Ex Parte Chiu

Board of Patent Appeals and Interferences

Dec 20, 2006

10154060 (B.P.A.I. Dec. 20, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte Tom Chiu
__________

Appeal No. 2006-3126
Application No. 10/154,060
__________

ON BRIEF
__________

Before HAIRSTON, KRASS, and JERRY SMITH, Administrative Patent Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 1-18.
THE INVENTION
The disclosed invention pertains to a method and apparatus for power
saving management for portable devices.

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Application No. 10/154,060

Representative claims 1 and 6 are reproduced as follows:
1. A method of managing power allocation in a device having a
plurality of components, comprising:
• determining one or more current characteristics of the device
estimating power currently available from a power supply, and
• allocating power to each component of a plurality of components of the
device based on the one or more current characteristics of the device,
and based on a user preference that distinguishes at least one
component of the plurality of components relative to the one or more
current characteristics of the device.

6. A device comprising:
• a power supply,
• a first component, operably coupled to the power supply,
• a second component, operably coupled to the power supply,
• a monitor that is configured to monitor one or more current
characteristics of the device,
• a controller that is configured to independently allocate power from the
power supply to each of the first component and the second
component, based on the one or more current characteristic, and
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Application No. 10/154,060

• a power estimator, which is adapted to provide an estimate of
currently available power from the power supply to the controller.
THE REFERENCES
The examiner relies on the following references:
Wu 5,758,269 May 26, 1998
Flynn 5,870,685 Feb. 9, 1999
Rusch 6,801,777 Oct. 5, 2004
(filed Nov. 27, 2001)

THE REJECTIONS
The following rejections are on appeal before us:
1. Claims 6, 7 and 9 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Flynn.
2. Claims 1-5, 8, 10 and 11-15 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the teachings of
Flynn in view of Rusch.
3. Claims 16-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Flynn in view of Rusch, and
further in view of Wu.

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Application No. 10/154,060

Rather than repeat the arguments of appellant or the examiner, we
make reference to the brief and the answer for the respective details
thereof.
OPINION
We have carefully considered the subject matter on appeal, the
rejections advanced by the examiner and the evidence of anticipation and
obviousness relied upon by the examiner as support for the rejections. We
have, likewise, reviewed and taken into consideration, in reaching our
decision, the appellant’s arguments set forth in the brief along with the
examiner’s rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer. Only those arguments actually made by
appellant have been considered in this decision. Arguments which appellant
could have made but chose not to make in the brief have not been
considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii)(2004). See also In re Watts, 354 F.3d
1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).
It is our view, after consideration of the record before us that the
evidence relied upon by the examiner supports the examiner’s rejections of
claims 1-18. Accordingly, we affirm.

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Application No. 10/154,060

ANTICIPATION REJECTION (Flynn)
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). To establish
inherency, the extrinsic evidence “must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d
1746, 1749 (Fed. Cir. 1991). “Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.” In re Robertson,
169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (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, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001); Scripps Clinic & Research
Foundation v. Genentech, Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991). Anticipation of a patent claim requires a finding that
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the claim at issue “reads on” a prior art reference. Atlas Powder Co. v.
IRECO, Inc., 190 F.3d 1342, 1346, 51 USPQ2d 1943, 1945 (Fed Cir. 1999)
(“In other words, if granting patent protection on the disputed claim would
allow the patentee to exclude the 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).

Claims 6, 7 and 9
We consider the examiner’s rejection of claims 6, 7 and 9 as being
anticipated by Flynn. Since appellant’s arguments with respect to this
rejection have treated these claims as a single group which stand or fall
together, we will consider independent claim 6 as the representative claim
for this rejection. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellant argues that Flynn does not disclose how the rate of current
consumption is determined and thus does not disclose a power estimator
[brief, page 6]. Appellant argues that monitoring and comparing voltages
are direct measurements and cannot be equated with estimating power
levels [brief, page 7]. Appellant concludes that Flynn lacks at least the
disclosure of a power estimator, which is adapted to provide an estimate of
currently available power from the power supply to the controller, as claimed
[id.].
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The examiner disagrees [answer, page 13]. The examiner asserts that
microprocessor 112 acts as a power estimator in the embodiments that use
a semi-smart or smart battery [answer, page 14]. The examiner notes that
ASIC 204 communicates with microprocessor 112 in the smart battery
embodiment (col. 9, lines 37-42) [id.]. In the semi-smart battery
embodiment, the examiner notes that microprocessor 112 communicates
with memory 206 (col. 9, line 58 through col. 10, line 7) [id.]. The examiner
further notes that microprocessor 112 periodically determines whether the
present capacity has reached a low capacity alarm threshold (col. 13, lines
62-67) [id.]. The examiner concludes that Flynn discloses a power estimator
because the capacity of the battery is a measure of the remaining battery
power [id.].
In addition, the examiner notes that Flynn’s microprocessor 112 acts
as a controller to independently allocate power from the power supply to a
first component (e.g., disabling display 108, fig. 4 and col. 14, lines 33-36)
and a second component (e.g., disabling the transmit operation in RF section
116, col. 14, lines 3-7). The examiner concludes that power is
independently allocated to the components since certain components may be
supplied with power while other components are turned off [id.].
After carefully considering the Flynn reference, we agree that the
instant claimed “power estimator” reads on Flynn’s microprocessor 112 in
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Application No. 10/154,060

the manner asserted by the examiner. We note that Flynn discloses
microprocessor 112 can obtain relevant values for a smart battery by
sending commands or messages to ASIC 204 [see col. 9, lines 37-57]. In
particular, we note that Flynn explicitly discloses the command “AT RATE
TIME TO EMPTY” (see fig. 6A, command code 0X06) provides an “estimate of
how long the battery can supply power based on the previously defined rate
value” [fig. 6A, see also discussion col. 11, lines 31-36]. Therefore, we find
that Flynn’s disclosure of the aforementioned command directly contravenes
appellant’s assertion that Flynn does not disclose how the rate of current
consumption is determined and thus does not disclose a power estimator
[brief, page 6].
We also agree with the examiner that Flynn’s microprocessor 112 acts
as a controller to independently allocate power from the power supply to a
first component (e.g., disabling Display 108, fig. 4 and col. 14, lines 33-36)
and a second component (e.g., disabling the transmit operation in RF section
116, col. 14, lines 3-7). We note that Flynn discloses “low capacity,” “critical
capacity,” and “dead capacity” threshold levels where current-consuming
operations or components are progressively disabled [col. 11, lines 6-21].
Flynn discloses that “high current-consuming operations or components”
(such as the display) are disabled first, this occurring when the “critical
capacity” threshold is detected [id.] Flynn further discloses that low current
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Application No. 10/154,060

consuming operations or components are disabled when the “dead capacity”
threshold is detected [id.]. Thus, we find that Flynn discloses allocating
power based on one or more current characteristics of the device and/or
associated device components.
Therefore, we find that representative claim 6 broadly but reasonably
reads on the reference in the manner asserted by the examiner.
Accordingly, because Flynn teaches all that is claimed, we will sustain the
examiner’s rejection of representative claim 6 as being anticipated by Flynn.
We further note that appellant has not presented any substantive
arguments directed separately to the patentability of dependent claims 7
and 9. In the absence of a separate argument, with respect to the
dependent claims, those claims stand or fall with the representative
independent claim. See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Therefore, we will sustain the examiner’s rejection of these claims for the
same reasons discussed supra with respect to representative claim 6.

OBVIOUSNESS REJECTIONS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
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Application No. 10/154,060

(Fed. Cir. 1988). In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). The examiner must articulate reasons for the
examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1433 (Fed. Cir. 2002). In particular, the examiner must show that there is a
teaching, motivation, or suggestion of a motivation to combine references
relied on as evidence of obviousness. Id. at 1343, 61 USPQ2d at 1433-34.
The examiner cannot simply reach conclusions based on the examiner’s own
understanding or experience - or on his or her assessment of what would be
basic knowledge or common sense. Rather, the examiner must point to
some concrete evidence in the record in support of these findings. In re
Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus
the examiner must not only assure that the requisite findings are made,
based on evidence of record, but must also explain the reasoning by which
the findings are deemed to support the examiner’s conclusion. However, a
suggestion, teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art, as the
teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references. The test for an
implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
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Application No. 10/154,060

whole would have suggested to those of ordinary skill in the art. In re Kahn,
441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
See also In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed.
Cir. 2002). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the applicant to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).

Claims 1 and 13
We consider next the examiner’s rejection of independent claims 1 and
13 as being unpatentable over the teachings of Flynn in view of Rusch. We
note that appellant has separately argued independent claims 1 and 13 as
being allowable over the cited references for essentially the same reasons.
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Appellant argues that neither Flynn nor Rusch discloses estimating
power currently available from a power supply [brief, pages 9 and 10].
We note that we have found supra that Flynn teaches a power
estimator (i.e., microprocessor 112 that performs the function of estimating
power currently available from a power supply) [see discussion of claim 6,
supra].
Appellant argues that neither Flynn nor Rusch discloses allocating
power to each component of a plurality of components of the device based
on the one or more current characteristics of the device [brief, pages 9 and
10]. Appellant notes that the examiner has relied upon Rusch as teaching
allocating power based on a user preference [brief, page 10]. Appellant
argues that Rusch’s user preferences relate to service/function preferences
of the wireless device and not to individual components within the wireless
device among which power is selectively allocated [brief, page 10].
We note that we have found supra that Flynn discloses allocating
power based on one or more current characteristics of the device and/or
associated device components [see discussion of claim 6, supra]. We note
that the examiner’s rejection is based on the combination of the references.
With respect to Rusch, we note that appellant has acknowledged in the
brief that Rusch discloses switching to a lower-power communication link if
the battery of the wireless device becomes low based on user preference
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Application No. 10/154,060

[brief, page 10, ¶4, cont’d page 11]. Because a lower-power communication
link is a component that is selectively disabled according to user preference
(i.e., in a low battery situation), we find that the combination of Flynn and
Rusch teaches all that is claimed.
Appellant further argues that the examiner has impermissibly relied
upon hindsight in formulating the rejection [brief, page 9].
We do not find appellant’s argument persuasive that the examiner has
impermissibly used hindsight in formulating the rejection. We note that the
Court of Appeals for the Federal Circuit has determined that the motivation
to combine under §103 must come from a teaching or suggestion within the
prior art, within the nature of the problem to be solved, or within the general
knowledge of a person of ordinary skill in the field of the invention, to look to
particular sources, to select particular elements, and to combine them as
combined by the inventor. Ruiz v. A.B. Chance Co., 234 F.3d 654, 665, 57
USPQ2d 1161, 1167 (Fed. Cir. 2000) [emphasis added]. In the instant case,
we note that the examiner has taken the motivation to combine the
references directly from the Rusch reference at col. 6, lines 11 and 12 (i.e.,
providing the user with a more gratifying wireless communication
experience). Therefore, we find that the examiner has provided an adequate
motivation that reasonably sets forth why an artisan would have been
motivated to modify and improve Flynn’s wireless communication device
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power management system with a user-preference power management
feature, as disclosed by Rusch. We further find that both Flynn and Rusch
are analogous references from the same field of endeavor as the instant
claimed invention. In particular, we note that both Flynn and Rusch are
directed to portable communication devices such as PDAs, mobile
telephones, and the like.
For at least the aforementioned reasons, we find that the examiner
has met his/her burden of establishing a prima facie case of obviousness for
independent claim 1 and independent claim 13. Accordingly, we will sustain
the examiner’s rejection of these claims as being unpatentable over Flynn in
view of Rusch.
Claims 2-5, 8, 10, 11, 12, 14, and 15
We note that appellant has not separately argued dependent claims 2-
5, 8, 10, 11, 12, 14, and 15. Therefore, we will sustain the examiner’s
rejection of these claims for the same reasons discussed supra with respect
to independent claims 1, 6 and 13, and also for the reasons set forth by the
examiner in the rejection.
Claims 16-18
We consider next the examiner’s rejection of claims 16-18 as being
unpatentable over the teachings of Flynn in view of Rusch, and further in
view of Wu.
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Application No. 10/154,060

Appellant argues that dependent claims 16-18 are improperly rejected
for the same reasons that independent claim 13 is improperly rejected
[brief, page 11]. Accordingly, we will sustain the examiner’s rejection of
these claims for the same reasons discussed supra with respect to
independent claim 13.
In summary, we have sustained the examiner’s rejections of all claims
on appeal. Therefore, the decision of the examiner rejecting claims 1-18 is
affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED.

)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JERRY SMITH )
Administrative Patent Judge )
)
JS/sjc/eld
Appeal No. 2006-3126 Page 16
Application No. 10/154,060

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