Ex Parte Burchard et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613108574 (P.T.A.B. Dec. 22, 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. 13/108,574 05/16/2011 Joshua D. Burchard POU920110042US1 9808 134359 7590 Gibb & Riley, LLC 844 West Street Suite 200 Annapolis, MD 21401 12/27/2016 EXAMINER SINGH, AMIT K ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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): support @ gibbiplaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSHUA D. BURCHARD, MICHAEL J. FORTE, ZAMIR G. GONZALEZ, and JENNY S. LI Appeal 2015-003115 Application 13/108,574 Technology Center 3700 Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2015-003115 Application 13/108,574 CLAIMED SUBJECT MATTER The claims are directed to a portable electronic device case with active thermal protection. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A device case for a portable electronic device, comprising: mechanical protection for the electronic device; an active thermal element incorporated within the mechanical protection, the active thermal element including a backing layer and a conductor, which is adhered to the backing layer in a serpentine configuration and disposed for activation as a cooling or heating element; and a controller to control an operation of the active thermal element, the controller being configured to: determine whether a power source of the active thermal element is an external charging device or a battery of the electronic device, to limit power consumption of the active thermal element based on an amount of remaining power and a type of computing tasks currently being queued in an event the power source is the battery, and to maintain a internal device temperature. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Brown Finkelstein Gunsberg Griffin Matton Baker US 6,878,905 B2 US 7,584,376 B2 US 2010/0264048 US 2010/0320187 US 7,945,797 B2 US 2012/0234817 Apr. 12, 2005 Sept. 1, 2009 A1 Oct. 21,2010 A1 Dec. 23,2010 May 17,2011 A1 Sept. 20, 2012 REJECTIONS Claims 1—8, 14—18, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gunsberg, Brown, Matton, and Finkelstein. 2 Appeal 2015-003115 Application 13/108,574 Claims 9-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gunsberg, Brown, Griffin, Matton, and Finkelstein. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gunsberg, Brown, Baker, Matton, and Finkelstein. OPINION Appellants address independent claims 1, 5, 9, and 14 together.1 App. Br. 4—6. As will be explained below, these claims have different scopes and will be addressed separately herein. However, because of their similarities, we discuss claims 5 and 9 together in the following analysis. Claim 1 Independent claim 1 recites, among other things, “a device case for a portable electronic device,” the device case including an “active thermal element,” and a “controller to control operation of the active thermal element, the controller being configured to: determine whether a power source of the active thermal element is an external charging device or a battery of the electronic device,” and “to limit power consumption of the active thermal element based on an amount of remaining power and a type of computing tasks currently being queued in an event the power source is the battery.” App. Br. 8, Claims App. 1 Although claims 9—13 are separately rejected based on a reference (Griffin) in addition to those of Gunsberg, Brown, Matton and Finkelstein (Final Act. 11), Appellants argue these claims along with claims 1, 5, and 14. App. Br. 4—6. Appellants do not point out where Griffin fails to teach the claimed subject matter of claim 9 relied on by the Examiner or contend that it would not have been obvious to combine the teachings of Griffin with Gunsberg, Brown, Matton and Finkelstein. 3 Appeal 2015-003115 Application 13/108,574 The Examiner finds that Gunsberg discloses several of the features of claim 1 including a controller 40 to control operation of the active thermal element, “the controller being configured to limit power consumption of the active thermal element and to maintain an internal device (paragraph(s) 0020, 0027, 0038, controller 40 or heat transfer device 42 or power source 44, FIG. 1) temperature.” Final Act. 3. The Examiner further finds that Gunsberg does not disclose “a controller configured to determine whether a power source of the active thermal element is an external charging device or a battery of the electronic device.” Final Act. 4. The Examiner points to Finkelstein as teaching that a processor may detect when a device is coupled to an external charging device or an internal charging device 106 (citing Finkelstein, Fig. 1; 4:25—45). Id.; see also Ans. 16. The Examiner further looks to Finkelstein “to provide an alert to a device user or automatically disable an application on the power supply reaching a predetermined level (Cl F6-61 of Finkelstein)” upon detection of an external power source. Id. at 10-11. As correctly pointed out by Appellants, Finkelstein’s power supply 106 is internal to (i.e, a component of) device 100. Similarly, Gunsberg’s power source 44 is a component of the musical instrument case 10. App. Br. 5. Appellants reason that the combination of Finkelstein with Gunsberg “still would not disclose the claimed feature of the power source of Gunsberg’s ‘thermal element’ being ‘a battery of the electronic device’ [within the case] since neither Finkelstein nor Gunsberg actually disclose such a battery.” Id. Claim 1 recites a configured controller meaning the functions which follow imply something about the structure of the claimed apparatus, namely, that it requires at least a controller configured to perform the 4 Appeal 2015-003115 Application 13/108,574 determining function. In particular, claim 1 recites that the controller is configured to “determine whether a power source of the active thermal element is an external charging device or a battery of the electronic device.” The preamble of claim 1 provides the antecedent basis for the “electronic device” recited in this function. In particular, the preamble of claim 1 recites “a device case for a portable electronic device” such that claim 1 is directed to a device case for a separate portable electronic device. The battery recited in claim 1 is the battery of the electronic device to be housed within the device case and not a battery of the device case itself. Thus, the controller of claim 1 is configured to determine whether a power source of the active thermal element is an external charging device or a battery of an electronic device separate from the device case. The critical issue before us is whether the combination of Gunsberg and Finkelstein would result in a controller configured to perform the claimed determining function, i.e., “determine whether a power source of the active thermal element is an external charging device or a battery of the electronic device.” Appellants correctly argue “Finkelstein would only suggest that Gunsberg’s musical instrument case controller identify a power source in the musical instrument case” and since the musical instrument in Gunsberg is not a part or component of the musical instrument case, Finkelstein's teachings would not suggest that Gunsberg’s musical instrument case controller identify any part of Gunsberg’s musical instrument as being an internal power source as in the claimed invention. Reply Brief at 3. In other words, because neither Gunsberg nor Finkelstein discloses a battery of an electronic device separate from the thermally controlled device case, the Examiner has failed to explain how the combination of these references would result in the claimed controller, 5 Appeal 2015-003115 Application 13/108,574 which determines whether a power source of the active thermal element is an external charging device or a battery of an electronic device that is separate and distinct from the case. Thus, the Examiner has not demonstrated in Finkelstein, alone or in combination with Gunsberg, the presence of any structure for performing the recited determining function. Brown is cited for teaching of a Peltier heater (Final Act. 3 4) and Matton is cited for teaching limiting power consumption based on an amount of remaining power and a type of computing tasks currently being queued in an event the power source is the battery {id., at 4). However, neither Brown nor Matton cure the deficiencies of the combination of Gunsberg and Finkelstein discussed above in relation to independent claim 1. Accordingly, for the foregoing reasons, we do not sustain the Examiner’s rejection of claim 1 and claims 2—A which depend therefrom. Claims 5 and 9 Appellants argue the rejection of claims 5, 7, and 8 as a group. App. Br. 4—6. We select claim 5 as the representative claim, and claims 7 and 8 will respectively stand or fall with claim 5. 37 C.F.R. § 41.37(c)(l)(iv). Similarly, Appellants argue the rejection of claims 9 and 11—13 as a group. App. Br. 4—6. We select claim 9 as the representative claim, and claims 11— 13 will respectively stand or fall with claim 9. 37 C.F.R. § 41.37(c)(l)(iv). Claims 6 and 10 are argued separately (App. Br. 6) and will be addressed separately below. Claims 5 and 9, unlike claim 1, do not call for a controller as being part of the claimed device case. Instead, a thermal element, part of the claimed combination, is described as being “controllable in accordance with 6 Appeal 2015-003115 Application 13/108,574 a determination of whether a power source of the active thermal element is an external charging device or a battery of the electronic device.” App. Br. 9, 10 Claims App. (emphasis added). Claims 5 and 9 do not specify how, or by what structure, the determination of whether a power source of the active thermal element is an external charging device or a battery of the electronic device is made. Thus, in contrast to claim 1, claims 5 and 9 describe how the thermal element is controllable but do not require any particular controller configured to make the determination. Also in contrast to claim 1, the electronic device of claims 5 and 9 need not be a separate and distinct element from the case. Id. at 8, 9, Claims App. Claims 5 and 9 each recite “a thermal energy spreader disposed about or proximate to a component of an electronic device.” As the electronic device must be present for something to be proximate to it, this language implies that the electronic device is a component of the claimed combination. However, unlike claim 1, there is no language in claims 5 or 9 that precludes the electronic device from being a component of the case itself. The Examiner finds that Gunsberg discloses several of the features of claims 5 and 9 except for, among other things, “the thermal element being controllable in accordance with a determination of whether a power source of the active thermal element is an external charging device or a battery of the electronic device.” Final Act. 6; see also id. at 12. However, the Examiner finds that “Finkelstein teaches that a processor may detect when a device is coupled to a power source (e.g., a wall outlet, charging cradle, etc., reading on an external charging device) other than power supply 106 (power supply 106 is internal to device 100, FIG. 1; CC4F25^45)” (id.) and concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to detect “an external power source as 7 Appeal 2015-003115 Application 13/108,574 taught by Finkelstein to provide an alert to a device user or automatically disable an application on the power supply reaching a predetermined level (Cl L6-61 of Finkelstein).” Final Act. 10—11. The Examiner identifies Gunsberg’s controller 40 or heat transfer device 42 or power source 44 as corresponding to the “electronic device” recited in claims 5 and 9 (Final Act. 5, 11) and Appellants have not apprised us of error in that finding. However, the Examiner also identifies Gunsberg’s heat transfer device 42 as corresponding to the “thermal element” of claims 5 and 9. Id. Although Appellants do not challenge that finding, we do not think it reasonable for the Examiner to rely on the same element, heat transfer device 42 as both the thermal element and electronic device. Accordingly, we consider Gunsberg’s controller 40 or power source 44, as alternatively cited by the Examiner, as corresponding to the “electronic device” and Gunsberg’s heat transfer device 42 as corresponding to the “thermal element” recited in claims 5 and 9. Finkelstein teaches that a device may be controlled in accordance with a determination of whether a power source is an external charging device or an internal power supply in order to provide an alert to a device user or automatically disable an application on the power supply reaching a predetermined level when running on the internal power supply or battery. Finkelstein 4:25—32. Therefore, we agree with the Examiner that Finkelstein’s technique of automatically controlling an aspect of the device based on the particular power source being used may be applied to Gunsberg’s heat transfer device 42 (thermal element) (Ans. 16). The combination would result in the thermal element being controllable “in accordance with a determination of whether a power source of the active 8 Appeal 2015-003115 Application 13/108,574 thermal element is an external charging device or a battery of the electronic device” (App. Br. 9, 10, Claims App.). Accordingly, for the foregoing reasons, we sustain the Examiner’s rejection of claims 5, 7—9, and 11—13. Claim 14 Appellants argue the rejection of claims 14, 16—18, and 20 as a group. App. Br. 4—6. We select claim 14 as the representative claim, and claims 16—18 and 20 will respectively stand or fall with claim 14. 37 C.F.R. § 41.37(c)(l)(iv). Claim 15 is argued separately (App. Br. 6) and will be addressed separately below. Independent claim 14 recites a device case including, among other things, “a temperature sensing element to sense a temperature of an environment about or proximate to the electronic device and to issue a signal reflective thereof,” “a thermal element coupled to the temperature sensing element,” and “a controller operably coupled to the temperature sensing element and the thermal element to control the thermal element in accordance with the signal and a determination of whether a power source of the active thermal element is an external charging device or a battery of the electronic device.” App. Br. 10-11, Claims App. The Examiner finds that Gunsberg discloses several of the features of claim 14 except for, among other things, “a controller to control with a determination of whether a power source of the active thermal element is an external charging device or a battery of the electronic device.” Final Act. 9.2 2 The foregoing quotation departs from the express language of claim 14. Specifically, it omits that the controller is operably coupled to the temperature sensing element and the thermal element, and that the thermal 9 Appeal 2015-003115 Application 13/108,574 However, the Examiner finds that “Finkelstein teaches that a processor may detect when a device is coupled to a power source (e.g., a wall outlet, charging cradle, etc., reading on an external charging device) other than power supply 106 (power supply 106 is internal to device 100, FIG. 1; CC4F25^45)” (Id.) While claim 14 positively recites a controller, it merely sets forth a purpose or use for the controller, i.e., to control the thermal element in “accordance with [] a determination . . . .” This recitation says little, if anything, about how the controller is, itself, actually configured. Claim 14 requires neither a determination nor, in contrast to claim 1, a controller that is itself configured to make such a determination. The term “in accordance with” is a broad term and Appellants have not apprised us as to what structure or capacity a controller must have to be able to control “in accordance with” some determination that may occur completely independently of the controller itself. As with claims 5 and 9, and in contrast to claim 1, the electronic element need not be separate from the case. Thus, even considering the language argued by Appellants with respect to all of independent claims 1,5,9, and 14 (“determination of whether a power source of the active thermal element is an external charging device or a battery of the electronic device”) (see App. Br. 4—5; see also Reply Br. 1— 3), we are not apprised as to how the controller of claim 14 is distinguishable over the Gunsberg controller 40. Accordingly, for the foregoing reasons, we sustain the Examiner’s rejection of claims 14, 16—18 and 20 element is controlled, in part, in accordance with the signal issued by the temperature sensing element. 10 Appeal 2015-003115 Application 13/108,574 Claim 19 as unpatentable over Gunsberg, Brown, Baker, Matton, and Finkelstein The rejection of claim 19 is not separately argued. We treat any arguments that could have been made regarding the rejection of claim 19 as waived and summarily sustain this rejection. See Hyatt v. Dudas, 551 F. 3d 1307, 1314 (Fed. Cir. 2008). Claims 6, 10, and 15 The patentability of dependent claims 6, 10, and 15 is separately argued by Appellants. (App. Br. 6) Each of these claims recite “a flap by which a user interface of the electronic device is accessible, the thermal element being configured to run in and out of the flap.” See App. Br. 9, 10, 11, Claims App. Appellants assert: Regarding the rejection of claims 6, 10 and 15, even to the extent that Gunsberg’s heat transfer device 42 has anything in common with the claimed thermal element, Gunsberg’s heat transfer device does not “run in and out of the flap,” as claimed. If Gunsberg’s upper lid 24 is to be considered a flap, as suggested by the Examiner, Gunsberg is silent as to any notion of the heat transfer device 42 running in and out of the upper lid 24. To the contrary, the disclosures of paragraph 29 suggest that the heat transfer device 42 and the controller 40 are both supported on the lower lid 26. App. Br. 6. The Examiner responds: Gunsberg discloses a flap (upper lid 24, FIG. 1) by which a user interface (user interface 72, FIG. 1; paragraph(s) 0051-0053) of the electronic device (paragraph(s) 0020, 0027, 0038, controller 40 or heat transfer device 42 or power source 44, FIG. 1) is accessible, the thermal element (heat transfer device 42, FIG. 3) being configured to run in and out of the flap (paragraph(s) 0027- 0029). Specifically, in paragraph 0028, Gunsberg discloses “the 11 Appeal 2015-003115 Application 13/108,574 heat-transfer device 42 may project from a front side of the case 10” and “the heat transfer device 42 extends through the outer housing 32 of the case 10,” which reads on the claimed “configured to run in and out of the flap.” Ans. 18. We agree with the Examiner. Inspection of the embodiment depicted in Figure 1 of the Gunsberg reference reveals that the heat transfer device 42 and the controller 40 are both supported on the lower lid 26 of the musical instrument case and not the upper lid 24 which corresponds to a hinged flap. As such, there is no thermal element configured to run in and out of the flap as shown in Figure 1. However, as correctly noted by the Examiner, paragraph 28 of Gunsberg clearly states that “the heat-transfer device 42 may project from a front side of the case 10” which would necessarily mean the upper lid or “flap” 24 of the case. In other words, paragraph 28 of Gunsberg discloses that the heat transfer device 42, which the Examiner reasonably equates to the claimed “thermal element,” may run in and out of the upper lid or “flap” 24, as recited in claims 6, 10, and 15. Accordingly, for the foregoing reason, we sustain the Examiner’s rejection of claims 6, 10, and 15. DECISION The Examiner’s rejection of claims 1—4 is reversed. The Examiner’s rejection of claims 5, 7—9, 11—14, 16—18, and 20 is affirmed. The Examiner’s rejection of claim 19 is affirmed. The Examiner’s rejection of claims 6, 10, and 15 is affirmed. 12 Appeal 2015-003115 Application 13/108,574 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 13 Copy with citationCopy as parenthetical citation