Ex Parte Ali et alDownload PDFPatent Trials and Appeals BoardMay 16, 201411799271 - (D) (P.T.A.B. May. 16, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VALIUDDIN Y. ALI, JEFFREY A. LEV, PAUL J. DOCZY, and JEFFREY C. PARKER ____________ Appeal 2012-006090 Application 11/799,271 Technology Center 2800 ____________ Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and GEORGE C. BEST, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-006090 Application 11/799,271 2 On March 1, 2011, the Examiner finally rejected claims 1-23 of Application 11/799,271 under 35 U.S.C. § 103(a) as obvious. Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE. BACKGROUND The ’271 Application describes a biometric module, such as a fingerprint scanner. Spec. ¶ 0001. The disclosed module is designed to reduce the incidence of accidental or inadvertent scanning and to protect the module from electrostatic discharge. Id. Claim 1 is representative of the ’271 Application’s claims and is reproduced below: 1. An electronic device, comprising: a biometric module that captures a fingerprint and includes: a frame; a hood movable in the frame and having a first electrical contact on one surface and a sensor on another surface; a biasing element that biases the hood toward a working surface of the electronic device; and a circuit board electrically coupled to the sensor, wherein the circuit board provides power to the sensor in response to downward movement of the hood away from the working surface and engagement of the first electrical contact with a second electrical contact. (App. Br. 19 (Claims App’x).) 1 Hewlett-Packard Development Co., LP, is identified as the real party in interest. (App. Br. 2.) Appeal 2012-006090 Application 11/799,271 3 REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Houdeau.2 (Ans. 4.) 2. Claims 3 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Houdeau and Huang.3 (Ans. 5.) 3. Claim 6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Houdeau and Slevin.4 (Ans. 6.) 4. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Houdeau and Silfverberg.5 (Ans. 7.) 5. Claims 11-18 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Houdeau, Slevin, and Huang. (Ans. 8.) 6. Claims 19-21, and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Houdeau and Slevin. (Ans. 11.) 2 U.S. Patent No. 6,522,773 B1, issued Feb. 18, 2003. 3 U.S. Patent Application Publication No. 2008/0187191 A1, published Aug. 7, 2008. 4 U.S. Patent Application Publication No. 2007/0146117 A1, published June 28, 2007. 5 U.S. Patent Application Publication No. 2005/0181828 A1, published Aug. 18, 2005. Appeal 2012-006090 Application 11/799,271 4 7. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Houdeau, Slevin, and Huang. (Ans. 12.) DISCUSSION This appeal can be resolved by consideration of a single question: Did the Examiner reversibly err in finding that Houdeau describes or suggests the claimed hood, electrical contact on the surface of the hood, and biasing element? Because we answer this question in the affirmative, we reverse the rejections of claims 1-23. We begin by construing the terms “hood,” “electrical contact,” and “biasing element” as used in the ’271 Application’s claims.6 During examination, claim terms are given their broadest reasonable construction consistent with the Specification. In general, words used in a claim are accorded their ordinary and customary meaning. Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007). Our review of the ’271 Application’s Specification indicates that the claimed electrical contacts are specific structures located on the bottom of the hood and on the circuit board. See, e.g., Spec. ¶ 0009; Figs. 2A-2D. Similarly, the Specification also describes the biasing element as a structure that is separate from the claimed hood. Id. at ¶ 0008; Figs. 2A-2D. 6 Generally, the same word is to be given the same meaning when it appears in multiple claims. Rexnord Corp. v. Laitram Corp. 274 F.3d 1336, 1342 (Fed. Cir. 2001) (“[A] claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent.”); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997) (“[W]e are obliged to construe the term ‘elasticity’ consistently throughout the claims.”). Appeal 2012-006090 Application 11/799,271 5 The Examiner, however, concluded that a single component could simultaneously serve as part of the hood, an electrical contact, and the biasing element. (Ans. 5-6, 8, 11.) The Examiner argues that it would have been obvious to a person of ordinary skill in the art to separate the single, multi-functional element described in Houdeau into the three distinct elements required by the ’271 Application’s claims. (Ans. 13-14.) As explained by Appellants (Reply Br. 4-5), the Examiner’s reliance on MPEP § 2144.04(V)(C) as supporting this argument is misplaced. Furthermore, the Examiner neither finds nor argues that any of the other references cited in the various rejections remedies this deficiency. The Examiner, therefore, has not established a prima facie case of obviousness with respect to the ’271 Application’s claims. We reverse the rejections of claims 1-23 as obvious over Houdeau alone or in combination with the other asserted references. CONCLUSION For the reasons set forth above, we reverse the Examiner’s rejections of claims 1-23 of the ’271 Application. REVERSED cdc Copy with citationCopy as parenthetical citation