2020003652 (P.T.A.B. Dec. 22, 2020)

Phillip Chipping

Patent Trials and Appeals BoardDec 22, 2020

2020003652 (P.T.A.B. Dec. 22, 2020)

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. 13/153,619 06/06/2011 Phillip John Chipping 26613-3004USC1 9422 128128 7590 12/22/2020 Durham Jones & Pinegar, P.C. Intellectual Property Law Group 3301 N. Thanksgiving Way, Suite 400 Lehi, UT 84043 EXAMINER REYNOLDS, STEVEN ALAN ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 12/22/2020 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): apower@djplaw.com ipmail@djplaw.com sboren@djplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PHILLIP JOHN CHIPPING ____________ Appeal 2020-003652 Application 13/153,619 Technology Center 3700 ____________ Before JENNIFER D. BAHR, WILLIAM A. CAPP, and FREDERICK C. LANEY, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–9 and 12–34. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies ZAGG Intellectual Property Holding Co., Inc. as the real party in interest. Appeal Br. 2. Appeal 2020-003652 Application 13/153,619 2 CASE POSTURE This application was previously before the Board on an appeal from the final rejection of all pending claims in the case of In re Chipping, 2017 WL 1150731, App No. 2015-005510 (PTAB Mar. 27, 2017) (the Previous Appeal). In the previous appeal, Appellant did not challenge the Examiner’s underlying findings of fact with respect to the prior art rejection and, instead, limited its arguments to secondary considerations of non-obviousness, such as commercial success, which we found to be unpersuasive. See Previous Appeal. We affirmed the Examiner’s rejection of all then pending claims. Id. Appellant subsequently continued prosecution leading up to the Examiner’s Final Action dated May 17, 2019, which is the rejection under review in the current appeal. THE INVENTION Appellant’s invention relates to protective coverings. Spec. ¶ 1. Claim 30, reproduced below, is illustrative of the subject matter on appeal. 30. A protective film for an electronic device, the protective film comprising: a front member comprising a film formed to cover and to conform to a front surface of the electronic device and to at least a portion of an edge adjacent to the front surface of the electronic device, the front member being stiff and including an interior surface coated with a transparent adhesive material capable of securing the front surface to a display of the front surface of the electronic device; and a rear member comprising a film formed to cover and to conform to a rear surf ace of the electronic device, the rear member being stiff and including an interior surface coating with a transparent adhesive material. Appeal 2020-003652 Application 13/153,619 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Howard US 6,109,434 Aug. 29, 2000 Koike US 6,201,867 Bl Mar. 13, 2001 Kajiya US 2003/0150756 A1 Aug. 14, 2003 Richardson US 6,646,864 B2 Nov. 11, 2003 Trinh US 2005/0229653 A1 Oct. 20, 2005 Antonini US 2006/0154029 A1 July 13, 2006 Chipping US 7,957,524 B2 June 7, 2011 The following rejections are before us for review: 1. Claims 1–9 and 12–34 are rejected on the ground of nonstatutory double patenting over Chipping. 2. Claims 1–9 and 12–34 are rejected under 35 U.S.C. § 103 as being unpatentable over Koike, Richardson, Howard, Kajiya, Trinh, and Antonini. OPINION Double Patenting of Claims 1–9 and 12–34 over Chipping The Examiner rejects all pending claims under the judicial doctrine of nonstatutory double patenting over an earlier patent by the named inventor of the instant application, Mr. Chipping. Final Act. 7–8. Appellant does not challenge the double patenting grounds of rejection in the Appeal Brief. See generally Appeal Br. We sustain the Examiner’s double patenting rejection. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of arguments for separate patentability). Appeal 2020-003652 Application 13/153,619 4 Unpatentability of Claims 1–9 and 12–34 over Koike, Richardson, Howard, Kajiya, Trinh, and Antonini Claim 1 The Examiner finds that the prior art, in combination, discloses all of the limitations of claim 1. Final Act. 2–5. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to combine the prior art to achieve the claimed invention. Id. Appellant argues, among other things, that the cited references do not disclose a “film” as claimed. Appeal Br. 8. Appellant argues that Koike, Richardson, Howard, and Kajiya are directed to items that are more akin to a plastic case than a protective film. Id. 8–10. In response, the Examiner construes “film” as a thin sheet of material. Ans. 3. According to the Examiner, Koike is comprised of a thin sheet of material and, therefore, satisfies the claim language. Ans. 3. The Examiner and Appellant disagree over the meaning and scope of the word “film” as used in claim 1. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A construction that is “unreasonably broad” and which does not “reasonably reflect the plain language and disclosure” will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Appeal 2020-003652 Application 13/153,619 5 In our opinion, a “film” or a “sheet” is material that, in its ordinary, natural, and typical state is a more-or-less flat, two-dimensional structure. This is how we picture a “sheet” of paper. We normally picture a transparent “film,” in its ordinary, natural, and typical state, as something akin to well-known products such as plastic wrap sold under the brand SaranTM Wrap. While SaranTM Wrap can be dispensed from a roll and can conform to the contours of a three-dimensional object, if it is laid on a table or similar surface in its typical state, it is generally considered to be “flat.” The Examiner, in our opinion, makes too much of the fact that Appellant’s sheet can vary from “soft to stiff” and that it can have a thickness somewhat greater than 8 mils. Ans. 3. Koike discloses a cover case that encases a portable phone. Koike, col. 2, ll. 49–51; Fig. 1. Koike’s case is made of transparent plastic material, such as acrylic resin or others and is formed into upper body cover 4 and lower body cover 5 that attach to each other by engaging snap members 7. Id. col. 2, ll. 51–60. The Examiner’s application of the term “film” to transparent plastic material that is formed and shaped to create a 3-dimensional, 2-piece cover case that snaps together is an overly broad interpretation of the term. Applying the ordinary and customary meaning of the word “film” as it would be understood by a person of ordinary skill in the art in view of Appellant’s disclosure, Koike, Richardson, Howard, and Kajiya do not comprise “film” as claimed, but rather disclose product cases or shells that are preformed to conform to the shape of the articles that are encased therein. The Examiner’s findings of fact to the contrary constitute reversible error. Appeal 2020-003652 Application 13/153,619 6 Accordingly, we do not sustain the Examiner’s Section 103 unpatentability rejection of claim 1 over Koike, Richardson, Howard, Kajiya, Trinh, and Antonini. Claims 2–9 and 12–34 Claims 15, 23, 27, and 30 are independent claims that, like claim 1, are directed to a protective film for an electronic device. Claims App. Claims 2–9, 12–14, 16–22, 24–26, 28, 29, and 31–34 all depend, directly or indirectly, from one of the previously identified independent claims. The Examiner’s rejection of these claims suffers from the same infirmity that was identified above with respect to claim 1. Final Act. 5–7. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claims 2–9 and 12–34. CONCLUSION Claims Rejected § References/Bases Affirmed Reversed 1-9, 12-34 n/a Non-Statutory Double Patenting - Chipping 1-9, 12-34 1-9, 12-34 103 Koike, Richardson, Howard, Kajiya, Trinh, Antonini 1-9, 12-34 Overall Outcome 1-9, 12-34 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). AFFIRMED