Ex Parte Edenfield

Patent Trial and Appeal Board

May 31, 2013

11281543 (P.T.A.B. May. 31, 2013)

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.
11/281,543 11/17/2005 Benjamin W. Edenfield 3017
7590 05/31/2013
James C. Wray
Suite 300
1493 Chain Bridge Road
McLean, VA 22101
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
05/31/2013 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 BENJAMIN W. EDENFIELD
____________

Appeal 2011-004051
Application 11/281,543
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
HYUN J. JUNG, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Benjamin W. Edenfield (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-4, 7-9, 17-20, and 23. The
Examiner withdrew claims 5, 6, 10-16, 21, 22, and 24 from consideration.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 41.50(b).
Appeal 2011-004051
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Claimed Subject Matter
The claimed subject matter relates to “the field of radio frequency
electromagnetic signal shielding for contactless cards.” Spec. 1, ll. 3-4.
Claims 1, 17, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the appealed subject matter.
1. An RFID shielding apparatus comprising:
a bottom half of an enclosure,
a top half of an enclosure,
a connection between the bottom half and the top half,
an enclosure space between the bottom half and the top
half for holding enclosed RFID devices,
shielding on inner surfaces or within the bottom half and
the top half for completely attenuating wavelengths associated
with the enclosed RFID devices, and
wherein shielding on the bottom half and the top half
overlaps.
App. Br.1, Clms. App’x.
Independent claim 17 recites the identical subject matter that
claim 1 recites, but also calls for “one or more hinges and one or more
latches.”
Independent claim 18 is directed to a “[c]ontactless radio
frequency electromagnetic inductance device shielding container
apparatus,” including “a base and sides connecting the top and base,
the top, the base and the sides having shielding metal elements
embedded therein, and the shielding in the sides overlapping for

1 Our references to “App. Br.” are to the “SUBSTITUTE APPEAL BRIEF
MPEP 1207.03B NEW GROUNDS,” filed December 6, 2010 which
incorporates everything that was in the original Appeal Brief filed June 8,
2010. App. Br. 1. Emphasis omitted.
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attenuating radio frequency electromagnetic energy impinging on the
top, the base or the sides.”

Rejections
The following Examiner’s rejections2 are before us for review:
I. claims 1-3, 7-9, 18, 19, and 23 under 35 U.S.C. § 102(e) as
anticipated by Osborn (US 7,163,152 B2, issued Jan. 16, 2007) (Ans. 4-6);
II. claims 4, 17, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Osborn and Dahlgren (US 2,271,630, issued Feb. 3, 1942) (Ans. 6-7);
III. claims 1-3, 8, 9, 18, 19, and 23 under 35 U.S.C.
§ 102(b) as anticipated by Goto (US 4,647,714, issued Mar. 3. 1987) (Ans.
8-10);
IV. claims 4, 17, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Goto and Dahlgren (Ans. 10-12);

2 In the “Status of Claims” section, Appellant indicates that “a Petition filed
April 8, 2010, to join [withdrawn] claims [5, 6, 10-16, 21, 22, and 24], is
pending a decision.” App. Br. 5. Emphasis omitted. However, as this issue
is a petitionable, not appealable, matter, it is not within the Board’s
jurisdiction. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In
re Hengehold, 440 F.2d 1395, 1403-04 (CCPA 1971) (stating that there are
many kinds of decisions made by examiners that are not appealable to the
Board when they are not directly connected with the merits of issues
involving rejections of claims, and holding that “the kind of adverse
decisions of examiners which are reviewable by the board must be those
which relate, at least indirectly, to matters involving the rejection of
claims”)); and In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding that
the refusal of an examiner to enter an amendment of claims is reviewable by
petition under 37 C.F.R. § 1.181, and not by appeal to the Board).

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V. claim 7 under 35 U.S.C. § 103(a) as unpatentable over Goto
and Osborn (Ans. 12-13);
VI. claims 1-3, 7-9, 18, 19, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Osborn and Gelin (US 5,180,314, issued Jan. 19, 1993)
(Ans. 13-14); and
VII. claims 4, 17, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Osborn, Dahlgren, and Gelin (Ans. 14-15).

OPINION
Rejection I – Anticipation based on Osborn
Independent claim 1 requires the shielding to be “on inner
surfaces or within the bottom half and the top half” of the enclosure
and independent claim 18 requires “the top, the base and the sides
having shielding metal elements embedded therein.” App. Br., Clms.
App’x.
With respect to claim 1, the Examiner finds that “Osborn discloses a
shielded container comprising a bottom half (‘bottom panel’ 201, fig. 3) and
a top half (‘lid’ 103, fig. 3) of an enclosure . . . and overlapping shielding
(‘coating’ 1402, fig. 14) within the bottom half and the top half (Examiner
considers that the shielding in the top half (103) and the bottom half (201)
must overlap, by virtue of the press-on, friction-fit mechanical connection of
the lid . . .).” Ans. 4 (citing Osborn, col. 4, l. 10). With respect to claim 18,
the Examiner finds that “Osborn discloses a rectangular top (103), base
(201) and sides (105, fig. 3)” and “the top, the base and the sides hav[e]
shielding metal elements . . . embedded therein.” Ans. 5-6.
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Appellant argues that “Osborn teaches the opposite features of the
claimed invention,” because “[t]he present claims provide RFID shielding
on the inside whereas Osborn requires the magnetic metal layer be on the
outside and away from the magnetic card.” App. Br. 11.
The Examiner responds that “there [are] no structural differences
between the claimed invention and Osborn since they both disclose a
Faraday cage” and “the shielding of Osborn is within the bottom half and the
top half at least where the top half and bottom half overlap.” Ans. 15 (citing
Osborn, col. 3, ll. 15-18, where it states that “the protective case also
protects sensitive integrated circuits from static electrical discharges by
providing what is essentially a Faraday cage around the card”).
We note Appellant’s Specification indicates that “shielding 23 creates
a complete Faraday cage when closed” with respect to the first embodiment
depicted in Figures 1-3, and “[s]hielding 115 in the side walls 107, 113
creates a complete Faraday cage by overlapping” with respect to the fourth
embodiment depicted in Figures 9-11. Spec. 7, l. 13 and Spec. 8, ll. 18-19.
Thus, while we appreciate the Examiner’s indication that both the claimed
invention and Osborn disclose Faraday cages, we are persuaded by
Appellant’s argument that Osborn teaches the opposite of the claimed
invention, because in Osborn, the Faraday cage is formed by the metal
making up the case, not by any shielding either on an inner surface of the
case or embedded within the metal of the case. Indeed, Osborn discloses
that “[t]he storage and carrying case is fabricated from a ferromagnetic sheet
metal, such as mild steel, or a metal alloy having enhanced magnetic
permeability containing nickel and iron.” Osborn, col. 2, ll. 61-64. The
particular metal of the case 100 provides the shielding effect and forms the
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Faraday cage. However, the metal making up Osborn’s case 100 does not
meet independent claim 1’s language of the “shielding on inner surfaces or
within the bottom half and the top half,” nor independent claim 18’s
language of “the top, the base and the sides having shielding metal elements
embedded therein.”
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 18, and claims 2, 3, 7-9, 19, and 23 dependent
thereon, under 35 U.S.C. § 102(e) as anticipated by Osborn.

Rejection II – Obviousness based on Osborn and Dahlgren
Dependent claim 4
Claim 4 depends directly from independent claim 1. App. Br., Clms.
App’x. The Examiner’s rejection of claim 4 relies upon the erroneous
finding that Osborn discloses shielding on inner surfaces or within the top
and bottom halves of the enclosure. Ans. 6-7. The Examiner does not find
that Dahlgren discloses shielding on the inner surfaces or within the top and
bottom halves to cure Osborn’s deficiency. Id. Thus, for the reasons
discussed supra, we do not sustain the Examiner’s rejection of claim 4 under
35 U.S.C. § 103(a) as unpatentable over Osborn and Dahlgren.
Independent claim 17
Independent claim 17 requires the shielding to be “on inner
surfaces or within the bottom half and the top half.” App. Br., Clms.
App’x. The Examiner makes the same findings for claim 17 as
discussed supra for claim 1, and Appellant presents the same
argument as discussed supra for claims 1 and 18. Ans. 6-7 and App.
Br. 16.
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For the same reasons as discussed supra, we do not sustain the Examiner’s
rejection of independent claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Osborn and Dahlgren.
Dependent claim 20
Claim 20 depends indirectly from independent claim 18. App. Br.,
Clms. App’x. The Examiner’s rejection of claim 20 relies upon the
erroneous finding that Osborn discloses the top, the base and the sides
having shielding metal elements embedded therein. Ans. 7. The Examiner
does not find that Dahlgren discloses the top, the base and the sides having
shielding metal elements embedded therein to cure Osborn’s deficiency. Id.
Thus, for the reasons discussed supra, we do not sustain the Examiner’s
rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Osborn
and Dahlgren.

Rejection III – Anticipation based on Goto
Independent claim 1 and dependent claims 2, 3, 8, and 9
With respect to claim 1, the Examiner finds that “Goto discloses an
RFID shielding apparatus having . . . shielding 1 on inner surfaces.” Ans. 8.
Emphasis omitted.
Appellant argues that Goto does not have claim 1’s feature of either
“shielding on inner surfaces or within the bottom half and the top half,”
because “Goto’s shielding is the half, but not on inner surfaces or within the
half.” App. Br. 20. Appellants also argue that “[c]laims 2, 3, 8 and 9
depend from claim 1 and contain the features of claim 1 which are not in
Goto.” Id.
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We are not persuaded by Appellant’s argument that Goto does not
disclose shielding within the bottom and top half. Goto discloses composite
sheet material, comprised of composite sheet metal 1 having an
electrodeposited iron foil 2 as the core and outer metal plating 4, for
shielding magnetism and electromagnetic waves. Goto, Title, Abstr., col. 7,
ll. 17-45, and Fig. 1. The Examiner specifically pointed to Goto’s
embodiment of magnetically shielded files 90 for accommodating magnetic
recording media. Ans. 8 (citing Goto, col. 13, ll. 4-21 and Figs. 19 and 20).
Goto’s magnetically shielded files 90 have two walls 92, 94 with a backbone
96 therebetween, and an accommodation body 98 and a lid body 100,
formed of the composite sheet material, which are stuck on the walls 92, 94
so as to be able to absorb magnetic force and electromagnetic waves. Goto,
col. 13, ll. 4-5, 7-9, 13-20, and 22-26.
Goto discloses an alternate way of forming the file 90, wherein the
walls 92, 94 are first made from the composite sheet material and thereafter,
a couple of frame bodies of the composite sheet material are stuck onto the
inside surface of the walls 92, 94. Goto, col. 13, ll. 29-38. Goto also
discloses that “[t]he accommodation body 98 and the lid body 100 are thus
respectively formed of the frame body and the . . . wall [92, 94].” Goto, col.
13, ll. 38-40.
In particular, Goto discloses that floppy discs, cassette tapes, etc.,
which are susceptible to magnetism and electromagnetic waves, held within
“[a] magnetic and electromagnetic wave shielding file [90] constructed in
the above-mentioned way” are not affected by magnetism and
electromagnetic waves. Goto, col. 13, ll. 45-50. Goto also discloses that
even “[i]f the file 90 is exposed to the magnetism or the electromagnetic
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9
waves, the accommodation body 98 and the lid body 100 containing the
electrodeposited iron foil 2 therein absorb the magnetism and the
electromagnetic waves and perfectly prevent them from reaching the matters
therein held.” Goto, col. 13, ll. 52-57.
Although the Examiner did not specifically find that Goto discloses
“shielding . . . within the bottom half and the top half,” as recited in claim 1,
we note that, with respect to claim 18 discussed infra, the Examiner did find
that Goto discloses “having shielding metal elements 1 embedded therein.”
See Ans. 9. Thus, we find that Goto’s composite sheet metal 1 corresponds
to the shielding recited in independent claim 1 and the composite sheet metal
1 is “within the bottom half and the top half” in order to anticipate
independent claim 1.
Accordingly, we shall sustain the rejection of independent claim 1,
and claims 2, 3, 8, and 9 dependent thereon, under 35 U.S.C. § 102(b) as
anticipated by Goto. However, we denominate the affirmance of the
rejection of these claims as a NEW GROUND OF REJECTION pursuant to
37 C.F.R. § 41.50(b), because our analysis relies upon facts and reasoning
that the Examiner did not use.
Independent claim 18 and dependent claims 19 and 23
With respect to claim 18, the Examiner finds that “Goto discloses a
contactless radio frequency electromagnetic inductance device shielding
container apparatus having . . . the top [92], the base [94] and the sides [98,
100] having shielding metal elements 1 embedded therein.” Ans. 9.
Emphasis added. Appellant argues that “[t]he top [,] base and sides of Goto
do not have sealing [sic, shielding] embedded elements.” App. Br. 20. We
are not persuaded by Appellant’s argument because as discussed supra,
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Goto’s alternate embodiment of file 90 discloses “the top, the base and the
sides having shielding metal elements embedded therein,” in order to satisfy
the language of independent claim 18. Accordingly, we sustain the
Examiner’s rejection of independent claim 18, and claims 19 and 23
dependent thereon, under 35 U.S.C. § 102(e) as anticipated by Osborn.

Rejection IV – Obviousness based on Goto and Dahlgren
Dependent claim 4
Claim 4 depends from claim 1 and calls for the connection between
the top and bottom halves to include a hinge and a latch. App. Br., Clms.
App’x. The Examiner finds Goto “discloses the connection 96 between the
bottom half and top half comprising one or more hinges,” but “Goto fails to
disclose[] one or more latches between the bottom half and top half.” Ans.
10. Emphasis omitted. To cure the deficiency of Goto, the Examiner turns
to Dalhgren to disclose “a case with . . . a latch (‘locking node’ 32, fig. 3).”
Id. Emphasis omitted. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art “to have provided the device of
Goto [with] a latch . . . , as taught by Dahlgren, for the purpose of securing
together the top half with the bottom half.” Id. Emphasis omitted.
Appellant argues that “[c]laim 4 adds . . . hinges and latches to the
structure of claim 1,” but “Dalhlgren’s [sic] has hinges and a snap,” and “a
snap is not a latch.” App. Br. 20-21. Appellant further argues that “[t]here
would have been no reason to add hinges and latches to Goto.” App. Br. 20.
We are not persuaded by Appellant’s arguments that Dahlgren discloses a
snap rather than a latch and that there would be no reason to add a latch to
Goto. Dahlgren discloses a sheet metal box having a body member 11 or
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bottom half and cover member 12 or top half. Dahlgren, p. 1, 1st col., ll. 32-
35. The body member 11 has a node 31 and cover members 12 has a
locking node 32 and the nodes 31, 32 engage each other to keep the cover
member 12 over the body member 11 and the box closed. Dahlgren, p. 1,
2nd col., ll. 12-16, 38-42, and 50-54, and Figs. 1, 3, and 4. The ordinary and
customary meaning of the word “latch” is “any of various devices in which
mating mechanical parts engage to fasten but usually not lock something.”
See definition of the noun “latch,” accessed at http://www.merriam-
webster.com/dictionary/latch (last visited: May 7, 2013). Thus, Dahlgren’s
nodes 31, 32 meet the ordinary and customary meaning of the word latch,
and Appellant has failed to provide any persuasive reason why a person of
ordinary skill in the art would not modify Goto’s file 90 to include the nodes
31, 32 or latches of Dahlgren in order to secure together the top and bottom
half of the file 90 as proposed by the Examiner.
Accordingly, we sustain the Examiner’s rejection of claim 4 under 35
U.S.C. § 103(a) as unpatentable over Goto and Dahlgren. However,
because claim 4 depends from claim 1, we likewise denominate the
affirmance of the rejection of this claim as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b), because our analysis relies
upon facts and reasoning that the Examiner did not use.
Independent claim 17
The Examiner makes similar findings concerning Goto and Dahlgren
to those discussed supra with respect to dependent claim 4. Ans. 6-7.
Appellant argues that “Goto’s shielding is the top and bottom and is not
within . . . the top and bottom,” and “[n]either Goto nor Dahlgren has a
latch.” App. Br. 21. For the reasons similar to those discussed supra with
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Application 11/281,543

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respect to independent claim 1 and anticipation based on Goto and
dependent claim 4 and obviousness based on Goto and Dahlgren, we shall
sustain the rejection of independent claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Goto and Dahlgren. However, we denominate the
affirmance of the rejection of this claim as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b), because our analysis relies
upon facts and reasoning that the Examiner did not use.
Dependent claim 20
Claim 20 depends indirectly on independent claim 18 and calls for the
portions of the sides remote from the top and the base to be joined with
hinges along first sides and to be joined with latches along second opposite
sides. App. Br., Clms. App’x. The Examiner finds that “Goto further
discloses hinge 96 connecting the top and the base (figure 19) but fails to
disclose portions of the sides 98 and 100 remote from the top and base . . .
are joined with latches.” Ans. 11. Emphasis omitted. To cure the
deficiency of Goto, the Examiner turns to Dahlgren to disclose a latch 32.
Ans. 12. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to provide the device of Goto with a latch as taught
by Dahlgren in order to secure the top and bottom halves together. Id.
For similar reasons as discussed supra with respect to claim 4 and
obviousness based on Goto and Dahlgren, we sustain the Examiner’s
rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Goto
and Dahlgren.

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included annotations to explain how the structure corresponds to claim 7’s
limitations.
Appellant argues that “[t]here are no recessed walls in Goto or
Osborn.” App. Br. 21. We are persuaded by Appellant’s argument. The
Examiner’s annotation of Osborn’s Figure 6 points to the straight,
unrecessed wall of the receptacle 101 as being “recessed walls in the bottom
half.” A person of ordinary skill in the art would not agree that Osborn’s
receptacle 101 has recessed walls.
Accordingly, we do not sustain the Examiner’s rejection of claim 7
under 35 U.S.C. § 103(a) as unpatentable over Goto and Osborn.

Rejection VI – Obviousness based on Osborn and Gelin
The Examiner finds that Osborn substantially discloses the subject
matter of independent claims 1 and 18, but fails to disclose the shielding
“being on inner surfaces or within the bottom half and the top half for
completely attenuating wavelengths associated with the enclosed RFID
devices.” Ans. 13. Emphasis omitted. To cure the deficiency of Osborn,
the Examiner turns to Gelin to teach “that it was well known to put a
shielding against the inner wall of a housing.” Id. (citing Gelin, col. 4, ll.
64-68). Emphasis omitted. The Examiner concludes that it would have
been obvious to one of ordinary skill in the art “to have the deposit of the
prior art re-arranged from the outside surface to the inside surface for the
obvious result of protecting it from damage such as scratching, during
handling.” Ans. 14. Emphasis omitted.
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The Examiner also finds that “[w]ith respect to claims 2-3, 7-9 and 23,
Osborn discloses the claim limitations as discussed above in the rejection
under 35 U.S.C. § 102.” Id. Emphasis omitted.
Appellant does not include this rejection in the ground of rejection for
review on Appeal (App. Br. 9) or present arguments contesting the propriety
of this rejection (App. Br. 10-23). Accordingly, we summarily sustain the
Examiner’s rejection of claims 1-3, 7-9, 18, 19, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Osborn and Gelin. See In re Berger, 279 F.3d
975 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a
rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed
to contest the rejection on appeal).

Rejection VII – Obviousness based on Osborn, Dahlgren, and Gelin
Dependent claim 4
The Examiner finds that the combination of “Osborn and Dahlgren
disclose the invention as discussed above,” but “fail[s] to disclose the
shielding being on inner surfaces.” Ans. 14. Emphasis omitted. To cure the
deficiency of the combination of Osborn and Dahlgren, the Examiner turns
to Gelin “to show that it was well known to put a shielding against the inner
wall of a housing.” Id. (citing Gelin, col. 4, ll. 64-68). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
“to have the deposit of the prior art re-arranged from the outside surface to
the inside surface for the obvious result of protecting it from damage such as
scratching, during handling.” Ans. 14-15. Emphasis omitted.
Appellant makes the similar arguments as discussed supra with
respect to claim 4 and obviousness based on Goto and Dahlgren.
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For the same reasons as discussed supra with respect to claim 4 and
obviousness based on Goto and Dahlgren, we do not agree that Dalhgren’s
nodes 31, 32 cannot be considered to constitute a latch. In addition,
Appellant’s argument that “[t]here would have been no reason to add hinges
and latches to Osborn, Dahlgren, and Gelin” is not persuasive as the
Examiner’s reasoning of “securing together the top half and the bottom half”
has a rational underpinning. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (holding that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”). We are also not persuaded by Appellant’s
argument that “a snap is not a latch,” because Dahlgren’s nodes 31, 32 meet
the ordinary and customary meaning of the word latch as stated above under
“Obviousness based on Goto and Dahlgren” and “Dependent claim 4.”
Finally, Appellant argues that “[a]ll of the elements of claim 4 are not
found in Osborn, Dahlgren and Gelin.” App. Br. 21. We are not persuaded
by Appellant’s argument because first, Appellant does not specifically point
which elements are missing, and furthermore, Osborn substantially teaches
the subject matter of claim 4, except for the latch which is taught by
Dahlgren and the shielding on the inner surfaces which is taught by Gelin.
Therefore, the combination of Osborn, Dahlgren, and Gelin discloses all of
the elements of claim 4.
Accordingly, we sustain the Examiner’s rejection of claim 4 under 35
U.S.C. § 103(a) as unpatentable over Osborn, Dahlgren, and Gelin.

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Independent claim 17
The Examiner makes the same findings as discussed supra with
respect to claim 4 and obviousness based on Osborn, Dahlgren, and Gelin.
Ans. 14-15.
Appellant argues that “Osborn, Dahlgren and Gelin’s shielding is the
top and bottom and is not within or on inner surfaces of the top and bottom.”
App. Br. 21.
We are not persuaded by Appellant’s argument because Gelin teaches
a shielding (Faraday’s cage 56) on the inner surface of the housing 51. See
Ans. 14 (citing Gelin, col. 4, ll. 64-68 (“[t]he Faraday cage 56 comprises
aluminum members located against the inner wall of the housing 51 to form
a container proof against electromagnetic interference into which the
conductors of the cables 1 and 20 extend in which are enclosed the support
member”)); see also Gelin, Fig. 5.
Accordingly, we sustain the Examiner’s rejection of independent
claim 17 under 35 U.S.C. § 103(a) as unpatentable over Osborn, Dahlgren,
and Gelin.
Dependent claim 20
The Examiner makes the same findings as discussed supra with
respect to claim 4 and obviousness based on Osborn, Dahlgren, and Gelin.
Ans. 14-15.
Appellant argues that “[c]laim 20 depends from claim 17 and has the
same features of claim 17 which are missing from the references.” App. Br.
22.
We are not persuaded by Appellant’s arguments because claim 20 is
not dependent upon claim 17, but rather is dependent upon claim 19 which
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in turn is dependent upon independent claim 18. Thus, claim 20 does not
have the features of claim 17 and Appellant has failed to point out error in
the Examiner’s rejection.
Accordingly, we sustain the Examiner’s rejection of claim 20 under
35 U.S.C. § 103(a) as unpatentable over Osborn, Dahlgren, and Gelin.

DECISION
We REVERSE the Examiner’s rejections of: claims 1-3, 7-9, 18, 19,
and 23 under 35 U.S.C. § 102(e) as anticipated by Osborn; claims 4, 17, and
20 under 35 U.S.C. § 103(a) as unpatentable over Osborn and Dahlgren; and
claim 7 under 35 U.S.C. § 103(a) as unpatentable over Goto and Osborn.
We SUMMARILY AFFIRM the Examiner’s rejection of claims 1-3,
7-9, 18, 19, and 23 under 35 U.S.C. § 103(a) as unpatentable over Osborn
and Gelin.
We AFFIRM the Examiner’s rejections of claims 1-3, 8, and 9 under
35 U.S.C. § 102(b) as anticipated by Goto, and claims 4 and 17 under 35
U.S.C. § 103(a) as unpatentable over Goto and Dahlgren, but we denominate
the rejections as NEW GROUNDS OF REJECTION.
We AFFIRM the Examiner’s rejections of: claims 18, 19, and 23
under 35 U.S.C. § 102(b) as anticipated by Goto; claim 20 under 35 U.S.C.
§ 103(a) as unpatentable over Goto and Dahlgren; and claims 4, 17, and 20
under 35 U.S.C. § 103(a) as unpatentable over Osborn, Dahlgren, and Gelin.

FINALITY OF DECISION
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board."
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In addition to affirming the Examiner's rejections of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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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)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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