Ex Parte Brooks et alDownload PDFPatent Trial and Appeal BoardDec 28, 201613818494 (P.T.A.B. Dec. 28, 2016) Copy Citation 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. 13/818,494 02/22/2013 Robert Brooks 83198735 8381 22879 HP Tnr 7590 12/30/2016 EXAMINER 3390 E. Harmony Road Mail Stop 35 DUNCAN, MARC M FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 2113 NOTIFICATION DATE DELIVERY MODE 12/30/2016 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): ipa.mail@hp.com barbl@hp.com y vonne.bailey @ hp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT BROOKS, SCOTT WRIGHT, and TED NGUY Appeal 2016-000229 Application 13/818,4941 Technology Center 2100 Before THU A. DANG, LARRY J. HUME, and MATTHEW J. McNEILL, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1—20, all claims pending in the Application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Hewlett-Packard Development Company, LP. App. Br. 2. Appeal 2016-000229 Application 13/818,494 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed inventions relate to "methods, apparatuses, and systems for monitoring and communicating power faults . . . [in which] a first voltage and a second voltage ... are monitored. The first voltage may provide system power and the second voltage may identify a capacity of the adapter. In response to detecting a voltage change, a power failure event may be communicated." Abstract. Exemplary Claims Claims 1, 5—7, 14, and 19 reproduced below, are representative of the subject matter on appeal (emphasis added): 1. An apparatus, comprising: a detection circuit configured to monitor a first voltage associated with an adapter and a second voltage associated with the adapter, wherein the first voltage provides system power and the second voltage identifies a capacity of the adapter, and an output coupled to the detection circuit, wherein the output is configured to indicate a power failure in response to the detection circuit detecting a change in the second voltage. 5. The apparatus of claim 1, wherein the output is further configured to set a flag associated with power management logic to communicate the power failure. 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed May 14, 2015); Reply Brief ("Reply Br.," filed Sept. 29, 2015); Examiner's Answer ("Ans.," mailed Aug. 10, 2015); Final Office Action ("Final Act.," mailed Nov. 21, 2014); and the original Specification ("Spec.," filed Feb. 22, 2013). 2 Appeal 2016-000229 Application 13/818,494 6. A system, comprising: a power rail configured to distribute power; power management logic, coupled to the power rail, wherein the power management logic is configured to control a transition of the system between states; and a detection circuit, coupled to the power management logic, wherein the detection circuit is configured to communicate a power failure to the power management logic based on a change in an identification voltage associated with an adapter, the identification voltage indicating a capacity of the adapter. 7. The system of claim 6, wherein the detection circuit is configured to communicate the power failure to the power management logic prior to the power rail indicating the power failure. 14. The method of claim 13, wherein said communicating comprises communicating the power failure event in response to detecting a decrease in the second voltage. 19. The method of claim 13, further comprising: receiving, by a controller, system power and the power failure event; and determining, by the controller, the system power is residual system power based on the power failure event. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Nguyen et al. ("Nguyen") Kluth et al. ("Kluth") Dunstan Li et al. ("Li") US 2002/0152417 Al US 6,597,565 B1 US 2005/0044447 Al US 2007/0001720 Al Oct. 17, 2002 July 22, 2003 Leb. 24, 2005 Jan. 4, 2007 3 Appeal 2016-000229 Application 13/818,494 Rejections on Appeal Rl. Claims 1—5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Li and Kluth. Ans. 3; Final Act. 2. R2. Claims 6—18 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Li, Kluth, and Dunstan. Ans. 5; Final Act. 5. R3. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Li, Kluth, Dunstan, and Nguyen. Ans. 9; Final Act. 9. CLAIM GROUPING Based on Appellants' arguments (App. Br. 6—19),3 we decide the appeal of obviousness Rejection Rl of claims 1—4 on the basis of representative claim 1; and we decide the appeal of obviousness Rejection R2 of claims 6, 8—13, 15—18, and 20 on the basis of representative claim 6. We address separately argued claim 5 in rejection Rl, claims 7 and 14 in Rejection R2, and claim 19 in Rejection R3, infra. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). 3 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv). 4 Appeal 2016-000229 Application 13/818,494 We disagree with Appellants' arguments with respect to claims 1—20, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claims 1, 5— 7, 14, and 19 for emphasis as follows. 1. $ 103 Rejection R1 of Claims 1—4 Issue 1 Appellants argue (App. Br. 7—9; Reply Br. 2-4) the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Li and Kluth is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests an apparatus that includes, inter alia, "a detection circuit configured to monitor ... a second voltage associated with the adapter . . . the second voltage identifies a capacity of the adapter," as recited in claim 1? Analysis Appellants contend the Examiner erred in relying upon Kluth as teaching or suggesting the contested limitation of claim 1. App. Br. 7. In particular, Appellants contend the Examiner erred by reading the recitation of "the second voltage identifies a capacity of the adapter" (claim 1) onto "the identification pin that identifies the type of an external power source as disclosed in Kluth." App. Br. 8 (citing Final Act. 3). 5 Appeal 2016-000229 Application 13/818,494 Appellants refer to Figure 2 and paragraphs 16 and 18 of their disclosure as purportedly providing support for their assertion that "the value of the second voltage signal ranges from the capacity of the adapter to zero (no adapter connected); i.e., the second voltage signal can be any number of values." App. Br. 8. Appellants contend "Kluth fails to disclose 'the second voltage identifies a capacity of the adapter' as recited in claim 1" because "the external power source identification signal disclosed in Kluth can exist in only one of two states (present or absent)." App. Br. 9. We disagree with Appellants' contentions because, as the Examiner finds, Appellants are arguing limitations not present in the claims. Ans. 10. The claim merely states the second signal provides a capacity of the adaptor and while "this could be possibly be interpreted as a range of values, it can clearly reasonably be interpreted as either a single capacity value or zero. Nothing in the claim language requires a range of values being represented." Ans. 11. Moreover, while we interpret claims broadly but reasonably in light of the Specification, our reviewing court warns that we nonetheless must not import limitations from the Specification into the claims as Appellants urge us to do. See Phillips v. AWH Corp., 415 F.3d 1303, 1316, 1323 (Fed. Cir. 2005) (en banc) (citations omitted). Additionally, the importation of a narrow disclosed embodiment into the broader independent claim 1 is improper. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment."). Further, "[w]e have cautioned against reading limitations into a claim from the preferred embodiment described in 6 Appeal 2016-000229 Application 13/818,494 the specification, even if it is the only embodiment described, absent clear disclaimer in the specification." In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). On this record, we find no such disclaimer to be present in this Appeal.4 Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 2—\ which fall therewith. See Claim Grouping, supra. 2. $103 Rejection R1 of Claim 5 Issue 2 Appellants argue (App. Br. 9—10) the Examiner's rejection of claim 5 under 35 U.S.C. § 103(a) as being obvious over the combination of Li and Kluth is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the apparatus of claim 1, "wherein the output is further configured to set a flag associated with power management logic to communicate the power failure," as recited in claim 5? 4 We note Appellants' disclosure of the second voltage merely represents an exemplary embodiment, and does not rise to the level of an explicit definition, or disclaimer. See Spec. ]Hf 16, 18. 7 Appeal 2016-000229 Application 13/818,494 Analysis Appellants contend Li does not teach or suggest the contested wherein clause of claim 5 because, "[i]n short, claim 5 involves assertion of a bit whereas Li involves deassertion of a bit to signify a power failure event." App. Br. 10 (citing Spec. 113 and Li, 142). In response, the Examiner finds, and we agree, "the claim does not require that the flag is set to on or high, just that a flag is set. So the disclosure of setting a bit to 0 is an explicit teaching of 'setting a flag.'" Ans. 12. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 5, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of dependent claim 5. 3. $ 103 Rejection R2 of Claims 6, 8—13, 15—18, and 20 Issue 3 Appellants argue (App. Br. 11—13; Reply Br. 4—5) the Examiner's rejection of claim 6 under 35 U.S.C. § 103(a) as being obvious over the combination of Li, Kluth, and Dunstan is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a system that includes, inter alia, "a detection circuit. . . configured to communicate a power failure . . . based on a change in an 8 Appeal 2016-000229 Application 13/818,494 identification voltage . . . indicating a capacity of the adapter," as recited in claim 6? Analysis Appellants contend "[a]s noted in the specification, the identification voltage recited in claim 6 is the same as the second voltage recited in claim 1. See Specification, para. [0016]. Thus, independent claim 6 is allowable over Li and Kluth for the same reason that independent claim 1 is allowable over Li and Kluth." App. Br. 11. We disagree with Appellants' contentions for the same reasons discussed above with respect to Issue 1, claim 1,5 Similar to arguments presented with respect to claim 1, Appellants argue limitations not present in the claim, and improperly attempt to read limitations from the Specification into the claim. App. Br. 12.6 Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 6, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the 5 The Examiner finds, "[t]he Kluth argument was treated with respect to claim 1." Ans. 13. 6 "The identification voltage recited in claim 6 is the capacity of the adapter 110 supplying power to the computing system 100. See Specification, para. [0015]; Fig. 1. As such, the value of the identification voltage signal ranges from the capacity of the adapter 110 to zero (no adapter 110 connected); i.e., the identification voltage signal can be any number of values. See id. In contrast, as disclosed in Kluth, the identification pin of the external power source 12 initiates an external power source identification signal 20 which is either present or absent. . . ." App. Br. 12. 9 Appeal 2016-000229 Application 13/818,494 Examiner's obviousness rejection of independent claim 6, and grouped claims 8—13, 15—18, and 20 which fall therewith. See Claim Grouping, supra. 4. $103 Rejection R2 of Claim 7 Issue 4 Appellants argue (App. Br. 13—14) the Examiner's rejection of claim 7 under 35 U.S.C. § 103(a) as being obvious over the combination of Li, Kluth, and Dunstan is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the system of claim 6, "wherein the detection circuit is configured to communicate the power failure to the power management logic prior to the power rail indicating the power failure," as recited in claim 7? Analysis Appellants contend the Examiner erred in finding that "'the lack of identification signal could signal a failure with[out] the power rail ever even exhibiting or detecting a failure' as disclosed in Li is the same thing as the present element of claim 7." App. Br. 14. In response, the Examiner states he "wasn't attempting to quote a statement from Li. The examiner cited a paragraph of Li [| 45] that teaches the detecting circuit communicating the power failure. The statement that applicant refers to was the examiner providing interpretation of the citation to explain how the examiner felt it taught the limitation." Ans. 13. The 10 Appeal 2016-000229 Application 13/818,494 Examiner further finds, and we agree, "Li does not require the power rail to communicate a failure, thus the detection logic is capable of performing that function without the need for the power rail to be involved first." Ans. 14. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 7, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of dependent claim 7. 5. $103 Rejection R2 of Claim 14 Issue 5 Appellants argue (App. Br. 14—16) the Examiner's rejection of claim 14 under 35 U.S.C. § 103(a) as being obvious over the combination of Li, Kluth, and Dunstan is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the method of claim 13, "wherein said communicating comprises communicating the power failure event in response to detecting a decrease in the second voltage," as recited in claim 14? Analysis Appellants contend, "[t]he paragraphs in Li cited by the Examiner mention two types of voltages: the power supply voltage and the voltage supplied to a node coupled to a supply pin." App. Br. 16 (citing Li, || 42, and 46). Further, "[njeither of the voltages disclosed in Li is the same as the 11 Appeal 2016-000229 Application 13/818,494 second voltage recited in claim 14. The second voltage of claim 14 is an identification voltage . . . [i]t identifies the capacity of the adapter supplying power to the system .... Given that Li does not disclose an identification voltage, Li does not teach [the contested limitation of claim 14]" App. Br. 16 (citing Spec. ^fl[ 16, 26). Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner finds: The rejection is with respect to the combination of references. Li teaches monitoring a voltage level on a plurality of supply pins and communicating a power failure when the voltage of any of those supply pins drops below the voltage threshold that is expected to exist. Li, of course, does not explicitly teach the identification voltage and was thus combined with Kluth to teach that one of the multitude of supply pin voltages that Li discloses but does not contain explicit detail for would/could be an identification voltage. Thus the combination clearly teaches that one of the voltages being monitored is the identification voltage (second voltage) .... the citations to Li that teach communicating a power failure in response to a decrease in any of the voltages being monitored clearly teaches communicating a power failure in response to detecting a decrease in the second voltage. Ans. 14—15. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 14, nor do we find error in the Examiner's 12 Appeal 2016-000229 Application 13/818,494 resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of dependent claim 14. 6. $103 Rejection R3 of Claim 19 Issue 6 Appellants argue (App. Br. 17—19) the Examiner's rejection of claim 19 under 35 U.S.C. § 103(a) as being obvious over the combination of Li, Kluth, Dunstan, and Nguyen is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the method of claim 13, that further includes, inter alia, the step of "determining, by the controller, the system power is residual system power based on the power failure event," as recited in claim 19? Analysis Appellants contend, "Li, Kluth, and Dunstan, alone or in any sort of combination, do not disclose the present element of claim 19. This is evident from the Examiner's statement that "[t]he combination [of Li, Kluth, and Dunstan] does not explicitly teach residual power present after a power failure event." App. Br. 18. Appellants further contend "Nguyen makes mention of residual power only twice," and the dissipation of residual power is not the same as the contested "determining" step. App. Br. 19. The Examiner responsively finds, and we agree: The examiner respectfully disagrees. The number of times that residual power is mentioned has no bearing on the matter at hand. Nguyen is entirely concerned with detecting a power failure and using the residual power in the system to transition the system to a lower performance level in order to lessen the 13 Appeal 2016-000229 Application 13/818,494 drain on the limited resources of the battery. Thus it is clear that in the interim, while the AC is removed and the battery is not yet engaged, the system understands that it is running on residual power and must be transitioned to a lower performance level. Ans. 16. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 19, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of dependent claim 19. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 1—5) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellants have not shown. CONCLUSION The Examiner did not err with respect to obviousness Rejections R1 through R3 of claims 1—20 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. 14 Appeal 2016-000229 Application 13/818,494 DECISION We affirm the Examiner's decision rejecting claims 1—20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. §41.50(f). AFFIRMED 15 Copy with citationCopy as parenthetical citation