Ex Parte Shao et alDownload PDFPatent Trial and Appeal BoardMay 23, 201813771781 (P.T.A.B. May. 23, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 131771,781 02/20/2013 68769 7590 05/25/2018 HOUSTON OFFICE OF POLSINELLI PC 1000 LOUISIANA STREET FIFTY-THIRD FLOOR HOUSTON, TX 77002 FIRST NAMED INVENTOR Tzu-Ching Shao 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 7NPUS00-528458 4063 EXAMINER CUNNINGHAM, XANTHIA C ART UNIT PAPER NUMBER 2835 NOTIFICATION DATE DELIVERY MODE 05/25/2018 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): salaniz@polsinelli.com patentgroup@polsinelli.com houstonipassistant@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TZU-CHING SHAO and LI-WEN LIN Appeal2017-007850 Application 13/771, 781 Technology Center 2800 Before JAMES C. HOUSEL, JENNIFER R. GUPTA, and DEBRA L. DENNETT, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-29. 3 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 In this Decision, we refer to the Specification filed February 20, 2013 ("Spec."), the Final Office Action dated January 21, 2016 ("Final Act."), the Appeal Brief filed July 13, 2016 ("Br."), and the Examiner's Answer dated December 1, 2016 ("Ans."). 2 Appellant is the Applicant, Aevoe International Ltd., which, according to the Appeal Brief, is the real party in interest. Br. 2. 3 Claim 30 is not rejected, but is objected to as being dependent upon a rejected base claim. Final Act. 13. Appeal2017-007850 Application 13/771,781 The claims are directed to a protective apparatus for a tablet electronic device. Spec. 1. Claim 1, reproduced below, is illustrative of the claims on appeal. 1. A portable apparatus for storing and selectively positioning a portable electronic device in one of a plurality of viewing or operational positions, comprising: a front cover made of a durable material and comprising first and second diagonals that connect opposite comers of the front cover and a midline that define a plurality of cover segments that can be arranged in different positions to form three-dimensional structures for supporting the device by folding or bending the segments along the first and second diagonals and the midline, wherein the first and second diagonals bisect each other; a back cover adapted for removable interconnection with the electronic device; and a connection member hingedly attached to each of the front and back covers to enable the apparatus to transform between open and closed configurations; wherein in the closed configuration the front cover shields the face of the portable electronic device for storage or transport, while in the open, folded configuration, the three- dimensional structures formed by the folded front cover act as supports for selectively positioning the portable electronic device in different arrangements for viewing or operation thereof; wherein the front cover is rectangular with two longer sides and two shorter sides, wherein the connection member is hingedly attached to one of the two longer sides. App. Br. (Claims Appendix) 11. 2 Appeal2017-007850 Application 13/771,781 REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1: Claims 1-13 and 16-294 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Coberly (US 9,095,061 B2, issued July 28, 2015) ("Coberly") in view of Chen (US 8,640,864 B2, issued February 4, 2014) ("Chen"), and Rothkopf (US20120194448 Al, published August 2, 2012) ("Rothkopf') (Final Act. 2; Ans. 2); Rejection 2: Claim 14 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Coberly in view of Chen and Rothkopf, and further in view of Bau (US 2011/0266194 Al, published November 3, 2011) (hereinafter "Bau") and Temus et. al (US 2011/0166690 Al, published July 7, 2011) (hereinafter "Temus") (Final Act. 12; Ans. 2); and Rejection 3: Claim 15 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Coberly in view of Chen and Rothkopf, and further in view of Bau (Final Act. 12; Ans. 2). DISCUSSION After consideration of the evidence on this record and each of Appellant's contentions, we find that the preponderance of evidence supports the Examiner's conclusions that the subject matter of Appellant's claims is unpatentable over the applied prior art. Accordingly, we sustain 4 Although the Examiner indicates that claim 30 includes allowable subject matter, the Examiner mistakenly includes claim 30 in the statement of the rejection. Final Act. 2, 13-14. Because both Appellant and the Examiner recognize that claim 30 should not be included in this rejection (see Br. 4; Ans. 2), we consider this harmless error, and modify the grounds of rejection for clarity. 3 Appeal2017-007850 Application I3/77I,78I the Examiner's rejections for substantially the findings and reasons set forth by the Examiner in the Final Office Action, Answer, and below. Rejection 1 Appellant argues the claims as a group with respect to the first stated ground of rejection. We select claim I as representative of the rejected claims, and independent claim I3, and dependent claims 2-I2, and I6-29 will stand or fall with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv). The Examiner finds that Coberly's Figures IA, IB, and IC, reproduced below, teach unit I 00 including, for example, articulating panel I02, that functions as both a protective cover and stand for an electronic device. See Final Act. 3; Coberly I :28-30, 3:22-26, 4:30-32, Figs. IA, IB, IC. Fig. 1A Fig. 18 r-· ioo ' • ...-·10fJ Fig. 1C Coberly' s Figure I A depicts a top down view of an embodiment of unit I 00 including articulating panel I 02 in an open position; Coberly's Figure IB depicts a perspective view of Fig. I A's unit attached to device 200; and Coberly's Figure IC depicts a side view of Fig. IA's unit attached to device 200. 4 Appeal2017-007850 Application I3/77I,78I The Examiner finds that Coberly teaches unit IOO (front cover), which includes articulating panel I 02, is rectangular in shape, and may be formed from a durable material, such as leather, imitation leather, plastic, rubber, or polymeric materials. See Final Act. 3; Coberly 3:22-3I, Figs. IA, IB, IC. The Examiner finds that Coberly teaches that articulating panel I 02 may include about seven first joints I I2 making up pivot diagonal joints that connect opposite comers of the front cover and a midline around point I I 0 that define a plurality of cover segments that can be arranged in different positions to form three-dimensional pyramid structures for supporting device 200 by folding or bending the segments along the first and second diagonals and the midline, wherein the first and second diagonals bisect each other. See Final Act. 3; Coberly 3:39-50, Figs. IA, IB, IC. In addition, the Examiner finds that Coberly teaches connection member (hinges) I 05 hingedly attached to the shorter side of rectangular unit IOO (front cover) for enabling the unit to transform between open and closed configurations. See Final Act. 3; Coberly 4:32-35. The Examiner acknowledges that Coberly does not teach a back cover adapted for removable interconnection with the electronic device. Final Act. 3. The Examiner finds, however, that Chen teaches rectangular foldable cover I 00 for an electronic device comprising connection member I30 and fixing unit I20 that covers the back of the electronic device when the electronic device is placed into the fixing unit, as shown in Chen's Figure IB reproduced below. See Final Act. 3; Chen 2:4I--45, 3:I3-20, Figs. IA, IB. 5 Appeal2017-007850 Application 13/771,781 100 ~~ \ ~ tc~T======~~~ ~Ld>f 130 ) "-~) 10 120 FIG. 18 Chen's Figure lB depicts a side view of foldable cover 100 with portable electronic device 10 placed in the fixing unit 120. The Examiner finds that one of ordinary skill in the art at the time would have been led, based on Chen, to modify Coberly' s unit to have the back cover "to provide a fully protective cover for the electronic device." Final Act. 4. The Examiner acknowledges that Coberly and Chen do not teach the connection member being hingedly attached to one of the longer sides. 5 See Final Act. 4. To account for this difference, the Examiner relies on Rothkopf. Specifically, the Examiner finds that Rothkopf' s Figure 1 A, reproduced below, teaches a rectangular cover (accessory device 106) for a tablet device (104) comprising a connecting portion with hinge 112 on the 5 Appellant appears to admit that Coberly teaches "that the connection member is still hingedly connected to a longer side of the front cover." Br. 6. This, however, appears to be simply a misstatement given that in the subsequent sentence Appellant states that in "each of the referenced figures, Coberly still show[ s] the unit 100 being attached by the top, shorter/narrower side." Id. 6 Appeal2017-007850 Application I3/77I,78I longer side of the rectangular cover for hingedly attaching to the longer side of the tablet device. See Final Act. 4; Rothkopfi-fi-18, 35, Fig. IA. Rothkopf's Figure IA depicts connector I02 and hinge I I2 used to connect tablet device I04 to accessory device (cover) I06. Based on Rothkopf' s teachings, the Examiner finds that one of ordinary skill in the art would have been led to modify Coberly' s rectangular front cover (unit IOO) to have connection member I05 hingedly attached to the longer side rather than the shorter side of the front cover "so that the connection member can be pivotally connected to the accessory as well as the front cover which would incorporate a wider range of flexibility for the user." Final Act. 4; Rothkopf i-f 35. Appellant admits that Rothkopf teaches a connection member hingedly attached to the longer side of its front cover, but argues that one of ordinary skill in the art would not have had a "reasonable basis" to modify Coberly' s rectangular front cover to include a hinge attached to the longer side rather than the shorter side of its cover. Br. 5, 7. Appellant's argument is not persuasive of reversible error. The Examiner has provided a reason for modifying Coberly to include a hinge on 7 Appeal2017-007850 Application 13/771,781 the longer side of its rectangular cover-to provide the user with greater flexibility by allowing the cover to be connected to the electronic device on more than one side. See Final Act. 4. Appellant does not identify error in, or explain why, the Examiner's reasoning is erroneous. Instead, Appellant argues that Rothkopf could not have been combined with Coberly because "one cannot simply change the connection of Coberly to the longer side as in Rothkopf without changing the principle operation of [Coberly's] device" because "the folding structures of Coberly and Rothkopf are completely different," and "Coberly's intended operation as well as its method and structure folding would be completely modified by the proposed combination and modification." Br. 7- 8. Appellant's arguments are not persuasive of reversible error. The Examiner finds that because Coberly teaches devices that come in different shapes, it likewise teaches front covers that would operate with the size and shape of the device. Ans. 4; Coberly 3: 14--21. Based on this teaching, the Examiner finds that Coberly would have reasonably suggested redesigning the shape of the front cover to correspond to a device, and modifying the corresponding joints on the front cover per the required shape. See Ans. 4. Appellant did not file a Reply Brief, and thus, does not dispute these findings set forth in the Answer. The skilled artisan would "be able to fit the teachings of multiple patents together like pieces of a puzzle" since the skilled artisan is "a person of ordinary creativity, not an automaton." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420-21 (2007). It is not necessary that the references be physically combinable, without change, to render obvious the invention under review. In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The 8 Appeal2017-007850 Application 13/771,781 criterion instead is what these references would have taught or suggested to a person of ordinary skill in the field of the invention. In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). On this record, Appellant does not present persuasive arguments or evidence that one of ordinary skill in the art would not have, through the use of no more than ordinary creativity, modified Coberly's rectangular front cover to include a hinge on the longer rather than the shorter side of its cover as taught by Rothkopf. Accordingly, we sustain the Examiner's obviousness rejection of claims 1-13 and 16-29. Rejections 2-3 Appellant relies on the same arguments raised in connection with claims 1 and 13 discussed above to identify reversible error in the Examiner's§ 103(a) rejections of claims 14 and 15. See Br. 9. Accordingly, based on the reasons set forth above, and the Answer, we determine that the preponderance of evidence supports the Examiner's conclusion that the subject matter recited in claims 14 and 15 is unpatentable over the applied prior art. Therefore, we sustain the Examiner's obviousness rejections of claims 14 and 15. DECISION For the above reasons, the rejections of claims 1-29 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation