Ex Parte Verdon et al

Patent Trial and Appeal Board

Apr 30, 2013

11424046 (P.T.A.B. Apr. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN VERDON, STEWES BOURBAN,
and GILLES DERRIEY
_____________

Appeal 2010-003099
Application 11/424,046
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
We affirmed the Examiner’s final rejection of claims 1-12 and 14-24
on March 30, 2011. We denied Appellants’ request for reconsideration on
June 13, 2011. Appellants appealed to the United States Court of Appeals
for the Federal Circuit (CAFC). The Director conceded that “Martin’s Zebra
connector (31) is not part of the ‘middle part’ as claimed” and the CAFC
remanded to the Board on August 13, 2012, to reassess our obviousness
analysis and our claim construction in light of the Director’s concession of
error (CAFC Appeal No. 2011-1602, at 2-3). We reverse the Examiner’s
rejection of claims 1-12 and 14-24 and we enter a new ground of rejection.

INVENTION
Appellants’ Figure 2 is reproduced below:

Appellants’ Figure 2 and claimed invention are directed to a glass 10
of a wristwatch that entirely covers shoulder 4 of a middle part 3 to which it
is bonded or welded at joint zones 15 formed by the enamel deposition 20
(see Fig. 2; Spec. 3-4).
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Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A sealed case comprising:
a middle part having a shoulder having a given hue;
a back cover delimiting a compartment; and
a glass closing the compartment, the glass having an outer face and an
inner face and comprising a transparent material resistant to temperatures
above 500°C, wherein the glass is bonded or welded at joint zones at least
partially covering the shoulder of the middle part,
wherein the inner face of the glass includes an enamel deposition
having a desired final thickness formed in the joint zones, and the enamel
deposition is disposed to conceal the joint zones.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Jaccard US 4,435,090 Mar. 6, 1984
Martin EP 1122620 A1 Aug. 8, 2001
The following rejection is before us for review:
The Examiner rejected claims 1-12 and 14-24 under 35 U.S.C. §
103(a) as being unpatentable over Martin in view of Jaccard.

ISSUE
The pivotal issue is whether Martin teaches “a middle part” as recited
in claim 1.

PRINCIPLES OF LAW
Our reviewing court states that “the words of a claim ‘are generally
given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415
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F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citations omitted). The
“ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention, i.e., as of the effective filing date of the patent
application.” Id. at 1313.

ANALYSIS
Appellants argue (App. Br. 7-8), inter alia, that the Examiner’s
interpretation of Martin’s bezel (10) and zebra connector (31) as the “middle
part” is incorrect. Appellants explain that this is because the Zebra
connector is part of the electronic circuit and not part of the case (App. Br.
8-9). Appellants assert that the “middle part” is a term of art meaning “the
middle [of the case] into which the movement is fixed” (App. Br. 12-15
(brackets in original); Reply Br. 3-6).
We are persuaded by Appellants’ arguments. That is, because the
Zebra connector is part of the electronic circuit, based on the customary
definition as understood by one skilled in the art, then it cannot broadly and
reasonably be part of the “middle part” which is separate from the electronic
circuit. See Phillips, 415 F.3d at 1312.
Thus, we will reverse the Examiner’s rejection of claim 1 and the
rejection of claims 2-12 and 14-24 for the same reasons.

CONCLUSION
Martin does not teach “a middle part” as recited in claim 1.
We use our authority under 37 C.F.R. § 41.50(b) to enter a new ground
of rejection of claims 1-12 and 14-24 as set forth below.
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NEW GROUND OF REJECTION
The following new rejections of claims 1-12 and 14-24 are entered
under the provisions of 37 C.F.R. § 41.50(b):
1. Claims 1-4, 7, 9-12, and 14-24 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Bourban (US Patent No. 7,712,954 B2; filed
June 12, 2006).
Regarding independent claims 1 and 7, Bourban teaches a sealed case
comprising:
a middle part 3 having a shoulder (i.e., the top surface of the middle
part 3 where the enamel 20 is deposited; also referred to as shoulder 4 of the
middle part 3 (col. 3, ll. 46-48)) having a given hue (see Fig. 3, middle part
3; col. 3, ll. 1-6 (describing the middle part 3); col. 3, ll. 19-23 (describing
the same hue observed over the entire periphery of the case); col. 1, ll. 63-
64; col. 2, ll. 5-7 (describing that one of the goals of the invention is to
harmonize the hue of the middle part shoulder seen through the crystal with
that of the rest of the middle part while concealing the contact zones));
a back cover 5 delimiting a compartment 7 (see Fig. 1; Fig. 3 (which
is the cross section of Fig. 1); col. 1, ll. 28-31 (describing a case 1 formed of
a middle part 3 closed on its bottom part by a back cover 5 and on its top
part by a crystal 10 delimiting a compartment 7)); and
a glass closing the compartment, the glass having an outer face and an
inner face and comprising a transparent material resistant to temperatures
above 500°C, wherein the glass is bonded or welded at joint zones at least
partially covering the shoulder of the middle part (see Fig. 3 (enamel 20
covering the shoulder of the middle part 3 at the joint zone (i.e., where the
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enamel is bonded on the middle part shoulder)); see also col. 2, ll. 1-19; col.
3, ll. 1-10 (describing the glass as a transparent material resistant to
temperatures above 500°C)),
wherein the inner face of the glass includes an enamel deposition
having a desired final thickness formed in the joint zones, and the enamel
deposition is disposed to conceal the joint zones (col. 2, ll. 1-25; col. 3, ll. 1-
10, 19-23 (describing how the enamel deposition in the form of a continuous
tape and appropriate thickness provides for the same hue in the entire
periphery of the case); also note that Fig. 3 shows the enamel deposition tape
covering the shoulder of the middle part 3 and thereby necessarily
concealing the joint zone and providing the desired end result of the same
hue).
Regarding claim 2, Bourban teaches that the glass includes a thick
edge in the inner face of which a hollow 14 is formed, whose top depth
matches the desired final thickness of the enamel deposition (see Figs. 4-6;
col. 3, ll. 31-48).
Regarding claim 3, Bourban teaches an enamel deposition being
formed on top of the inner face of the glass at the joint zones (col. 3, ll. 35-
42, 45-48), thereby delimiting uncovered glass portions outside said joint
zones.
Regarding claim 4, Bourban teaches joint zones which are continuous
and cover the whole of the shoulder of the middle part (col. 3, ll. 45-48; col.
2, ll. 1-7; col. 3, ll. 19-23 (wherein the enamel deposition is in the form of a
continuous tape at the joint zone and covers the shoulder 4 of the middle
part 3)).
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Regarding claim 9, Bourban teaches the transparent material forming
the glass as a mono or polycrystalline material selected from the group
consisting of quartz, spinelle, and corundum (col. 2, ll. 20-23).
Regarding claim 10, Bourban teaches the material forming the glass
being sapphire (col. 2, l. 23).
Regarding claim 11, Bourban teaches the transparent material forming
the glass being an amorphous material (col. 2, ll. 23-25).
Regarding claims 12 and 14-23, Bourban teaches the compartment of
the case containing a timepiece movement and a dial to form the timepiece
(see claim 11 of Bourban).
Regarding claim 24, Bourban teaches an amorphous material being
mineral glass (col. 2, ll. 23-25).
2. Claims 5, 6, and 8 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Bourban.
Regarding claims 5 and 6, Bourban discloses that metallization is a
well known method and can be carried out at areas of interest to harmonize
the hue of the middle part shoulder seen through the crystal with that of the
rest of the middle part (col. 1, ll. 59-64).
Regarding claim 8, it would have been obvious to one skilled in the
art at the time of the invention to make the middle part out of material, such
as ceramic, so as to match the enamel deposed on the middle part and thus
achieve the desired end result of concealing the joint zone and providing the
desired end result of the same hue (see col. 2, ll. 1-25; col. 3, ll. 1-10, 19-
23).

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DECISION
The decision of the Examiner to reject claims 1-12 and 14-24 under 35
U.S.C. § 103(a) is reversed.
We have entered a new ground of rejection against claims 1-12 and 14-
24 under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings 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 37 C.F.R. § 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)

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