Ex Parte Schlesener et al

Patent Trial and Appeal BoardDec 17, 2012

12034831 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MARIA CARMEN SCHLESENER and ANGELA GAIL STERN ________________ Appeal 2010-003559 Application 12/034,831 Technology Center 2800 ________________ Before JOHN A. JEFFERY, JEFFREY S. SMITH, and ANDREW CALDWELL, Administrative Patent Judges. CALDWELL, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2010-003559 Application 12/034,831 2 STATEMENT OF CASE Appellants describe the present invention as a bumper extending from a portable information handling system chassis. The bumper aligns with a recess on a lid of the information handling system to maintain the lid in position when the lid closes against the chassis, such as in a closed position or a tablet position. The bumper has a rigid material that couples to the chassis covered at the exposed portion of the bumper by a non-rigid material that interacts with the lid. The non-rigid material absorbs shocks translated through the lid and chassis, and reduces the risk of damage to lid cosmetic features. The rigid portion provides a secure coupling of the bumper to the chassis. Abstract. Appellants claim an information handling system including the bumper, a method for manufacture of an information handling system including the bumper, and the bumper itself. Independent claims 1, 8, and 16 are illustrative: 1. An information handling system comprising: a chassis; plural processing components disposed in the chassis, the processing components operable to process information; a lid rotationally coupled to the chassis, the lid having one or more recesses; a display integrated in the lid and interfaced with the processing components, the display operable to present the information as visual images; and one or more bumpers extending from the chassis and aligned to insert in the one or more lid recesses, the bumpers having a rigid portion coupled to the chassis and a non-rigid portion covering the rigid portion extending from the chassis. Appeal 2010-003559 Application 12/034,831 3 8. A method for manufacture of an information handling system chassis, the method comprising: forming a chassis having a pocket; forming a bumper sized to couple in the chassis pocket, the bumper having a rigid portion integrated with a non-rigid portion; coupling the rigid portion to the chassis in the pocket to expose substantially only the non-rigid portion at the chassis. 16. A system for managing the position of a rotationally-coupled lid relative to an information handling system chassis, the system comprising: a bumper having a rigid portion integrated with a non-rigid portion, the rigid portion adapted to couple to the information handing system chassis, the non-rigid portion adapted to fit into a recess formed in the lid. THE REJECTIONS1 Claims 1-6, 8, 13, 16, and 18-20 stand rejected under 35 U.S.C. § 103(a) as obvious over Skillman (US Patent 7,382,607 B2; June 3, 2008; filed Feb. 16, 2006), Huang (US Patent 6,870,732 B2; Mar. 22, 2005), and Russell (US Publication 2004/0025993 A1; Feb. 12, 2004). Ans. 3-7.2 1 In the Grounds of Rejection to be Reviewed upon Appeal and the Argument, Appellants do not repeat the grounds of rejection. Instead, Appellants only address independent claims 1, 8, and 16 and dependent claim 9. App. Br. 3-6. However, Appellants’ Notice of Appeal indicates that claims 1-20 are appealed. Notice of Appeal filed Apr. 21, 2009. Moreover, Appellants conclude the Appeal Brief with an argument that the rejections of all claims should be reversed. Id. at 6. We therefore review all grounds of rejection presented in the Final Office Action. 2 Rather than repeat the Examiner’s positions and Appellants’ arguments in their entirety, we refer to the following documents for their respective details: the Final Rejection (Final Rej.) mailed March 17, 2009; the Appeal Brief (App. Br.) filed June 5, 2009; the Examiner’s Answer (Ans.) mailed August 20, 2009; and the Reply Brief (Reply Br.) filed October 20, 2009. Appeal 2010-003559 Application 12/034,831 4 Claims 7, 11, 12, and 17 stand rejected under 35 U.S.C. § 103(a) as obvious over Skillman, Huang, Russell, and Radloff (US Patent 5,808,863; Sep. 15, 1998).3 Final Rej. 9-10. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as obvious over Skillman, Huang, Russell, and Sterling (US Publication 2008/0064265 A1; Mar. 13, 2008; filed Sep. 12, 2006). Ans. 7-8. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as obvious over Skillman, Huang, Russell, and Love (US Patent 7,133,280 B2; Nov. 7, 2006).4 Final Rej. 12-13. THE OBVIOUSNESS REJECTION – SKILLMAN, HUANG, AND RUSSELL Claims 1-65 The Examiner concludes that Skillman, Huang, and Russell collectively teach the invention of claim 1. Ans. 3-5, 8-10. Appellants argue: (1) No motivation exists to combine Huang’s protrusion and groove alignment device with the clamshell configuration of Skillman because Skillman’s lid and chassis are hinged in a permanent alignment. App. Br. 4. 3 The Answer does not include the rejection of claims 7, 11, 12, and 17 from the Final Rejection. Since the Answer does not include a statement that the rejection of claims 7, 11, 12, and 17 was withdrawn, we will treat the rejection as maintained. 4 The Answer does not include the rejection of claims 14 and 15 that was made in the Final Rejection. Since the Answer does not include a statement that the rejection of claims 14 and 15 was withdrawn, we will treat the rejection as maintained. 5 We note that claim 6 depends upon itself. Appeal 2010-003559 Application 12/034,831 5 (2) Skillman teaches away from Huang because the stop is designed to maintain a space between the lid and chassis and would not work as intended if placed into a recess as in Huang. Id. at 4. (3) The combination of Skillman, Huang and Russell fails to teach or suggest “one or more bumpers extending from the chassis and aligned to insert in the one or more lid recesses, the bumpers having a rigid portion coupled to the chassis and a non-rigid portion covering the rigid portion extending from the chassis.” App. Br. 3-5; Reply Br. 1. (4) No motivation exists to combine Russell with Skillman and Huang. App. Br. 4; Reply Br. 1. Claim Grouping Appellants do not argue dependent claims 2-6 separately from independent claim 1. We will therefore treat the claims as a single claim grouping and select claim 1 as representative of this group. See 37 C.F.R. § 41.37(c)(1)(vii). ANALYSIS Appellants’ Argument (1) Appellants argue that no motivation exists to combine Huang’s protrusion and groove alignment device with the clamshell configuration of Skillman because Skillman’s lid and chassis are hinged in a permanent alignment. App. Br. 4. The Examiner explains, however, that modifying Skillman’s information handling device having a clamshell configuration to use the protrusion and groove configuration of Huang would allow the information system to be more securely fastened when in the closed state. Appeal 2010-003559 Application 12/034,831 6 Ans. 4. The Examiner did not provide a specific citation to the references for this motivation. Id. However, a person of ordinary skill in the art would understand basic physics. We are convinced that a person of ordinary skill would recognize that using Huang’s protrusion and groove scheme would allow a lid to be more securely fastened when in the closed position. Using Huang’s protrusions and grooves on the side of Skillman’s device opposite to the hinge would, in fact, more securely fasten the lid. Huang’s protrusions and grooves would help prevent the lid from rotating around the axis perpendicular to the lid’s top surface and reduce mechanical stress on the hinge. We are therefore unconvinced that the Examiner erred in finding motivation to combine Huang with Skillman as argued by Appellants. Appellants’ Argument (2) Appellants argue that Skillman teaches away from Huang because the stop is designed to maintain a space between the lid and chassis and would not work as intended if placed into a recess as in Huang. Id. at 4. We are not persuaded, however, that it would be beyond the level of ordinary skill in the art to appropriately size the protrusions and grooves of the combination of Skillman and Huang to maintain the separation between the display and the keyboard as taught by Skillman. Furthermore, Appellants are essentially arguing that Skillman teaches away from Huang because Skillman merely describes something different. If a prior art reference discloses a different solution to a similar problem, it does not teach away from the claimed subject matter unless the prior art reference also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants have pointed to no probative Appeal 2010-003559 Application 12/034,831 7 evidence that criticizes, discredits, or otherwise discourages the modification proposed by the Examiner. We are therefore not persuaded that Skillman teaches away from Huang. Appellants’ Argument (3) Appellants argue that the combination of Skillman, Huang, and Russell fails to teach or suggest “one or more bumpers extending from the chassis and aligned to insert in the one or more lid recesses, the bumpers having a rigid portion coupled to the chassis and a non-rigid portion covering the rigid portion extending from the chassis.” App. Br. 3-5; Reply Br. 1. As discussed above, the Examiner points to Skillman to teach an information handling device having a clamshell configuration that uses a rubber stop to maintain separation between the information handling device’s screen and keyboard when the device is closed. Ans. 3. The Examiner relies upon Huang to teach a system where protrusions (bumpers) on a portable computer host mate to grooves (recesses) on an attached panel (lid) when the attached panel is secured to the portable host. Id. at 3-4. The Examiner modifies Skillman’s information handling device to use the protrusion (bumper) and groove (recess) configuration of Huang as opposed to Skillman’s stop. Id. at 4. The Examiner admits that Skillman and Huang do not collectively teach a bumper having a rigid portion coupled to the chassis and a non-rigid portion covering the rigid portion. Id. The Examiner relies upon Russell to teach a bumper having a rigid portion coupled to the chassis and a non-rigid portion covering the rigid portion. Russell discloses a bumper, or protective pad, made of a first Appeal 2010-003559 Application 12/034,831 8 material such as foam, polymer, rubber, and/or any other suitable material. ¶ 0024. Russell teaches that the impact portion of the bumper may include a thermoplastic or a fabric-type cover that is bonded to the peripheral pad by an adhesive. ¶ 0027. Russell explains that the cover provides additional protection and cushioning. Id. Russell also suggests that the covers can be made of any color or design for visually aesthetic enhancement or personalization of the portable electronic device. Id. Given the teachings of Russell regarding the use of a cover on a bumper, we are not persuaded that the Examiner erred in concluding that Skillman, Huang, and Russell collectively teach “one or more bumpers extending from the chassis and aligned to insert in the one or more lid recesses, the bumpers having a rigid portion coupled to the chassis and a non-rigid portion covering the rigid portion extending from the chassis.” It would have been obvious to one of ordinary skill in the art to modify the bumpers of the combination of Skillman and Huang to use Russell’s cover layer. One of ordinary skill in the art would have done so based on Russell’s teaching that a cover provides additional protection and cushioning as well as aesthetic enhancement. Appellants’ Argument (4) Appellants argue that no motivation exists to combine Russell with Skillman and Huang. App. Br. 4; Reply Br. 1. As discussed above, Russell teaches a cover for a bumper that provides additional protection and cushioning as well as visual enhancement. ¶ 0027. Either additional protection and cushioning or visual enhancement is motivation. Alternatively, a combination of the two is motivation. We are therefore not Appeal 2010-003559 Application 12/034,831 9 persuaded that Appellants are correct in arguing that no motivation exists in Russell to make the combination. Claims 8 and 13 The Examiner concludes that Skillman, Huang, and Russell collectively teach the invention of claim 8. Ans. 5-7, 10-11. Appellants argue, among other things, that Skillman, Huang, and Russell do not collectively teach forming a bumper sized to couple in a chassis pocket. App. Br. 5. Appellants explain that nothing in Huang suggests an alignment protrusion that is built into a pocket. Id. ISSUE Does the combination of Skillman, Huang, and Russell teach or suggest “forming a bumper sized to couple in the chassis pocket”? ANALYSIS Claim 8 is directed to a method for manufacturing an information handling chassis. The method includes the steps of “forming a chassis having a pocket” and “forming a bumper sized to couple in the chassis pocket.” The “pocket” in the chassis is not the same as the “recess” formed in the lid of the information handling chassis. See claim 13. Appellants contend that the combination, and particularly Huang, does not teach or suggest forming a bumper sized to couple in a chassis pocket. The Examiner does not explain in either the Answer or the Final Rejection how the references teach a bumper sized to couple in the chassis pocket. See Ans. 5-7, 10-11; Final Rej. 4-6, 13-14. Appeal 2010-003559 Application 12/034,831 10 We are not persuaded that the record includes probative evidence that would lead one of ordinary skill in the art to conclude that the structures relied upon by the Examiner to teach a bumper would be sized to couple in a chassis pocket. Huang describes how protrusions are deposited on the back face of the attached panel (i.e., unit containing the display). Col. 2, ll. 48-50. Skillman explains that its stop may be semi-permanently or permanently attached to either the first housing segment including a display or second housing segment including a keyboard. Col. 4, ll. 38-41. We find no probative evidence in Skillman that the stop is mounted in a chassis pocket. Russell shows protective pads attached to flat surfaces of a portable computing device. See Figs. 1-8. Appellants also describe in their Specification how bumpers in the prior art are typically molded in plastic that forms the lid and chassis. Spec. 2:25-26. In view of the absence of probative evidence in the references relied upon by the Examiner to teach this claim feature and the Examiner’s failure to provide a rationale addressing this claim feature, we are persuaded that the Examiner erred in rejecting independent claim 8 and dependent claim 13. Claims 16 and 18-20 Appellants do not argue dependent claims 18-20 separately from independent claim 16. We will therefore treat the claims as a single claim grouping and select claim 16 as representative of this group. See 37 C.F.R. § 41.37(c)(1)(vii). Independent claim 16 is directed to a system comprising “a bumper having a rigid portion integrated with a non-rigid portion, the rigid portion adapted to couple to the information handing system chassis, the non-rigid Appeal 2010-003559 Application 12/034,831 11 portion adapted to fit into a recess formed in the lid.” Claim 16 does not include language requiring the bumper to be sized to couple in a chassis pocket as in claim 8. The Examiner rejected claim 16 for the same reasons as claim 1. Ans. 3-5. Appellants argue that nothing in Skillman, Huang, or Russell that teaches, discloses, or suggests a bumper having a rigid portion integrated with a non-rigid portion. App. Br. 5. As we discussed above, Russell teaches a bumper that may include a thermoplastic or a fabric-type cover that is bonded to the bumper by an adhesive. ¶ 0027. When Russell’s cover is bonded to a bumper, the result is an integrated unit. We are therefore not persuaded that Appellants have identified error in the rejection. THE OBVIOUSNESS REJECTION – SKILLMAN, HUANG, RUSSELL, AND RADLOFF The Examiner rejects claims 7, 11, 12, and 17 under 35 U.S.C. 103(a) as being obvious over Skillman, Huang, Russell, and Radloff. Final Rej. 9- 10. Claims 7 and 17 depend upon independent claims 1 and 16, respectively. Since Appellants do not argue these claims separately from the independent claims, we sustain the rejection of these claims for the reasons given above. Claims 11 and 12 depend either directly or indirectly on independent claim 8. The Examiner relies upon Radloff for teaching bumper that is attached to a chassis by heat staking. Id. The Examiner does not rely upon Radloff to teach “forming a bumper sized to couple in the chassis pocket.” Since we do not sustain the rejection of independent claim 8, we also do not sustain the rejection of claims 11 and 12. Appeal 2010-003559 Application 12/034,831 12 THE OBVIOUSNESS REJECTION – SKILLMAN, HUANG, RUSSELL, AND STERLING The Examiner rejects claims 9 and 10 under 35 U.S.C. 103(a) as being obvious over Skillman, Huang, Russell, and Sterling. Ans. 7-8. Claims 9 and 10 depend either directly or indirectly on independent claim 8. The Examiner relies upon Sterling for teaching the use of double injection molding to form two objects. Id. at 7. The Examiner does not rely upon Sterling to teach “forming a bumper sized to couple in the chassis pocket.” Since we do not sustain the rejection of independent claim 8, we also do not sustain the rejection of claims 9 and 10. THE OBVIOUSNESS REJECTION – SKILLMAN, HUANG, RUSSELL, AND LOVE The Examiner rejects claims 14 and 15 under 35 U.S.C. 103(a) as being obvious over Skillman, Huang, Russell, and Love. Final Rej. 12-13. Claims 14 and 15 depend indirectly on independent claim 8. The Examiner relies upon Love for teaching a lid that rotates around a vertical axis. Id. at 12. The Examiner does not rely upon Love to teach the step of “forming a bumper sized to couple in the chassis pocket” but instead relies upon Skillman, Huang, and Russell. Since we do not sustain the rejection of independent claim 8, we also do not sustain the rejection of claims 14 and 15. DECISION The Examiner’s decision rejecting claims 1-7 and 16-20 is affirmed. The Examiner’s decision rejecting claims 8-15 is reversed. Appeal 2010-003559 Application 12/034,831 13 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED-IN-PART babc