Ex Parte Colligan et al

Board of Patent Appeals and Interferences

Apr 22, 2009

09727667 (B.P.A.I. Apr. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS R. COLLIGAN and GREGORY A. WEIR
____________________

Appeal 2008-3089
Application 09/727,6671
Technology Center 2100
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Decided:2 April 22, 2009
____________________

Before LEE E. BARRETT, JEAN R. HOMERE,
and ST JOHN COURTENAY III, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on December 01, 2000. The real party in interest is Dell Products,
L.P.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4 through 10, 12 through 18, 20 through 24, and 30
through 36. Claims 3, 11, 19, and 25 through 29 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appellants’ Invention
Appellants invented a graphical user interface (GUI) in a computer for
allowing a user to selectively adjust the acoustic level of the computer hard
drive to thereby reduce the noise level therein. (Spec. 2: 6-10.) As depicted
in the GUI (200) of Figure 2, upon the user selecting with the help of a
mouse a desired acoustic level by adjusting a level of indicator (204) in an
acoustic level bar (202), a dial (206) indicates in percentage the selected
acoustic level. (Id. at 3: 21-26.) As shown in Figure 3, the user can then
perform a pre-test to determine the current computer settings including hard
drive seek settings, acoustic level and power management level (e.g. fan
speed, CPU/bus) associated with each of the settings. (Id. at 3: 28- 4: 4.)
Thus, by adjusting the acoustic level of the hard drive (e.g. decreasing noise
level of hard drive), the power management level in the computer (100) is
also adjusted in a similar fashion to improve the overall performance of the
computer (e.g. decrease the speed of cooling fan to a minimum in order to
reduce the heat production in the computer). (Id. at 4: 7-20.) Subsequently,
the user can perform a post-test to preview the performance of the computer
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at the new settings, and to determine if additional adjustments are deemed
necessary. (Id. at 5: 4-10.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of providing acoustic management in a computer
comprising:
receiving from a user instructions regarding a selected acoustic
level via an interface;
using an acoustic level bar and a computer input device for
selecting a desired acoustic level;
a dial indicating, as a percentage of a maximum possible
acoustic level, the acoustic level selected;
performing a pre-test to determine current hard disk drive seek
settings and current system settings in the computer, the hard disk
drive including a plurality of preset seek profiles, each having a
known acoustic level, the system settings determining a power
management level;
adjusting an operational level of at least one subsystem of the
computer to achieve the selected acoustic level including adjusting a
seek time of the hard disk drive of the computer;
making corresponding adjustments by at least one power
management system in the computer; and
performing a post-test to determine if further adjustment is
desired.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Singer US 6,314,473 B1 Nov. 6, 2001
(filed Mar. 4, 1999)
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Funches 5,305,160 Apr. 19, 1994
Stancil US 6,601,168 B1 Jul. 29, 2003
(filed Nov. 19, 1999)

Rejection on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1, 2, 4 through 10, 12 through 18, 20 through 24, and 30
through 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Singer, Funches and Stancil.

Appellants’ Contentions
Appellants argue that the combination of Singer, Funches and Stancil
does not render independent claim 1 unpatentable. (App. Br. 7-8, Reply Br.
4-5.) In particular, Appellants argue that while Singer discloses a GUI that
provides the user with controls for adjusting the noise level and the power
consumption level of the computer, the disclosed controls are independent
from each other. (Id.) Appellants contend that the disclosed adjustment to
the power consumption level emanates from the inverse relationship
between seek time and power consumption, whereas the claimed adjustment
to the operational level of the subsystem is made by the power management
system in the computer. (Reply Br. 4.) Further, Appellants argue that the
proffered combination does not teach performing a post-test to determine if
further adjustment is desired. (Appeal Br. 8, Reply Br. 5.) Additionally,
Appellants argue that Stancil does not teach changing the fan speed as a way
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to reduce the noise level in the computer. Therefore, Appellants submit that
there is insufficient rationale to combine the teachings of Singer and Stancil
to render the claimed invention unpatentable. (Id.)

Examiner’s Findings/Conclusions
The Examiner finds that Singer’s disclosure of adjusting the seek
time, the noise level, and power consumption level when a user alters a
configuration level in a GUI teaches the adjustments recited in independent
claim 1. (Answer 9-10.) Further, the Examiner finds that Stancil’s
disclosure of adjusting the fan speed in a processor to regulate the computer
temperature complements Singer’s disclosure to teach the limitation of
adjusting the fan speed to achieve a selected acoustic level. (Id. at 10-13.)
Therefore, the Examiner concludes that one of ordinary skill in the art would
have found sufficient rationale to combine the teachings of Singer, Funches,
and Stancil to render the claims pending herein unpatentable. (Id.)

II. ISSUE
Have Appellants shown that the Examiner erred in concluding that the
ordinarily skilled artisan would have found sufficient rationale to combine
the disclosures of Singer, Funches, and Stancil to teach a power management
system that makes corresponding adjustments in a computer upon
determining that the acoustic level including the seek time of the computer
hard drive has been adjusted, as recited in independent claim 1?
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III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Singer
1a. Singer discloses a GUI for allowing a user to alter computer
settings to control the noise level, the seek time, and the power consumption
of a disk drive. (Col. 6, ll. 37-45.)
1b. As shown in Figure 4, Singer discloses a sliding bar (30) for
driving along a continuum the seek time inversely with the noise level of the
computer hard drive. Particularly, as the noise level increases the seek time
decreases, and vice versa. (Col. 6, l. 62- col. 7, l. 5.)
1c. Singer also includes another controller (44) that can cause the
computer hard drive to enter the power saving mode, which may be set in
conjunction with varying the seek time and the noise level. (Col. 7, ll. 53-
67.)
1d. As shown in Figure 6, Singer discloses a hybrid controller for
varying the power consumption inversely with the seek time of the computer
hard drive. (Col. 8, ll. 9-19.)
1e. Additionally, Singer discloses a preview controller (54) that
causes the computer hard drive to enter a preview mode to cause the user to
experience the noise level and seek time settings in the GUI. It further
allows the user to revise GUI inputs and to preview the disk operation based
on the newly set inputs. (Col. 33-46.)
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Stancil
2a. As shown in figure 2, Stancil discloses a fan controller (26)
coupled to a temperature sensor (30) embedded in a CPU to sense the
temperature of the CPU (10). Upon reading the CPU temperature, the
controller adjusts the speed of the fan in order to keep the CPU temperature
sufficiently cool while keeping the background noise level associated with
the fan sufficiently low. (Col. 2, ll. 32-35, col. 4, ll. 43-49, l. 66- col. 5, l. 3.)
2b. Stancil discloses that the fan controller (26) is connected to a
south bridge (24) via an SMBUS (28) while the CPU (10) is connected to a
north bridge (14) via a CPU BUS (16). As shown in Figure 3, the SMBUS
(28) includes a ramp logic (38) that changes the fan speed register values to
correspond to the speed values of the fan. (Col. 3, l. 43- col. 4, l. 53.)

IV. PRINCIPLES OF LAW
Obviousness
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be
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patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 404 (2007).
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art" and discussed circumstances in which a patent might be determined to
be obvious. Id. at 401 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)) (citation omitted). The Court reaffirmed principles based on its
precedent that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. The operative question in this "functional approach" is thus
"whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 414, 401.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 414).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
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challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 418).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d at 987-988; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, in evaluating such
references it is proper to take into account not only the specific teachings of
the references but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826
(CCPA 1968) (citation omitted).

V. ANALYSIS
Claims 1, 2, 6, 8, 9, 10, 14, 16, 17, 18, 22, 30, and 31
Independent claim 1 recites in relevant part a power management
system that adjusts settings in a computer upon determining that the acoustic
level including the seek time of the computer hard drive has been adjusted.
As set forth in the Findings of Fact section, Singer discloses a controller for
varying the noise level inversely with the seek time of a computer. (FF 1b.)
Singer also discloses another controller for varying the power consumption
inversely with the seek time of the computer. (FF. 1d.) Further, Singer
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discloses that the power consumption can be automatically adjusted when
the seek time, or the noise level of the computer are adjusted. (FF. 1a, 1c.)
We find that Singer teaches upon the user adjusting the noise level and seek
time of the computer, the power consumption parameters can also be
adjusted automatically. We also find that one of ordinary skill would readily
appreciate that such automatic adjustment of the power consumption would
be made by the power management system in the computer in accordance
with customary power saving practices in the computer art.
Additionally, Stancil discloses adjusting the speed of a CPU fan to
thereby reduce the noise level associated with the fan and the temperature of
the CPU. (FF. 2a.) We find that Stancil’s teaching of reducing the noise
level of a CPU fan would lead to reducing the power consumption in the
Singer’s computer since Singer discloses a relationship between the
reduction of the noise level and the power consumption therein. We
therefore find that both Singer and Stancil disclose prior art elements that
perform their ordinary functions to predictably result in a computer system
that automatically reduces the power consumption in a computer upon
determining the noise level therein has been reduced. Consequently, we do
not agree with Appellants that there is insufficient rationale for combining
the teachings of Singer and Stancil.
Additionally, Singer discloses a preview controller for allowing the
user to preview current changes as well as further adjustments of the noise
level or seek time parameters made in the GUI. (FF. 1e.) We find that the
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preview feature of Singer at least suggests performing a post test to
determine if further adjustment is desired. It follows that Appellants have
not shown that the Examiner erred in concluding that the combination of
Singer, Funches, and Stancil renders independent claim 1 unpatentable.
Appellants did not provide separate arguments with respect to the
rejection of claims 1, 2, 6, 8, 9, 10, 14, 16, 17, 18, 22, 30, and 31. Therefore,
we select independent claim 1 as being representative of the cited claims.
Consequently, claims 2, 6, 8, 9, 10, 14, 16, 17, 18, 22, 30, and 31 fall
together with representative claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

Claims 4, 5, 12, 13, 20 21, and 32-36
Appellants generally allege that Stancil cannot be properly combined
with Singer to teach adjusting the speed of an internal fan in the computer to
effectively manage the heat production level of the computer l. (App. Br. 8-
9.) We do not agree. As discussed above, we find that Stancil explicitly
teaches adjusting the fan speed of CPU to reduce the noise level associated
therewith, as well as to reduce the temperature of the computer. We also
find that the ordinarily skilled artisan would have found sufficient rationale
to combine the known teachings of Stancil and Singer in a familiar way to
produce a predictable result. It follows that Appellants have not shown that
the Examiner erred in concluding that the combination of Singer, Funches
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and Stancil renders claims 4, 5, 12, 13, 20, 21 and 32 through 36
unpatentable.

Claims 7, 15, and 23
Appellants generally allege that neither Stancil nor Singer teaches
adjusting the speed of a peripheral bus with corresponding adjustments to
the speed of a peripheral device connected to the bus. (App. Br. 9.) We do
not agree. As detailed in the Findings of Fact, Stancil teaches an SMBUS
that contains logic to adjust its internal registers to correspond to the speed
of the CPU fan connected thereto. (FF. 2b.) We find that this disclosure of
Stancil fairly and reasonably teaches the cited limitations. It follows that
Appellants have not shown that the Examiner erred in concluding that the
combination of Singer, Funches and Stancil renders claims 47, 15 and 23
unpatentable.

VI. CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in concluding that
claims 1, 2, 4through 10, 12 through 18, 20 through 24, and 30 through 36
are unpatentable over the combination of Singer, Funches, and Stancil.

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VII. DECISION
We affirm the Examiner’s decision to reject claims 1, 2, 4 through 10,
12 through 18, 20 through 24, and 30 through 36.
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

erc

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