Ex Parte Meserth et al

Patent Trial and Appeal Board

Apr 29, 2016

12949039 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/949,039 11/18/2010
60501 7590 05/03/2016
LENOVO COMPANY (LENOVO-KLS)
c/o Kennedy Lenart Spraggins LLP
8601 Ranch Road 2222
Ste. 1-225
AUSTIN, TX 78730
FIRST NAMED INVENTOR
Timothy A. Meserth
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.
XRPS920100115US1 5072
EXAMINER
GARFT, CHRISTOPHER
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
office@klspatents.com
kate@klspatents.com
hanna@klspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TIMOTHY A. MESERTH, GERARD F. MUENKEL,
and JARED E. SCHOTT
Appeal2014-000505
Application 12/949,039
Technology Center 3600
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Timothy A. Meserth et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject under 35 U.S.C. § 103(a):
( 1) claims 1 and 11 as unpatentable over Cox (US 7,241,163 B 1; iss. July
10, 2007) and Pulizzi (US 7,140,903 B2; iss. Nov. 28, 2006); and (2) Claims
2-10 and 12-20 as unpatentable over Cox, Pulizzi, and Coronado (US
2011/0073323 Al; pub. Mar. 31, 2011). We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-000505
Application 12/949,039
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "apparatuses that include a handle
for retaining a cable of an electronic device." Spec. 1, 11. 11-12; Fig. 1.
Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed
subject matter and recites:
1. An apparatus that includes a handle for retaining a cable
of an electronic device, the handle comprising:
a handle body that has first and second opposed ends,
wherein each end of the handle body is directly fastened to the
electronic device; and
a plurality of cable grips that extend from a position on the
handle body between the first and second opposed ends of the
handle body, wherein the plurality of cable grips define a cable
cavity that is contoured to partially house a cable of the electronic
device.
ANALYSIS
Obviousness over Cox and Pulizzi
Claims 1 and 11
Appellants argue the claims subject to this ground of rejection (i.e.,
claims 1 and 11) as a group. Appeal. Br. 4-7. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). Claim 11 stands or
falls with claim 1.
The Examiner finds that Cox discloses essentially all the elements of
claim 1 including a handle body 12 in the form a cable retainer having one
end 40 that is attachable to the electronic device and capable of being used
as a handle "since it has a rounded flat surface (being the inside or back
surface) which is capable of being gripped by the user." See Final Act. 2-3
(citing Cox, Figs. 1--4); see also Ans. 4. The Examiner notes that Cox "does
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Application 12/949,039
not explicitly disclose that the other end [ 18] of the handle body is directly
fastened to the electronic device." Final Act. 2-3; see also Ans. 4. In
particular, the Examiner states: "As shown in Figs. 3-4, Cox discloses a
hinged plug support (18, Fig. 3) that houses a plug to be inserted into the
electronic device (26) but the hinged support is not directly attached [to] the
electronic device." Ans. 4.
The Examiner further finds: "Pulizzi discloses a plug or a male inlet
connector (12, Fig. 5) which is used to hold a plug (see Figs. 5) that is
directly fastened to an electronic device (14) via screws or fasteners (40)."
Id.; see also Final Act. 3. The Examiner concludes:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to replace the plug enclosure of
Cox with the plug support (10, Fig. 1; shown in use in Fig. 5) of
Pulizzi to enable the user to securely attach both ends of the
device to the electronic device after installation in order to
prevent inadvertent removal of the device.
Final i~ .. ct. 3-4; see also i~ .. ns. 5.
Appellants contend:
It should be noted that what Cox actually discloses is a cable
retainer - not a handle body at all. Further, Cox's cable retainer
is only fastened at one end of the cable retainer - not both ends
as claimed her[ e]. Although Cox does mention a handle [element
16], Cox's handle is not the cable retainer. That is, by teaching
a handle separate and apart from the cable retainer, Cox clearly
teaches away from a cable retainer being a handle.
Appeal. Br. 4. Appellants further contend:
Pulizzi discloses a male inlet connector fixable to an electrical
equipment chassis and a 'restraint device' described elsewhere
in Pulizzi as a retaining clip (depicted in the figures as element
26) that is configured to secure a cable connector to a device. As
indicated in Figures 1-16 of Pulizzi, the male inlet connector only
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Application 12/949,039
fastens to the device at one end - not at both ends as claimed.
Further, Pulizzi discloses no handle whatsoever.
Appeal Br. 5.
Appellants' arguments are not persuasive. At the outset, we agree
with the Examiner that Appellants' arguments are individual attacks on the
references rather than a challenge to the Examiner's combination of the
teachings of the Cox and Pulizzi references. See Final Act. 9; see also In re
Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413
(CCPA 1981) (stating that one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references). Stated differently, the Examiner is replacing the plug enclosure
of Cox with the plug support of Pulizzi so that both ends of the device are
secured to the electronic device. Instead of addressing this stated rejection,
Appellants argue that Cox and Pulizzi each only disclose a connection at one
end thereof, not "both ends as claimed." Appeal Br. 4-5. Additionally,
Appellants argue that Pulizzi does not disclose a handle, but the Examiner
relies upon Cox for its disclosure of a handle. See id at 5; see also Final Act.
2-3; Ans. 4; Cox, Figs. 1--4. As such, Appellants arguments do not apprise
us of Examiner error.
In this case, the Examiner finds that (1) threaded hole 40 of first end
14 of Cox "is capable of being attached to the electronic device using a
fastener"; and (2) "hinged plug support (18, Fig. 3) [of Cox] that houses a
plug to be inserted into the electronic device (26) ... is not directly
attached the electronic device." Final Act. 3; see also Ans. 4; Cox, Figs. 2-
4. The Examiner turns to Pulizzi merely for disclosure of "a plug or a male
inlet connector (12, Fig. 5) which is used to hold a plug (see Figs. 5) that is
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Application 12/949,039
directly fastened to an electronic device (14) via screws or fasteners (40)."
Final Act. 3; see also Ans. 4. The Examiner concludes that it would have
been obvious "to replace the plug enclosure [ 18] of Cox with the plug
support (10, Fig. 1; shown in use in Fig. 5) of Pulizzi to enable the user to
securely attach both ends of the device to the electronic device after
installation in order to prevent inadvertent removal of the device." Final
Act. 3--4; see also Ans. 5. The Examiner further concludes that (1)
"replacing the plug enclosure of Cox with the support of Pulizzi would
provide a device which both ends are connected to the electronic device,
thus anchoring the support to the electronic device" (Id. at 4; see also Ans.
5); and (2) "anchoring the device [of Cox] at two places rather than just one
would provide a more secure and stable connection between the cable
retainer and the electronic device" (Ans. 5). The Examiner's findings as to
why a skilled artisan would combine the teachings of Cox and Pulizzi are
objectively reasonable and based on rational underpinnings. Appellants do
not apprise us of error in the Examiner's findings or conclusions. Nor do
Appellants persuade us that the Examiner's findings and conclusions
regarding the teachings of the references are not well-grounded in the
references.
Further, Appellants do not establish that the prior art teaches away
from the claimed invention because Appellants do not direct us to any
discussion in Cox that criticizes, discredits, or otherwise discourages cable
retainer 12 from being used as a handle. Moreover, the Examiner correctly
points out that (1) "Cox states that the 'cable retainer forms a handle shape
that may ensure proper cable bend radius"' (Ans. 11 (citing Cox, col. 3, 11.
51-53)); and (2) "there is no ... limitation in Cox which prevents a user
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from gripping portion 12 as well as portion 16" (Id.; see also Final Act. 8).
As such, Cox does not teach away from the subject invention.
Appellants also contend that "the combination of references must
teach or suggest the claimed elements" and that Cox's teachings are
insufficient to disclose the claimed handle body because "[t]he reference
here in no way suggests that the cable retainer could be used as a handle."
Appeal Br. 6; see also Reply Br. 8.
Appellants' arguments are not persuasive. Appellants' arguments are
holding the Examiner to the old teaching, suggestion, or motivation
("TSM") standard where there must be some suggestion or motivation,
either in the references themselves or in the knowledge generally available
to one of ordinary skill in the art, to modify the reference or to combine
reference teachings; such a standard is not required. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 415 (2007) ("We begin by rejecting the rigid
[application and requirement of a TSM to combine known elements in order
to show obviousness]."). The proper inquiry is whether the Examiner has
articulated adequate reasoning based on a rational underpinning to explain
why a person of ordinary skill in the art would combine Cox and Pulizzi.
See id. at 418 (stating 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" (citing In re Kahn, 441F.3d977, 988 (Fed. Cir.
2006)). As noted above, we conclude the Examiner has provided the
required reasoning. See supra.
In addition, we disagree with Appellants that the Examiner's finding
that cable retainer 12 of Cox is capable of being used as a handle is
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conclusory. See Appeal Br. 6; see also Reply Br. 8. Both the Examiner
and Appellants acknowledge that Cox discloses handle 16. See Appeal Br.
6; see also Reply Br. 8; Final Act. 3, 8; Ans. 4, 10. The Examiner finds
that cable retainer 12 (1) "is capable of being used as a handle since it has a
rounded flat surface (being the inside or back surface) which is capable of
being gripped by the user"; and (2) "is capable of being used as a handle or
portion which the user grabs along with portion 16." Final Act. 3; see also
Ans. 4; Cox, Figs. 1--4. The Examiner also finds that "a plurality of cable
grips [30] [extend] from a position on handle body [12] between the first
and second opposed ends of the handle body, wherein the plurality of cable
grips define a cable cavity [32] that is contoured to partially house a cable
[23] of the electronic device [26]." Final Act. 3 (emphasis omitted) (citing
Cox, Figs. 1, 4); see also Ans. 4; Cox, col. 2, 11. 35--41, Figs. 2, 3. The
Examiner further correctly points out that (1) "Cox states that the 'cable
retainer forms a handle shape that may ensure proper cable bend radius"'
(Ans. 11 (citing Cox, col. 3, 11. 51-53)); and (2) "there is no ... limitation
in Cox which prevents a user from gripping portion 12 as well as portion
16" (Id.; see also Final Act. 8). The Examiner also reasons:
[W]hen lifting or picking up the device, the user is capable of
grabbing onto handle 16 with one hand and portion 12 with
another in order to effectively support the computer enclosure
during movement and prevent dropping of the device. Using two
hands on the device would provide more balance and support of
the device during transport since the user would have a better
grip and control of the device.
Final Act. 8-9; see also Ans. 11. The Examiner's findings are objectively
reasonable and based on rational underpinnings. Appellants do not apprise
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Application 12/949,039
us as to why cable retainer 12 of Cox cannot constitute a handle 1 in addition
to handle 16 as suggested by the Examiner. Nor do Appellants apprise us of
error in the Examiner's findings regarding both handle 16 and cable retainer
12 of Cox being used as handles. The Supreme Court has provided
instruction that "a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ" and also that "[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR, 550 U.S. at 421. What a reference teaches or suggests
must be examined in the context of the knowledge, skill, and reasoning
ability of a skilled artisan. What a reference teaches a person of ordinary
skill is not "limited to what a reference specifically 'talks about' or what is
specifically 'mentioned' or 'written' in the reference." Syntex (US.A.) LLC
v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). In short, one skilled
in the art is able to read a reference for all that it teaches and not limit a
reference to its preferred embodiment. Beckman Instruments, Inc. v. LKB
Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989); see also In re
Chapman, 357 F.2d 418,424 (CCPA 1966) ("A reference can be used for all
it realistically teaches, and is not limited to the disclosures in its specific
illustrative examples.").
Appellants contend that the Examiner engages in impermissible
hindsight in combining the references. Appeal Br. 6; see also Reply Br. 8.
We are not persuaded. As discussed above, the Examiner cites
teachings in the references, not Appellants' disclosure, in articulating
1 An ordinary and customary meaning of the term "handle" is "1. [A] part of
a thing made specifically to be grasped or held by the hand."
Dictionary.com (last visited Apr. 4, 2016).
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reasons for combining the references as proposed in the rejection. See Final
Act. 2--4; see also Ans. 4-5
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claim 1 as unpatentable over Cox and Pulizzi. We further
sustain claim 11, which falls with claim 1.
Obviousness over Cox, Pulizzi, and Coronado
Claims 2-10 and 12-20
Appellants do not present arguments for claims 2-10 and 12-20 as
unpatentable over Cox, Pulizzi, and Coronado separate from those presented
above for claims 1 and 11. See Appeal Br. 7; see also Reply Br.
9. Accordingly, for reasons similar to those discussed above for claims 1
and 11, we likewise sustain the Examiner's rejection of claims 2-10 and 12-
20 as unpatentable over Cox, Pulizzi, and Coronado.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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