Ex Parte Webb et alDownload PDFPatent Trial and Appeal BoardApr 23, 201411769419 (P.T.A.B. Apr. 23, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM WEBB, ANNA-PIA SLOTHOWER, LAWRENCE LAM, and RICH GIOSCIA ____________ Appeal 2012-000658 Application 11/769,419 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000658 Application 11/769,419 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 18-22, 24, 25, and 27-32. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION Appellants’ claimed invention is “a handheld computer comprised of a moveable assembly.” (Spec. 1.) Independent claim 18, reproduced below, is representative of the subject matter on appeal: 18. A mobile computer comprising: a first housing segment including a display; a second housing segment including at least one input mechanism, wherein the second housing segment is moveably coupled to the first housing segment to move primarily along a single direction between an extended position and a contracted position, (i) wherein the first housing segment and the second housing segment are coupled so that movement of the housing segments toward the extended position increase a width of the mobile computer as determined in the contracted position; and (ii) a midframe coupled to the first and second housing segments to enable the first and second housing segments to move primarily along the single direction; (iii) wherein the first housing segment overlays the second housing segment when the segments are in the contracted position. (Contested limitations emphasized, roman numerals added.) Appeal 2012-000658 Application 11/769,419 3 REJECTIONS A. Claims 18-22, 24-25, and 27-32 stand rejected under 35 U.S.C. § 112 first paragraph, for failing to comply with the written description requirement. B. Claims 18-22, 24-25, and 27-32 stand rejected under 35 U.S.C. § 103(a) over the combined teachings and suggestions of U.S. Patent 7,412,258 to Lipponen and U.S. Patent 6,111,527 to Susel. GROUPING OF CLAIMS Based on Appellants’ arguments, we decide the appeal of § 103 rejection B on the basis of representative claim 18. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).1 ANALYSIS Rejection A (§ 112 written description support) Issue: Under § 112, first paragraph, does the originally-filed Specification (including the drawings and claims) describe the claimed invention in sufficient detail that one skilled in the art would reasonably conclude the inventor had possession of the claimed subject matter as of the filing date? To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art 1 Appellants filed a Notice of Appeal on March 8, 2011. The date of filing the Notice of Appeal determines which set of rules applies to an ex parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1) applies to the appeal. See also MPEP 1220, Rev. 8, July 2010. Appeal 2012-000658 Application 11/769,419 4 can reasonably conclude that the inventor had possession of the claimed subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). The invention claimed does not have to be described in ipsis verbis in order to satisfy the written description requirement. Union Oil Co. of California v. Atlantic Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). We are in agreement with Appellants’ statement pointing to support (App. Br. 2-3) and contentions regarding claims 18 and 28. (Reply Br. 4-9.) We further agree with Appellant’s statement of support and contentions regarding claims 20 and 32. (App. Br. 10-11.) Although the written disclosure does not explicitly illustrate a single embodiment that encompasses all three features, the written disclosure does illustrate separate embodiments having each of the claimed features. The written disclosure further describes that these embodiments may be combined (Spec., pages 8 and 21, cited at App. Br. 2-3). Therefore, we find Appellants’ Specification (including the original claims and drawings) describes the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed subject matter as of the filing date. Accordingly, we reverse the Examiner’s rejection A of claims 18-22, 24-25, and 27-32 under § 112, first paragraph, (written description). Benefit of Parent Application Effective Filing Date The Examiner raises the issue of whether the certain features of claims 20, 28, and 30 are entitled to the benefit of the parent application’s effective filing date. (Final Office Action, mailed Dec. 8, 2010, pp. 2-3; see also Ans. 4-5.) Appellants respond on pages 14-19 of the Appeal Brief. Appeal 2012-000658 Application 11/769,419 5 The application on appeal (11/769,419) is a continuation of application 09/932,213, hereafter the parent ’213 application. (Spec. 1.) We observe that each of the patent documents relied on by the Examiner as prior art in § 103 rejection B before us on appeal has an effective filing date before the August 17, 2001 effective filing date of the parent ’213 application. (Spec. 1.) Therefore, the issue of whether the claims in this application on appeal (11/769,419) are entitled to the benefit of the effective filing date of the parent ’213 application is moot for purposes of considering the prior art relied on by the Examiner in the §103 rejection on appeal.2 See App. Br. 14. Rejection B- Independent Claim 18 Issue: Under § 103, did the Examiner err in finding the combination of Lipponen and Susel would have taught or suggested the contested limitation of “a midframe coupled to the first and second housing segments 2 See In re NTP, Inc, 654 F.3d 1268, 1277 (Fed. Cir. 2011): [F]or a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120. . . . Under § 120, a patent is entitled to the priority date of an earlier filed application if (1) the written description of the earlier filed application discloses the invention claimed in the later filed application sufficient to satisfy the requirements of § 112; (2) the applications have at least one common inventor; (3) the later application is filed before the issuance or abandonment of the earlier filed application; and (4) the later application contains a reference to the earlier filed application. In addition, if the later filed application claims priority through the heredity of a chain of applications, each application in the chain must satisfy § 112. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997). Appeal 2012-000658 Application 11/769,419 6 to enable the first and second housing segments to move primarily along the single direction,” within the meaning of representative claim 18? (Emphasis added.) Appellants contend: [E]ven if the lower compartment 12 of Susel is equivalent to the second housing segment of Claim 18 and the pallet 20 is equivalent to the first housing segment of Claim 18, Susel does not show that the slots 38 and 40 are coupled [to] both the lower compartment 12 and the pallet 20 to enable the lower compartment 12 and the pallet 20 to move primarily along the single direction. (App. Br. 14; emphasis added.) In support of the rejection, the Examiner points to Lipponen for disclosing a first housing segment slideably coupled to a second housing segment (Answer 10; citing Lipponen Figure 1 and col. 4, ll. 14-17). The Examiner looks to Susel for teaching: [A]n electronic device comprising a midframe (38, 40; Fig. 1E) coupled to a first housing segment (20) and a second housing segment (12/16) to enable the first and second housing segments to move primarily along the single direction (Fig. 1B; col. 6, lines 30-42). Also, see Fig. 3B. (Ans. 11, citing Susel.) The Examiner, therefore, relies upon Susel’s parts 38 and 40 as teaching or suggesting the claimed “midframe.” (Claim 18). Susel describes parts 38 and 40 as follows: In order to move left pallet 20 relative to lower compartment 12, pallet 20 preferably includes a pair of rails 34 and 36 along its top and bottom surfaces, as shown with specific reference to FIG. 1B and IF. Rails 34 and 36 are Appeal 2012-000658 Application 11/769,419 7 designed to interface with and fit into complimentary slots 38 and 40 along top and bottom surfaces of lower compartment 12, as shown with reference to FIG. 1B, IE and IF. (Susel, col. 6, ll. 29-36.) Given this evidence, we agree with the Examiner’s finding that the aforementioned contested features of the claim were present in the combined teachings and suggestions of the cited prior art. We also agree with the Examiner’s proffered motivation to combine the complementary slots 38 and 40 (col. 6, ll. 38; Fig. 1E) of Susel with the slideably coupled segments of Lipponen (Final 9-10; Ans. 11). We additionally observe the similarity between Susel’s Figure 1E (complimentary slots 38 and 40, i.e., a slot/ sliding rail arrangement) and Appellants’ rails 159 provided on midframe 154, as depicted in Figure 15 and described on page 19 of the Specification, paragraph two. Similar to Appellants’ description (id.), Susel teaches “Rails 34 and 36 are designed to interface with and fit into complimentary slots 38 and 40. . . .” (Col. 6, ll. 32-33). The Supreme Court guides “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Here, Lipponen does not provide implementation details regarding exactly how the keyboard slides (e.g., see col. 3, ll. 36, 62; col. 4, l.17); however, we find the Examiner’s proffered combination with Susel’s complementary slots 38 and 40 (col. 6, ll. 38; Fig. 1E) would have produced predictable results. See Ans. 11 (“securely sliding”). Therefore, we find Appellants’ contentions unpersuasive. Accordingly, on this record, we are not persuaded of error regarding the Examiner’ underlying factual findings and ultimate legal conclusion of Appeal 2012-000658 Application 11/769,419 8 obviousness. We sustain the Examiner’s § 103 rejection B of representative claim 18, and grouped claims 19-22, 24, 25, and 27-32 (not argued separately) which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). Reply Brief To the extent Appellants advance new arguments in the Reply Brief (6-7, at point B) not in response to a shift in the Examiner’s position in the Answer, we note that “[a]ny bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech., Inc. v. Ion Beam Appls. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”) (Citations and quotation marks omitted.) Appeal 2012-000658 Application 11/769,419 9 DECISION We reverse the Examiner’s decision rejecting claims 18-22, 24-25, and 27-32 under 35 U.S.C. § 112, first paragraph. We affirm the Examiner’s decision rejecting claims 18-22, 24-25, and 27-32 under 35 U.S.C. § 103. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED cdc Copy with citationCopy as parenthetical citation