Ex Parte Coakley et alDownload PDFPatent Trials and Appeals BoardSep 18, 201814692118 - (D) (P.T.A.B. Sep. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/692,118 04/21/2015 138908 7590 09/18/2018 Burrus Intellectual Property Law Group (MM Files) 222 12th Street NE Suite 1803 Atlanta, GA 30309 FIRST NAMED INVENTOR Brett A Coakley 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. MM01244 5825 EXAMINER WICKLUND, DANIEL PM ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 09/18/2018 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 Ex parte BRETT A. COAKLEY STEVE C. EMMERT, NICHOLAS A. FRASER, and THOMAS GITZINGER Appeal2017-010186 Application 14/ 692, 118 Technology Center 2800 Before GEORGE C. BEST, N. WHITNEY WILSON, and DEBRA L. DENNETT, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL 1 The Examiner finally rejected claims 1-18 and 20 of Application 14/692, 118 under 35 U.S.C. § 103 as obvious. Final Act. 2-11 (November 18, 2016). The Examiner also rejected claim 20 under 35 U.S.C. § l 12(b) as 1 Appellants have indicated that the '118 Application is related to US Application 14/692,087, which is also before the PTAB. Br. 2. We are deciding the appeal in the '087 Application (Appeal 2017-010185) contemporaneously with this appeal. Appeal2017-010186 Application 14/ 692, 118 indefinite. Id. at 2. Appellants2 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 '118 Application describes a device with a locking housing. Spec. ,r 2. In particular, the device can be a portable electronic device that can be worn on the user's wrist, e.g., a smart watch. Id. ,r 5. A user can perceive such an electronic device as a fashion accessory. Id. ,r 6. Therefore, it may be desirable for the user to be able to change the electronic device's appearance without altering its operation. Id. It may also be desirable for the device to be water resistant. Id. ,r,r 36-37. The' 118 Application's Specification describes such a water resistant device. Claim 1 is representative of the' 118 Application's claims on appeal and is reproduced below from the Claims Appendix of the Brief. 1. A device, comprising: a case comprising a case sidewall defining a circular receiver having a receiving opening and a central axis, the case sidewall defining at least one aperture having an aperture axis oriented substantially orthogonal he with the central axis; a waterproof device body comprising a sidewall defining a receiving aperture, the waterproof device body to insert into the circular receiver along the central axis; a crown stem comprising a push button disposed within a duct of a threaded bushing and one or more 0-rings disposed about the push button to allow translation of the 2 Motorola Mobility LLC is identified as the applicant and real party in interest. Br. 2. 2 Appeal2017-010186 Application 14/ 692, 118 push button in the duct while preventing liquids from passing through the duct, the push button defining at least one recess; and a retention clip attached to a shaft of the push button to retain the push button within the duct; the crown stem to insert through the at least one aperture and the threaded bushing to hermetically sealed the receiving aperture when the waterproof device body is inserted into the circular receiver to prevent the liquids from entering the receiving aperture. Br. 29 ( emphasis added). REJECTIONS On appeal, the Examiner maintains3 the following rejections: 1. Claims 1, 2, 5-7, 15, and 16 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Tamaru4 and Manni. 5 Final Act. 2. 2. Claims 8-12 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Tamaro, Manni, and Hiranuma. 6 Final Act. 7. 3 Appellants have cancelled claim 20. Amendment After Notice of Appeal 6 (February 13, 2017). Thus, the rejection of claim 20 under 35 U.S.C. § 112(b) is moot. 4 US 6,762,976 Bl, issued July 13, 2004. 5 US 2010/0187074 Al, published July 29, 2010. 6 US 2006/0158964 Al, published July 20, 2006. 3 Appeal2017-010186 Application 14/ 692, 118 3. Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable over the combination of Tamaro, Manni, and Byun. 7 Final Act. 8. 4. Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable over the combination of Tamaro, Manni, Byun, and Kelly. 8 Final Act. 9. 5. Claims 17 and 18 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Tamaro, Manni, and Li. 9 Final Act. 10. DISCUSSION Rejection 1. The Examiner rejected claims 1, 2, 5-7, 15, and 16 as unpatentable over the combination of Tamaro and Manni. Final Act. 2-7. For purposes of this appeal, Appellants stipulate that claims 2, 5-7, and 15 stand or fall with independent claim 1. Br. 12. Appellants present separate arguments for the patentability of independent claims 1 and 16. See id. at 12-25. We address the patentability of these claims separately. Claim 1. Appellants argue that the rejection of claim 1 should be reversed because the Examiner erred by finding that the combination of Tamaro and Manni describes or suggests all of the elements recited in claim I. Id. at 16-23. In particular, Appellants argue that the combination of Tamaro and Manni does not describe or suggest the claimed "retention clip 7 US 2011/0221688 Al, published September 15, 2011. 8 US 2008/0062819 Al, published March 13, 2008. 9 US 5,598,383, issued January 28, 1997. 4 Appeal2017-010186 Application 14/ 692, 118 attached to a shaft of the push button to retain the push button within the duct." In rejecting claim 1, the Examiner combines two distinct embodiments in Tamaro with 0-rings described in Manni. Answer 2-3. The Examiner specifically found that the embodiment depicted in Tamaro's Figure 7 describes "a screw-lock crown comprising a retention clip attached to a shaft of a push button to retain the push button within the duct ( elements 42, 54), col. 6 lines 11-29." Final Act. 4. The Examiner further found that the diameter of element 42 is larger than support pipe 17. Element 42 as attached to the shaft of the push button (11 and 13). Thus, if the push button is pulled back to the point where element 42 reaches element 17, the push button would stop, thus retaining the push button within the duct. Answer 4 ( citing Tamaro Fig. 7). These findings are not supported by Tamaro's disclosure. According to Tamaro, "a metallic annular axial movement restricting member 42 is disposed between the stem connecting member 13 and the movement 30 so as to surround the stem 11." Tamaro col. 6, 11. 21-24. This passage does not state that annular axial movement restricting member 42 is attached to either stem connecting member 13 or stem 11. Nor does the passage state that removal of stem connecting member 13 is prevented by attachment of annular axial movement restricting member 42 to stem connecting member 13. Nor does the Examiner identifying specific places in Tamaro which support these findings, which are a necessary part of the basis for the rejection of claim 1. 5 Appeal2017-010186 Application 14/ 692, 118 In fact, an examination of Tamaro' s Figure 7 reveals that annular axial movement restricting member 42 is not connected to stem connecting member 13. We reproduce Tamaro's Figure 7 below. 40- 14-· 10 -::. 10 a ,,.,----- 41 FIG. 7 15 13 \ 11 42 Tamaro's Figure 7 is a sectional view of a watch according to one embodiment of Tamaro' s invention. Tamaro col. 4, 11. 10-22. J 30 As can be seen, annular axial movement restricting member 42 surrounds stem 11 and, as described in Tamaro, prevents excessive displacement of stem connecting member 13 toward movement 30, thereby preventing damage caused by inward displacement of stem connecting member 13. See id. col. 6, 1. 60-col. 7, 1. 3. 6 Appeal2017-010186 Application 14/ 692, 118 Because we agree with Appellants that the Examiner erred by finding that the combination of Tamaro and Manni describes the recited retention clip, we reverse the rejection of claim 1. We, therefore, also reverse the rejection of claims 2, 5-7, and 15. Claim 16. Claim 16 is reproduced below from the Claims Appendix. 16. A device, comprising: a case defining a circular receiver having a central axis and comprising an aperture oriented substantially orthogonal with the central axis; an insert to seat within the circular receiver, the insert compnsmg a rece1vmg opemng; a crown stem comprising a push button disposed within a duct of a threaded bushing and one or more 0-rings disposed about the push button to allow translation of the push button in the duct while preventing liquids from passing through the duct; and a collar coupled to the crown stem to prevent rotation of the crown stem relative to the receiving opening; the crown stem to hermetically sealed the receiving opening when coupled to the insert through the aperture. Br. 31-32 (emphasis added). Appellants argue that the rejection of claim 16 should be reversed because the Examiner has failed to establish a prima facie case of obviousness. Id. at 23-25. In particular, Appellants argue that the combination of Tamaro and Manni fails to describe or suggest a device comprising, in relevant part, a collar coupled to the crown stem to prevent rotation of the crown stem relative to the receiving opening. Id. In rejecting claim 16, the Examiner found that Tamaro describes the collar. Final Act. 6. In particular, the Examiner referred to Tamaro's 7 Appeal2017-010186 Application 14/ 692, 118 Figures 38--40 and found that Tamaro describes "a collar (i.e. the portion of element 250 interacting with element 252) coupled to the crown stem to prevent rotation of the crown stem relative to the receiving opening (Fig. 40, form by the engagement of elements 252 and 250; col. 13 lines 21-27)." Id. Appellants argue that the Examiner erred because [ e ]lement 252 of Tamaro is a screw thread. By definition, parts are specifically designed to rotate around screw threads. This is confirmed by Tamaro at the very passage cited by the examiner, namely, col. 13, 11. 21-27: "The crown is rotated to release a screw thread 252 so that a spring 253 urges the crown to project out of a pair of crown guards 254. By rotating the projecting crown, the stem is rotated by way of the pin 251, thereby to carry out the hand adjustment and other operations." Emphasis added. Tamaro fails to teach any device preventing rotation of its crown. Br. 24. The Examiner responds that screw threads 252 are designed to prevent rotation once the collar of crown 250 is rotated until there are no more screw threads to continue rotation. Answer 5. The crown and collar are rotated to release the screw thread so that time adjustments can be performed. Id. The Examiner interprets the term "release" in Tamaro' s Specification as freeing from restraint or confinement. Id. "If the crown and collar in Figure 40 is not from released the screw thread, [sic] it is restrained (i.e. restricted) to the screw thread. Thus, Tamaro discloses 'a collar coupled to the crown stem to prevent rotation of the crown stem relative to the receiving opening'." Id. The Examiner further determines that the limitation "to prevent rotation of the crown stem relative to the receiving opening" is an intended use recitation. The Examiner finds that the structure described in Tamaro is capable of performing the intended use and, therefore, describes the claim limitation. Id. 8 Appeal2017-010186 Application 14/ 692, 118 We are persuaded that the Examiner reversibly erred by finding that the combination of Tamaro and Manni describes or suggests the claimed "collar coupled to the crown stem to prevent rotation of the crown stem relative to the receiving opening." As depicted in Tamaru's Figure 40, reproduced below, screw thread 252 does not prevent rotation of the screw- lock crown stem ( comprised of crown head 250, stem connecting member 251, and coil spring 253) relative to the receiving opening in side 220a of inner middle 220. See also Tamaro Fig. 38. FIG. 40 ( l ,I 243 2 Z 1 IJ ::uso 2 r, :,. Tamaru's Figure 40 depicts a sectional view taken along a line intersecting a crown in a seventh embodiment of Tamaru's invention. Tamaro col. 4, 1. IO-col. 5, 1. 21. We begin by noting that we are assuming, arguendo, that the Examiner has correctly construed claim 16 as only requiring prevention of rotation of crown head 250 rather than the entire screw-lock crown stem assembly and that claim 16 only requires that the claimed apparatus only 9 Appeal2017-010186 Application 14/ 692, 118 prevent rotation of crown head 250 in some situations. 10 As shown in Figure 40, screw threads 252 do not, in and of themselves, prevent rotation of crown head 250. When the components of Tamaru's device are in the orientation depicted in Figure 40, crown head 250 cannot be turned in a manner to cause crown head 250 move further into the opening in outer middle 221. A user cannot screw crown head 250 further into the opening in outer middle 221 due to physical interference between crown head 250 and outer middle 221, in particular outer middle side 221a and outer middle bottom 221b. Thus, it is the combination of screw threads 252 and the physical interference that prevents rotation of crown head 250 in one direction. For the reasons set forth above, we reverse the rejection of claim 16 as unpatentable over the combination of Tamaro and Manni. Rejections 2-4. Claims 8-14 depend, directly or indirectly, from independent claim 1. Because we have reversed the rejection of claim 1 and the Examiner does not rely upon the additional references cited in these rejections to cure the defect we identified in the rejection of claim 1, we also reverse the rejection of claims 8-14. Rejection 5. Claims 17 and 18 depend, either directly or indirectly, from independent claim 16. Because we have reversed the rejection of claim 16 and the Examiner has not relied upon Li to cure the defect identified in the rejection of claim 16, we also reverse the rejection of claims 17 and 18. 10 We express no opinion on the construction of claim 1. 10 Appeal2017-010186 Application 14/ 692, 118 CONCLUSION For the reasons set forth above, we reverse the rejection of claims 1- 18 of the '118 Application. REVERSED 11 Copy with citationCopy as parenthetical citation