s protrusion and groove
alignment device with the clamshell configuration of Skillman because
Skillman’s lid and chassis are hinged in a permanent alignment. App. Br. 4.

3 The Answer does not include the rejection of claims 7, 11, 12, and 17 from
the Final Rejection. Since the Answer does not include a statement that the
rejection of claims 7, 11, 12, and 17 was withdrawn, we will treat the
rejection as maintained.
4 The Answer does not include the rejection of claims 14 and 15 that was
made in the Final Rejection. Since the Answer does not include a statement
that the rejection of claims 14 and 15 was withdrawn, we will treat the
rejection as maintained.
5 We note that claim 6 depends upon itself.
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(2) Skillman teaches away from Huang because the stop is designed to
maintain a space between the lid and chassis and would not work as intended
if placed into a recess as in Huang. Id. at 4.
(3) The combination of Skillman, Huang and Russell fails to teach or
suggest “one or more bumpers extending from the chassis and aligned to
insert in the one or more lid recesses, the bumpers having a rigid portion
coupled to the chassis and a non-rigid portion covering the rigid portion
extending from the chassis.” App. Br. 3-5; Reply Br. 1.
(4) No motivation exists to combine Russell with Skillman and
Huang. App. Br. 4; Reply Br. 1.

Claim Grouping
Appellants do not argue dependent claims 2-6 separately from
independent claim 1. We will therefore treat the claims as a single claim
grouping and select claim 1 as representative of this group. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ANALYSIS
Appellants’ Argument (1)
Appellants argue that no motivation exists to combine Huang’s
protrusion and groove alignment device with the clamshell configuration of
Skillman because Skillman’s lid and chassis are hinged in a permanent
alignment. App. Br. 4. The Examiner explains, however, that modifying
Skillman’s information handling device having a clamshell configuration to
use the protrusion and groove configuration of Huang would allow the
information system to be more securely fastened when in the closed state.
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Ans. 4. The Examiner did not provide a specific citation to the references
for this motivation. Id. However, a person of ordinary skill in the art would
understand basic physics. We are convinced that a person of ordinary skill
would recognize that using Huang’s protrusion and groove scheme would
allow a lid to be more securely fastened when in the closed position. Using
Huang’s protrusions and grooves on the side of Skillman’s device opposite
to the hinge would, in fact, more securely fasten the lid. Huang’s
protrusions and grooves would help prevent the lid from rotating around the
axis perpendicular to the lid’s top surface and reduce mechanical stress on
the hinge. We are therefore unconvinced that the Examiner erred in finding
motivation to combine Huang with Skillman as argued by Appellants.

Appellants’ Argument (2)
Appellants argue that Skillman teaches away from Huang because the
stop is designed to maintain a space between the lid and chassis and would
not work as intended if placed into a recess as in Huang. Id. at 4. We are
not persuaded, however, that it would be beyond the level of ordinary skill in
the art to appropriately size the protrusions and grooves of the combination
of Skillman and Huang to maintain the separation between the display and
the keyboard as taught by Skillman. Furthermore, Appellants are essentially
arguing that Skillman teaches away from Huang because Skillman merely
describes something different. If a prior art reference discloses a different
solution to a similar problem, it does not teach away from the claimed
subject matter unless the prior art reference also criticizes, discredits, or
otherwise discourages the solution claimed. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Appellants have pointed to no probative
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evidence that criticizes, discredits, or otherwise discourages the modification
proposed by the Examiner. We are therefore not persuaded that Skillman
teaches away from Huang.

Appellants’ Argument (3)
Appellants argue that the combination of Skillman, Huang, and
Russell fails to teach or suggest “one or more bumpers extending from the
chassis and aligned to insert in the one or more lid recesses, the bumpers
having a rigid portion coupled to the chassis and a non-rigid portion
covering the rigid portion extending from the chassis.” App. Br. 3-5; Reply
Br. 1.
As discussed above, the Examiner points to Skillman to teach an
information handling device having a clamshell configuration that uses a
rubber stop to maintain separation between the information handling
device’s screen and keyboard when the device is closed. Ans. 3. The
Examiner relies upon Huang to teach a system where protrusions (bumpers)
on a portable computer host mate to grooves (recesses) on an attached panel
(lid) when the attached panel is secured to the portable host. Id. at 3-4. The
Examiner modifies Skillman’s information handling device to use the
protrusion (bumper) and groove (recess) configuration of Huang as opposed
to Skillman’s stop. Id. at 4. The Examiner admits that Skillman and Huang
do not collectively teach a bumper having a rigid portion coupled to the
chassis and a non-rigid portion covering the rigid portion. Id.
The Examiner relies upon Russell to teach a bumper having a rigid
portion coupled to the chassis and a non-rigid portion covering the rigid
portion. Russell discloses a bumper, or protective pad, made of a first
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material such as foam, polymer, rubber, and/or any other suitable material.
¶ 0024. Russell teaches that the impact portion of the bumper may include a
thermoplastic or a fabric-type cover that is bonded to the peripheral pad by
an adhesive. ¶ 0027. Russell explains that the cover provides additional
protection and cushioning. Id. Russell also suggests that the covers can be
made of any color or design for visually aesthetic enhancement or
personalization of the portable electronic device. Id.
Given the teachings of Russell regarding the use of a cover on a
bumper, we are not persuaded that the Examiner erred in concluding that
Skillman, Huang, and Russell collectively teach “one or more bumpers
extending from the chassis and aligned to insert in the one or more lid
recesses, the bumpers having a rigid portion coupled to the chassis and a
non-rigid portion covering the rigid portion extending from the chassis.” It
would have been obvious to one of ordinary skill in the art to modify the
bumpers of the combination of Skillman and Huang to use Russell’s cover
layer. One of ordinary skill in the art would have done so based on Russell’s
teaching that a cover provides additional protection and cushioning as well
as aesthetic enhancement.

Appellants’ Argument (4)
Appellants argue that no motivation exists to combine Russell with
Skillman and Huang. App. Br. 4; Reply Br. 1. As discussed above, Russell
teaches a cover for a bumper that provides additional protection and
cushioning as well as visual enhancement. ¶ 0027. Either additional
protection and cushioning or visual enhancement is motivation.
Alternatively, a combination of the two is motivation. We are therefore not
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persuaded that Appellants are correct in arguing that no motivation exists in
Russell to make the combination.

Claims 8 and 13
The Examiner concludes that Skillman, Huang, and Russell
collectively teach the invention of claim 8. Ans. 5-7, 10-11.
Appellants argue, among other things, that Skillman, Huang, and
Russell do not collectively teach forming a bumper sized to couple in a
chassis pocket. App. Br. 5. Appellants explain that nothing in Huang
suggests an alignment protrusion that is built into a pocket. Id.

ISSUE
Does the combination of Skillman, Huang, and Russell teach or
suggest “forming a bumper sized to couple in the chassis pocket”?

ANALYSIS
Claim 8 is directed to a method for manufacturing an information
handling chassis. The method includes the steps of “forming a chassis
having a pocket” and “forming a bumper sized to couple in the chassis
pocket.” The “pocket” in the chassis is not the same as the “recess” formed
in the lid of the information handling chassis. See claim 13.
Appellants contend that the combination, and particularly Huang, does
not teach or suggest forming a bumper sized to couple in a chassis pocket.
The Examiner does not explain in either the Answer or the Final Rejection
how the references teach a bumper sized to couple in the chassis pocket. See
Ans. 5-7, 10-11; Final Rej. 4-6, 13-14.
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We are not persuaded that the record includes probative evidence that
would lead one of ordinary skill in the art to conclude that the structures
relied upon by the Examiner to teach a bumper would be sized to couple in a
chassis pocket. Huang describes how protrusions are deposited on the back
face of the attached panel (i.e., unit containing the display). Col. 2, ll. 48-50.
Skillman explains that its stop may be semi-permanently or permanently
attached to either the first housing segment including a display or second
housing segment including a keyboard. Col. 4, ll. 38-41. We find no
probative evidence in Skillman that the stop is mounted in a chassis pocket.
Russell shows protective pads attached to flat surfaces of a portable
computing device. See Figs. 1-8. Appellants also describe in their
Specification how bumpers in the prior art are typically molded in plastic
that forms the lid and chassis. Spec. 2:25-26. In view of the absence of
probative evidence in the references relied upon by the Examiner to teach
this claim feature and the Examiner’s failure to provide a rationale
addressing this claim feature, we are persuaded that the Examiner erred in
rejecting independent claim 8 and dependent claim 13.

Claims 16 and 18-20
Appellants do not argue dependent claims 18-20 separately from
independent claim 16. We will therefore treat the claims as a single claim
grouping and select claim 16 as representative of this group. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Independent claim 16 is directed to a system comprising “a bumper
having a rigid portion integrated with a non-rigid portion, the rigid portion
adapted to couple to the information handing system chassis, the non-rigid
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portion adapted to fit into a recess formed in the lid.” Claim 16 does not
include language requiring the bumper to be sized to couple in a chassis
pocket as in claim 8. The Examiner rejected claim 16 for the same reasons
as claim 1. Ans. 3-5. Appellants argue that nothing in Skillman, Huang, or
Russell that teaches, discloses, or suggests a bumper having a rigid portion
integrated with a non-rigid portion. App. Br. 5. As we discussed above,
Russell teaches a bumper that may include a thermoplastic or a fabric-type
cover that is bonded to the bumper by an adhesive. ¶ 0027. When Russell’s
cover is bonded to a bumper, the result is an integrated unit. We are
therefore not persuaded that Appellants have identified error in the rejection.

THE OBVIOUSNESS REJECTION – SKILLMAN, HUANG, RUSSELL, AND RADLOFF
The Examiner rejects claims 7, 11, 12, and 17 under 35 U.S.C. 103(a)
as being obvious over Skillman, Huang, Russell, and Radloff. Final Rej. 9-
10. Claims 7 and 17 depend upon independent claims 1 and 16,
respectively. Since Appellants do not argue these claims separately from the
independent claims, we sustain the rejection of these claims for the reasons
given above. Claims 11 and 12 depend either directly or indirectly on
independent claim 8. The Examiner relies upon Radloff for teaching
bumper that is attached to a chassis by heat staking. Id. The Examiner does
not rely upon Radloff to teach “forming a bumper sized to couple in the
chassis pocket.” Since we do not sustain the rejection of independent claim
8, we also do not sustain the rejection of claims 11 and 12.

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THE OBVIOUSNESS REJECTION – SKILLMAN, HUANG, RUSSELL, AND STERLING
The Examiner rejects claims 9 and 10 under 35 U.S.C. 103(a) as being
obvious over Skillman, Huang, Russell, and Sterling. Ans. 7-8. Claims 9
and 10 depend either directly or indirectly on independent claim 8. The
Examiner relies upon Sterling for teaching the use of double injection
molding to form two objects. Id. at 7. The Examiner does not rely upon
Sterling to teach “forming a bumper sized to couple in the chassis pocket.”
Since we do not sustain the rejection of independent claim 8, we also do not
sustain the rejection of claims 9 and 10.

THE OBVIOUSNESS REJECTION – SKILLMAN, HUANG, RUSSELL, AND LOVE
The Examiner rejects claims 14 and 15 under 35 U.S.C. 103(a) as
being obvious over Skillman, Huang, Russell, and Love. Final Rej. 12-13.
Claims 14 and 15 depend indirectly on independent claim 8. The Examiner
relies upon Love for teaching a lid that rotates around a vertical axis. Id. at
12. The Examiner does not rely upon Love to teach the step of “forming a
bumper sized to couple in the chassis pocket” but instead relies upon
Skillman, Huang, and Russell. Since we do not sustain the rejection of
independent claim 8, we also do not sustain the rejection of claims 14
and 15.

DECISION
The Examiner’s decision rejecting claims 1-7 and 16-20 is affirmed.
The Examiner’s decision rejecting claims 8-15 is reversed.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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