Ex Parte Shao et al

Patent Trial and Appeal Board

May 23, 2018

13771781 (P.T.A.B. May. 23, 2018)

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.
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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.
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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.
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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.
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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
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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
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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