Ex Parte Dyer et al

Patent Trial and Appeal BoardAug 22, 2014

11697356 (P.T.A.B. Aug. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte IAN DYER, PAUL KING, JOY BURNS, KISLAP ONGCHANGCO, EMILY KELLY, CARRIE BUSE, KENNETH HEIMANN, and CHRISTOPHER GOFF ____________ Appeal 2012-005170 Application 11/697,356 Technology Center 3700 ____________ Before JOHN C. KERINS, STEFAN STAICOVICI, and LYNNE H. BROWNE, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ian Dyer et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s final decision rejecting under 35 U.S.C. § 103(a) claims 1–5, 7, 8, 11–13, and 15–20 as unpatentable over Bushmitch (US 6,494,762 B1, iss. Dec. 17, 2002) and Shiozawa (US 2006/0015826 A1, pub. Jan. 19, 2006); claims 6 and 14 as unpatentable over Bushmitch, Shiozawa, and Chan (US 6,719,604 B2, iss. Apr. 13, 2004); and claims 9 and 10 as unpatentable over Bushmitch, Shiozawa, and Mawle (US 7,081,033 B1, iss. July 25, 2006). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). Appeal 2012-005170 Application 11/697,356 2 INVENTION Appellants’ invention relates to “removable memory devices having an ornamental housing.” Spec. 1, ¶ 2. Claims 1, 11, and 17 are independent claims. App. Br. 27, 29–30, 31–32. Independent claim 1 is illustrative of the claimed invention and reads as follows: 1. A toy electronic device comprising: a housing sized to fit in the hand and including a case defining an enclosure and at least one character shell configured to resemble a character and to be frictionally attached to the case; memory mounted in the case and storing software commands, files and network addresses; a first connector mounted in the case and configured to be connected to a computer; a second connector mounted in the case and configured to be connected to an audio output device; and a processor mounted in the case and operably connected to the memory and the first and second connectors for transferring data received on the first connector to the memory, and selectively operable for transferring data from the memory to the second connector. SUMMARY OF DECISION We REVERSE. ANALYSIS Claims 1–10 The Examiner found that Bushmitch discloses “a toy electronic device comprising a housing sized to fit the hand including a case (116) defining an enclosure and at least one elongated character shell (220) configured to resemble a character and to be frictionally attached to the case.” Ans. 5 Appeal 2012-005170 Application 11/697,356 3 (citing Bushmitch, Fig. 2C). The Examiner takes the position that because Bushmitch discloses that case 116 is configured to fit within shell 220, the walls of case 116 contact the walls of shell 220, and thus, a frictional attachment is formed. Ans. 17–18. Moreover, the Examiner notes that portable computer 116 is connected to shell 220 using cables 214. Id. at 18. Thus, the Examiner concludes that, “one skilled in the art could suggest that the inserting of the module computer [116] in the shell [220] in conjunction with the connection cables [214] connecting the computer to the shell is equivalent to a character shell being ‘frictionally attached’ to a case of the portable computer.” Id. Appellants argue that, “there is no disclosure or suggestion in Bushmitch or Shiozawa that the walls are attached (or joined) to each other, much less frictionally attached (or joined by friction).” App. Br. 19. According to Appellants, “[t]wo structures are not frictionally attached (or joined by friction) merely because one structure fits within the other structure and because the structures are electrically connected.” Reply Br. 4. Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection, the Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In this case, although the Examiner is correct that the portable computer 116 of Bushmitch is configured to fit within shell 220, this in no way demonstrates that they are “frictionally attached.” We agree with Appellants that the limitation of “at least one character shell configured . . . to be frictionally attached to the case” requires Appeal 2012-005170 Application 11/697,356 4 that the shell be joined by friction to the case. See App. Br. 18; see also Reply Br. 4. Hence, just because the portable computer 116 of Bushmitch is configured to fit within shell 220, it does not mean that the fit is such that they are attached by friction. For example, rather than friction, the portable computer 116 of Bushmitch may be secured within shell 220 by a top lid. Moreover, the Examiner fails to explain how contact between the walls of portable computer 116 and shell 220 occurs when wires 214 are located therebetween for connecting portable computer 116 to transducers in shell 220. See Bushmitch, col. 4, ll. 39–43 and 47–53 and Fig. 2C. As such, the Examiner’s finding that portable computer 116 and shell 220 are “frictionally attached” is mere speculation and conjecture based on the unfounded assumption that because the portable computer 116 of Bushmitch is configured to fit within shell 220 they are “frictionally attached.” The Examiner’s use of the teachings of Shiozawa, Chan, and Mawle does not remedy the deficiencies of Bushmitch as described supra. See Ans. 7, 14, and 15. Accordingly, because speculation and conjecture cannot form the basis for concluding obviousness, we do not sustain the rejections under 35 U.S.C. § 103(a) of claims 1–5, 7, and 8 as unpatentable over Bushmitch and Shiozawa; claim 6 as unpatentable over Bushmitch, Shiozawa, and Chan; and claims 9 and 10 as unpatentable over Bushmitch, Shiozawa, and Mawle. Claims 11-20 The Examiner found that turtle shell 220 of Bushmitch constitutes a character shell “depicting in relief” a character, as called for by each of independent claims 11 and 17. Ans. 21; see also App. Br. 29 and 31. Appeal 2012-005170 Application 11/697,356 5 According to the Examiner, “the shell includes forms or figures or projections such as the turtle shell, head, and limbs that distinguish them from a surrounding plane or flat surface.” Ans. 5 (citing, Bushmitch, Fig. 2C). Appellants argue that because turtle shell 220 is not flat, the head and limbs that project therefrom do not project from a flat surface and thus turtle shell 220 does not constitute a character shell “depicting in relief” a character. Reply Br. 5. In response, the Examiner opines that because the claim language fails to define the surrounding plane or flat surface from which the projections distinguish themselves, “the turtle shell, head, limbs are all components that project[] from a flat surface related to the surface of the portable computer.” Ans. 21. At the outset, we note that both Appellants and the Examiner propose various definitions for the term “relief.” Compare App. Br. 21-22 with Ans. 20. “[C]laims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Here, Appellants’ Specification states that, “[c]haracter shell 14 may depict a character in relief as a textured surface.” Spec. 7, ¶ 34; see also Appellants’ Drawings, Fig. 4. As such, we agree with Appellants that an ordinary and customary meaning of the term “relief” when read in light of the Specification is “the projection of figures and forms from a flat surface.” See App. Br. 21–22. Appeal 2012-005170 Application 11/697,356 6 In view of the above-mentioned ordinary and customary definition of the term “relief,” the limitation of a character shell “depicting in relief” a character, as called for by each of independent claims 11 and 17, requires a character that projects from the character shell. In other words, in contrast to the Examiner’s position, the character shell itself constitutes the plane or flat surface from which the character projects. As such, the Examiner’s interpretation of the term “relief” as covering any object that projects from a flat surface, i.e., a three-dimensional object, is unreasonable and renders meaningless the term “relief.” We thus agree with Appellants that, “the turtle shell [220 of Bushmitch] does not disclose a character ‘in relief’ because the turtle shell is not a flat surface (or plane surface).” Reply Br. 6. The Examiner’s use of the teachings of Shiozawa and Chan does not remedy the deficiencies of Bushmitch as described supra. See Ans. 7 and 14. Accordingly, we also do not sustain the rejections under 35 U.S.C. § 103(a) of claims 11–13 and 15–20 as unpatentable over Bushmitch and Shiozawa and claim 14 as unpatentable over Bushmitch, Shiozawa, and Chan. SUMMARY The Examiner’s decision to reject claims 1–20 is reversed. REVERSED llw