Ex Parte Bekele et al

Patent Trial and Appeal BoardSep 13, 2013

95001767 (P.T.A.B. Sep. 13, 2013)

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. 95/001,767 09/16/2011 Haile Bekele 2011-002 7489 24504 7590 09/13/2013 THOMAS | HORSTEMEYER, LLP 400 INTERSTATE NORTH PARKWAY SE SUITE 1500 ATLANTA, GA 30339 EXAMINER REIP, DAVID OWEN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 09/13/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ INCASE DESIGNS CORP. Requester v. TECH SHELL, INC.1 Patent Owner, Appellant ____________________ Appeal 2013-009127 Inter partes Reexamination Control 95/001,767 Patent US 7,907,400 B22 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, DANIEL S. SONG and JAMES P. CALVE, Administrative Patent Judges. SONG, Administrative Patent Judge DECISION ON APPEAL 1 Tech Shell, Inc. is the Patent Owner and the real party in interest (Appeal Brief of Patent Owner (hereinafter "App. Br.") 1). 2 Patent US 7,907,400 B2 (hereinafter "'400 patent") issued March 15, 2011 to Bekele. Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 2 STATEMENT OF THE CASE Claims 1-8 and 26-39 of the '400 patent are subject to reexamination while claims 9-25 and 40-53 are not subject to reexamination (Right of Appeal Notice3 (hereinafter "RAN") 1). Each of claims 1-8 and 26-39 subject to reexamination stand rejected (RAN 1). The Patent Owner appeals under 35 U.S.C. Â§Â§ 134(b) and 315 from the Examiner's rejections with respect to all of the rejected claims (App. Br. 4). The Requester does not cross-appeal the decisions of the Examiner not adopting certain proposed rejections. We have jurisdiction under 35 U.S.C. Â§Â§ 134(b) and 315. The '400 patent is related to Patent US 7,643,274 which is the subject of Reexamination Control No. 95/001,766 (App. Br. 1-2). Both Patent US 7,643,274 and the subject '400 patent are involved in the legal action Techshell Inc. v. Jwin Electronics Corporation., 3:11-cv-00556-MCR-CJK (N.D. Florida) which has been stayed pending outcome of the reexamination proceedings (App. Br. 2). We AFFIRM the Examiner's rejections. The '400 patent is directed to a protective cover for a laptop computer (Abstract). Representative independent claim 1 reads as follows (Claims App'x, italics added): 1. An exterior cover for a laptop computer having a display portion and a keyboard portion, comprising: a first elastic planar element for placement on an outside surface of the display portion, the first elastic planar element including: 3 The Examiner's Answer merely incorporates the RAN by reference. Hence we cite to the RAN herein. Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 3 a raised edge along a portion of a perimeter of the first elastic planar element, wherein the raised edge extends perpendicularly from the first elastic planar element and toward the display portion; and a plurality of tabs located on the raised edge, wherein each tab extends from the raised edge over an inside surface of the display portion so as to grip the display portion; and a second elastic planar element for placement on an outside surface of the keyboard portion, the second elastic planar element being separate and independent from the first elastic planar element, the second elastic planar element including: a raised edge along a portion of a perimeter of the second elastic planar element, wherein the raised edge extends perpendicularly from the second elastic planar element and toward the keyboard portion; and a plurality of tabs located on the raised edge, wherein each tab extends from the raised edge over an inside surface of the keyboard portion so as to grip the keyboard portion. Independent claim 39 similarly recites "the second elastic planar element being separate and independent from the first elastic element" but merely recites "a tab" for the planar elements rather than a plurality of tabs. The Examiner rejects the claims under 35 U.S.C. Â§ 103(a) as follows: 1. Claims 1, 2, 4-7 and 26-39 as obvious over Alexander4 in view of Genest.5 2. Claim 3 as obvious over Alexander in view of Genest and Park.6 4 U.S. Patent No. 5,835,344 issued November 10, 1998. 5 U.S. Patent No. 6,480,377 B2 issued November 12, 2002. Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 4 3. Claim 8 as obvious over Alexander in view of Genest. ISSUES The following issues have been raised in the present appeal. 1. Whether the Examiner erred in finding that Alexander discloses a case body 200 that is separate and independent from a case cover 202. 2. Whether the Examiner erred in finding that Genest discloses a case having "a plurality of tabs" as recited in claim 1. 3. Whether the Examiner erred in concluding that it would have been obvious to one of skill in the art to provide the carrying case of Alexander with tabs disclosed in Genest to result in the invention claimed. PRINCIPLES OF LAW "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007). If a technique has been used to improve one device and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. at 417. ANALYSIS In rejecting all of the claims at issue, the Examiner adopted the positions of the Requester as set forth in pages 19-21 and 27-28 of the 6 U.S. Patent No. 6,405,881B1 issued June 18, 2002. Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 5 Request for Inter Partes Reexamination (RAN 5). The Examiner finds that Alexander discloses most of the structural limitations of independent claim 1, including the limitation "the second elastic planar element being separate and independent from the first elastic planar element." (RAN 8). The Examiner concedes that Alexander fails to disclose the recited tabs but relies on Genest for teaching "a protective case having retaining tabs 44 located on a raised edge" which function to retain the handheld computer (RAN 8-9). The Examiner further reproduces a portion of the Request for Inter Partes Reexamination adopted to reject the claim which concludes that: [i]t would have been obvious to a person of ordinary skill in the art at the time the invention was made to add the tabs described in Genest to the raised edges of the protective cover in Alexander (e.g., front wall, rear wall, and side walls of the case cover 202 and/or lowercase body 200) so that the protective cover can be more securely attached to the laptop. A person of ordinary skill in the art would be motivated to combine the laptop cover of Alexander with the tabs of Genest because the resulting laptop cover would be more desirable as an improvement on the prior art technique of Alexander using only friction to hold the cover in place, and the resulting cover would have enhanced commercial opportunities over Alexander because it would be more secure and adding tabs involves only routine skill in the art. (RAN 9). The Patent Owner disagrees with the Examiner's findings and conclusion in its appeal for the reasons set forth in its brief. We address the various arguments of the Patent Owner infra. Only those arguments actually made by the Patent Owner have been considered and any arguments not made are deemed to be waived. See 37 C.F.R. Â§ 41.67(c)(1)(vii). Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 6 Independent Claim 1 Separate and Independent The Patent Owner argues that the Examiner erred because "[n]either Alexander nor Genest, either alone or in combination, disclose, teach, or suggest" the clam 1 limitation "the second elastic planar element being separate and independent from the first elastic planar element." (App. Br. 5). The Patent Owner asserts that "Alexander discloses a one-piece form fitting briefcase for a laptop computer" and "two connection methods, i.e., hinges and clips, to join the top and bottom sections of the laptop case." (App. Br. 6, emphasis in original). In particular, according to the Patent Owner, because Alexander discloses a connector clasp 300 mounted to the lower case body 200 that engages a connector stud 310 on the case cover 202, the case body 200 and the case cover 202 are "connected." (App. Br. 6, emphasis in original). This argument is unpersuasive. Implicit in the Patent Owner's argument is that the limitation "separate and independent" should be interpreted to require the first elastic planar element to be "unconnected" from the second elastic planar element, even by intervening structure or components such as the locking mechanism of Alexander (i.e., connector clasp 300 and the connector stud 310).7 However, even if the Patent Owner's implicit claim construction is considered to be 7 We also note that the Patent Owner's implied interpretation of the limitation "separate and independent" so as to preclude any intervening parts that may serve to connect the first and second elastic planar elements is problematic because the cover of the '400 patent also relies on intervening display portion and keyboard portion of the laptop that are hinged together to function, these components "connecting" the first and second elastic planar elements together. Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 7 correct, Alexander discloses this limitation because, in the operative configuration wherein the portable computer system of Alexander is in use, the locking mechanism (i.e., connector clasp 300 and the connector stud 310) is not used. As such, the case body 200 and the case cover 202 are "separate and independent" as well as "unconnected" from each other. Furthermore, claim 1 is also open ended because it uses the transitional term "comprising," thereby allowing inclusion of additional components such as a locking mechanism (i.e., connector clasp 300 and the connector stud 310). Correspondingly, the Patent Owner's argument based on the locking mechanism of Alexander is unpersuasive. The Patent Owner also argues that in Alexander, "the upper case is connected to the lower case by a moveable connection mechanism that is part of the laptop case." (App. Br. 7, citing Alexander, col. 5, ll. 37-47). We presume that unlike the locking mechanism discussed supra, such connection mechanism is asserted to permanently connect the lower case body 200 and the case cover 202 together. The Patent Owner's assertion is based on a single statement in Alexander which states that "case cover 202 â€¦ is movably mounted to the case body 200 at a connector mechanism which is a part of the case C of the laptop computer L." (Alexander, col. 5, ll. 37-41). Hence, the Patent Owner's position is that because Alexander discloses a connector mechanism, it does not disclose "separate and independent" planar elements as required by the claims (App. Br. 7). As noted supra, the Examiner's position is that "Fig. 3 of Alexander clearly discloses an exterior cover for a laptop computer, the exterior cover Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 8 comprising a lower case body 200 and a separate and independent case cover 202." (RAN 8, emphasis in original). We agree with the Examiner's findings and we are not persuaded by the Patent Owner's arguments for various reasons. Firstly, it would be apparent to a person of ordinary skill in the art that the statement of Alexander relied upon by the Patent Owner includes a typographical error because the laptop computer L does not have a carrying case C. See In re Yale, 434 F.2d 666, 668-69 (CCPA 1970) (holding that an obvious typographical error in a chemical formula was not a disclosure of the compound identified by the erroneous formula). The specification and Figure 3 of Alexander discloses that the portable computer system "P" includes a "carrying case C," and that the disclosed "laptop computer L" is contained in a "housing H" which is "engagingly fitted" into the carrying case C (see Alexander, col. 2, ll. 52-56; col. 5, l. 37; Fig. 3). Correspondingly, it is the portable computer system P that includes a carrying case C into which the laptop L is received, and it is clear that the laptop computer L does not have a carrying case C. Thus, the statement of Alexander relied upon by the Patent Owner stating "case C of the laptop computer L" is internally inconsistent with the remainder of the specification and Figure 3 (Alexander col. 5, l. 41). The error in the singular statement of Alexander relied upon by the Patent Owner is further confirmed by the immediately following sentence of Alexander which states "[a] suitable connector mechanism, for example, is provided in the form of a pair of hinged or pivoted connectors 204 (FIG. 3) at rear side portions of the laptop computer." (Alexander, col. 5, ll. 41-47; Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 9 Figure 3; see also Comments by Third Party Requester, filed August 9, 2012, pgs. 3-4). The pivoted connectors 204 identified are the hinges that pivotably connect the display panel 280 of housing H of the laptop L to the remainder (i.e., keyboard portion) of the laptop L (see Alexander, col. 7, ll. 15-18; Fig. 3). The Patent Owner also directs our attention to claim 1 of Alexander which recites "a case cover movabl[y] mounted with said lower case body" and asserts that this limitation evinces that Alexander fails to disclose a first elastic planar element that is separate and independent from a second elastic planar element (App. Br. 7-8). The Patent Owner asserts that "the case cover and lower case body must be mounted to each other in order to operate as recited, i.e., they must be connected via, e.g., a hinge so that these two pieces of the case can open and close," as also recited in claim 1 (App. Br. 9, emphasis in original). However, the Patent Owner overlooks the fact that the recited movable mounting of the case cover/case body, and opening/closing thereof, are entirely attainable in the apparatus of Alexander without a separate hinge therebetween because the Alexander patent and its claim 1 are directed to "[a] portable computer system" which not only includes the carrying case C but also includes the laptop computer L itself. There is no dispute that the case cover 202 is movable relative to the lower case body 200 when these components are attached to the laptop L which is a component of Alexander's portable computer system P. Indeed, the specification of Alexander discloses that "the display panel housing 280 and its fitted case cover 202 are â€¦ pivotally movable upwardly at hinged connectors 204 with Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 10 respect to the remainder of the housing H and case C." (Alexander, col. 7, ll. 25-28). Correspondingly, the carrying case C does open and close as mounted to the laptop L of the portable computer system P, both the carrying case C and the laptop L being components thereof and the subject of claim 1 of Alexander. Hence, it is entirely consistent and natural that claim 1 (of Alexander) would recite that the case cover is movably mounted with the lower case body, and that the case C opens and closes, the pivoted connectors 204 being part of the portable computer system P. The Patent Owner further asserts that "Examiner has misinterpreted Figure 3 of Alexander" because Figure 3 merely shows an exploded view, so it cannot support the finding that the case body 200 and the case cover 202 are separate and independent parts (App. Br. 9). The Patent Owner also argues that "the hinged connector mechanisms 204 are an example of the type of connector mechanism that can be used to movably mount the case body 200 to the case cover 202." (App. Br. 8-9, emphasis in original). However, these arguments are unsupported by the preponderance of the evidence and would require us to accept the unlikely proposition that Figure 3 which illustrates in detail the numerous features of the carrying case C (and discusses them in the specification) would omit an illustration of a hinge that connects the case body 200 and the case cover 202 and performs the critical function of opening and closing the carrying case C. As noted, Figure 3 and the detailed discussion thereof in Alexander do not illustrate or identify any "connector mechanism" other than the pair of pivoted connectors 204 that are part of the laptop computer L of the portable computer system P to which Alexander is directed (see Alexander, col. 7, ll. Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 11 15-18; Fig. 3). Thus, a person of ordinary skill in the art would understand that Alexander and Figure 3 disclose pivoted connectors 204 of the laptop L as functioning to movably open and close the case body 200 and the case cover 202 of the carrying case C. See In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (drawings can be relied upon for what they reasonably disclose and suggest to one of ordinary skill in the art). Importantly, while acknowledgement in Alexander that the pivoted connectors 204 are an "example" leaves open the possibility that other embodiments of the portable computer system P may use different configurations of the pivoted connectors (i.e., hinges) in order to effectuate the opening and closing of the carrying case C, that invitation for variation does not detract from the disclosure of Alexander that discloses the use of pivoted connectors 204 of the laptop L for this very purpose. Thus, in view of the above, as the Examiner found, we likewise find that the lower case body 200 and the case cover 202 of Alexander are "separate and independent" as shown in Figure 3. Tabs The Patent Owner also asserts that the Examiner erred in rejecting claim 1 asserting deficiencies with respect to the secondary reference Genest. In particular, the Patent Owner notes that Genest discloses "a device using a combination of retaining tabs 44 and a movable housing portion 49 complete with a locking mechanism 50 and a slide switch 52 to retain the handheld computer." (App. Br. 11, emphasis in original). According to the Patent Owner, the retaining tabs 44 therefore "do not deform or move with Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 12 the body of the case" but instead, "are stationary protrusions." (App. Br. 12, emphasis in original). The Patent Owner argues that in contrast, claim 1 of the '400 patent recite that the first and second planar elements are "elastic" and, thus, it is this "elastic nature of the planar elements [that] allows the tabs to move with the body of the case for entry of the electronic device." (App. Br. 13, quoting col. 9, ll. 41-48). However, the Patent Owner's argument is not persuasive because, as noted by the Examiner, "none of the claims under reexamination recite the language 'the tabs deform or move with the body of the case â€¦', nor do any claims recite the particular manner of entry of an electronic device." (RAN 10). Indeed, the Patent Owner argues limitations not present in the claims and imports limitations of the embodiment described in the specification of the '400 patent to assert that Genest fails to disclose the claimed invention. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982); see also Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004): Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. Clearly, the retaining tabs 44 of Genest are disclosed therein as functioning to retain the handheld computer as required by claim 1 (Genest, col. 9, ll. 55-62; Fig. 1). Whereas the locking mechanism 50 is used in conjunction therewith, claim 1 of the '400 patent does not preclude other components being used in combination with the recited plurality of tabs to retain the first and second planar elements. The claim also does not require Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 13 that the recited tabs deflect during insertion of the retained computer component. The Patent Owner also asserts that because Alexander states that "[b]oth the lower case body 200 and the cover 202 are preferably formed of a molded synthetic resin, preferably a suitable polypropylene, of a suitable rigidity and strength," it discloses a rigid carrying case. (App. Br. 13, quoting Alexander, col. 5, ll. 44-47 with emphasis added). The Patent Owner's argument is unpersuasive. Firstly, contrary to the Patent Owner's assertion, suggesting "suitable rigidity and strength" (id.) does not mean that the material should be absolutely "rigid" so as to be non-deformable or inelastic. Rather, the teaching of Alexander is that the material should be selected so that it is "suitable" in both rigidity and strength so that the components of the case perform their intended function described therein. Secondly, Alexander discloses that the appropriate material is "polypropylene" which is one of the materials that the specification of the Patent Owner's '400 patent describes as being suitable for the first and second elastic planar elements disclosed therein (compare Alexander, col. 5, ll. 44-47 with '400 patent, col. 5, ll. 7- 10). In this regard, in describing the planar sheets, the specification of the '400 patent refers to these sheets as "rigid planar sheets 102 and 112" that may be manufactured using various plastics (col. 5, l. 66-col. 6, l. 12, emphasis added). Correspondingly, it is clear that even the inventors of the Patent Owner's '400 patent considered rigidity and elasticity to be a matter of degree and that a component/material may be accurately described as being rigid while also being described as elastic. Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 14 Finally, the Patent Owner appears to argue that the Examiner has failed to articulate an obviousness rationale in support of the rejection based on the combination of Alexander and Genest (App. Br. 12). However, as noted supra, the Examiner adopted the rationale articulated in the Request for Inter Partes Reexamination (see RAN 8-9). In this regard, as reproduced supra, the rationale is that the combination suggested would have been obvious, inter alia, "so that the protective cover can be more securely attached to the laptop," that it would "improve[] on the prior art technique of Alexander using only friction to hold the cover in place," and that "adding tabs involves only routine skill in the art." (RAN 9). We agree and find the articulated rationale sufficient to support the conclusion of obviousness. In view of the above, we conclude that the Examiner did not err in rejecting claim 1 as obvious over the combination of Alexander and Genest. The invention of claim 1 is merely a "combination of familiar elements according to known methods" and "does no more than yield predictable results." KSR, 550 U.S. at 415-16. The provision of tabs in a protective case is a known technique and would be within the skill of those in the art. Id. at 417. Therefore, the Examiner's rejection of claim 1 is affirmed. Dependent Claims 2, 4-8 and 26-38 The Patent Owner asserts the patentability of these claims based on their ultimate dependency on independent claim 1 (App. Br. 14). Hence, these claims fall with claim 1. Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 15 Independent Claim 39 The Patent Owner repeats substantively the same arguments as those proffered with respect to independent claim 1 to assert patentability of claim 39 (App. Br. 14-23). For the reasons discussed supra, these arguments are unpersuasive. Hence, we affirm the Examiner's rejection of claim 39. Dependent Claim 3 The Patent Owner asserts the patentability of claim 3 based on its ultimate dependency on independent claim 1 (App. Br. 14). Hence, claim 3 also falls with claim 1. CONCLUSIONS 1. The Examiner did not err in finding that Alexander discloses a case body 200 that is separate and independent from a case cover 202. 2. The Examiner did not err in finding that Genest discloses a case having "a plurality of tabs" as recited in claim 1. 3. The Examiner did not err in concluding that it would have been obvious to one of skill in the art to provide the carrying case of Alexander with tabs disclosed in Genest to result in the invention claimed. ORDER The Examiner's rejections of claims 1-8 and 26-39 are AFFIRMED. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. Â§ 1.956. Appeal 2013-009127 Reexamination Control 95/001,767 Patent US 7,907,400 B2 16 AFFIRMED peb Third Party Requester: MITCHELL + COMPANY, LAW OFFICES ATTN: JIGANG JIN 4 EMBARCADERO CENTER, SUITE 1400 SAN FRANCISCO, CA 94111 Patent Owner: THOMAS HORSTEMEYER, L.L.P. 400 INTERSTATE NORTH PARKWAY SUITE 1500 ATLANTA, GEORGIA 30339