Ex Parte Dai et al

Patent Trial and Appeal Board

Sep 7, 2016

13387147 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/387,147 01/26/2012
22879 7590 09/09/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Fangyong Dai
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82938213 9267
EXAMINER
ZAMAN, FAISAL M
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
09/09/2016 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
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FANGYONG DAI, ADNAN A. SIDDIQUIE, and
RILEY B. NORMAN
Appeal2015-003635
Application 13/387,1471
Technology Center 2100
Before KRISTEN L. DROESCH, CARLL. SILVERMAN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7, 9, and 11-21, which constitute all the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 The real party in interest is identified as Hewlett-Packard Development
Company, LP. App. Br. 1.
Appeal2015-003635
Application 13/387,147
STATEMENT OF THE CASE
Appellants' invention relates to input/output (I/O) power control.
Abstract; Spec. ,-i 1. Claim 9 is exemplary of the subject matter on appeal
(disputed limitations emphasized):
9. An input/output (I/O) control method, comprising:
detecting a connection of a peripheral device using a detector
operably connected between an I/O interface and a switch to output a
first signal when the peripheral device is not operably connected to
the 110 interface and a second signal when the peripheral device is
operably connected to the 110 interface;
closing the switch operably connected between the detector and
a power supply and between the power supply and a power input of an
I/O controller such that the 110 controller is between the switch and
the 110 interface when the second signal is received from the detector
to supply power from the power supply to the power input of an I/O
controller; and
opening the switch when the first signal is received from the
detector to interrupt supplying of the power from the power supply to
the power input of the I/O controller.
App. Br. ii-iii (Claims Appendix).
REJECTIONS
Claims 1, 2, 4-6, 9, 12, 13, 16, 17, and 20 stand rejected under pre-
AlA 35 U.S.C. § 102(b) as being anticipated by Pollard et al. (US 5,754,870;
May 19, 1998) ("Pollard"). Final Act. 2-6.
Claims 3 and 15 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Pollard and what was well known in the art. Final
Act. 6.
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Appeal2015-003635
Application 13/387,147
Claims 7, 11, and 14 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Pollard in view of Palara (US. 5,008,771; April
16, 1991). Final Act. 7-8.
Claims 18, 19, and 21 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Pollard in view of Akano (US
4,959,649; Sept. 25, 1990). Final Act. 8-9.
ANALYSIS
The§ 102 Rejection
Appellants argue Pollard does not disclose the claim 9 limitation
"such that the I/O controller is between the switch and the I/O interface" as
required for anticipation under 35 USC§ 102(b)(emphasis added). App. Br.
4-9; Reply Br. 2. Appellants contend, and we agree, "the Answer newly2
argued that the [E]xaminer has now interpreted the "1/0 Interface" as item
66 in Pollard, Fig. 1; and continues to interpret, or map, the "switch" as item
48; the "peripheral device" as item 70, the "1/0 controller" as item 30, and
the "detector" as 50/56. Reply Br. 2 (citing Ans. 10, 4); see Final Act. 2-3.
Appellants argue the Examiner's mapping renders the claim language
illogical and the mapping of elements is not "arranged as required by the
claim." Reply Br. 3. Specifically, Appellants' argue:
the Answer apparently interpreted [] the item 30 (i.e., the asserted I/O
controller) is between item 46 (i.e., the asserted switch) and item 66
(i.e., the asserted I/O interface). However, Pollard says nothing
2 In the Final Action, the Examiner interpreted item 68 of Pollard, Figure 1,
rather than item 66, as equivalent to the claimed I/O interface. Final Act. 2.
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Appeal2015-003635
Application 13/387,147
whatsoever about this subject matter. Rather, Pollard describes
something different, namely that item 66 is a component of item 30.
See Pollard, Fig. 1 and col. 5, ln. 22-24 ("The plug-in card 30 includes
a card/data-link connector 66 thereon."). Therefore, because item 66 is
included in item 30, it makes no logical sense to say that item 30 is
"between" item 66 and any other item. Moreover, the Answer failed to
provide any explanation regarding how the cited elements of Pollard
are asserted to disclose this arrangement.
Reply Br. 2-3.
We are persuaded by Appellants' arguments. Based on the record
before us, the Examiner presents insufficient evidence for anticipation and,
therefore, we are constrained3 not to sustain the rejection of claim 9; see
Final Act. 4-5; Ans. 4-5, 10. A claim is anticipated only if each and every
element as set forth in the claims is found, either expressly or inherently
described in a single prior art reference, and arranged as required by the
claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987).
In view of the foregoing, we do not sustain the rejection of
independent claim 1, which recites the disputed limitation. We also do not
sustain the rejection of dependent claims 2, 4-6, 12, 13, 16, 17, and 20.
3 Should there be further prosecution of this application, the Examiner may
wish to consider whether Pollard's item 32 satisfies the "I/O controller"
limitation. In addition, the Examiner may wish to consider whether a
rejection of claim 9 under 35 U.S.C. § 103(a) is appropriate. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
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Appeal2015-003635
Application 13/387,147
The§ 103(a) Rejections
Appellants rely on arguments discussed, supra, regarding Pollard, and
argue the additional cited references and the Examiner's findings do not cure
the deficiency of Pollard. App. Br. 10-13. We agree.
Therefore, we do not sustain the rejections of claims 3, 7, 9, 11, 15,
18, 19, and 21.
Because our decision with regard to the disputed limitation is
dispositive of the rejection of all pending claims, we do not address
additional arguments raised by Appellants.
DECISION
We reverse the Examiner's decision rejecting claims 1-7, 9, and 11-
21.
REVERSED
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