Ex Parte Carnevali

Patent Trial and Appeal Board

Oct 31, 2016

11711418 (P.T.A.B. Oct. 31, 2016)

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.
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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
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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
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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.
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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
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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.
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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
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