Ex Parte CarnevaliDownload PDFPatent Trial and Appeal BoardOct 31, 201611711418 (P.T.A.B. Oct. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111711,418 24692 7590 Charles J. Rupnick 4742 - 42nd Ave. SW Suite 494 02/26/2007 11/02/2016 Seatlle, WA 98116-4553 FIRST NAMED INVENTOR Jeffrey D. Carnevali 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 ATTORNEY DOCKET NO. CONFIRMATION NO. NPI-065 7394 EXAMINER CHAN, KO HUNG ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 11/02/2016 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): rupnick@comcast.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFREY D. CARNEY ALI Appeal2014-009509 Application 11/711,418 Technology Center 3600 Before JOHN C. KERINS, WILLIAM A. CAPP, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jeffrey D. Camevali ("Appellant') appeals under 35 U.S.C. § 134(a) from the Examiner's non-final decision rejecting claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal2014-009509 Application 11/711,418 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A flexible portable device mount apparatus, the apparatus compnsmg: a frame structured for being coupled to an external mounting device, the frame comprising: a mounting surface and a plurality of first and second passages provided adjacent to each of opposing side edges thereof; a plurality of substantially resiliently flexible clamps each comprising a leg portion, a finger portion extended from the leg portion, and a substantially resiliently flexible urging portion coupled between the leg portion and the finger portion; and coupling means operating between different ones of the first and second passages of the frame and the leg portion of each of different ones of the clamps for coupling the leg portion relative to the mounting surface. REJECTIONS 1) Claims 1-8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Camevali '458 (US 7,551,458 B2, iss. June 23, 2009) and Camevali '583 (US 2007/0022583 Al, iss. Feb. 1, 2007). 2) Claims 9-14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Camevali '583. 3) Claims 15-21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Camevali '583 and Camevali '458. 2 Appeal2014-009509 Application 11/711,418 DISCUSSION Rejection 1 Appellant argues Claims 1-8 as a group. Appeal Br. 8-10. Pursuant to 37 C.F.R. § 41.37(c)(iv), we select claim 1 to decide this rejection. Claims 2-8 stand or fall with claim 1. The Examiner finds that Camevali '458 discloses the limitations of claim 1 except the "plurality of substantially resiliently flexible clamps" with the "substantially resiliently flexible urging portion." Non-final Act. 3. The Examiner finds that Camevali '583 discloses "a resiliently flexible jaw structure, which can also be read as a clamp" that has "leg portion (124), finger portion (213) and an urging portion (235)." Id. The Examiner concludes it would have been obvious to "combine the teaching of Camevali '458 with Camevali '583 for the purpose of automatically securing items of various sizes. Springs and/or urging members allow for continual adjustability, versus incremental adjustability Camevali '458." Id. Appellant contends that Camevali '458 teaches away from having a "resiliently flexible urging portion" because it discloses posts 44 fixed in a permanent position with sufficient clearance between the posts for easy insertion and removal of an apparatus. Appeal Br. 9 citing Camevali '458, col. 6, 11. 40-48, Fig. 1. Appellant admits that Camevali '458 does "not overtly argue against urging of flexible clamps" but "clearly inherently teaches away from the 'resiliently flexible urging portion' between upright post 52 and foot structure 38 at least because 'resiliently urging' upright post 52 relative to foot structure 48 would necessarily reduce or eliminate "clearance" between posts 44 whereby such 'sufficient clearance' for such 3 Appeal2014-009509 Application 11/711,418 'easy insertion and removal' would be destroyed." Reply Br. 3. For the following reasons, we sustain the rejection. When a prior art reference discloses a different solution to a similar problem, it does not teach away from the claimed subject matter unless the prior art reference also criticizes, discredits or otherwise discourages the solution claimed. See Croes, Inc. v. U.S. International Trade Commission, 598 F.3d 1294, 1308 (Fed. Cir. 2010)(Prior art taught away by specifically discouraging use of foam straps.); In re Fulton, 391 F. 3d 1195, 1201 (Fed. Cir. 2004). Appellant does not direct us to any specific portion of Camevali '458 where the use of resilient flexible urging members is discouraged. In fact, Appellant admits there is no overt disclosure discouraging use of a resilient flexible urging member. Appellant's teaching away argument is thus, not persuasive. Appellant fails to persuasively apprise us of error in the Examiner's factual findings or rationale, quoted above, for the combination of Camevali '458 and Camevali '583, which we determine to be reasonable and supported by the disclosure in the cited references. See KSR Intern. Co. v Teleflex Inc., 550 US 398, 416 (2007) ("[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). We thus, sustain the rejection of claims 1-8 under 35 U.S.C. § 103(a). Rejection 2 The Examiner finds that Figure 5 of Camevali '583 discloses the limitations of claim 9 except for the recited "plurality of means for resiliently clamping an external object ... "Final Act. 5. The Examiner specifically finds that Figure 5 discloses "a mounting surface (the planar 4 Appeal2014-009509 Application 11/711,418 top portions of elements 17 and 19)." Id. The Examiner finds that Figure 10 ofCamevali '583 discloses "a plurality of means (213 and 214) for resiliently clamping an external object ... each of the plurality of clamping (213 and 214) means comprising an operational clamping surface inclined toward the mounting surface and a means for resiliently urging (235) the inclined operational clamping ... surface toward the mounting surface; and coupling means 325." Id. at 6. The Examiner concludes it would have been obvious "to combine the teaching of Figure II embodiment 1 with the resilient urging clamps in Figure 1 O/embodiment 10 for the purpose of accommodating electronic devices with slightly different widths." Id. Appellants contend that the Examiner's finding that Camevali '583 discloses a frame (10) is erroneous because item 10 is the entire assembly in Camevali's '583's Figure 1 and the Examiner's argument regarding the "frame" element is unclear. Id. at 12. The Examiner responds that a definition of "frame" as "something composed of parts fitted together and united" was provided. Ans. 3; Non-final Act. 5. For the following reasons, we do not sustain the rejection. Camevali '583 discloses "a releaseably-clamped universal cradle apparatus 10 that is structured for securely receiving different larger or irregularly shaped devices." Camevali '583, i-f28, see also Fig. 1. Apparatus 10 includes "a pair of opposing jaw structures 13, 14 that are structured to cooperate for securely releasably cradling different larger or irregularly shaped devices." Id. Apparatus 10 also includes "an elongated male drive shaft 17 and a mating elongated female drive frame 19." Id. 5 Appeal2014-009509 Application 11/711,418 Claim 9 recites, inter alia, "a substantially rigid frame ... having a mounting surface formed thereon between first and second opposing side edges." Appeal Br. 27 (Claims App.). Element 10 of Camevali '583 includes jaw structures 13 and 14 which extend vertically upward from the planar top portion of elements 1 7 and 19. Element 10 also extends vertically downward toward the bottom surface of element 19. The planar top portion of elements 17 and 19 is internal to element 10. Thus, the Examiner's finding that the planar top portion of elements 17 and 19 is "a mounting surface formed" on the frame is not supported by a preponderance of the evidence. As the rejection of claim 9 is based on an erroneous factual finding, the conclusion of obviousness cannot stand. See In re Warner, 379 F .2d 1011, 1017 (CCP A 1967). We do not sustain the rejection of claim 9 and claims 10-14 which are dependent on claim 9. Rejection 3 The Examiner finds that Carnevali '583 discloses the limitations of claim 15 except for "a plurality of first and second substantially parallel slots ... and coupling means operating between different ones of the first and second slots of the frame." Non-final Act. 7-8. The Examiner finds that Camevali '458 discloses parallel slots 60 and concludes it would have been obvious "to combine the teaching of Camevali ('583) with Camevali ('458) of having multiply [sic] means of securing an electronic device." Id. at 8. Appellants contend that the Examiner's finding that Camevali '583 discloses a frame (10) is erroneous because item 10 is the entire assembly in Camevali's '583's Figure 1 and the Examiner's argument regarding the "frame" element is unclear. Appeal Br. 16-17. Appellants next contend that Camevali '583 does not disclose the recited coupling means between the 6 Appeal2014-009509 Application 11/711,418 frame and the clamps because the embodiments in Figure 1 and Figures 7-10 of Camevali '5 83 disclose clamps that are integral with the frame and there is no coupling means between them. Id. at 19-21. The Examiner responds that Figure 10 of Camevali '583 "teaches a coupling means 325." Ans. 4. For the following reasons, we do not sustain the rejection. Claim 15 recites, inter alia, "the frame comprising ... a plurality of first and second substantially parallel slots" and "coupling means operating between different ones of the first and second slots of the frame and the leg portion of each of different ones of the clamps for coupling the leg portion relative to the mounting surface." Appeal Br. 28 (Claims App.). Although the Examiner finds that Camevali '458 discloses parallel slots 60, the Examiner does not explain where the parallel slots would be placed in the frame of Camevali '5 83 when Camevali '5 83 is combined with Camevali '483. In Figure 10 of Camevali '583, the Examiner points to a single coupling means 325 that couples the leg portions of two resiliently flexible clamps to the mounting surface. The Examiner does not explain how coupling means 325 would operate, in the proposed combination, between different ones of the first and second slots of the frame and the leg portion of each of different ones of the clamps as recited in claim 15. For the foregoing reasons, the rejection of claim 15 is not supported by rational underpinnings. We, thus, do not sustain the rejection of claim 15 and dependent claims 16-21. DECISION The Examiner's decision rejecting claims 1-8 is affirmed. The Examiner's decision rejecting claims 9-21 is reversed. 7 Appeal2014-009509 Application 11/711,418 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation