Ex Parte Lombardi et al

Patent Trials and Appeals BoardMar 25, 2019

14615519 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/615,519 02/06/2015 138858 7590 03/27/2019 Motorola/ Miller, Matthias & Hull LLP 1 North Franklin Street Suite 2350 Chicago, IL 60606 FIRST NAMED INVENTOR Michael J. Lombardi 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. MM01040-US-NP 9347 EXAMINER KHAN, MEHMOOD B ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 03/27/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ppippenger@millermatthiashull.com docketing.mobility@motorola.com ynunez@millermatthiashull.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL J. LOMBARDI, JOSEPH L. ALLORE, and PAULL. FORDHAM Appeal 2018-007158 Application 14/615,519 Technology Center 2600 Before JOHNNY A. KUMAR, JAMES W. DEJMEK, and STEVEN M. AMUNDSON, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Final Rejection of claims 1, 2, 4--13, and 15-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 According to Appellants, the real party in interest is MOTOROLA MOBILITY LLC. (App. Br. 2). Appeal 2018-007158 Application 14/615,519 STATEMENT OF THE CASE Introduction Appellants' invention relates to an expandable cellular phone system for allowing the cellular phone to physically mate with, and electronically link to, an independently functional auxiliary module. (Abstract). Exemplary claim 1 under appeal reads as follows: 1. A portable modular electronic device comprising: a first electronic device module having a first thickness, a first width greater than the first thickness, and a first length greater than the first width, the first electronic device module also having a first face perpendicular to the first thickness, and having one or more contact points and two or more locating points on the first face, the first electronic device module being configured to independently provide at least a first user; and a second electronic device module having a second thickness, a second width greater than the second thickness, and a second length greater than the second width, the second electronic device module also having a second face perpendicular to the device thickness, and having one or more contact points and two or more locating points on the second face, and an electronic display on a third face parallel to and opposite the second face, the second electronic device module being configured to independently provide at least a second user function, wherein the locations of the contact points and locating points on the first face coincide with the locations of the contact points and locating points on the second face, such that the first and second electronic device modules join together at the first and second faces to become physically joined and electronically linked, wherein the second electronic device module is configured to control the first electronic device module when the first and second electronic device modules are joined together at the first and second faces. 2 Appeal 2018-007158 Application 14/615,519 The Examiner's Rejections Claims 1, 2, 4--13, and 15-20 are rejected under 35 U.S.C. Â§ 112(a) as failing to comply with the written-description requirement (Ans. 3-6). Claims 1, 2, 4--13, and 15-20 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Hahn (US 6,027,828, iss. Feb. 22, 2000) and Jung (US 2008/0004085 Al, pub. Jan. 3, 2008) (Final Act. 5-11). ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. With respect to the rejection under 35 U.S.C. Â§ 103, we agree with the Examiner's findings and conclusion and adopt them as our own. However, regarding the rejections under 35 U.S.C. Â§ 112(a) we are persuaded by Appellants' contentions that the Examiner erred. Rejection Under 35 USCÂ§ l 12(a) Appellants contend: As to the assertion that the claims require provision of an actual user (and thus lack written description), this appears to be an attempt to leverage a simple and obvious clerical error. Claim 1 as filed expressly required provision of a "first user function" and claim 1 was never amended to say otherwise. A later listing of claims erroneously omitted the word "function," but this error occurred without any strike-throughs, underlining, parentheticals or other indicia of an amendment being made. The Examiner surely realized that claim 1 was never amended to remove the word "function." Reply Br. 1-2. We agree with Appellants that claim 1 inadvertently omits the word "function" in the phrase "first user." 3 Appeal 2018-007158 Application 14/615,519 Appellants also contend: The claims as originally filed contained the very limitation that the Examiner now questions. As such, the Examiner's last minute allegations are insufficient to overcome the presumption of adequate written description. ( citing in footnote: see original claim 3: " ... the second electronic device module is configured to control the first electronic device module when the first and second electronic device modules are joined together at the first and second faces." Thus there is by definition adequate written description for this limitation. See In re Gardner (CCPA 1973) "Claim 2 ... an original claim, in itself constituted a description in the original disclosure ... Nothing more is necessary for compliance with the description requirement of the first paragraph of 35 U.S.C. Â§ 112.") Reply Br. 2. Sufficiency of written description requires that the original disclosure reasonably convey to a person having ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of filing. The exact level of detail required depends upon "the nature and scope of the claims and on the complexity and predictability of the relevant technology." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). The Examiner finds: Appellant's specification (page 8 Â§0036-page 10 Â§0044) fails to describe in sufficient detail on "how" such "control" function is implemented or performed on the second electronic device module so the second electronic device module is able to control the 1st electronic device module such that the first and second electronic device modules join together at the first and second faces to become physically joined and electronically linked. As such, the claimed element "the first and second electronic device modules join together at the first and second faces to become physically joined and 4 Appeal 2018-007158 Application 14/615,519 electronically linked, wherein the second electronic device module is configured to control the first electronic device module when the first and second electronic device modules are joined together at the first and second faces." lacks sufficient written description support in the specification. Ans. 4 (hereinafter the control function). We disagree with the Examiner's findings and agree with Appellants' contentions. We disagree with the Examiner because we find a person of ordinary skill in the art would recognize that Appellants' disclosure provides support for the control function as recited in claim 1 and as commensurately recited in independent claims 13 and 20. We agree with Appellants' contentions that the Specification reasonably conveys possession of the claimed subject matter. Accordingly, Appellants have provided sufficient evidence or argument to persuade us of at least one reversible error in the Examiner's written-description rejection of claim 1. Therefore, for essentially the same reasons argued by Appellants cited above, we reverse the Examiner's rejection of independent claim 1, and also reverse the rejection of independent claims 13 and 20, which recite the disputed limitation in commensurate form. For the same reasons, we also reverse the rejections under 35 U.S.C. Â§ 112(a), written description, of all dependent claims: 2, 4-- 12, and 15-19. Rejection Under 35 USCÂ§ 103 The Examiner finds that Hahn teaches all elements of exemplary claim 1 (Final Act. 5-7; Hahn Figures IA, IB, and 2), except for the 5 Appeal 2018-007158 Application 14/615,519 "control" element2 for which the Examiner relies upon Jung. (Final Act. 7; Jung ,r,r 7, 63). Appellants contend "Hahn fails to teach the joining and interoperability of two separate independently functional devices as required by claim 1." (App. Br. 9-10). The Examiner responds, and we agree, "that the features upon which applicant relies (i.e., independently functional) are not recited in the rejected claims. The claims require the second electronic device module to provide an independent user function, which has been clearly met by Jung." Ans. 8. The Examiner finds: Hahn clearly discloses, in fig. 2, a separate device of an AM/FM personal stereo accessory module. It is absolutely clear and obvious to one of ordinary skilled in the art that an AM/FM personal stereo accessory module can provide the user function of listening to radio. Hahn also discloses that the accessory can be a variety of electronic devices, such as CD player, calculator, alarm clock, etc. (Col 3: 45- 51). Hence Hahn discloses "the second electronic device module [to be] configured to independently provide at least a second user function." Ans. 6. The Examiner further finds: Jung is relied upon to teach control of the first module by a second module. While Hahn clearly discloses attachment/mating of devices, Jung clearly discloses attachment to and control of another device, by disclosing that the attached keypad, to the mobile terminal, 2 Claim 1 recites, inter alia, "wherein the second electronic device module is configured to control the first electronic device module when the first and second electronic device modules are joined together at the first and second faces." (the control element). 6 Appeal 2018-007158 Application 14/615,519 can receive an operation signal of a user for controlling operation of the mobile terminal (0063). Ans. 7. We agree with the Examiner because Appellants' arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner's prima facie case of obviousness. See In re Keller, 642 F.2d 413,425 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." (citations omitted)). This reasoning is applicable here. Regarding claim 13, Appellants contend the references fail to teach "the processor of the portable cellular device be configured to control the auxiliary device." (App. Br. 11 ). The Examiner finds, and we agree: Jung clearly discloses that the processor of the cellular device controls the auxiliary device as stated in paragraphs 0062-0066, where Jung discloses that the control unit 3 8, residing the terminal body which is understood as the cellular device (Fig. 6: 38, 30), controls the whole operation of the mobile terminal 100, which clearly includes auxiliary device (Fig. 6: 100, 30 and 10). Ans. 8. Regarding claim 20, Appellants contend "neither cited reference teaches a phone that can attach to and control an independently functional module." (App. Br. 12). 7 Appeal 2018-007158 Application 14/615,519 The Examiner finds, and we agree: Hahn discloses a cellular phone and attachment of an auxiliary module to the cellular phone where the auxiliary module provides an independent user function, thus independently functional. Therefore the only problem to be resolved is controlling of an auxiliary device. Jung is relied upon for controlling an auxiliary device attached to the cellular phone. Ans. 9. Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art, or in the proper combinability of the prior-art references as suggested by the Examiner. Therefore, we sustain the Examiner's obviousness rejections of claims 1, 2, 4--13, and 15- 20. DECISION We reverse the Examiner's rejections of claims 1, 2, 4--13, and 15-20 under 35 U.S.C. Â§ 112(a). We affirm the Examiner's rejections of claims 1, 2, 4--13, and 15-20 under 35 U.S.C. Â§ 103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8