Dell Products L.P.

Patent Trials and Appeals Board

Jul 26, 2021

2020002523 (P.T.A.B. Jul. 26, 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.
15/406,369 01/13/2017 Andrew Thomas SULTENFUSS 102450.00373 5974
108431 7590 07/26/2021
Dell c/o Jackson Walker L.L.P.
100 Congress Avenue
Suite 1100
Austin, TX 78701
EXAMINER
MIDKIFF, AARON
ART UNIT PAPER NUMBER
2621
MAIL DATE DELIVERY MODE
07/26/2021 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW THOMAS SULTENFUSS and
JUDY M. AMANOR-BOADU
_____________

Appeal 2020-002523
Application 15/406,369
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JUSTIN BUSCH, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–12, which constitute all the claims pending in this application. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest in this
appeal is Dell Products, L.P. See Appeal Br. 2.
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Application 15/406,369

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STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s claimed subject matter relate generally
to: “information handling systems, and more particularly to providing a
flexible power topology for a display assembly in an information handling
system.” Spec. 2, lines 4–7.
Illustrative Independent Claim 1
1. An information handling system comprising:
a processor; and
an interface configured to electronically interface
between the processor and a display assembly, wherein the
interface is configured to provide a legacy supply voltage to the
display assembly and an alternate supply voltage different in
magnitude from the legacy supply voltage to the display
assembly in addition to the legacy supply voltage;
wherein the legacy supply voltage and the alternate
supply voltage are direct-current (DC) voltages, such that the
interface is compatible with each of:
a first type of display assembly having a first type of
voltage regulator tree that is configured to generate regulated
output voltages from the legacy supply voltage; and
a second type of display assembly having a second type
of voltage regulator tree that is configured to generate regulated
output voltages from the alternate supply voltage.
Appeal Br. 11. Claims App. (disputed claim limitation emphasized).

2 We herein refer to the Final Office Action, mailed April 11, 2019 (“Final
Act.”); Appeal Brief, filed September 10, 2019 (“Appeal Br.”); the
Examiner’s Answer, mailed December 10, 2019 (“Ans.”); and Reply Brief,
filed February 10, 2020 (“Reply Br.”).
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Prior Art Evidence Relied Upon by the Examiner
Name Reference Date
Kobayashi US 2015/0046727 A1 Feb. 12, 2015
Table of Rejections
Rej. Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
A 1–12 112(a) Written description
B 1–12 102(a)(1) Kobayashi

ISSUES AND ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. To the extent Appellant has not timely advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are forfeited.3 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). Throughout this
opinion, we give the claim limitations the broadest reasonable interpretation
(BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048,

3 See In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020)
(some internal citation omitted):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458,
464 (1938)) (additional citations omitted). The two scenarios
can have different consequences for challenges raised on
appeal, id. at 733–34, and for that reason, it is worth attending
to which label is the right one in a particular case.
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1054 (Fed. Cir. 1997). We highlight and address specific findings and
arguments for emphasis in our analysis below.
Rejection A under 35 U.S.C. § 112(a) (written description)
The determination of whether a patent meets the written description
requirement is a “question of fact, judged from the perspective of one of
ordinary skill in the art as of the relevant filing date.” Falko-Gunter Falkner
v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006) (citing Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563–64). “To fulfill the written description
requirement, the patent specification must describe an invention in sufficient
detail that one skilled in the art can clearly conclude that the inventor
invented what is claimed.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d
1352, 1364 (Fed. Cir. 2003) (citations omitted). Our reviewing court has
cautioned, however, that “[t]he disclosure as originally filed does not . . .
have to provide in haec verba support for the claimed subject matter at
issue.” Id. at 1364. “Although [the applicant] does not have to describe
exactly the subject matter claimed … the description must clearly allow
persons of ordinary skill in the art to recognize that [the applicant] invented
what is claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)
(citations omitted). Put another way, “the applicant must . . . convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Vas-Cath, 935 F.2d at 1563–
64. The written description, although it need not include information that is
already known and available to the experienced public, must be in sufficient
detail to satisfy the statutory requirements, employing “[w]ords, structures,
figures, diagrams, formulas, etc., that fully set forth the claimed invention.”
Space Sys./Loral, Inc. v. Lockheed Martin Corp., 405 F.3d 985, 987 (Fed.
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Cir. 2005) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997)).
Such disclosure must do more than merely disclose that which would
render the claimed invention obvious. Univ. of Rochester v. G.D. Searle &
Co., 358 F.3d 916, 923 (Fed. Cir. 2004); Regents of the Univ. of Cal. v. Eli
Lilly & Co., 119 F.3d 1559, 1566–67 (Fed. Cir. 1997); see also PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008)
(explaining that § 112, ¶ 1 “requires that the written description actually or
inherently disclose the claim element”). Finally, “[p]recisely how close the
original description must come to comply with the description requirement
of § 112 must be determined on a case-by-case basis.” Eiselstein v. Frank,
52 F.3d 1035, 1039 (Fed. Cir. 1995) (citation omitted).
Regarding written description Rejection A of claims 1–12, we
consider the following issue raised by Appellant’s arguments:
Issue: Did the Examiner err by finding that the claim 1 limitation
“wherein the interface is configured to provide a legacy supply voltage to
the display assembly and an alternate supply voltage different in magnitude
from the legacy supply voltage to the display assembly in addition to the
legacy supply voltage” lacks written description support under 35 U.S.C.
§ 112(a)?
The Examiner makes the following findings:
There is no passage within the instant application cited to
support this amendment. The disclosure comprises no explicit
discussion of voltage “...magnitude...” or some reasonable
equivalent (e.g. level, amplitude, value), let alone comparing
magnitudes of legacy and alternate supply voltages.
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As noted in the preceding Advisory Action (1 November
2018), [0030] and [0034] of the instant application discuss each
one of legacy and alternate voltage supplies acting as inputs,
from which one or more regulated output voltages may be
generated. There is, however, neither discussion of the relative
magnitudes of legacy and alternate voltage supplies themselves,
nor is there [] discussion of the magnitudes of voltages which
may be produced from each of these.
Non-Final Act. 4 (as incorporated by reference into the Final Action at page
4: “The prior (26 December 2018) rejection of the claims as having failed to
comply with the written description requirement ( 112{a}) stands, but will
not be repeated here.”).
In the Answer, the Examiner additionally notes: “[c]ommunicating
that multiple voltages may be derived from the legacy and alternate supply
voltages, again, says nothing regarding the relative magnitudes of the legacy
and alternate supply voltages.” Ans. 4.
However, Appellant contends that support for the disputed limitation
can be found in Appellant’s Specification at page 9, lines 18–25, page 12,
lines 15–18, and page 16, lines 6–18. See Appeal Br. 5. Appellant asserts
“[t]he Specification does not provide an explicit voltage level for the
‘alternate supply voltage,’ but in the context of the Specification as a whole,
it is clear beyond argument that it is not the same as the legacy supply
voltage––it is something ‘different’ from the legacy supply voltage.”
Appeal Br. 6.
Appellant also argues that page 15, line 25 – page 16, line 2 of
Appellant’s Specification “makes clear that both the legacy supply voltage
and the alternate supply voltage may be DC voltages” and “thus amply
describes receiving a DC legacy supply voltage —with the specific example
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of 3.3 volts given––as well as a DC ‘alternate supply voltage other than the
legacy supply voltage.’” See Appeal Br. 6 (emphasis omitted).
Turning to the evidence, we reproduce the pertinent cited portions of
Appellant’s Specification below:
FIGURE 1 illustrates an exterior view of example
information handling system 102 embodied as a notebook or
laptop computer, in accordance with embodiments of the present
disclosure. As depicted in FIGURE 1, information handling
system 102 may include a display assembly 132 (which may
house display 109 (FIG. 2) and/or other information handling
resources) and a keyboard assembly 134 (which may house a
keyboard, pointing device, and/or other information handling
resources) hingedly coupled via one or more hinges 136.
Spec. 9, lines 17–26.
Voltage VLEGACY may be a voltage specified by an existing
standard for display device power topologies (e.g., 3.3 volts in
accordance with the VESA standard).
Spec. 12, lines 15–18.
Voltage regulator tree 110b may comprise any suitable
system, device, or apparatus configured to receive, in addition to
or in lieu of a legacy voltage VLEGACY, an alternate voltage supply
(e.g., VBATT) as an input, and generate from such alternate voltage
supply one or more regulated output voltages to power
components of display 109 that may have varying input voltage
requirements from each other. Accordingly, voltage regulator
tree 110b may include one or more direct current-to-direct
current voltage converters including without limitation one or
more buck converters, one or more buck-boost converters, and
one or more boost converters.
Spec. 15, line 25 — page 16, line 4.
Thus, as shown in FIGURES 2 and 3, information
handling systems using the methods and systems disclosed
herein may have different topologies for their display assemblies,
while maintaining a common topology of keyboard assembly
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134. Such common topology of keyboard assembly 134 may
include an interface (e.g., interface 108) that is compatible with
both standard or legacy display architectures that provide a
legacy supply voltage to the display (as shown in FIGURE 2), as
well as modified architectures that provide an alternate supply
voltage other than the legacy supply voltage in lieu of or in
addition to the legacy supply voltage (as shown in FIGURE 3).
In some instances, the ability to implement display assemblies
with the alternate supply voltage may allow a designer to design
a display assembly power architecture with lower power
consumption than possible with the legacy supply voltage.
Spec. 16, lines 5–20.
Our reviewing court further guides that “[t]o satisfy the written
description requirement, ‘the applicant does not have to utilize any particular
form of disclosure to describe the subject matter claimed, but the description
must clearly allow persons of ordinary skill in the art to recognize that he or
she invented what is claimed.’” Ariad Pharms., Inc. v. Eli Lilly and Co., 560
F.3d 1366, 1371 (Fed. Cir. 2009) (citing Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting In
re Alton, 76 F.3d 1168, 1172 (Fed.Cir.1996))).
Although Appellant’s Specification does not expressly use the claim
term “magnitude” in haec verba to refer to different voltage levels, we are of
the view that one of ordinary skill in the art at the time of the invention
would have recognized that different power supplies (e.g., laptop battery or
laptop AC adapters), including regulated DC power supplies with AC inputs,
and/or DC-DC voltage converters (e.g., “buck” converters, Spec. 14, 16)
would inherently have different voltage levels (i.e., “magnitudes” as
claimed) that would vary slightly over time according to source voltage
variations and temperature changes and associated tolerance variations of
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power supply components, when used in the context of lowering power
consumption in a notebook or laptop computer, or regulation of different
voltages via a regulator tree, or converting voltages via DC voltage
converters, as described in the above-reproduced portions of Appellant’s
Specification.
Therefore, based upon a preponderance of the evidence, we agree with
Appellant that “[t]he Specification does not provide an explicit voltage level
for the ‘alternate supply voltage,’ but in the context of the Specification as a
whole, it is clear . . . that it is not the same as the legacy supply voltage––it
is something ‘different’ from the legacy supply voltage.” See Appeal Br. 6.
As such, we find that Appellant’s Specification sufficiently satisfies the
written description requirement for the disputed claim 1 limitation to
demonstrate possession of the claimed invention in which the claim term
“magnitude” was added by amendment.
Accordingly, we are constrained on this record to reverse the
Examiner’s written description Rejection A of independent claim 1. For the
same reasons, we also reverse Rejection A of remaining independent claims
5 and 9, which also recite the disputed “magnitude” limitation of claim 1.
Dependent claims 2–4, 6–8, and 10–12 stand with the independent claims
from which they depend.

Rejection B under 35 U.S.C. § 102(a)(1) of Independent Claim 1
“Anticipation of a patent claim requires a finding that the claim at
issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
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public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted). To anticipate, every element and limitation of the
claimed invention must be found in a single prior art reference, arranged as
in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1383 (Fed. Cir. 2001); Scripps Clinic & Research Foundation v. Genentech,
Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). Inherency is not established by
probabilities or possibilities. See MEHL/Biophile Int’l Corp. v. Milgraum,
192 F. 3d 1362, 1365 (Fed. Cir. 1999) (citing In re Oelrich, 666 F.2d 578,
581 (CCPA 1981) (internal citations omitted)). That a certain thing may
result from a given set of circumstance is not sufficient to establish
inherency. Id.

Regarding anticipation Rejection B of claims 1–12, we consider the
following issue raised by Appellant’s arguments:

Issue: Under 35 U.S.C. § 102(a)(1), did the Examiner err by finding
that Kobayashi expressly or inherently discloses or describes the disputed
limitation “wherein the interface is configured to provide a legacy supply
voltage to the display assembly and an alternate supply voltage different in
magnitude from the legacy supply voltage to the display assembly in
addition to the legacy supply voltage” as recited in independent claim 1?
(emphasis added).
In support of anticipation Rejection A, the Examiner cites to Figure 2
and paragraphs 17 and 49 of Kobayashi as disclosing the disputed limitation.
See Final Act. 5; see also Ans. 4. Referring to Figure 2 of Kobayashi, the
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Examiner finds that Kobayashi’s system controller 112 discloses the claimed
interface. Id. The Examiner finds Kobayashi’s graphic controller 114, LCD
15, and the DEVICE components disclose the claimed display assembly, and
that Kobayashi’s battery 17 and AC adapter 124 disclose the claimed
alternative supply voltage and the legacy supply voltage. See Id.
In particular, the Examiner notes that paragraphs 17 and 49 of
Koyabashi describe that battery 17 and AC adapter 124 provide power to
each component of computer 10; the Examiner finds:
[Each component] is considered to correspond to the constituent
elements provided in addition to — and possibly including — the
CPU [0032]. Those designated in Figure 2 with reference
numerals 16, 114 and individual ones labeled DEVICE — which
are relied upon as reading fairly upon the claimed display
assembly in the Final Rejection (p. 5) — are considered to be
among the aforementioned [components] and thus among those
receiving electric power from the battery or AC adapter.
See Ans. 4–5 (emphasis added).4

4 The Examiner has it backwards with respect to the misplaced focus on
interpreting the teachings of the reference, instead of: (1) properly
interpreting the claims under BRI, and then, (2) reading the properly
construed claim language on the corresponding feature found in the
reference. If it is not clear exactly what the reference teaches, and some
degree of speculation is required, the Examiner should search for a better
reference, because we cannot engage in speculation to affirm the Examiner.
Cited prior art references do not “read on” claim limitations, rather, a
particular claim limitation “reads on” the corresponding feature found in the
cited prior art reference, after the claim language is properly construed in
accordance with the broadest reasonable interpretation consistent with the
Specification. See e.g., Atlas Powder, 190 F.3d at 1346 (“Anticipation of a
patent claim requires a finding that the claim at issue ‘reads on’ a prior art
reference.”) (emphasis added). We note claim construction is an important
step in a patentability determination. See Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and
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However, Appellant contends that “Kobayashi could anticipate
claim 1 only if the purported ‘display assembly’ were to receive the output
of both the AC adapter 124 and the battery 17. But that is not the case . . . .”
Appeal Br. 7. The Appellant argues that “[t]here is no suggestion
whatsoever in Kobayashi that ‘graphic controller 114’ and/or ‘LCD 16’
and/or the ‘DEVICE’ elements of Figure 2 receive multiple different
voltages” and that “the only component in Kobayashi that receives both the
AC adapter voltage and the battery voltage is power source circuit 123.”
Appeal Br. 8.
Turning to the evidence, we reproduce the pertinent cited portions of
Kobayashi:
The computer 10 uses electric power discharged from the
battery 17 in order to supply electric power to a component of
the inside of the computer 10. A power source output terminal of
the battery 17 may make wired OR connection to a power source
output terminal of an external power source device such as an
AC adapter. In this case, an output voltage of the battery 17 may
be set so that an output voltage of an external power source
becomes higher than the output voltage of the battery 17.
Accordingly, electric power can be supplied to the component of
the inside of the computer 10 using electric power from the
external power source device preferentially than the battery 17.

obviousness under § 103 are two-step inquiries. The first step in both
analyses is a proper construction of the claims . . . The second step in the
analyses requires a comparison of the properly construed claim to the prior
art.” (internal citations omitted)) (emphasis added). See also the mapping
rule: 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.” (emphasis added).
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Kobayashi ¶ 17.
The power source circuit 123 generates electric power (an
operating power source) to be supplied to each component using
electric power from the battery 17 or electric power from an AC
adapter 124 connected to the computer body 11 as an external
power source. When the AC adapter 124 is connected to the
computer body 11, the power source circuit 123 generates the
operating power source to each component using the electric
power from the AC adapter 124, and also charges the battery 17.
Kobayashi ¶ 49.
Kobayashi describes “electric power can be supplied to the
component of the inside of the computer 10 using electric power from the
external power source device preferentially than the battery 17” and “power
source circuit 123 generates electric power (an operating power source) to be
supplied to each component using electric power from the battery 17 or
electric power from an AC adapter 124.” Kobayashi ¶¶ 17 and 49 (emphasis
added). Although Kobayashi describes two different power sources, we find
that each component of computer 110 receives power from only one of the
two power sources at a given time, either battery 17 or AC adapter 124.
Therefore, based upon a preponderance of the evidence, we agree with
Appellant that graphic controller 114, LCD 16, and DEVICE components in
Figure 2 of Kobayashi do not receive multiple different voltages. See
Appeal Br. 7–8. As such, we find Kobayashi does not expressly nor
inherently disclose or describe the disputed claim 1 limitation “wherein the
interface is configured to provide a legacy supply voltage to the display
assembly and an alternate supply voltage different in magnitude from the
legacy supply voltage to the display assembly in addition to the legacy
supply voltage.” (emphases added).
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Accordingly, we are constrained on this record to reverse the
Examiner’s anticipation Rejection B of independent claim 1. For the same
reasons, we also reverse Rejection B of remaining independent claims 5 and
9, which recite the disputed limitation of claim 1 using similar language
having commensurate scope. Dependent claims 2–4, 6–8, and 10–12 stand
with the independent claims from which they depend.

CONCLUSIONS
The Examiner erred in rejecting claims 1–12 under 35 U.S.C.
§ 112(a)(1) as lacking written description support.
The Examiner erred in rejecting claims 1–12 under 35 U.S.C.
§ 102(a)(1) as anticipated by Kobayashi.

DECISION SUMMARY
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12 112(a) Written description 1–12
1–12 102(a)(1) Kobayashi 1–12
Overall
Outcome 1–12
REVERSED