Fatuma Sanneh

Patent Trials and Appeals BoardMar 1, 2021

2020004580 (P.T.A.B. Mar. 1, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/822,040 11/24/2017 Fatuma Yassin Sanneh 10114-00001 7104 94750 7590 03/01/2021 Neal Blibo LLC 9532 Liberia Avenue No. 754 Manassas, VA 20110 EXAMINER MCNURLEN, SCOTT THOMAS ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 03/01/2021 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): aneal@nealiplaw.com uspto@nealiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FATUMA YASSIN SANNEH Appeal 2020-004580 Application 15/822,040 Technology Center 3700 ____________ Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and WILLIAM A. CAPP, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–12, which constitute all the claims pending in this application. See Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejections of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Fatuma Yassin Sanneh.” Appeal Br. 3. Appeal 2020-004580 Application 15/822,040 2 CLAIMED SUBJECT MATTER The disclosed subject matter pertains to a personal carrier “to carry [] communications and/or entertainment devices around while performing routine daily activities.” Spec. ¶¶ 2, 12. Apparatus claims 1 and 10 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A personal carrier for carrying a communication device and personal items, the personal carrier comprising: a first compartment configured to store the communication device and a processing unit, wherein the processing unit is configured to electronically couple components of the personal carrier to the communication device; a display surface configured to transmit information to and receive information from the communication device in order to provide access to features of the communication device; a second compartment for storing personal items; and at least one strapping member for allowing the personal carrier to be worn or affixed to an object. EVIDENCE Name Reference Date Abrahamson US 1,719,641 July 2, 1929 Saggese, Jr. Des. 358,705 May 30, 1995 Rittmann US 6,443,341 B1 Sept. 3, 2002 Hill et al. (“Hill”) US 2013/0088410 A1 Apr. 11, 2013 Golko et al. (“Golko”) US 8,787,006 B2 July 22, 2014 Cho et al. (“Cho”) US 2015/0020081 A1 Jan. 15, 2015 Welsch US 2015/0289615 A1 Oct. 15, 2015 Appeal 2020-004580 Application 15/822,040 3 REJECTIONS Claims 5 and 6 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 1, 7–9, and 12 are rejected under 35 U.S.C. § 103 as unpatentable over Abrahamson, Hill, and Golko. Claims 2, 10, and 11 are rejected under 35 U.S.C. § 103 as unpatentable over Abrahamson, Hill, Golko, and Rittmann. Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable over Abrahamson, Hill, Golko, and Saggese. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over Abrahamson, Hill, Golko, and Welsch. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as unpatentable over Abrahamson, Hill, Golko, and Cho. ANALYSIS The rejection of claims 5 and 6 as being indefinite Dependent claims 5 and 6 recite, respectively, the additional limitation of the display surface as “configured to correspond” and “configured to not correspond” to the communication device’s viewing area. See Appeal Br. 15 (Claims App.). The Examiner finds these “correspond” and “not correspond” limitations “are relative terms which render the claim[s] indefinite.” Final Act. 2. The Examiner further asserts that “the specification does not provide a standard for ascertaining the requisite degree” required, and that “one or ordinary skill in the art would not be reasonably apprised of the scope of the invention.” Final Act. 2. Appellant disagrees referencing paragraphs 16 and 21 of the Specification for support. Appeal 2020-004580 Application 15/822,040 4 See Appeal Br. 6. Appellant contends, “the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement.” Appeal Br. 6. Paragraph 16 of Appellant’s Specification discusses display surface 110 stating that it: is configured to show the entire viewing area/screen of the portable communications and/or entertainment device or otherwise correspond to the viewing area of the portable communications and/or entertainment device.2 Emphasis added. Paragraph 21 of Appellant’s Specification also discusses display surface 110 stating that it: may be configured to be less than the viewing area/screen of the portable communications and/or entertainment device. In other words, display surface 110 may be configured to not correspond to the viewing area of the portable communications and/or entertainment device. Emphasis added. Hence, the demarcation between the claim terms “correspond” and “not correspond” is dependent on whether the viewing area of the communication device can be viewed in its entirety or not. Based on this clarification, we agree with Appellant that: [t]he specification therefore provides examples or teachings that can be used to provide clear boundaries for the terms “correspond” and “not correspond” as recited in Claims 5 and 6. 2 The Examiner contends that Appellant’s usage of “otherwise correspond” is indicative of an alternate configuration and that “[i]t is not clear what would satisfy ‘otherwise correspond[]” in this context.” Ans. 10. We disagree with the Examiner on this point because Appellant, instead, seems to employ “otherwise correspond” as a synonym indicating equivalence; and not to indicate that there can be some other, third, possibility. Appeal 2020-004580 Application 15/822,040 5 Appeal Br. 7. Accordingly, we do not sustain the Examiner’s rejection of claims 5 and 6 as being indefinite. The rejection of claims 1, 7–9, and 12 as unpatentable over Abrahamson, Hill, and Golko Appellant argues claims 1, 7–9, and 12 together. Appeal Br. 7–12. We select independent claim 1 for review, with dependent claims 7–9 and 12 standing or falling with claim 1. The Examiner primarily relies on Abrahamson for teaching the limitations of claim 1, including a personal carrier, but acknowledges that “Abrahamson fails to disclose a processing unit or display.” Final Act. 3. The Examiner relies on Hill for such teachings, including “a display surface (250) configured to transmit information to and receive information from the communication device.” Final Act. 3. However, the Examiner acknowledges that the combination of Abrahamson and Hill still fails to disclose such transmitting and receiving “in order to provide access to features of the communication device.” Final Act. 3–4. The Examiner relies on Golko for teaching transmissions to/from the communication device “in order to provide access to features of the communication device.” Final Act. 4. The Examiner also provides reasons for first combining Abrahamson with Hill, and thereafter with Golko. See Final Act. 3, 4. Appellant “submits that the wristwatch of Golko is quite different from the personal carrier of the pending claims” and that “Golko fails to show that its wristwatch is in any way associated with a personal carrier.” Appeal Br. 9, 10. However, as noted above, the Examiner did not rely on Golko for teaching a personal carrier, but instead for providing touch screen teachings that a display separate from the communication device’s display Appeal 2020-004580 Application 15/822,040 6 can be employed “to provide access to features of the communication device.” Final Act. 4 (referencing Golko 6:42–7:7). Appellant acknowledges that “the communication device stored in the pocket of the personal carrier . . . may be paired with the wristwatch disclosed in Golko.” Appeal Br. 10. Appellant also contends that when the recited “personal carrier is in use, the user does not need any further electronic devices, such as the wristwatches of Golko, in order to transmit information to and receive information from” the communication device “stored in the personal carrier.” Appeal Br. 9. This is a misreading of the Examiner’s rejection which does not require a user to wear both Golko’s wristwatch, and Abrahamson’s personal carrier (as modified by Hill). Instead, the Examiner references Golko as teaching that it is known to employ a different display (i.e., “a touch screen”) to access features of a communication device, and the Examiner provides a reason to incorporate such teachings into the combination of Abrahamson and Hill. See Final Act. 4; Golko 6:58–60. As such, Appellant’s contention above that a user must wear both devices is at odds with the Examiner’s rejection. Further, Appellant faults the Examiner’s rejection by incorporating the entirety of Golko’s wristwatch, and stating how this would not satisfy the claim language. See Appeal Br. 11–12 (“merely using a wristwatch . . . as disclosed in Golko . . . is insufficient as this does not provide a means for carrying needed personal items”). However, as expressed by the Examiner, “the watch of Golko is not being included in the invention. Rather, the display of Abramson/Hill is being modified to be like the display of Golko.” Ans. 10. In other words, as expressed by the Examiner, “the functionality of Appeal 2020-004580 Application 15/822,040 7 the display of Golko is being used or incorporated into the display of Hill on the exterior surface of the carrier of the combination of Abramson/Hill.” Ans. 10. Thus, the Examiner is not bodily incorporating Golko’s wristwatch into the combination of Abramson and Hill, but instead is incorporating Golko’s teachings of “a touch screen” to remotely operate a communication device via “one or more user controls” appearing on Golko’s display. See Golko 6:52–60. Appellant also contends that if one were to combine the three references, the result would be a “bag with multiple pockets” with the various devices stored therein. Appeal Br. 10. Again, this contention is not commensurate with the Examiner’s rejection and, thus, is not persuasive of Examiner error. Appellant further contends that “there is no teaching or suggestion in these references for such modification.” Appeal Br. 10. The Examiner, however, responds stating that “it is not a requirement that the motivation be present in the references themselves.” Ans. 10 (emphasis added). The Examiner’s response is consistent with Supreme Court precedent which cautions against confining the obviousness analysis to published articles. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, we are instructed that the Examiner must provide “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Appellant is not persuasive that such reasoning with rational underpinning is lacking in the present situation. See Final Act. 4. Appellant also references “hindsight” and contends that the cited combination “teaches away” from such a modified carrier. Appeal Br. 10. However, as noted above, there is no indication that the Examiner’s Appeal 2020-004580 Application 15/822,040 8 reasoning for combining such references is gleaned solely from Appellant’s teachings, nor is there any indication in any of these references that they cannot or would not be so combined. See Ans. 11. Regarding the benefits achieved by Appellant’s device (see Appeal Br. 11–12), the Examiner comments that the recited combination “results in the same benefits noted by [A]ppellant.” Ans. 11. Appellant does not dispute this assertion by the Examiner. Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claims 1, 7–9, and 12 as being obvious in view of Abrahamson, Hill and Golko. The rejections of: (a) claims 2, 10, and 11 as unpatentable over Abrahamson, Hill, Golko, and Rittmann; (b) claim 3 as unpatentable over Abrahamson, Hill, Golko, and Saggese; (c) claim 4 as unpatentable over Abrahamson, Hill, Golko, and Welsch; and, (d) claims 5 and 6 as unpatentable over Abrahamson, Hill, Golko, and Cho Appellant does not argue these rejections separate from claim 1. Instead, Appellant contends that each additional reference cited (i.e., Rittmann, Saggese, Welsch, and Cho) “fails to cure the noted deficiencies of Abrahamson, Hill, and Golko.” Appeal Br. 12–13. As noted above, we are not appraised of any deficiency with the combination of Abrahamson, Hill, and Golko. Accordingly, we sustain the above rejections. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5, 6 112(b) Indefinite 5, 6 1, 7–9, 12 103 Abrahamson, Hill, Golko 1, 7–9, 12 Appeal 2020-004580 Application 15/822,040 9 2, 10, 11 103 Abrahamson, Hill, Golko, Rittmann 2, 10, 11 3 103 Abrahamson, Hill, Golko, Saggese 3 4 103 Abrahamson, Hill, Golko, Welsch 4 5, 6 103 Abrahamson, Hill, Golko, Cho 5, 6 Overall Outcome3 1–12 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). AFFIRMED 3 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.”