Ex Parte Williams

Patent Trial and Appeal Board

Sep 9, 2016

12255557 (P.T.A.B. Sep. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/255,557 10/21/2008
26183 7590 09/13/2016
FISH & RICHARDSON P,C (APPLE)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
HILARY LYNDSAY WILLIAMS
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.
18962-0961RE2/P6250USR2 3543
EXAMINER
NGUYEN, KEVIN M
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
09/13/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITEn STATES PATENT ANn TRA.nEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HILARY LYNDSAY WILLIAMS
Appeal2014-009063
Application 12/255,557
Technology Center 2600
Before MAHSHID D. SAADAT, CHARLES J. BOUDREAU, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a rejection
of claims 50 and 52---69, which are all pending claims. See App. Br. 15-17.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-009063
Application 12/255,557
STATEMENT OF THE CASE
Introduction
Appellant's disclosure relates to "portable computers and more
particularly but not exclusively hand-held computers of the kind sometimes
referred to as personal digital assistants." Spec. 1:7-9. Claim 50, the sole
independent claim, is reproduced below for reference:
50. A handheld telephone comprising:
a case, the case being sized and shaped to be held in one
hand of a user; the case being of a non-clam shell design and
without any hinge; the case further housing:
a display;
a cellular transceiver;
a rechargeable battery;
at least one accelerometer that produces an output
signal representative of detected movement of the telephone;
and,
a processor responsive to the output signal to
determine a most likely orientation of the telephone to view
information on the display in correspondence with a user's intent
in moving the telephone.
References and Rejections
Claims 50, 55-57, and 59 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Burrell (US 5,910,882; June 8, 1999) and Silva (US
5,996,080; Nov. 30, 1999). Non-Final Act. 5.
Claims 52-54, 58, 60-69 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Burrell, Silva, and combinations with additional
references. Non-Final Act. 8-16.
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Appeal2014-009063
Application 12/255,557
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments. We adopt the Examiner's findings and conclusions (see Non-
Final Act. 5-16; Ans. 4--8) as our own, and we add the following primarily
for emphasis.
Appellant argues the Examiner erred in rejecting independent claim
50, because the cited references do not teach or suggest "at least one
accelerometer that produces an output signal representative of detected
movement of the telephone; and, a processor responsive to the output signal
to determine a most likely orientation of the telephone to view information
on the display in correspondence with a user's intent in moving the
telephone," as recited in claim 50. See App. Br. 11. Particularly, Appellant
contends that,
when utilized individually and even when used in the alternative
configuration of a plurality of sensor elements, the sensor( s) 703
of Silva merely "disable circuitry" The Examiner has
provided no independent reasoning why a worker of ordinary
skill in the art would look to sensors 703 of a data capture
terminal of Silva which disable circuitry to remedy the defects in
Burrell in failing to teach "at least one accelerometer that
produces an output signal of detected movement ... " and the
references also independently do not provide such a reason.
Reply Br. 3; see also App. Br. 10-11; Silva 9:29-10:5.
We are not persuaded the Examiner erred in finding the combination
of Burrell and Silva renders claim 50 obvious. See Non-Final Act. 5-7.
Both references are directed to portable electronic devices (see Burrell
Abstract; Silva 1:13-18), and---contrary to Appellant's assertions (see, e.g.,
Reply Br. 3}-it is not necessary that all features of Silva be physically
inserted into Burrell. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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Appeal2014-009063
Application 12/255,557
Rather, we agree with the Examiner that one of ordinary skill would use the
sensors of Silva to modify or replace the sensors disclosed in Burrell. See
Ans. 7-8; see also Burrell Figs. 10-11, 5:65---6:29; Silva 9:28-10:3.
Burrell discloses a device with sensors to "determine whether the
housing 4 is aligned along a vertical axis or a horizontal axis and inform the
CPU 50 of this alignment" so that the CPU can "re-orient the information
displayed within the screen 10 accordingly." Burrell 6:6-11. Silva discloses
using a "plurality of sensor elements for identifying orientation, motion
and/or acceleration." Silva 10:1-3. Thus, the Examiner's substitution of
one familiar element for another will yield predictable results: a device that
will "accomplish the transition between a vertically oriented display screen
and a horizontally oriented screen." Non-Final Act. 6. See KSR Int 'l v.
Teleflex Inc., 550 U.S. 398, 416 (2007) ("[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result" to be nonobvious.). Accordingly, we find the
Examiner has provided articulated reasoning with rational underpinnings
sufficient to justify the legal conclusion of obviousness. See In re Cree, 818
F.3d 694, 702 n.3 (Fed. Cir. 2016) (Appellant's hindsight argument of no
moment where the Examiner provides a sufficient, non-hindsight reason to
combine the references.).
We sustain the Examiner's rejection of independent claim 50 and
rejections of the claims dependent thereon, which are not separately argued.
See Reply Br. 3.
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Appeal2014-009063
Application 12/255,557
DECISION
The Examiner's rejections of claims 50 and 52---69 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)(l )(iv).
AFFIRMED
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