Ex Parte WilliamsDownload PDFPatent Trial and Appeal BoardDec 19, 201612268336 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 12/268,336 11/10/2008 Hilary Lyndsay Williams 8802.002.REDV02_P6250USR3 8012 26183 7590 12/21/2016 FISH & RICHARDSON P.C. (APPLE) PO BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER NGUYEN, KEVIN M ART UNIT PAPER NUMBER 2628 NOTIFICATION DATE DELIVERY MODE 12/21/2016 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HILARY LYNDSAY WILLIAMS Appeal 2015-001673 Application 12/268,336 Technology Center 2600 Before ROBERT E. NAPPI, JOHN P. PINKERTON, and NABEEL U. KHAN, Administrative Patent Judges. KHAN, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 37, 40-43, and 45^49. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify Apple Inc. as the real party in interest. App. Br. 2. Appeal 2015-001673 Application 12/268,336 THE INVENTION Appellants’ invention relates to “a portable computer arranged to rest comfortably in the hand has a small display screen.” Abstract. Exemplary independent claim 37 is reproduced below with limitations at issue emphasized. 37. A handheld cellular telephone capable of two way telephonic communication; diary alarm; file creation and storage; text messages; electronic mail; data storage; displaying maps; and configured to accept inputs from accelerometers and data input from a Global Positioning System (GPS) receiver, and provide data output to a display screen; comprising: a cellular telephone housed in a casing, said casing being sized and shaped to be held between the root of the thumb and the index finger of only one hand of a user; said casing also housing within the casing: a cellular transceiver; an antenna connected to the transceiver; two accelerometers, said accelerometers each being mounted to detect X and Y movement components at a ninety degree angle; at least one buffer circuit associated with the accelerometers; a rechargeable battery; detection circuitry to power down battery usage; a microphone; a speaker; a Global Positioning System (GPS) receiver that outputs a position of the telephone in the form of data to a processor; a processor; the processor configured to: comprise diary alarm; file creation and storage; 2 Appeal 2015-001673 Application 12/268,336 text messages; electronic mail; data storage; display maps; and configured to accept inputs from the accelerometers and accept data input from the GPS receiver, and provide data output to a display screen; a data store to store a map; a display screen that displays at least a map; the display screen being arranged on the case so as to be visible to the user when the case is held between the root of the thumb and index finger of the only one hand of a user, and when so held, the display area of the display screen extends to the wrist of the user, a touch screen in front of the display screen, wherein the touch screen acts as an input to the cellular telephone; wherein the processor is configured to output the GPS data to the display; and a change of the telephone position, as determined by the GPS receiver, rotates the map in the direction of travel. REFERENCES and REJECTIONS2 1. Claims 37, 40-43, and 45^49 stand rejected under 35 U.S.C. §112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Final Act. 2—A. 2. Claims 37, 40-43, and 45^49 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Obradovich et al. (US 6,148,261, Nov. 14, 2000), Watanabe et al. (US 5,793,310, Aug. 11, 1998), Buhrmann et al. (US 5,933,778, Aug. 3, 199), Allard et al. (US 5,815,142, Sept. 29, 1998), Silva et al. (US 5,996,080, Nov. 30, 1999), in view of Yamada (US 5,874,941, Feb. 23, 1999), and Snell (US 5,383,091, Jan. 17, 1995). Final Act. ^U17. 2 The Examiner’s Rejection of Claims 37, 40-43, and 45 49 under 35 U.S.C. § 112, second paragraph, has been withdrawn. Advisory Act, item 5; see also Ans. 4. 3 Appeal 2015-001673 Application 12/268,336 3. Claims 37, 40-43, and 45^49 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tran (US 6,157,935, Dec. 5, 2000), Rekimoto (US 6,567,068, May 20, 2003), Silva, Yamada, and Kemp (US 6,822,634 B1 Nov. 23, 2004). Final Act. 17-32. 4. Claims 37, 40-43, and 45^49 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Obradovich, Watanabe, Buhrmann, Allard, Silva, Yamada, and Burrell (US 5,910,882, June 8, 1999). Final Act. 32-46. ANALYSIS A. The Rejection of Claims 37, 40—43, and 45—49for Failing to Comply with the Written Description Requirement The Examiner finds “the limitation ‘the display screen being arranged on the case so as to be visible to the user when the case is held between the root of the thumb and index finger of the only one hand of a user, and when so held, the display area of the display screen extends to the wrist of the user’ as being new matter.” Final Act. 2—3. Appellants argue “col. 3, lines 28—34 literally support the recited portion of the claims.” App. Br. 4. We agree with Appellants. Appellants’ Specification states: when the forward part of the barrel of the casing is held as a writing stylus using the thumb, index finger and second finger of the user, the screen area A—A rests comfortably on the dorsal area at the back of the hand between the root of the thumb and index finger of the hand and the user’s wrist. Spec. 3:28—33. The area between the root of the thumb, the root of the index finger, and the user’s wrist includes an area that extends to the wrist. Thus, even though the Specification does not explicitly state that the display screen 4 Appeal 2015-001673 Application 12/268,336 extends to the wrist, the description of the area in which the screen rests specifically includes a screen extending to the user’s wrist. Accordingly, we do not sustain the Examiner’s rejection of claims 37, 40-43, and 45 49 under 35 U.S.C. § 112, first paragraph. B. The Rejection of Claims 37, 40—43, and 45—49 under 35 U.S.C. § 103(a) Appellants argue that none of either Snell, Kemp, or Burrell, teach “a display area of a display screen extends to the wrist of the user.” See App. Br. 6, 7, 8 (respectively). We agree with Appellants. The Examiner finds that Snell teaches a “a handheld cellular telephone 10 having a casing 20 and a display screen 12 being held by the fingers and activating the buttons with the thumb of the same hand. That is, the display screen is visible to the user.” Final Act. 9 (citing Snell 2:8—41, Fig. 1). The Examiner makes similar findings for Kemp (Final Act. 23), and Burrell (Final Act. 37). But for none of these references does the Examiner find that a screen extends to the user’s wrist when held between the root of the thumb and the root of the index finger of the user’s hand. Indeed, the Examiner finds that this limitation is “newly claimed subject matter [and therefore] is not considered and not fully responsive.” Ans. 7. Because the Examiner has not made findings showing that any of the three relied upon references, Snell, Kemp, or Burrell, teach “a display area of a display screen extends to the wrist of the user” we do not sustain the Examiner’s rejections of independent claims 37 and 49 under 35 U.S.C. § 103(a), each of which contain substantially the same limitation and were 5 Appeal 2015-001673 Application 12/268,336 rejected on the same basis.3 See Final Act. 9, 16—17, 23, 31, 37, and 45. We also do not sustain the Examiner’s rejection of claims 40-43, and 45—48 which depend from claim 37. DECISION The Examiner’s rejection of claims 37, 40-43, and 45 49 under 35 U.S.C. § 112 (pre-AIA), first paragraph, is reversed. The Examiner’s rejection of claims 37, 40-43, and 45 49 under 35 U.S.C. § 103(a) is reversed. REVERSED 3 We note, in an ex parte appeal, the Board “is basically a board of review— we review . . . rejections made by patent examiners.” Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by 35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s] the [Bjoard to examine the application and resolve patentability in the first instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). The Board’s primary role is to make our decision based on the findings and conclusions presented by the Examiner. See 37 C.F.R. § 41.50(a)(1). We express no opinion as to the obviousness of claims 37, 40-43, and 45 49, in view of additional explanation and/or references. 6 Copy with citationCopy as parenthetical citation