Ex Parte Schlesener et al

Patent Trial and Appeal BoardApr 29, 2016

12034831 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/034,831 02/21/2008 Maria Carmen Schlesener 33438 7590 05/03/2016 TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP P.O. BOX 203518 AUSTIN, TX 78720 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. DC-14103 8871 EXAMINER WILSON, ADRIAN S ART UNIT PAPER NUMBER 2835 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): tmunoz@tcchlaw.com kchambers@tcchlaw.com heather@tcchlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARIA CARMEN SCHLESENER and ANGELA GAIL STEM Appeal2014-008216 Application 12/034,831 Technology Center 2800 Before JOHN A. JEFFERY, JEFFREYS. SMITH, and MICHAEL M. ~A.T""ti.T""ti.""'ll:T ,1 â€¢ â€¢, ,â€¢ T'lo, ,T 1 tlAKK Y, Aamznzsrranve rarenr Juages. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-008216 Application 12/034,831 STATEMENT OF THE CASE This application returns to us after another panel of this Board 1 affirmed the Examiner's rejection of then-pending claims 1-7 and 16-20 and reversed the Examiner's rejection of then-pending claims 8-15. See Ex parte Schlesener, Appeal No. 2010-003559 (PTAB Dec. 19, 2012). Prosecution reopened after that decision, and Appellants now appeal under 35 U.S.C. Â§ 134(a) from the Examiner's subsequent decision to reject claims 8-12, 15, and 21-24, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Illustrative Claim 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, forming a lid adapted to couple to the chassis at a display side and a back side, the display side having a bumper recess aligned with the bumper when the lid back side is proximate the chassis; and rotationally coupling the lid to the chassis with a single hinge supporting rotation along both a vertical and horizontal axis; wherein the bumper engages the lid display side bumper recess to prevent rotation along the vertical axis when the lid display side is proximate the chassis and the bumper engages the lid back side bumper recess to prevent rotation along the vertical axis when the lid back side is proximate the chassis. 1 Judge Barry replaces former judge Caldwell in the current panel. 2 Appeal2014-008216 Application 12/034,831 Radloff Huang Banko Love Lee Prior Art us 5,808,863 US 6,870,732 B2 US 7,095,610 Bl US 7,133,280 B2 US 2008/0074831 Al Examiner's Rejections Sept. 15, 1998 Mar. 22, 2005 Aug.22,2006 Nov. 07, 2006 Mar. 27, 2008 Claims 8-10, 15, 21, 23, and 24 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Banko, Huang, and Love. Claims 11 and 22 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Banko, Huang, Love, and Radloff. Claim 12 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Banko, Huang, Love, Radloff, and Lee. i\.Ni\L YSIS Appellants contend that the combination of Banko, Huang, and Love does not teach "the bumper engages the lid back side bumper recess" as recited in claim 8. App. Br. 3. The Examiner finds Figure 2 of Huang shows a bumper (positioning unit 15) on a back side of a lid engaging a recess of a chassis, and concludes reversing the parts involves only routine skill in the art. Ans. 2. Appellants do not provide persuasive evidence or argument to rebut the Examiner's findings. Appellants also contend Banko does not teach a bumper sized to couple in a chassis pocket, because the feet of Banko are not compatible with placement on top of a chassis as required by claim 8. App. Br. 2. Appellants do not provide persuasive evidence or argument to show why the 3 Appeal2014-008216 Application 12/034,831 feet of Banko are not compatible with placement on top of a chassis. Attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such argument take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). The proper test for obviousness is what the combined teachings would have suggested to a person of ordinary skill in the art. See In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). In such an analysis, precise teachings directed to the specific subject matter of the challenged claim need not be identified because the inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."). Here, Figure 2 of Huang teaches a bumper on a display lid engaging a bumper recess on a chassis. We agree with the Examiner that placing the bumper of Huang on the chassis and the bumper recess on the display lid is only the reversal of parts, which was within the level of ordinary skill in the art. However, Huang teaches attaching the bumper by depositing the bumper on the face of the panel, rather than by coupling the bumper to the chassis in a chassis pocket. Figure 2A of Banko teaches coupling a bumper to a chassis in a chassis pocket. Coupling the bumper of Huang to a chassis in a chassis pocket as taught by Banko represents the combination of familiar elements according to known methods that does no more than yield predictable results. See KSR, 550 U.S. at 416. 4 Appeal2014-008216 Application 12/034,831 Although we find Huang modified by Banko teaches the claimed "bumper sized to couple in the chassis pocket," rather than Banko modified by Bush as the Examiner finds on pages 3 and 4 of the Final Action, we do not find error in the Examiner's rejection, because "where the relevant factual inquiries underlying an obviousness determination are otherwise clear, characterization by the examiner of prior art as 'primary' and 'secondary' is merely a matter of presentation with no legal significance." In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Bush, 296 F.2d 491, 496 (1961) (Rich, J.)). We sustain the rejection of claim 8 under 35 U.S.C. Â§ 103. Appellants do not present arguments for separate patentability of claims 9--12 and 15, which fall with claim 8. Appellants present arguments for the patentability of claim 21 (App. Br. 4) similar to those presented for claim 8 which we find unpersuasive. We sustain the rejections of claims 21-24 under 35 U.S.C. Â§ 103. DECISION The rejections of claims 8-12, 15, and 21-24 are affirmed. 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). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 5