Jeffrey D. Carnevali

Patent Trials and Appeals Board

Aug 28, 2019

14790980 - (D) (P.T.A.B. Aug. 28, 2019)

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.
14/790,980 07/02/2015 Jeffrey D. Carnevali NPRO-1-015.0 5618
122997 7590 08/28/2019
BEB Clients/Lowe Graham Jones
701 Fifth Avenue,
Suite 4800
Seattle, WA 98104
EXAMINER
THEIS, MATTHEW T
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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):
patentdocketing@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFREY D. CARNEVALI
____________________

Appeal 2019-000734
Application 14/790,9801
Technology Center 3700
____________________

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1, 6–8, 10, 11, 14–16, 18, and 20–29. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the “invention relates . . . to a combination
hand-strap and fixed stand for both tablets and other handheld portable
electronic devices.” Spec. 1, ll. 17–18. Claims 1, 8, and 16 are the

1 “The real party in interest . . . is National Products, Inc.” Appeal Br. 2.
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independent claims under appeal. Below, we reproduce claim 1 as
illustrative of the appealed claims.
1. A support for a portable electronic device, the
support comprising:
a case structured for receiving the portable electronic
device;
a rotatable base positioned on a back plane of the case and
rotatable relative to the case;
a strap comprising a first end and a second end opposite
the first end, wherein the first and second ends of the strap are
both attached to the base, wherein the strap is configured for
fitting around an appendage of a user and allowing the user to
support the base relative to the appendage;
a support stand that is attached to the base independently
of the strap and is swivelable with respect to the base between a
stowed position and a deployed position and configured, when
swiveled away from the base in the deployed position, for
supporting the base on an external surface in an angled
arrangement relative to the external surface, wherein the support
stand maintains a same shape in both the deployed and stowed
positions; and
a swivel mechanism attached to the support stand and the
base for swiveling the stand within a range of deployment angles
relative to the base, wherein the swivel mechanism is attached to
the base at a position on the base between positions at which the
first and second ends of the strap are attached to the base so that
the strap extends over the swivel mechanism.

REJECTIONS AND PRIOR ART2
The Examiner rejects the claims as follows:
I. Claims 1, 8, 10, 21, 22, and 29 under 35 U.S.C. § 103(a) as
unpatentable over Jang (US 2013/0001382 A1, pub. Jan. 3,

2 We reorder and combine rejections relative to the Final Office Action.
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2013), Gaddis, II et al. (US 2012/0111881 A1, pub. May 10,
2012) (“Gaddis), and Floersch et al. (US D756,366 S, iss.
May 17, 2016) (“Floersch);
II. Claims 6 and 143 under 35 U.S.C. § 103(a) as unpatentable over
Jang, Gaddis, Floersch, and Trotsky (US 2012/0025684 A1,
pub. Feb. 2, 2012);
III. Claims 7 and 15 under 35 U.S.C. § 103(a) as unpatentable over
Jang, Gaddis, Floersch, Trotsky, and Byrne
(US 2013/0300141 A1, pub. Nov. 14, 2013);
IV. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over Jang,
Gaddis, Floersch, and Wadsworth et al. (US 8,070,026 B2, iss.
Dec. 6, 2011) (“Wadsworth”);
V. Claims 16, 25, 26, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Jang, Gaddis, Floersch, Trotsky, and Andrew
(US 2013/0299365 A1, pub. Nov. 14, 2013);
VI. Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Jang,
Gaddis, Floersch, Trotsky, Andrew, and Wadsworth;
VII. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Jang,
Gaddis, Floersch, Trotsky, Andrew, and Byrne;
VIII. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over Jang,
Gaddis, Floersch, and Rasmussen et al. (US 2014/0077515 A1,
pub. Mar. 20, 2014) (“Rasmussen”);

3 The Examiner erroneously rejects claim 25 as obvious based on Jang,
Gaddis, Floersch, and Trotsky, because claim 25 depends from independent
claim 16 that is rejected as obvious based on Jang, Gaddis, Floersch,
Trotsky, and Andrew. See Rejection V, infra.
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IX. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over Jang,
Gaddis, Floersch, and Bastian et al. (US 8,662,362 B1, iss.
Mar. 4, 2014) (“Bastian”); and
X. Claim 27 under 35 U.S.C. § 103(a) as unpatentable over Jang,
Gaddis, Floersch, and Andrew.

ANALYSIS
Rejection I
As set forth above, the Examiner’s rejection of independent claim 1
relies on a combination of Jang, Gaddis, and Floersch. See, e.g., Answer 2–
4. Appellant argues that the Examiner’s proposed modification of Jang
based on Floersch is not adequately supported by the record. Appeal Br. 9–
12; Reply Br. 5–8. Based on our review of the record, including Appellant’s
Appeal Brief and Reply Brief, and the Examiner’s Final Office Action and
Answer, we agree with Appellant. Thus, we do not sustain claim 1’s
obviousness rejection.
Jang discloses a
portable electronic device holder . . . compris[ing] . . . a
rectangular body member (10) disposed on the rear side of an
electronic device; an upper end support member (20) coupled to
the upper end of the body member and tightly contacting the top
surface of the electronic device; a lower end support
member (30) coupled to the lower end part of the body
member (10) and tightly contacting the bottom surface of the
electronic device; a handle member (40) coupled to the rear side
of the body member (10); and a support member (50) coupled to
both sides of the lower end part of the body is member (10) and
configured to rotate downward at the rear of the body member.
Jang, Abstract (bold omitted). The Examiner relies on Jang’s body
member 10 to disclose the claimed base (although Jang’s body member 10
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does not rotate, as claimed), on Jang’s handle member 40 to disclose the
claimed strap, and on Jang’s support member 50 to disclose the claimed
support stand.
As set forth above, Jang discloses that upper and lower end support
members 20 and 30 contact an electronic device, such that the device is held
between the support members. Nonetheless, the Examiner proposes to
replace Jang’s support members with Gaddis’s shell 110 (on which the
Examiner relies to disclose the claimed case). Gaddis ¶ 39; Answer 3–4.
Gaddis discloses that a mechanism between its handle 120 and shell 110
permits rotation of the handle. Gaddis ¶ 39. Based on this teaching in
Gaddis, the Examiner also proposes to modify the combination of Jang and
Gaddis such that Jang’s body member 10 (i.e., the claimed base) rotates
relative to shell 110 (i.e., the claimed case). Answer 4.
Also as set forth above, claim 1 recites
a swivel mechanism attached to the support stand and the
base for swiveling the [support] stand within a range of
deployment angles relative to the base, wherein the swivel
mechanism [for swiveling the support stand] is attached to the
base at a position on the base between positions at which the first
and second ends of the strap are attached to the base so that the
strap extends over the swivel mechanism.
Appeal Br., Claims App. (emphasis added). However, as shown in Jang’s
Figures 9 and 11, for example, the swivel mechanic for swiveling support
member 50 (i.e., the claimed support stand) is not attached to body
member 10 (i.e., the claimed base) at a position on the body member which
is between the positions where the ends of handle member 40 attach to the
body member. Jang Figs. 9, 11. Instead, as these figures illustrate, Jang’s
swivel mechanic for swiveling support member 50 attaches to body
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member 10 well below where the ends of handle member 40 attach to the
body member.
Floersch appears to disclose (using the claim’s nomenclature, as
Floersch is a design patent that does not name or number the elements
shown therein) a swivel mechanism for swiveling a support stand attached to
a base at a position on the base which is, as claim 1 recites, between
positions where the ends of a strap are connected to the base. See Floersch
Figs. 1, 8. The Examiner proposes to modify the combination of Jang and
Gaddis, which we discuss above, to move the location of Jang’s swivel
mechanism for swiveling support member 50 from a position that is not
between the positions where the ends of handle member 40 attach to body
member 10, to a position that is between the ends of handle member 40, in
accordance with Floersch’s disclosure. Answer 4. The Examiner’s only
articulated reason for doing so is that “such a change would require a mere
rearrangement of parts,” and “rearranging parts of an invention involves
only routine skill in the art.” Id. (citation to In re Japikse, 181 F.2d 1019
(CCPA 1950), omitted).
The Examiner does not articulate reasoning, supported by rational
underpinnings in the prior art references, as to why it would have been
obvious to relocate the swivel mechanism’s position, as recited in claim 1.
Japikse involved an obviousness rejection where the only difference
between the claimed invention and a single reference was the location of a
starting switch. Japikse, 181 F.2d at 1023. Further, there, the court agreed
with the Board that it would have been obvious to move the starting switch
from the position disclosed in the prior art to the claimed position “since the
operation of the device would not thereby be modified.” Id. In this case,
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however, the Examiner fails to support adequately that moving the swivel
mechanism’s position, in accordance with Floersch’s disclosure, would not
modify operation of the device resulting from the Examiner’s proposed
combination of Jang and Gaddis.
By way of specific example, Jang discloses that
when the support member 50 is rotated by about 180 degrees at
the backside of the body member 10, the end of the support
member 50 is supported on a user’s stomach portion or on a
certain portion of the user’s body when holding the electronic
device with one hand, so it is possible to more stably support the
electronic device because the weight of the electronic device can
be dispersed.
Jang ¶ 49 (bold omitted). Based on Jang’s Figures 9 and 11, it appears that
folding support member 50 down 180 degrees would result in support
member 50 extending well beyond support member 30, such that the device
may be held in one hand, and the user’s stomach or another body part may
help support the device, as described in Jang, above. Id. at Figs. 9, 11. This
appears to result from locating Jang’s swivel mechanism at an end of body
member 10. Id.
Conversely, it appears that when a swivel mechanism is located on a
base at a position that is between positions where the strap attaches to the
base, swiveling the support stand 180 degrees may not result in the end of
the support stand extending appreciably beyond the device, such that the
support stand may be supported on a user’s stomach or other body part to
help support the device’s weight, as described in Jang. For example, based
on Appellant’s Figure 3, which illustrates an embodiment in which a swivel
mechanism’s position on a base is between positions where strap ends attach
to the base, it appears that when support stand 22 swivels 180 degrees,
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support stand 22 extends either insignificantly or not at all past the edge of
protective case 18.
Thus, based on the foregoing, we do not sustain the Examiner’s
obviousness rejection of independent claim 1. We also do not sustain the
Examiner’s rejection of independent claim 8, which recites a similar
recitation, and which the Examiner rejects for similar reasons, as claim 1.
Further, we do not sustain the Examiner’s obviousness rejection of
claims 10, 21, 22, and 29 that depend from the independent claims.

Rejections II–IV
Claims 6, 7, 11, 14, and 15 depend from claims 1 and 8. The
Examiner does not rely on any of Trotsky, Byrne, or Wadsworth to disclose
anything that would remedy the above-discussed deficiency in the
independent claims’ rejection. Thus, we do not sustain the rejections of
these dependent claims.

Rejection V
The Examiner rejects independent claim 16 based on a combination
Jang, Gaddis, Floersch, Trotsky, and Andrew. Claim 16 includes a
recitation similar to that discussed above with respect to independent
claim 1. Appeal Br., Claims App. (Claim 1, 16). The Examiner does not
rely on either Trotsky or Andrew to disclose anything that would remedy the
above-discussed deficiency in claim 1’s rejection. Thus, we do not sustain
the Examiner’s obviousness rejection of independent claim 16, or of its
dependent claims 25, 26, and 28 that the Examiner rejects with claim 16.

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Rejections VI–X
Claims 18, 20, 23, 24, and 27 depend from independent claims 1, 8,
and 16. The Examiner does not rely on any reference to disclose anything
that would remedy the above-discussed deficiency in the independent
claims’ rejections. Thus, we do not sustain the rejections of dependent
claims 18, 20, 23, 24, and 27.

DECISION
We REVERSE the Examiner’s obviousness rejections of claims 1, 6–
8, 10, 11, 14–16, 18, and 20–29.

REVERSED