11796253 (P.T.A.B. Jan. 15, 2013)

Ex Parte Tracy et al

Patent Trial and Appeal BoardJan 15, 2013

11796253 (P.T.A.B. Jan. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte MARK S. TRACY, PAUL J. DOCZY, and JONATHAN R. HARRIS _____________ Appeal 2010-009516 Application 11/796,253 Technology Center 2800 ______________ Before, DAVID M. KOHUT, ERIC B. CHEN, and LARRY J. HUME, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009516 Application 11/796,253 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-15, all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of these claims and enter a new ground of rejection. INVENTION The invention is directed to a module and device containing a bezel assembly that is coupled to a communication card and contains an antenna. Abstract. Claim 1 is representative of the invention and is reproduced below: 1. A wireless card module, comprising: a first wireless communication card with a connector that fits in a bay of an electronic device; a bezel assembly attached to the first wireless communication card, the bezel assembly detachable from the first wireless communication card and attachable to a second wireless communication card that is different than the first wireless communication card; and a wireless antenna connected to the bezel assembly. REFERENCES Casarez US 5,913,174 June 15, 1999 Northey US 6,556,170 B2 Apr. 29, 2003 Hayes US 2006/0077103 A1 Apr. 13, 2006 Smith US 7,142,161 B2 Nov. 28, 2006 Appeal 2010-009516 Application 11/796,253 3 REJECTIONS AT ISSUE Claims 1-4, 6-8, 11, 12, 14, and 15 are rejected under 35 U.S.C. § 102(b) as being anticipated by Northey. Ans. 4-6. Claims 5 and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Northey and Hayes. Ans. 7-8. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Northey and Casarez. Ans. 8-9. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Northey and Smith. Ans. 9. ISSUE1 Did the Examiner err in finding that Northey discloses a bezel assembly that can be attached to two different wireless communication cards, as required by claim 1? ANALYSIS Claim 1 recites “a bezel assembly attached to the first wireless communication card, the bezel assembly detachable from the first wireless communication card and attachable to a second wireless communication card that is different than the first wireless communication card.” Independent claims 7 and 12 recite similar limitations. Claims 2-6, 8-11, and 13-15 are dependent upon claims 1, 7, and 12 (respectively). The Examiner finds that Northey discloses, in Figure 5, a package enclosed in a bezel assembly. Ans. 10. Additionally, the Examiner finds that Northey discloses, in column 8, lines 2-5, that the package can be any device using an antenna. Ans. 10. Thus, the Examiner finds that the bezel 1 Appellants make additional arguments with respect to claims 3-6, 9-11, and 13. App. Br. 11-13; Reply Br. 3-4. We will not address the additional arguments as this issue is dispositive of the Appeal. Appeal 2010-009516 Application 11/796,253 4 assembly can be attached to multiple communication devices since the bezel assembly can be easily unsnapped and the package can be swapped out. Ans. 10. Appellants argue that Northey does not disclose interchangeability, but rather discloses making the assembly with different wireless adapters. App. Br. 10-11; Reply Br. 2-3. We agree with Appellants. However, we find that one of ordinary skill in the art would find it obvious to use the same bezel assembly for multiple electrical packages since the bezel assembly clips around the electrical package and could be easily adapted to swap out a number of different electrical packages. We designate our analysis to be a new ground of rejection of independent claims 1, 7, and 12 under 35 U.S.C. § 103(a) over Northey. Since the Patent Trial and Appeal Board is a review body rather than a place of initial examination, we have not reviewed dependent claims 2-6, 8- 11, and 13-15 to the extent necessary to determine whether Northey, either alone or in combination with one or more of the references of record, renders any of these claims obvious. We leave it to the Examiner to determine the appropriateness of any further rejections of dependent claims 2-6, 8-11, and 13-15 under 35 U.S.C. § 103(a). CONCLUSION The Examiner erred in finding that Northey discloses a bezel assembly that can be attached to two different wireless communication cards, as required by claim 1. SUMMARY The Examiner’s decision to reject claims 1-15 as being anticipated by Northey is reversed. Appeal 2010-009516 Application 11/796,253 5 We enter a new ground of rejection for claims 1, 7, and 12 as being unpatentable under 35 U.S.C. § 103(a) over Northey. TIME PERIOD This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 CFR § 41.50(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 the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . 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)(iv). REVERSED 37 C.F.R. § 41.50(b) tj