Ex Parte Chipping

Patent Trial and Appeal Board

Mar 23, 2017

13153619 (P.T.A.B. Mar. 23, 2017)

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.
13/153,619 06/06/2011 Phillip John Chipping 26613-3004USC1 9422
128128 7590 03/27/2017
Durham Jones & Pinegar, P.C.
Intellectual Property Law Group
3301 North Thanksgiving Way, Suite 400
Lehi, UT 84043
EXAMINER
REYNOLDS, STEVEN ALAN
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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):
ipmail@djplaw.com
ckoy@djplaw.com
jpitt@djplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILLIP JOHN CHIPPING
Appeal 2015-005510
Application 13/153,619
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—32 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-005510
Application 13/153,619
THE INVENTION
Appellant’s invention is a protective coating for an electronic device.
Spec. 12. Claim 15, reproduced below, is illustrative of the subject matter
on appeal.
15. A protective cover for an electronic device, comprising:
a body cover including members that, throughout their
entireties, are substantially transparent,
including:
a planar front member shaped to cover and conform to a
shape of a front surface of the electronic device, including a
screen viewable from the front surface; and
a planar rear member shaped to cover and conform to a
shape of a rear surface of the electronic device, the planar rear
member being entirely separate from the planar front member.
REJECTIONS
The following grounds of rejection are before us for review:
1. Claims 1—32 on grounds of nonstatutory double patenting as
unpatentable over claims 1—37 of Chipping (US 7,957,524 B2, iss.
June 7, 2011).
2. Claims 1—32 as unpatentable under 35 U.S.C. § 103(a) over
Antonini (US 2006/0154029 Al, pub. July 13, 2006) and Blackburn (US
2005/0022924 Al, pub. Feb. 3, 2005).
3. Claims 1—20 and 23—32 over Chang (US 2005/0047589 Al, pub.
Mar. 3, 2005) and Antonini.
OPINION
Double Patenting
The Examiner rejects claims 1—32 on the ground of nonstatutory
double patenting over claims 1—37 of US 7,957,524 to Chipping. Final
2
Appeal 2015-005510
Application 13/153,619
Action 2—3. The Examiner considers new claims 1,15, 23, 27, and 30 to be
broader than the previously patented subject matter. Id. at 3.
Appellant does not challenge the double patenting grounds of
rejection in the Appeal Brief. However, in a Response to Final Office
Action, Appellant states that claims 1—32 are still subject to amendment in a
manner that could obviate the obviousness-type double patent rejection. See
Sept. 5, 2014, Response After Final (hereinafter the “Response After
Final”). Appellant next states that a terminal disclaimer will not be filed in
the application until all other issues have been resolved. Id.
In view of the foregoing, Appellant has not apprised us of error and
we sustain the double patenting rejection of claim 1—32.1
Obviousness Under 35 U.S.C. § 103(a)
Graham Factors and Secondary Considerations
A patent is invalid for obviousness “if the differences between the
subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” 35 U.S.C. § 103. Obviousness is a question of law based
on underlying factual findings: (1) the scope and content of the prior art; (2)
the differences between the claims and the prior art; (3) the level of ordinary
skill in the art; and (4) objective indicia of nonobviousness. Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17—18 (1966). We must consider all
1 See Manual of Patent Examining Procedure (MPEP) § 1205.02, 9th ed.,
Rev. Nov. 2015 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the examiner’s answer.”).
3
Appeal 2015-005510
Application 13/153,619
four Graham factors prior to reaching a conclusion regarding obviousness.
In re Cyclobenzaprine Hydrochloride Extended—Release Capsule Patent
Litig., 676 F.3d 1063, 1076-77 (Fed. Cir. 2012).
Evidence showing objective indicia of nonobviousness constitutes
“independent evidence of nonobviousness.” Mintz v. Dietz & Watson, Inc.,
679 F.3d 1372, 1378 (Fed. Cir. 2012) (quoting Pressure Prods. Med.
Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1319 (Fed. Cir. 2010)).
Evidence of secondary considerations of non-obviousness, when present,
must always be considered en route to a determination of obviousness.
Cyclobenzaprine, 676 F.3d at 1075—76; Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1538—39 (Fed. Cir. 1983). Whether before the Board or a
court, consideration of objective indicia is part of the whole obviousness
analysis, not just an afterthought. See Leo Pharm. Prods., Ltd. v. Rea, 726
F.3d 1346, 1358 (Fed. Cir. 2013).
Evidence of secondary considerations “may often be the most
probative and cogent evidence of nonobviousness in the record.” Ortho
McNeil Pharm. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008).
Such evidence can establish that “an invention appearing to have been
obvious in light of the prior art was not.” Transocean Offshore Deepwater
Drilling, Inc. v. MaerskDrilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir.
2012) (quoting Stratoflex, at 1538). Consequently, fact finders must
withhold judgment on an obviousness challenge until it considers all
relevant evidence, including that relating to the objective considerations.
Cyclobenzaprine, 676 F.3d at 1079.
In an appropriate case, evidence of secondary considerations of non­
obviousness may not be sufficient to overcome strong evidence of
4
Appeal 2015-005510
Application 13/153,619
obviousness. Brown & Williamson Tobacco Corp., v. Philip Morris Inc.,
229 F.3d 1120, 1131 (Fed. Cir. 2000). In particular, where a claimed
invention represents no more than the predictable use of prior art elements
according to established functions, evidence of secondary indicia are
frequently deemed inadequate to establish non-obviousness. See Ohio
Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1344 (Fed.Cir. 2013)
citing Western Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361,
1373 (Fed.Cir. 2010) (“weak secondary considerations generally do not
overcome a strong prima facie case of obviousness”).
Moreover, “[f]or objective evidence of secondary considerations to be
accorded substantial weight, its proponent must establish a nexus between
the evidence and the merits of the claimed invention.” In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2010), quoting Wyers v. Master Lock Co., 616 F.3d
1231, 1246 (Fed. Cir. 2010). Where the offered secondary consideration
actually results from something other than what is both claimed and novel in
the claim, there is no nexus to the merits of the claimed invention. Tokai
Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed.Cir.2011) (“If
commercial success is due to an element in the prior art, no nexus exists.”);
Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1312 (Fed. Cir.
2006) (“[I]f the feature that creates the commercial success was known in
the prior art, the success is not pertinent.”)
There is a presumption of nexus for objective considerations when the
patentee shows that the asserted objective evidence is tied to a specific
product and that product “is the invention disclosed and claimed in the
patent.” WBIP, LLCv. Kohler Co., 829 F.3d 1317, 1329 (Fed. Cir. 2016).
The presumption may be rebutted by evidence that the proffered secondary
5
Appeal 2015-005510
Application 13/153,619
considerations are attributable to extraneous factors such as unclaimed
features. Id. With the foregoing legal principles in mind, we turn to analysis
of the evidence presented by the Examiner and the Appellant.
Unpatentability of Claims 1—32
Over Antonini and Blackburn
Appellant argues claims 1—32 as a group. Appeal Br. 7—10. We
select claim 15 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
The Examiner finds that Antonini discloses the claimed invention
except for having front and rear members with cuts, apertures or curved
edges to cover two or more surfaces of a cell phone. Final Action 6. The
Examiner relies on Blackburn as disclosing a plurality of separate planar
members for application to a cell phone. Id. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to modify Antonini’s cover to have front and rear
skins to cover the parts of an electronic device as taught by Blackburn. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to protect exposed surfaces of the electronic device. Id.
In traversing the rejection, Appellant does not challenge the
Examiner’s findings with respect to the first three Graham factors, nor does
Appellant challenge the Examiner’s underlying rationale for modifying
Antonini with the teachings of Blackburn. Appeal Br. 7-10. Instead,
Appellant relies solely on evidence of secondary considerations of non­
obviousness. Id. Appellant’s evidence consists of declaration testimony
from the inventor, Mr. Chipping. Id., Chipping Dec. Appellant argues that
Mr. Chipping’s testimony evidences long-felt, but unsolved needs,
commercial success, and copying by others. Id. at 10.
6
Appeal 2015-005510
Application 13/153,619
The Chipping Declaration was filed in connection with the Response
After Final. Appellant thereafter filed a Notice of Appeal initiating the
instant appeal to the Board. See Notice of Appeal, Sep. 15, 2014. On
September 15, 2014, the PTO issued an Advisory Action in which the PTO
checked box 10 indicating that the affidavit will not be entered. In the same
Advisory Action, the PTO checked box 11 indicating that the affidavit is
entered.2 In the accompanying continuation sheet, the PTO indicated that
Mr. Chipping’s Declaration testimony fails to overcome the applied
rejection because there is no nexus between the affidavit testimony and
invention as presently claimed. Id. ft further explains that commercial
success is attributed to claims that are not the same as those currently
pending. Id.
The Chipping Declaration is captioned in Application No. 11/681,665
and is dated April 27, 2010. Id. at 23. Application No. 11/681,665 issued as
US 7,957,524 B2 on June 7, 2011. In contrast, the instant application on
appeal was filed on June 6, 2011. The ‘524 Patent underwent reexamination
in case number 95,000,649, which resulted in issuance of a Reexamination
Certificate on Sept. 4, 2013. See US 7,957,524 Cl (hereinafter the “Reexam
Certificate”). The Reexam Certificate indicates that claims 1—10, 30, 35,
and 36 of US 7,957,524 B2 are cancelled and that claims 11, 12, 21, 24, 25,
32, and 37 are determined to be patentable as amended. Id. Claims 13—20,
22, 23, 26—29, 31, 33 and 34, which depend from an amended claim, are
determined to be patentable. Id.
2 Inasmuch as the Examiner addressed the merits of the Chipping
Declaration in the Answer, we will treat the declaration as having been
entered.
7
Appeal 2015-005510
Application 13/153,619
Mr. dripping’s Declaration recites the text of four claims as being
independent claims at the time of his declaration. Chipping Dec. 12 (then
pending claims 1, 29, 30, and 39). A review of the Reexamination
Certificate reveals that all four of those claims are cancelled or have
subsequently been amended. See Reexam Cert. In the Appeal Brief,
Appellant argues that:
Paragraph 8 of Mr. Chipping’s Declaration indicates that, at
that time, he was offering products that included two films: one
film that was transparent throughout for covering a first surface
of an electronic device, including a screen on the first surface;
and another, separate film for covering and conforming to (i.e.,
“lay[ing] flat against”) a second surface of the electronic
device. See also, paragraphs 8-12. In addition, Mr. Chipping's
Declaration repeatedly notes that the films of these protective
covers were transparent throughout (paragraphs 11,21 and 24).
When the foregoing is viewed in connection with the currently
pending claims of the '619 Application, it is apparent that the
statements and evidence that have been provided by way of Mr.
Chipping's Declaration apply to the subject matter recited by
the current version of each of independent claims 1, 15, 23, 27
and 30 of the '619 Application.
Appeal Br. 8 (emphasis added). In other words, Appellant asserts that the
subject matter of, for example, currently pending claim 15 is shown to be
patentable by Mr. Chipping’s declaration testimony that, at the time that it
was given, related to different claims that have either been cancelled or
amended.
Mr. Chipping testifies that his father-in-law owned a business that
covered the front of cars with a transparent plastic film to protect the cars’
finish. Chipping Dec. 14. He further testifies that the type of film used had
been developed by the military to protect the leading edge of helicopter
blades. Id. 14. Mr. Chipping advertised early versions of his commercial
8
Appeal 2015-005510
Application 13/153,619
product by stating that: “This REALLY TOUGH plastic film was developed
to protect helicopter blades.” Id. 117. He further testifies that the type of
material used was such that it caused scratches on the face of an old surface
to become “imperceptible.” Id. f 4. A news release quoted in Mr.
Chipping’s Declaration describes the product as “seemingly indestructible.”
Id. 121. Another news release relates that it is extremely hard to poke a
ballpoint pen through the product. Id. 122.
Appellant argues that “secondary consideration of non-obviousness,
along with the other “Graham factors,” are the controlling inquiries in any
obviousness analysis.” Appeal Br. 5. However, to put things in the proper
perspective, it is well settled that “[although secondary considerations must
be taken into account, they do not necessarily control the obviousness
conclusion.” Pfizer, Inc. v. Apotex, Inc., 480 L.3d 1348, 1372 (Led. Cir.
2007).
In response, the Examiner points out that the grounds of rejection
recited by Appellant in the Appeal Brief differ from the grounds of rejection
recited in the final Action. Ans. 2.3 The Examiner then observes that Mr.
3 Under Heading “V” in the Appeal Brief, Appellant states:
The Board is respectfully asked to review the following
issues in this appeal:
(A) The allowability of claims 1-20 and 23-32 under 35
U.S.C. § 103(a) for reciting subject matter which is patentable
over the subject matter taught and/or suggested by U.S. Patent
Application Publication No. 2005/0047589 of Chang
("Chang"), in view of teachings from U.S. Patent Application
Publication No. 2002/0036228 of Reese et al. ("Reese"); and
(B) The allowability of claims 1-32 under 35 U.S.C. §
103(a) for being drawn to subject matter that is patentable over
9
Appeal 2015-005510
Application 13/153,619
Chipping’s Declaration testimony relates to the subject matter of claims 1,
29, 30, and 39 from another, albeit related, application. Id. The Examiner
concludes that the declaration does not relate to the present claim set. Id.
The Examiner further explains that the declaration fails to overcome the
applied rejections because there is no nexus between the declaration and the
presently claimed invention. Id. at 2—3. Finally, the Examiner notes that
Appellant’s argument of commercial success is related to claims that are not
the same as those currently pending. Id. at 3.
In Reply, Appellant argues that Mr. Chipping’s Declaration
testimony, while admittedly submitted in another application, is equally
applicable to the claims that are currently pending. Reply Br. 7. Appellant
argues that Mr. Chipping’s Declaration testimony is sufficient to establish
each of the following three secondary considerations of nonobviousness:
(1) copying by others; (2) long-felt but unsolved needs; and (3) commercial
success. Appeal Br. 10, Reply Br. 9.
Copying
A party may prove copying by showing that an accused copier had
access to the patented product combined with substantial similarity to the
patented product. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir.
2010). Copying requires evidence of efforts to replicate a specific product.
Tokai, 632 F.3d at 1370. A showing of copying is only equivocal evidence
of non-obviousness in the absence of more compelling objective indicia of
the teachings of U.S. Patent Application Publication No.
2005/0022924 of Blackburn ("Blackburn").
Appeal Br. 3.
10
Appeal 2015-005510
Application 13/153,619
other second considerations. See Ecolochem, Inc. v. Southern Cal. Edison
Co., 227 F.3d 1361 (Fed. Cir. 2000).
In the instant case, Mr. Chipping testifies that “numerous competitors
sprang up, attempting to copy the invisibleSHIELD product.” Chipping
Dec. 133. However, apart from Mr. Chipping relating vague and
unsubstantiated allegations, there is no persuasive evidence in his
declaration that any competitor made a deliberate effort to replicate
Appellant’s commercial product. Furthermore, Mr. Chipping provides no
analysis that any alleged copy actually practices the claim of any particular
patent or patent application.
Thus, we find that Appellant’s evidence of copying is entitled to very
little weight in a patentability analysis.
Long-felt, Unmet Need
“Evidence of a long-felt but unresolved need can weigh in favor of the
non-obviousness of an invention because it is reasonable to infer the need
would not have persisted had the solution been obvious.” Apple Inc. v.
Samsung Electronics Co., Ltd., 839 F.3d 1034, 1056 (Fed. Cir. 2016)
Establishing long-felt need requires objective evidence that an art-
recognized problem existed in the art for a long period of time without
solution. Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768
(Fed. Cir. 1988). “[L]ong-felt need is analyzed as of the date of an
articulated identified problem and evidence of efforts to solve that problem.”
Texas Instruments, Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165, 1178
(Fed. Cir. 1993). Establishing long-felt need also requires objective
evidence that the invention satisfies the long-felt need. In re Cavanagh, 436
F.2d 491,496 (CCPA 1971).
11
Appeal 2015-005510
Application 13/153,619
Appellant argues that Mr. Chipping’s Declaration demonstrates that
there was a long-felt, but unmet need for the types of protective covers and
protected electronic devices recited by the claims on appeal. Appeal Br. 8.
Appellant argues that customers who saw Mr. Chipping’s protective covers
in use “immediately recognized that a long-felt need had finally been met.”
Id. at 9 (citing || 21—29 of Chipping Dec.).
We have reviewed paragraphs 21—29 of Mr. Chipping’s Declaration
and are not persuaded that they establish that an art-recognized problem
existed in the art for a long period of time without a solution. Newell, 864
F.2d at 768. In particular, Mr. Chipping’s testimony does not establish any
date or other time reference regarding when the alleged problem that was
purportedly solved by his invention became recognized in the art. Mr.
Chipping’s declaration does not offer any testimony as to efforts by others,
over time, to solve the problem. At best, the testimony supports an initially
favorable reaction to Mr. Chipping’s new product launch. However, it does
not support a finding that a problem existed for a “long period of time”
without a solution. Id.
Thus, we determine that Appellant’s evidence of long-felt, unmet
need is entitled to little weight in a patentability analysis.
Commercial Success
Commercial success of a product embodying an invention tends to
show nonobviousness when “the commercial success ... results from the
claimed invention” and is “due to the merits of the claimed invention beyond
what was readily available in the prior art.” J.T. Eaton & Co. v. Atl. Paste
& Glue Co., 106 F.3d 1563, 1571 (Fed.Cir.1997). “When a patentee can
demonstrate commercial success, usually shown by significant sales in a
12
Appeal 2015-005510
Application 13/153,619
relevant market, and that the successful product is the invention disclosed
and claimed in the patent, it is presumed that the commercial success is due
to the patented invention.” Id. However, information solely on numbers of
units sold is insufficient to establish commercial success. See In re Baxter
TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991). Moreover, evidence of
commercial success is only significant if there is a nexus between the
claimed invention and the commercial success. Ormco, 463 F.3d at 1311-
12.
Mr. Chipping’s testimony recites the text of four pending claims from
a previous patent application. Chipping Dec. 12. He then testifies that he
conceived of coverings “described by these claims.” Id. 13. Each of the
claims recites a first film covering a first surface of a device and a second
film covering a second surface of the device. Id. 12. However, Mr.
Chipping later indicates that his reported sales figures cover both full-body
protectors and screen-only protectors. Id. 130. From the record before us,
we are unable to determine whether “screen-only” protectors practice any of
the claims recited by Mr. Chipping in paragraph 2 of the declaration. There
is no clear and unequivocal testimony in the declaration that provides a
detailed description of all of the products that are included in Appellant’s
claim of commercial success. Mr. Chipping’s testimony that the commercial
products described in the declaration practiced certain pending claims from a
related patent application are conclusory at best. Id. 134. In the absence of
more detailed descriptions of the products that purportedly achieved
commercial success at the time of the related application, it is difficult for us
to extrapolate from Mr. Chipping’s testimony in a related case regarding
13
Appeal 2015-005510
Application 13/153,619
different claims to reach a factual determination that those commercial
products practiced the invention as currently claimed in the instant appeal.
Here, the evidence of commercial success is not persuasive.
Appellant reports raw sales figures for a narrow window of time on or about
2006. Chipping Dec. 132. There is no corresponding disclosure of the
relevant market size or the degree of Appellant’s market penetration into that
market.
Furthermore, Appellant’s sales data does not segregate sales of
“full-body” protectors from sales of “screen-only” protectors. Chipping
Dec. 16, 30 (“this amount includes both full-body and screen-only
protectors”). Claim 15 of the instant application, however, claims both a
front member and a separate rear member. Claims App. Thus, it is not clear
to us how much of Appellant’s commercial sales involved sales of “screen-
only” protectors that are not within the scope of claim 15.
We are, moreover, not persuaded that Appellant has successfully
rebutted the Examiner’s finding that there is no nexus between the alleged
commercial success and the subject matter of the claims. Ans. 3. Claim 15
of the instant application and the claims recited in the Chipping Declaration,
are merely directed to transparent or substantially transparent films.
However, Mr. Chipping’s Declaration testimony touts specific features
related to the performance of the product that are not claimed. Chipping
Dec. 14 (protects automotive finishes), 1 4 (protects helicopter blades), 117
(“really tough”); 121 (seemingly indestructible), 22 (cannot penetrate with
a pen), 14 (renders scratches on old surface “imperceptible”). Appellant’s
Specification touts that the protective cover does not “bunch or wrinkle.”
14
Appeal 2015-005510
Application 13/153,619
Spec. 125. The product lies flat against electronic device in a manner that is
substantially free of air bubbles. Id. 126.
A presumption of nexus may be rebutted by evidence that the
proffered secondary considerations are attributable to unclaimed features.
WBIP, 829 F.3d at 1329. Here, Appellant’s own evidence strongly suggests
that the commercial success of the product, if any, may be attributable not to
the fact that it is transparent and enables viewing of a screen, but that the
product exhibits particular physical and performance properties that are not
claimed.4
In summary, in view of Appellant’s lack of market share evidence
together with evidence of record regarding unclaimed features relating to the
physical properties and performance of the product, we find that Appellant’s
evidence of commercial success is entitled to very little weight.
Weighing the evidence as a whole, including the evidence of
secondary considerations of non-obvious, we determine that the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well founded.
Accordingly, we sustain the unpatentability rejection of claims 1—32 over
Antonini and Blackburn.
4 Claims 12 and 16 of the instant application have limitations directed to a
specified hardness and tensile strength. Claims App. However, Mr.
Chipping’s declaration testimony does not indicate that the products about
which he testified exhibited such features. In any event, Appellant does not
argue for the separate patentability of claims 12 and 16.
15
Appeal 2015-005510
Application 13/153,619
Unpatentability of Claims 1—20 and 23—32
over Chang and Antonini.
The Examiner finds that Chang discloses the claimed invention except
for being substantially transparent. Final Action 5. The Examiner relies on
Antonini as disclosing a transparent skin for handheld devices. Id. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to modify Chang’s cover
to be substantially transparent. Id. According to the Examiner, a person of
ordinary skill in the art would have done this so that the cover does not
detract from features of the mobile device. Id.
In traversing the rejection, Appellant relies on the same arguments
and evidence concerning secondary considerations that we considered and
found unpersuasive with respect to the grounds of rejection over Antonini
and Blackburn and which we find equally unpersuasive here. Weighing the
evidence as a whole, including the evidence of secondary considerations of
non-obviousness, we determine that the Examiner’s findings of fact are
supported by a preponderance of the evidence and that the Examiner’s legal
conclusion of unpatentability is well founded. Accordingly, we sustain the
rejection of claims 1—20 and 23—32 over Change and Antonini.
DECISION
The decision of the Examiner to reject claims 1—32 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
16