Ex parte BUSCH et al.

Board of Patent Appeals and Interferences

Feb 11, 1999

08360194 (B.P.A.I. Feb. 11, 1999)

Application for patent filed December 20, 1994,1
entitled "Portable Computer With Tri-Model Power Management
Switch," which is a continuation of Application 08/131,109,
filed October 4, 1993, now abandoned, which is a continuation
of Application 07/655,619, filed February 14, 1991, now
abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
_______________
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte JOHN P. BUSCH
and GREGORY N. STEWART

Appeal No. 96-2444
Application 08/360,1941

ON BRIEF

Before HAIRSTON, BARRETT, and FLEMING, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
Appeal No. 96-2444
Application 08/360,194
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DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1-38.
We reverse.
BACKGROUND
The disclosed invention is directed to a portable
computer having various modes of operation for power
management, in particular, a normal mode, a standby mode, and
a sleep mode. The computer has a single button or switch
actuable by a user's digit and actuable by closing the case
and cover. The modes are entered into depending on the
existing mode and the duration the button is depressed.
Claim 30 is reproduced below.
30. A portable computer system, comprising:
a microprocessor CPU, coupled to one or more input
devices and one or more output devices;
a case and a cover, mated so that said case and
cover close together, said case and said cover enclosing
said microprocessor and at least some of said one or more
input and output devices; and
a button, positioned to be actuable by a user's
digit and also positioned to be actuated when said case
and said cover are mated together;
said system having at least two modes of operation,
including:
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Application 08/360,194
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a normal mode in which said microprocessor is
allowed to operate at a predetermined clock speed, and
an alternate mode in which at least one of said
one or more input and output devices is not allowed to
operate at full power
said system being electronically connected and
configured
to enter said alternate mode from said normal
mode when said button is pushed and held and to remain in
said alternate mode for as long as said button is held in
a depressed position,
to enter said alternate mode from said normal
mode when said button is pushed and immediately released,
and
to enter said normal mode from said alternate
mode when said button is pushed and immediately released.
THE REFERENCES
The examiner relies on the following prior art reference:
Carter et al. (Carter) 4,980,836 December 25, 1990
Appellants state (Brief, pages 5-6): "The Examiner has
relied on Carter as the sole reference, but has also combined
various assertions of 'notorious knowledge' and has also
combined various references to the background of the
application, where the application background is referred to
as admitted prior art." We see that this is so. Where the
examiner relies on admitted prior art it should be expressly
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Application 08/360,194
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mentioned in the statement of the rejection to give an
applicant notice of the factual basis of the rejection. Since
appellants address the teachings of the admitted prior art, we
will also address it.
Carter discloses in the Background of the Invention that
it was known in the prior art of power management on portable
computers to provide a switch which the user could press to
place the computer in a standby mode (col. 1, lines 50-57).
Although it is not stated, presumably the computer was
returned to the normal mode using the same switch. Carter
further discloses that it was known to blank the display and
shut down peripherals such as the hard disk unit and some
interface circuitry after a period of inactivity. Thus,
Carter discloses that it was known to switch to a standby mode
(as defined in appellants' claims) from a normal mode either
by a manual switch or automatically after a period of
inactivity.
Carter's invention is directed to a power management
system that shuts down the system automatically (it is not
dependent on an action by the user) after a given inactivity
period, thus entering a standby mode (also called an inactive
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mode or sleep mode) in which "power is removed from the hard
disk unit, the floppy disk unit, the LCD, and miscellaneous
circuitry, and the system clock provided to the microprocessor
and other portions of the circuitry is stopped" (col. 2,
lines 20-23). Carter's standby mode corresponds to
appellants' sleep mode. The system comes out of the standby
mode when the user depresses a switch 58 which starts the wake
up operation. Thus, Carter discloses that it was known to
switch to a sleep mode (as defined in appellants' claims) from
a normal mode automatically after a period of inactivity and
to switch to a normal mode from a sleep mode by a manual
switch.
The relevant admitted prior art is found mostly in the
section entitled "Commanding Entry into a Reduced-Power Mode"
at pages 4-5 of the specification. It was known to use more
than one reduced power mode, including a standby mode for
operation at a first level of reduced power and a sleep mode
for deeper inactivity. It was known in the prior art to use
two buttons: a button actuable by a user's digit to switch
the computer between a normal and a standby mode and a
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separate "case-closed" button to put the computer into a sleep
mode.
THE REJECTION
Claim 1-38 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Carter. As noted supra, we also consider
the admitted prior art in the rejection.
We refer to the Office action entered September 23, 1992,
(Paper No. 4), the first Final Rejection entered
April 7, 1993, (Paper No. 7), and the Examiner's Answer (Paper
No. 25) (pages referred to as "EA__") for a statement of the
examiner's position and to the Brief (Paper No. 24) (pages
referred to as "Br__") for appellants' position.
OPINION
There are four main features in the claims: (1) a single
switch on a portable computer that performs multiple functions
(independent claims 1, 2, 4, 30, and 32 recite that the switch
changes power management modes; independent claim 3 recites
that the switch indicates a user power management command or a
case closed condition); (2) the number of modes (independent
claims 1, 2, 4, and 32 recite three modes; independent claim 3
recites no particular modes, but that momentary actuation is
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interpreted as a user power management command and sustained
actuation is interpreted as a case closed condition;
independent claim 30 recites "at least two modes of
operation"); (3) the single button is actuable by a user's
digit and is also positioned to be actuated by closing the
case and cover (claims 1-31); and (4) switching between modes
(independent claims 1, 2, 4, 30, and 32) or interpretation of
switch operation as a user power management command or case
closed condition (independent claim 3) depends upon the
duration the button is depressed. Features (1), (3), and (4)
are considered dispositive of the obviousness issue.
(1) Single button that performs multiple functions
(3) Single button actuable by user's digit and case closure
The examiner concludes that it would have been obvious
from Carter to switch from the normal mode to the sleep or
standby mode, and vice versa, by pressing a button (Paper
No. 4, page 3). We agree. Appellants do not contest this
teaching of Carter (see appellants' description at Br6,
lines 3-16). However, Carter teaches no more than the
admitted prior art, which discloses a "Standby Button which,
when pushed, puts the computer into a Standby Mode"
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(specification, page 4) and, presumably, returns the computer
to a normal mode when pushed again.
The examiner found that "it was notoriously well known
that some portable computers had a sensor which noticed when
the case was closed to power down the computer, but not to
remove the power from certain elements such as RAM memory"
(Paper No. 4, page 3). Appellants disagree with this finding
of "notoriously well known" prior art. However, as discussed
in the section entitled "Appellants' arguments," infra, we
find that appellants admitted in the specification that
separate case-closed switches to put a portable computer in a
sleep mode were known. The admitted prior art discloses two
separate switches, one actuable by a user's digit to switch
between a normal and standby mode and one actuable by closing
the case to switch to a sleep mode.
The examiner recognized that one difference between the
prior art and the claimed invention is the claimed use of a
single button to place the laptop computer into one of many
modes (Paper No. 4, page 4; EA4, EA7). The examiner concluded
that "[i]t clearly would have been obvious to have implemented
the true sleep mode as notoriously well known to those skilled
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in the art and to have further used the only button provided
by the Carter reference" (Paper No. 4, page 4). This is a
mere conclusion and, further, the button in Carter is only
actuable by the user. The examiner also states that "clearly
it would have been obvious to those skilled in the art to use
the switch [for switching back and forth between the normal
and standby modes] in the same manner as one would use a
refrigerator sensor [which is actuated by closing the
refrigerator door]" (EA4), which indirectly addresses a switch
actuable by a user's digit and by closing the case. The
examiner further states (EA8):
Though the art of record fails to detail a single switch
that sensed not only the case cover's position and a
user's finger, it would have been obvious to those
skilled in the art to implement one switch by integrating
the function of many into one.
No art has been applied to support the examiner's conclusion.
While it seems like a simple modification to combine the
functions of two prior art switches, one which is actuated by
a user's digit to switch between a normal and standby mode and
one which is actuated by case closure to enter a sleep mode,
into a single switch which is actuated both by a user's digit
and by closure of the case, the single switch for multiple
Appeal No. 96-2444
Application 08/360,194
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functions and single switch activated by the user's digit and
by case closure are two main differences argued by the
appellants. Simplicity does not equate to obviousness. The
examiner has offered only conclusions and speculation about
what would have been obvious to one of ordinary skill in the
art. We believe the examiner must present factual evidence or
more persuasive argument rather than mere conclusions to
address differences at the contested point of novelty. The
rejection is based on obviousness and, therefore, we do not
expect an exact teaching of a single button in the portable
computer art. The examiner could have offered examples (in
patents, printed publications, or from everyday experience) of
switches in other arts which do more than switch back and
forth between two conditions and which are actuated manually
and by closure of structure. The examiner's example of a
refrigerator door switch is a switch which turns the light off
and on, and is not as relevant a teaching as the "case-closed"
switch in the admitted prior art. The examiner might also
have shown examples of case-closed switches which were capable
of being actuated manually. In our opinion, the examiner's
mere conclusions that integrating several functions into one
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Application 08/360,194
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switch and providing a switch which is actuated by both a
user's digit and closure of the case would have been obvious
to one of ordinary skill in the art has failed to establish a
prima facie case of obviousness. The single switch with
multiple functions appears in all claims and the single switch
actuable by the user's digit and the case appears in
claims 1-31. The rejection of claims 1-38 is reversed.
(4) Switching based on period of button depression
The examiner discusses how to integrate the functions of
normal, standby, and sleep modes into a single switch in the
Office action of Paper No. 4 (pages 3-4, para. 25). To the
best of our understanding, the examiner seems to say that it
would have been obvious to enter the sleep mode when the
switch is held down because that is what happens with case-
closed switches in the prior art, and to switch between normal
and standby modes depending on whether the system was
previously in the normal or standby mode. This discussion
does not clearly address switching between three functions
based on time. For example, although prior art case-closed
switches remain held down for a long time, this is a mere
incident of operation; presumably the switch triggers a sleep
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mode whenever the cover is closed and the system does not
measure how long the case has been closed. The examiner
provides no factual support for switching based on the time
the button is depressed. It appears that the examiner is
trying to make up a plausible explanation for doing what
appellants have done without providing any factual evidence.
The next closest statement we find on the examiner's
treatment of the difference about switching based on the time
the switch is depressed is the following (Paper No. 7,
page 3):
Moreover, different button actuations would have been
inherently required such the [sic] system knew if the
human was the one pushing the button or if the cover had
been closed.
Appellants respond (Br11):
It is unclear what the Examiner means by "different
button actuations" or how such actuations would be
"inherently required." . . . The Examiner further does
not even discuss how the system would distinguish the
user pressing the button versus case closure pressing the
button. It is clear that time-dependency for making such
distinction is not disclosed, taught, or even suggested
in Carter or the admitted prior art.
The examiner glosses over the difference about switching
based on the time the switch is depressed. We agree with the
examiner that IF it would have been obvious to use a single
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Application 08/360,194
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switch to perform the functions of the normal mode/standby
mode switch and the case-closed switch, which has not been
established, some way of distinguishing between the different
modes would have to be provided. However, the examiner does
not explain why one of ordinary skill in the art would have
been led to use the particular time-dependency technique
claimed. In our opinion, the examiner has failed to establish
a prima facie case of obviousness with respect to switching
between modes depending on the time period the switch is
depressed, which limitations appears in various forms in all
claims. The rejection of claims 1-38 is reversed for this
additional reason.
Appellants' arguments
Although we reverse the examiner's rejection, we note our
disagreement with appellants' arguments regarding the sleep
function.
Appellants' argue (Br9-10):
Applicant has acknowledged a case closed detector which
senses whether the case is closed for sounding an alarm
to the user. However, in such circumstances, the user
has a responsibility to respond to the alarm and to act
in accordance with good computer practice by opening the
computer, toggling the computer to a standby mode and
closing the computer. Opening and closing the case with
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such a detector did not affect the mode of the computer.
[Emphasis added.]
The specification describes "a 'case-closed' microswitch,
separate from the button used to control entry into standby
mode" (specification, page 5). When the microswitch was
tripped by closing the case, the screen's backlight was turned
off, a beeper was sounded to alert the user of a "case-closed
while ON" condition, and "[a] power saving mode was entered,
slowing down the processor, and turning off all unnecessary
features" (specification, page 5). Thus, the case-closed
switch causes a mode change and does more than trigger an
alarm. It appears that the "power saving mode" corresponds to
the sleep mode, which is different from the standby mode
activated by the standby button. The alarm is evidently to
warn the user that the computer is still on and using power,
albeit at a reduced rate, so that the user can shut off power
to the machine and the alarm is not just to inform the user to
enter the standby mode manually.
Appellants also argue (Br10):
On pages 2-3 in paragraph 23 of paper #7, the
Examiner referenced notorious knowledge of sensing
computer closure and referred to Applicant's remarks on
page 16, last 3 lines, of Applicant's response filed
February 1, 1993 as admission of such. However,
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Application 08/360,194
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Applicant's remarks in that response specifically
referenced case close detectors for sensing the case
closed and sounding an alarm. There was no discussion of
placing the computer in a sleep mode when the case was
closed. The Examiner simply concludes that placing the
Carter system into a sleep mode when the case was closed
would have been obvious to one skilled in the art for
various reasons. The Examiner, however, did not come
forth with references teaching this feature of switching
power modes based on case closure. Applicant requested
specific references clearly illustrating the computer
placed in sleep mode upon closure of a portable computer,
rather than merely reciting such as notorious knowledge.
We agree that the examiner should have, when challenged,
provided a reference. Regardless of what was admitted in
appellants' remarks in the response of February 1, 1993, the
examiner could have pointed to appellants' own specification,
which describes that when a prior art case-closed switch is
tripped, "[a] power saving mode was entered, slowing down the
processor, and turning off all unnecessary features"
(specification, page 5), which indicates going into a sleep
mode as defined by appellants. Appellants' arguments that the
admitted prior art case-closed switch is only for sensing when
the case closed and sounding an alarm are therefore not
consistent with the specification.
CONCLUSION
The rejection of claims 1-38 is reversed.
Appeal No. 96-2444
Application 08/360,194
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REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 96-2444
Application 08/360,194
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Gary R. Stanford
AKIN, GUMP, STRAUSS, HAUER & FELD,
L.L.P.
816 Congress Avenue
Suite 1900
Austin, TX 78701