11424046 (B.P.A.I. Jun. 13, 2011)

Ex Parte Verdon et al

Board of Patent Appeals and InterferencesJun 13, 2011

11424046 (B.P.A.I. Jun. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/424,046 06/14/2006 Christian Verdon ICB0256 6880 24203 7590 06/13/2011 GRIFFIN & SZIPL, PC SUITE PH-1 2300 NINTH STREET, SOUTH ARLINGTON, VA 22204 EXAMINER COLLINS, JASON M ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 06/13/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ 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 REQUEST FOR REHEARING Appeal 2010-003099 Application 11/424,046 2 Appellants requested a rehearing of our decision dated March 30, 2011, wherein we affirmed the rejection of claims 1-12 and 14-24 under 35 U.S.C. § 103(a). Appellants contend that the Board overlooked the Examiner’s deficiency of addressing the limitation of “the enamel deposition is disposed to conceal the joint zones” as recited in claims 1 and 7 (Reh’g Req. 3 (emphasis altered)). Initially, we note that while Appellants reiterated the limitation of “a middle part having a shoulder having a given hue . . . wherein the glass is bonded or welded at joint zones at least partially covering the shoulder of the middle part . . . and the enamel deposition is disposed to conceal the joint zones” (App. Br. 6, 10-12; Reh’g Req. 3), they only provided arguments with respect to what constitutes a “middle part” (App. Br. 7-10). No substantive arguments with analysis or explanation were raised as to how or why the particular limitation of “the enamel deposition is disposed to conceal the joint zones” was not obvious over the combination of Martin in view of Jaccard. Simply pointing out what a claim requires with no attempt to point out how or why the claims patentably distinguish over the prior art does not amount to a separate argument for patentability. 37 C.F.R. § 41.37(c)(1)(vii) (2004). See also In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987). Furthermore, “[a]n issue not raised by an appellant in its opening brief . . . is waived.” See Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (citation omitted) (internal quotation marks omitted); see also Ex parte Scholl, No. 2007-3653, slip op. at 18 n.13 (BPAI Appeal 2010-003099 Application 11/424,046 3 Mar. 13, 2008) (informative), available at http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf. Thus, the newly raised arguments specifically addressing the limitation of “the enamel deposition is disposed to conceal the joint zones” have been waived. Nonetheless, to the extent that the mere recitation of the disputed limitation constitutes a minimal argument, we have considered the newly raised Appellants’ arguments (Reh’g Req. 3-9) which we find unpersuasive in that they mischaracterize the Board’s opinion. Appellants provided the following annotated Figure 2 (Reh’g Req. 7) of how we interpreted Martin’s Figure 2. This is not an accurate depiction of how we interpreted Martin’s Figure 2 in the Board’s Opinion. The following annotated Figure 2 is introduced to clarify our opinion. Appeal 2010-003099 Application 11/424,046 4 As we previously stated (Opinion 4), the claim language does not preclude the middle part having a component (i.e., zebra connector) that has an electronic function in addition to the structural support function. We explained that because the glass is secured to the zebra connector with the deposition of material 6, the zebra connector does in fact provide structural support to the connected glass (Opinion 4-5). We noted that representative claim 1 did not preclude Martin’s additional mechanical connection (i.e., where the glass 5 mechanically connects with bezel 10) (Opinion 5; also now denoted as the “additional mechanical joint” in our annotated Figure 2) as being part of the middle part. Thus, what we stated in our Opinion is that the middle part (as indicated in our annotated Figure 2) includes the Joint Zone (where the glass is secured to the zebra connector), the bezel 10, and the zebra connector 31(see also Ans. 4). We never stated, as alleged by Appellants in annotated Figure 2, that the mechanical joint is part of the joint zone. In our Opinion, Appeal 2010-003099 Application 11/424,046 5 we noted that we agreed with the Examiner’s interpretation of Figure 2 as explained in page 4 of the Answer (Opinion 4). The Examiner stated: The middle part has a shoulder, at the top of the part labeled 31. The glass 5 and the deposition 6 cover and conceal this shoulder. This covered area above 31 is also seen to be the joint zone since the glass is secured to the case here. Martin does not use the claimed materials. However, Jaccard teaches a more rugged device, where the crystal is formed of sapphire and is resistant to temperatures higher than 500°C. Further, Jaccard teaches using enamel for the dielectric, decorative area because it too can withstand such a temperature. (Ans. 4 (emphasis added)). Thus, we agreed with the Examiner that the joint zone is the “covered area above 31 . . . since the glass is secured to the case here,” rather than the “joint zone” indicated by Appellants’ annotated Figure 2, which included the mechanical joint. Appellants’ newly raised argument (Reh’g Req. 4; see also similar argument on Reh’g Req. 14-16) that Martin’s “decorative layer (6) is disposed to conceal the conductive pads (3) . . . it is not disposed to conceal the ‘joint’ between the crystal (1) and the bezel (10) as evident from the annotated version of Martin’s Fig. 2” is of no merit. This is because the “joint zone” based on the Examiner’s interpretation, which we adopted, is the “covered area above 31 . . . since the glass is secured to the case”—not the glass secured to the case area and the mechanical joint. We are also not persuaded by Appellants’ argument (Reh’g Req. 10- 11) that our interpretation, adopting the Examiner’s reasoning of the middle part including the zebra, contradicts the Specification’s disclosure of a case “in a known manner.” The Specification does not exclude any electronic components being part of the middle part, nor does Martin’s cited declaration excludes such components based on the definition that a case Appeal 2010-003099 Application 11/424,046 6 “may include” (see Reh’g Req. 11) a variety of components which does not explicitly mention electronics. In other words, the word “may” does not exclude the presence of electronics. Thus, we do not find this argument persuasive. We also find unpersuasive Appellants’ argument with respect to the flexibility of the zebra component (Reh’g Req. 12-13). We explained that because the glass is secured to the zebra connector with the deposition of material 6, the zebra connector does in fact provide structural support to the connected glass (Opinion 4-5). Appellants again argue that the middle part is a separate and distinct part from the bezel (Reh’g Req. 17). Appellants argue that the dictionary definition cited by the Board is not part of the record and deprived Appellants of a proper review of the definition in a “substantially new rejection” (Reh’g Req. 17-18). We disagree. First, claim construction is a matter of law subject to de novo review. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc). The cited electronic version of the dictionary definition, which is readily available in the internet, has become part of the record by our inclusion in our Opinion. Furthermore, the definition supports the Examiner’s interpretation that the middle part does not exclude the bezel, and thus, the claim construction by the Board afforded Appellants a fair opportunity to react to the thrust of the rejection, which is not a “new rejection.” See In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976); Ex Parte Sami Chems. & Extracts, Ltd., No. 2007-3482, slip op. at 11-12 (BPAI Feb. 2, 2009) (informative), available at http://www.uspto.gov/ip/boards/bpai/decisions/inform/rh073482.pdf. Appeal 2010-003099 Application 11/424,046 7 Our reviewing court determined that “the words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415 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. The date of the definition of the term “bezel” was prior to the date of the invention and was appropriately referenced by the Board. See Opinion 5. In our Opinion, on page 5, the “bezel” was defined, in pertinent part, as “[t]he rim which . . . fastens . . . the crystal of a watch, in the cavity in which it is set.” WEBSTER’S DICTIONARY 142 (1913), available at http://machaut.uchicago.edu/cgi-bin/WEBSTER.sh?WORD=bezel. This definition is consistent with Appellants’ own admission during the Oral Hearing of March 23, 2011, that element 3 of Appellants’ Figure 2 constitutes “a support ring that goes entirely around the circumference of the watch” (Oral Hearing 10:11-13) (i.e., the rim that fastens the crystal to the watch) and which constitutes the middle part (Oral Hearing 9 (referring to element 3 as “middle part”)). Thus, we fail to understand how Appellants can argue that “the terms ‘bezel’ and the ‘middle part’ pertain to substantially different parts of a watch” (Reh’g Req. 18), when Appellants’ middle part 3 is the rim that fastens the crystal of the watch (i.e., bezel). Appellants’ request for rehearing has been granted to the extent that our decision has been reconsidered, but such request is denied with respect to making any modifications to the decision. Appeal 2010-003099 Application 11/424,046 8 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). REHEARING DENIED babc