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.
90/019,268 10/10/2023 10820675 G1225US00 2842
148826 7590 07/25/2025
FisherBroyles LLP - C Mueller
Craig W. Mueller
10162 E. 29th Ave.
Denver, CO 80238
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/25/2025 PAPER
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. PTOL-90A (Rev. 04/07)
1
UNITED STATES PATENT AND TRADEMARK OFFICE
——————
BEFORE THE PATENT TRIAL AND APPEAL BOARD
——————
Ex parte JEFFERSON STREET HOLDINGS, LLC Patent Owner and Appellant
——————
Appeal 2025-000826
Reexamination Control 90/019,268 Patent 10,820,675 B21
Technology Center 3900 ——————
Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and JILL D. HILL, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. §§ 134(a) and 306, Patent Owner (Appellant)2 appeals from the Examiner's decision to reject claims 1-39. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
2
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
2
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a protective case for a portable electronic device. Claims 1 and 5, reproduced below, illustrate the claimed subject matter:
1. A case for an electronic device, the case comprising:
a first panel having at least four edges; a first, second, third and fourth corner at each intersection of the at least four edges;
at least an upper and a lower of the at least four edges comprising a first height;
the first, second, third and fourth corner comprising a second height at least as high as the first height; and wherein at least a portion of the first and second side edges comprising a third height less than the first height and the second height and transitions from the second height to the third height; wherein the third height of the first and second side edges continuously spans the entire distance between the transitions.
5. A case for an electronic device comprising:
a first panel and a plurality of edges that extend in a direction perpendicular to the first panel; the first panel comprising an opening to expose feature of the electronic device;
the plurality of edges comprising a first pair of edges having an inner surface with a first height and a second pair of edges having an inner surface with a second height; wherein the second height is less than the first height; wherein the difference in heights between the first pair of edges and the second pair of edges is defined by a taper; wherein the heights of the second pair of edges are symmetrical; and
wherein the second height of the second pair of edges continuously spans the entire distance between the tapers.
3
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
3
REFERENCES
The Examiner relies on the following references to reject the claims:
Name Reference Date
Poon US 2015/0264822 A1 Sept. 17, 2015 KR '8153(as translated) KR 101204815 B1 Nov. 26, 2012 KR '4064(as translated) KR 300719406 S Dec. 09, 2013
REJECTIONS
The Examiner maintains the following rejections:5
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1-3, 5, 6 102(a)(1) KR '406 3, 11, 20, 25, 29, 35 103 KR '406, KR '815 4, 8, 14, 23, 32, 38 102(a)(1) KR '406 4, 8, 14, 23, 32, 38 103 KR '406, Poon 7, 9, 10, 12, 13, 15, 16-19, 21, 22, 24, 26-28,
30, 31, 33, 34, 36, 37, 39
102(a)(1) KR '406
7, 9, 10, 12, 13, 15, 16-19, 21, 22, 24, 26-28,
30, 31, 33, 34, 36, 37, 39
103 KR '406
4
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
4
OPINION
Anticipation--Claims 1-3, 5, and 6 (KR '406) As to independent claim 1, Appellant contends that KR '406 "does not have 'at least four edges' or a height that 'continuously spans the entire distance between the transitions/tapers' as claimed." Appeal Br. 10. In that regard, according to Appellant, KR '406 "does not have any side edges."
Appeal Br. 10.
The Examiner finds that KR '406 discloses its case having a first side edge B and a second side edge C. Final Act. 4-5. The Examiner's annotated version of the figures from KR '406 is reproduced below.
5
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
5
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
6
The figures reproduced above include front view, end views, and side view of the case disclosed by KR '406 provided on pages 6-8 of the Final Office Action and include reference letters and annotations provided by the Examiner.
Appellant's contentions can be summarized as alleging that there is no height to side edges B and C. The preponderance of the evidence before us favors the Examiner.
Initially, it is worth noting that Appellant's contentions regarding drawings used as prior art are unavailing. As Appellant acknowledges,
"drawings in a foreign reference (as in Anymode) must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art."
Appeal Br. 11 (citing In re Aslanian, 590 F.2d 911 (CCPA 1979)). The Examiner relies on the figures in KR '406 for relative dimensions and to compare a height of one part to another, namely, that of the side edges B and
7
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
7
C, and their height L relative to height J of upper and lower edges D and E. Final Act. 4-5. Here, the figures reasonably disclose the relative heights relied on by the Examiner.
The other figures from KR '406, including a perspective rear view of the case reproduced below, further support the Examiner's position. The figure reproduced above is a perspective rear view of the case from KR '406. The openings at the back of the case illustrate the relative thickness of the panel of the case, which can be compared to the height of its side edges. The opening at the top (also shown in the annotated first through
8
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
8
fourth figures reproduced above) further supports the Examiner's position that KR '406 discloses sidewalls.
Appellant's declarant alleges that "the case of KR [']406 operates by snapping a phone between the top and bottom edges, which grip the phone at its top and bottom edges." Declaration of Ms. Elizabeth Joy Dining ("Dining Decl.") ¶ 13. It is unclear what Appellant is attempting to convey with this allegation relative to the anticipation rejection of claim 1. Moreover, we note that the declaration is that from the inventor, Elizabeth Joy Dining, and addresses an obviousness combination. That discussion from the cited declaration also appears to be based on a commercial product alleged to be based on the KR '406 disclosure. Nevertheless, the rejection is based on what is disclosed in KR '406, itself, rather than a commercial product allegedly related to that disclosure.
For at least these reasons, Appellant's contention that the case in KR '406 lacks side edges does not identify Examiner error. Appellant also asserts that in KR '406 "[t]here is no continuous height along either lateral side of Anymode, let alone one that 'continuously spans' the 'entire distance' between the transitions" as required by claim 1. Appeal Br. 13. Appellant relies on a dictionary definition of "span" as "[t]he distance between two points or extremities" or "[t]o extend across" in support. Appeal Br. 13 (quoting The Am. Heritage Dictionary, 3rded.). Appellant argues that, in contrast, KR '406 "has a completely arcuate shape caused by the curvature of the back panel between the raised corners" and argues that this limitation "was a key reason for allowance of the '675 Patent." Appeal Br. 13-14. Appellant concludes that "[t]hus the claims
9
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
9
require the third height to be constant across the distance spanned." Appeal Br. 14.
We are not persuaded by Appellant's arguments. Appellant's reiteration of its contentions that the "continuously spans" limitation is not met because KR '406 allegedly has no side edges is unpersuasive for the reasons explained above. In addition, the second height of the first and second side edges is continuous from the first to the second transition because it is non-zero along that extent. See Final Act. 5; Ans. 8-9. Furthermore, the dictionary definition of "span" does not change the Examiner's finding because the side edges of KR '406 "extend across" to the taper portions M, which are transitions. See Ans. 8-9. Moreover, Appellant's assertion that the claim requires the third height to "be constant across the distance spanned" is unpersuasive, because "[t]he claim language does not require that the third height be constant." Ans. 8. Finally, Appellant's vague reference to the prosecution history and Appellant's assertion based thereon does not constitute an argument that is sufficient for us to consider and address.
For at least these reasons, we are not apprised of Examiner error in finding that KR '406 discloses a third height that "continuously spans the entire distance between the transitions."
Appellant also argues that "even if it is found that Anymode contains side edges, those side edges would not be 'perpendicular to the first panel' as required by Claims 5 and 6." Appeal Br. 13. According to Appellant, the side edges of KR '406 "are angled outward, rather than perpendicular. In addition, there is no showing that the alleged side edges curve enough to go past, and thus include, a perpendicular angle." Appeal Br. 13.
10
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
10
The Examiner rejects claim 5, explaining that "the curved nature of each of the edges result in some portion of each of the edges extending perpendicular to the first panel." Final Act. 9. The Examiner further explains that "each of the side edges has at least a portion that is perpendicular to a portion of the first panel by nature of the curved shape of the edges" and that "[t]he claim language does not require an entirety of the edges to extend perpendicular." Ans. 7.
Appellant responds that "the claims require the side edges, not just some finite portion of them, to extend in a direction substantially perpendicular to the panel" and that it is improper to rely on the entirety of the side edge to meet the limitation for a side edge, and then rely just on a portion thereof to meet the perpendicular requirement. Reply Br. 5. We are not persuaded of Examiner error. First, we note that the term
"perpendicular" is found only in claim 5 (and claim 22) as issued and nowhere else in the Specification. Second, the claims do not state that the side edges are perpendicular to the first panel, but rather, that the side edges
"extend in a direction perpendicular to the first panel." Third, in a seeming acknowledgement to that language and to the issue we discuss below with respect to its Specification, Appellant characterizes the limitation as requiring the side edges to "extend in a direction substantially perpendicular to the panel." Reply Br. 5.
With these considerations in mind, we observe that Appellant's own disclosure does not support its allegation that side edges of KR '406 are not perpendicular because they "are angled outward." Appeal Br. 13. In particular, when we look at Appellant's figures, reproduced below, the
11
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
11
lateral edge of the case is shown as extending from the base panel at an angle/curvature similar to that shown in KR '406.
Figure 1G, above (upper figure), is a first end view of the protective case from Figure 1A, and Figure 1H, above (lower figure), is a second end view of the protective case from Figure 1A. Figures 1G and 1H, reproduced above, include our annotated rectangular box around a portion of the case, denoting the region that corresponds to the side edges shown in Figure 1F. The region of the side edges in the annotated rectangular box has a curved/angled profile relative to the back of the case. Appellant's Specification confirms this understanding. See Spec. 3:44-49 ("The inner rigid layer 102 or structure is generally planar and includes a number of turned or curved outer edges 110. In the depicted embodiment, the turned edges 110 are disposed along the lengths L of the inner layer 102, although the turned edges 110 may alternatively or additionally be disposed along the width W of the inner layer 102."); 3:51-54 ("Generally, the curvature of the
12
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
12
turned edges 110 is configured to match the contours of the smartphone received in the receiver 108.").
To the extent the specific embodiment in Appellant's Specification has side edges that "extend in a direction perpendicular to the first panel,"
KR '406 also has side edges that can be considered perpendicular. Both cases have side edges meant to conform to the sides of a phone. And Appellant's figures and those in KR '406 depict very similar profiles. Appellant fails to apprise us of the structure, required by the claim that is missing in KR '406.
Therefore, for the above reasons, we are not persuaded of Examiner error and affirm this rejection of independent claims 1 and 5. Appellant does not submit arguments directed to the remaining dependent claims. Accordingly, claims 2, 3, and 6 fall with their corresponding independent claims.
Anticipation--Claims 7, 9, 10, 12, 13, 15, 16-19, 21, 22, 24, 26-28, 30, 31, 33, 34, 36, 37, and 39 (KR '406)
These rejected claims encompass numerous dependent claims that are directed to various different subject matter, as well as independent claims 9, 17, 22, 27, and 33.
Appellant initially relies on the arguments discussed above relative to KR '406, which are unpersuasive. Appeal Br. 19. Appellant also argues that KR '406 fails to disclose a side edge that "continuously spans" or "is a single continuous height," or similar, as required by the claims. Appeal Br. 19. Although we find Appellant's argument based on "continuously spans" unpersuasive for reasons already discussed, we are persuaded that
13
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
13
KR '406 is unclear as to whether the height of the side edges is "a single, continuous height." The Examiner states that KR '406 "actually does appear to show the 'single height' and 'single, continuous height.'" Ans. 10. However, it is evident from consideration of the figures of KR '406, as well as the Examiner's use of the phrase "appear to show," that KR '406's figures are insufficient to clearly establish that the side edges are of a single height. Therefore, we reverse this anticipation rejection as to independent claims 9, 22, 27, and 33, as well as claims 9, 10, 12, 13, 15, 16, 24, 26, 28, 30, 31, 34, 36, 37, and 39 depending therefrom.
Appellant's argument specifically directed to claims 9, 10, 12, 13, 15, and 16, that KR '406 does not have four edges to envelop at least a portion of the electrical device is technically moot, but is nonetheless unpersuasive. Appeal Br. 19. Although not entirely clear, this argument appears to be based on the assertion that the case of KR '406 does not have any side edges, which is unpersuasive for reasons already discussed. Appeal Br. 19. Appellant further points out that "claims 7, 22, 24, and 26 require edges that extend in a direction substantially perpendicular." Appeal Br. 19. Although this argument is technically moot with respect to claims 22, 24, and 26, it is nonetheless unpersuasive for reasons also discussed above. Appeal Br. 19. Dependent claims 7, 15, and 21 also require a second opening for a feature such as a speaker, a microphone, a camera, a charging port, an audio jack, etc. Appellant argues that with respect to these claims, the rejection is improper because although KR '406 does not specifically disclose what its openings expose, the Examiner took official notice that the claimed openings for the recited features were known without substantial evidence in the record. Appeal Br. 19-21. This argument is moot as to claim 15 (dependent
14
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
14
on claim 9), and unpersuasive as to claims 7 and 21. We agree with the Examiner that KR '406 discloses cases having openings for such features, and that smart phones and tablets are "notoriously well known for having speakers for hearing telephonic conversations, charging ports to recharge an internal battery, a logo for marketing purposes, an audio jack for private listening, etc." Ans. 15. Indeed, contrary to Appellant's contention, Poon already of record specifically identifies such openings for features of a smart phone thereby providing evidence of the state of the art and common knowledge. See Poon Fig. 3; ¶¶ 6, 9, 25, 28 (disclosing openings for microphone, speaker, camera, switches, buttons, connectors, head phone jack); see also Randall Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed. Cir. 2013) (prior art of record not specifically relied upon in the rejection considered as evidence of the state of the art, common knowledge, and common sense of one of ordinary skill in the art); In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (an artisan must be presumed to know something about the art apart from what the references disclose). Finally, although not separately argued by Appellant, we note that dependent claim 18 requires the second height to be "a single, continuous height." As such, we reverse the rejection of claim 18 as well as of claim 19 depending thereon.
Therefore, we affirm the anticipation rejection of claims 7, 17, and 21, but reverse the rejection as to claims 9, 10, 12, 13, 15, 16, 18, 19, 22, 24, 26- 28, 30, 31, 33, 34, 36, 37, and 39.
Anticipation--Claims 4, 8, 14, 23, 32, and 38 (KR '406)
15
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
15
Appellant initially argues that this rejection is improper because "[t]he claims require side edges which 'continuously spans' or 'is a single, continuous height.'" Appeal Br. 16. Hence, this argument raises the same issue addressed above. Accordingly, we reverse this rejection as to dependent claims 14, 23, 32, and 38.
Claim 4 recites "further comprising at least one resilient layer."
Whereas the Examiner relies on the differently colored portion (identified as
"N") of the first panel of KR '406 in rejecting claim 4, Appellant argues that KR '406 "never discloses a second layer," and that "[e]ven if a second layer is disclosed, there is no disclosure that this 'layer' is resilient." Appeal Br. 16. We are persuaded by Appellant's argument. The different coloring of the rear portion of the first panel in the figures of KR '406 does not necessarily establish that the colored portion is a different layer or that the different colored portion is resilient. Therefore, we reverse the rejection of claim 4.
Appellant further argues that claims 8 and 23 are patentable because they require "edges that extend in a direction substantially perpendicular to the first panel or the substantially planar surface." Appeal Br. 16. This argument is moot as to claim 23 (depends from claim 22), and with respect to claim 8, unpersuasive for reasons already discussed above. However, claim 8 nonetheless requires "at least one layer in addition to the first panel."
Therefore, we reverse this rejection as to claim 8 as well. Appellant also submits that claim 14 requires four edges to envelop at least a portion of the electronic device, which is allegedly not disclosed in KR '406. Appeal Br. 16. However, notwithstanding the fact that this argument does not pertain to the actual language of claim 14 and is
16
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
16
unpersuasive as discussed above, we reverse this anticipation rejection because claim 14 depends from claim 9 that requires a single height. Therefore, we reverse this rejection.
Obviousness--Claims 7, 9, 10, 12, 13, 15, 16-19, 21, 22, 24, 26-28, 30, 31, 33, 34, 36, 37, and 39 (KR '406)
In alternatively rejecting these claims as obvious in view of KR '406, the Examiner determines that if KR '406 does not disclose "a single height that continuously spans the entire portion," it would have been obvious to one of ordinary skill in the art "as a matter of design choice to have this limitation because a configuration of an invention is a matter of choice that a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed subject matter was significant." Final Act. 23 (emphasis removed) (citing In re Dailey, 357 F.2d 669 (CCPA 1966); MPEP § 2144.04). The Examiner further explains that "[o]ne having ordinary skill in the art would have the claimed single height based on desired aesthetics and shape of the case. Having the single height would not depart from the scope of operability of the device as disclosed." Final Act. 23 (emphasis removed). Appellant disagrees and argues that In re Dailey "stands for the proposition that a change in shape may be obvious, absent evidence that the recited configuration has functional significance" but "the incorporation of a continuous side edge is not aesthetic, but instead is functional at least because the drop-down sides of the case allows for complete access to swipe along the entire width of the phone screen." Appeal Br. 21.
17
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
17
Appellant's argument is not persuasive. Appellant's asserted functional significance of allowing "complete access to swipe along the entire width of the phone screen" is provided by side edges being less in height than the sides of the phone, and this feature is provided by the side edges of KR '406. The issue as to the obviousness rejection is what the functional significance is in providing "a single height." In other words, the functional aspect of providing access argued by Appellant is not directly attributable to such reduced height being "a single height," which is what the Examiner finds to be an obvious design choice. Accordingly, at least as to the asserted functional significance, the Examiner is correct that "having a single height would not change how the case operates." Ans. 10. Appellant also argues that claim 39 requires "at least one bridge at least partially spanning a centrally positioned opening" but the rejection points to "a series of three individual openings, not one opening containing bridges." Appeal Br. 22. The Examiner sets forth two different findings with respect to this limitation being disclosed in KR '406. In particular, referring to the annotated fifth figure of KR '406, the Examiner considers annotation "O" to depict an opening that is spanned by two bridges "V."
Final Act. 34. Alternatively, the Examiner considers annotation "W" to depict an opening that is spanned by a bridge "X." Final Act. 34. The fifth figure of KR '406 as annotated by the Examiner is reproduced below.
18
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
18
The figure reproduced above is a perspective rear view of the case from KR '406 that is oriented sideways with annotations identifying various features of the case with reference letters "N," "O," "V," "W," and "X."
Appellant argues that "'O' is a series of three individual openings, not one opening containing bridges." Appeal Br. 22. As to the Examiner's alternative finding, Appellant refers to the figures of KR '406 to argue that
"there is no 'central opening' at location 'W.'" Appeal Br. 22. Appellant also asserts that even if an opening is disclosed, "the bridge would not 'partially span' it, but instead completely cover it." Appeal Br. 22. These arguments are unpersuasive. It is not apparent, and Appellant has not explained, why the annotated "O" cannot be considered as a singular, elongated opening that is divided by two bridges "V" instead of what Appellant refers to as "three individual openings." In that regard, the same "individual openings" characterization can be used to describe
19
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
19
Appellant's case in which there are merely multiple differently shaped openings on the first panel. See Figs. 1A, 1C. As to the alternative finding, we agree with the Examiner that "an opening does not require an extension through an entire thickness of the case." Ans. 17. In addition, claim 39 does not merely recite "partially spanning" as Appellant argues, but rather, states
"at least partially spanning," which encompasses a complete spanning as there is no upper limit. Ans. 18.
Therefore, we are not persuaded of error and affirm the Examiner's rejection.
Obviousness -- Claims 3, 11, 20, 25, 29, and 35 (KR '406, KR '815) The Examiner rejects these claims relying on KR '815 for disclosing
"a similar case that incorporates a step as a transition" and concludes that providing such a step transition would have been obvious to a person of ordinary skill in the art "as a matter of design choice" and that "having the step would increase the span of the height between transition portions which could permit easier access to features (e.g., buttons, ports and switches) on an electronic device contained therein." Final Act. 11-12 (emphasis removed).
Appellant does not dispute the Examiner's findings relative to KR '815 or the reasoning supporting the Examiner's conclusion of obviousness. Instead, Appellant relies on the same unpersuasive arguments submitted with respect to the independent claims in support of patentability of these claims. Appeal Br. 14. Appellant also argues that claim 11 is patentable because it requires "four edges to envelope at least a portion of the electronic device," which is not disclosed by KR '406. Appeal Br. 15. Again, this
20
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
20
argument appears to be based on the assertion that the case of KR '406 does not have any side edges, which is unpersuasive for reasons already discussed. Appellant further argues claim 25 is patentable because it requires a "plurality of edges that extend in a direction substantially perpendicular to the substantially planar surface," and thus, is patentable for the reasons argued relative to claim 5. Appeal Br. 15. We observe that claim 25 is broader than claim 5 in its inclusion of "substantially," and also determine that Appellant's argument is unpersuasive for reasons discussed above relative to claim 5.
Therefore, because we are not persuaded of any error, we affirm this rejection.
Obviousness--Claims 4, 8, 14, 23, 32, and 38 (KR '406, Poon) The Examiner rejects these claims, finding that "Poon teaches a similar case for an electronic device that includes an additional layer (6) that is in addition to the first panel (10). In other words, one layer is in addition to the first panel." Final Act. 17 (emphasis removed). The Examiner concludes that it would have been obvious to a person having ordinary skill in the art "to have a two-part case in order to permit the case to be made of different materials based on the overall function and use of the case." Final Act. 17 (emphasis removed). In particular, the Examiner explains that
"[o]ne having ordinary skill in the art would have the additional panel as separate in order to permit different materials to be used in making the case
21
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
21
based on the intended degree of protection, shock absorption and comfort."
Final Act. 17 (emphasis removed).
Appellant relies on the same unpersuasive arguments directed to KR '406 addressed above in support of patentability of these claims. Appeal Br. 14-15. Appellant also argues that the rejection "involves combining a resilient layer from one prior art reference to a case from another prior art reference" but "Poon teaches away from the style of case shown in Anymode by having a 3-piece, rugged construction that completely encapsulates the phone and restricts access to the screen, controls, etc.,"
which is in contrast to "an ultra-slim case" that is disclosed in KR '406. Appeal Br. 18-19. Appellant further asserts that "no motivation or rationale has been provided." Appeal Br. 18.
Appellant's arguments are unpersuasive. The assertion of teaching away is unpersuasive. An alternative arrangement is not a teaching away
"because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see also Meiresonne v. Google, 849 F.3d 1379, 1382 (Fed. Cir. 2017) ("[a] reference that 'merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into' the claimed invention does not teach away."). In addition, contrary to Appellant's assertion, the Examiner has articulated a reason as to why a person of ordinary skill would have been motivated to provide the case of KR '406 with another resilient layer as taught by Poon, namely, to change the "degree of protection, shock absorption and comfort." Final Act. 17 (emphasis removed); Ans. 13; KSR
22
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
22
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellant fails to establish any error in the Examiner's articulated reasoning. Therefore, we affirm the Examiner's rejection.
CONCLUSION
The Examiner's rejection of claims 1-39 is affirmed.
DECISION SUMMARY
The following table summarizes our decision:
Claim(s) Rejected
35
U.S.C. § Reference(s)/ Basis Affirmed Reversed
1-3, 5, 6 102(a)(1) KR '406 1-3, 5, 6
3, 11, 20, 25, 29,
35
103 KR '406, KR '815
3, 11, 20, 25, 29,
35
4, 8, 14, 23, 32,
38
102(a)(1) KR '406 4, 8, 14, 23, 32,
38
4, 8, 14, 23, 32,
38
103 KR '406, Poon
4, 8, 14, 23, 32,
38
7, 9, 10, 12, 13,
15, 16-19, 21, 22, 24, 26-28,
30, 31, 33, 34,
36, 37, 39
102(a)(1) KR '406 7, 17, 21 9, 10, 12, 13, 15,
16, 18, 19, 22,
24, 26-28, 30,
31, 33, 34, 36,
37, 39
7, 9, 10, 12, 13,
15, 16-19, 21, 22, 24, 26-28,
30, 31, 33, 34,
36, 37, 39
103 KR '406 7, 9, 10, 12, 13, 15, 16-19, 21,
22, 24, 26-28,
30, 31, 33, 34,
36, 37, 39
Overall Outcome
1-39
23
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
23
REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED
24
Appeal 2025-000826 Reexamination Control 90/019,268 Patent 10,820,675 B2
24
THIRD PARTY REQUESTER:
IDEA INTELLECTUAL LIMITED
10/F-1, NO.70-1, SECTION 1, CHENGDE ROAD
DATONG, DISTRICT
TAIPEI, 103622
TAIWAN
25