Ex Parte Hyland

Patent Trial and Appeal Board

Dec 6, 2012

10806936 (P.T.A.B. Dec. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GREGORY ANDREW HYLAND
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Appeal 2010-007393
Application 10/806,936
Technology Center 2400
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Before JEAN R. HOMERE, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1, 4-12, 14-21, 24-28, and 31-38. Claims 2, 3, 13, 22, 23, 29, and 30
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claims
Exemplary claims 1, 4, and 8 under appeal read as follows:
1. A cryptographic device comprising:
a cryptographic module and a communications module
removably coupled thereto;
said cryptographic module comprising a first housing and
a first connector carried thereby, said first housing comprising a
first body and a first extension extending outwardly therefrom;
said communications module comprising a second
housing and a second connector carried thereby and being
removably mateable with said first connector of said
cryptographic module, said second housing comprising a
second body and a second extension extending outwardly
therefrom;
said first and second extensions being aligned in
overlapping relation when said first and second connectors are
mated together;
said first connecter carried by said first body adjacent
said first extension and said second connector carried by said
second extension.

4. The cryptographic device of Claim 2 wherein each of
said first and second extensions have surface features on
opposing surfaces thereof to slidably engage and guide said
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cryptographic and communications modules together in mating
relation.

8. The cryptographic device of Claim 1 wherein said
communications module comprises a predetermined one from
among a plurality of interchangeable communications modules
each for communicating over a different communications
media.

Rejections on Appeal1
The Examiner rejected claims 1, 4-6, 8, 9, 11, 12, 14, 15, 17, 18, 20,
21, 24-28, 31-33, 35, 36 and 38 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dumont (EP 0891112, Jan. 13, 1999)
and Janky (US 5,786,789, Jul. 28, 1998). Ans. 3-9.
The Examiner rejected claims 7, 10, 16, 19, 34, and 37 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Dumont
and Chou (US 2002/0111189 A1, Aug. 15, 2002). Ans. 9-10.
Appellant’s Contentions
1. Appellant admits that while “FIGS. 4A and 4B [of Janky] show
the removable add-on module and the core module physically coupled
together,” Appellant contends that the Examiner erred in rejecting claim 1
because the combination of Dumont and Janky does not teach that “the
second connector is carried by the second extension,” because “Janky
doesn’t explicitly show the physical connectors.” Br. 8-9.

1 Claims 12, 21, and 28 stand or fall with claim 1; claims 14, 24, and 32
stand or fall with claim 4; and claim 17 stands or falls with claim 8. Br. 8-12.
Separate patentability is not argued for the remaining claims. Therefore, we
treat claims 1, 4, and 8 as representative for purposes of this appeal.
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2. Appellant admits that while “FIGS. 3A, 3B, and 4B [of Janky]
show some features of the core module and the removeable add-on module,”
Appellant contends that the Examiner erred in rejecting claim 4 because the
combination of Dumont and Janky does not teach “wherein each of said first
and second extensions have surface features on opposing surfaces thereof to
slidably engage and guide said cryptographic and communications modules
together in mating relation,” as recited in claim 4. Br. 10 (emphasis ours).
3. Appellant contends that the Examiner erred in rejecting claim 8
because the combination of Dumont and Janky does not teach “wherein said
communications module comprises a predetermined one from among a
plurality of interchangeable communications modules each for
communicating over a different communications media,” because “Dumont
merely discloses a portable telephone operating over a typical cellular band.”
Br. 10-11 (emphasis ours).

Issues on Appeal
Did the Examiner err in rejecting claims 1, 4-12, 14-21, 24-28, and
31-38 are obvious because the cited references fail to teach or suggest the
disputed limitations?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
Claim 1 recites “said first and second extensions being aligned in
overlapping relation when said first and second connectors are mated
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together; said first connecter carried by said first body adjacent said first
extension and said second connector carried by said second extension.”
As to above contention 1, we specifically agree with the Examiner
(Ans. 10-11) that the claimed feature merely requires the structure to provide
overlapping first and second extensions. Appellant’s Specification
discloses:
Turning to FIGS. 12-14, the coupling structure of the
cryptographic and communications modules 31, 32 will now be
further described. More particularly, the first housing 34 of the
cryptographic module 31 may include a first body 180 and a
first extension 181 extending outwardly therefrom, and the
second housing 45 may include a second body 182 and a
second extension 183 extending outwardly therefrom. As such,
the first and second extensions 181, 183 may be aligned in
overlapping relation when the first and second connectors 37,
46 are removably mated together.

Spec. ¶ [0071]. (Emphasis ours).

Thus, according to Appellant’s Specification, the second extension
overlaps with the first extension. Ans. 10. Although this disclosure is not
limiting of the claimed invention, it provides context for which the phrase
“said second connector carried by said second extension” is interpreted.
Based on our review of Janky (Figs. 3A, 3B, 4A, and 7B, col. 2, ll. 14-15,
and col. 5, ll. 38-39), we find that the Examiner, giving the claim its broadest
reasonable interpretation consistent with the Specification2, has properly
found that the claimed second connector carried by said second extension is
met by Janky’s “removable add-on module (example element 32 of figure

2 See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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4A) is connected, physically coupled and overlapped/mated to the core
module (example element 30 of figure 4A)” (Ans. 11).
As to above contention 2, Appellant’s Specification has not provided
any definition giving special meaning and thereby limiting the scope of
“surface features”. The Specification only states that “[b]y way of example,
the surface features may define at least one slidable interlocking joint
therebetween.” Spec. ¶ [0016]. Therefore the phrase “surface features” is to
be given its plain meaning unless inconsistent with the Specification. See In
re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-
Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004)
The Examiner has found the phrase “surface features” to encompass
any housing that could be used for attaching the two sections. Ans. 11. We
find that this construction of the terms “surface features” to be both
reasonable and consistent with the Specification3. Id. Appellant has not
presented any persuasive evidence to convince us that the Examiner’s
interpretation of “surface features” is in error.
Given the above construction, the Examiner correctly points out (Ans.
11) that Janky explicitly discloses that the removable add-on module is
removably coupled to the core module (citing to Janky, col. 2, ll. 14-15), and
removably attached to an add-on module 32 containing a cellular telephone
86 to a GPS device (citing to Janky, col. 5, ll. 38-39). Ans. 11. The
Examiner found that Janky’s housing equates to surface features. Id. We

3 See In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969) and In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004) (During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification.)
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agree with the Examiner because Janky discloses the housing for “attaching
the two sections.” Id.
As to above contention 3, we agree with the Examiner’s analysis
(Ans. 12) in response to Appellant’s arguments (Br. 10-11). The Examiner
correctly points out that Dumont “gives an example of the GSM type but it
can be any other type or types.” Ans. 12 (citing Dumont, page 3, ll. 17-20,
page 4, ll. 17-19, and page 9, last 3 lines). Because Dumont discloses
communicating over different communications media, Appellant’s
contention is not persuasive of Examiner error.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 4-6, 8, 9, 11, 12,
14, 15, 17, 18, 20, 21, 24-28, 31-33, 35, 36 and 38 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Dumont and Janky.
(2) The Examiner did not err in rejecting claims 7, 10, 16, 19, 34, and
37 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Dumont and Chou.
(3) Claims 1, 4-12, 14-21, 24-28, and 31-38 are not patentable.

DECISION
The Examiner’s rejections of claims 1, 4-12, 14-21, 24-28, and 31-38
are 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)(1)(iv).
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AFFIRMED

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