Ex Parte Coakley et al

Patent Trials and Appeals Board

Sep 18, 2018

14692118 - (D) (P.T.A.B. Sep. 18, 2018)

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.
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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.
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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.
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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.
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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
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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.
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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
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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.
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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