David K. Lim et al.

Patent Trials and Appeals BoardDec 26, 2019

14716950 - (R) (P.T.A.B. Dec. 26, 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. 14/716,950 05/20/2015 David K. Lim MM01256 2868 138858 7590 12/26/2019 Motorola/ McKinney Phillips LLC 1440 W. Taylor St. Suite 749 Chicago, IL 60607 EXAMINER DEPEW, KEITH A ART UNIT PAPER NUMBER 2835 NOTIFICATION DATE DELIVERY MODE 12/26/2019 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): docketing.mobility@motorola.com pipp@mckinneyphillips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID K. LIM, JOSEPH ALLORE, and MICHAEL J. LOMBARDI Appeal 2018-008950 Application 14/716,950 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 timely requests rehearing of our Decision sustaining the Examiner’s § 102(a)(1) rejection of claims 1, 3, 6, 8, 10, and 12 as anticipated by Yamada (US 2015/0062460 A1; published Mar. 5, 2015). In the subject Request, Appellant states that the Decision “misconstrues the Appellant’s argument [presented in the Reply Brief] as to why [the independent claim phrase] ‘affixed to’ cannot mean simply ‘move[] as one’ [as interpreted in the Examiner’s Answer]” (Req. Reh’g 2). Appellant argues that favorable reconsideration of our Decision is warranted 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as MOTOROLA MOBILITY LLC. Appeal Br. 2 Appeal 2018-008950 Application 14/716,950 2 because “the Examiner’s interpretation of ‘affixed to’ [in the Examiner’s Answer] was dispositive to the Board’s affirmance of the Examiner’s rejection[]” (id. at 3). As background, the Decision notes that, “in the Final Office Action, the Examiner interprets the claim term ‘affixed’ as ‘fail[ing] to specify . . . directly affixed . . . with no intervening elements’ (Final 5; see also id. at 6)” (Dec. 4). The Decision also notes that, “[i]n the Answer, the Examiner embellishes this claim interpretation by stating ‘the claim term ‘affixed’ . . . in broad interpretation is taken to mean things which are assembled together so as to move as one’ (Ans. 3)” (id.). The Request correctly indicates that the Decision addresses the argument presented in the Reply Brief contesting the Examiner’s interpretation in the Answer of “affixed” as meaning “move as one” (Dec. 4–5). However, in sustaining the Examiner’s rejection, the Decision adopts the Examiner’s interpretation of “affixed” in the Final Office Action and emphasizes that “Appellant [in the Appeal and Reply Briefs] does not show error in, or even acknowledge, this claim interpretation” (id. at 5). Furthermore, the Decision explicitly states, “[w]e express no opinion regarding the embellished claim interpretation made by the Examiner in the Answer” (id. at n. 3). Significantly, Appellant’s above quoted statement and argument in the Request involve only the claim interpretation in the Answer about which the Decision expresses no opinion. Indeed, the subject Request, like the Appeal and Reply Briefs, does not address, and, therefore, fails to show error in, the Final Office Action claim interpretation that forms the basis of our Decision to sustain the Examiner’s rejection. Appellant’s Request for Rehearing is Denied. Appeal 2018-008950 Application 14/716,950 3 CONCLUSION Outcome of Decision on Rehearing: Claims 35 U.S.C § Reference(s)/Basis Denied Granted 1, 3, 6, 8, 10, 12 102(a)(1) Yamada 1, 3, 6, 8, 10, 12 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C § Reference(s)/Basis Affirmed Reversed 1, 3, 6, 8, 10, 12 102(a)(1) Yamada 1, 3, 6, 8, 10, 12 DENIED