12978538 (P.T.A.B. May. 13, 2016)

Ex Parte Davis et al

Patent Trial and Appeal BoardMay 13, 2016

12978538 (P.T.A.B. May. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/978,538 12/24/2010 58127 7590 05/13/2016 FERENCE & ASSOCIATES LLC 409 BROAD STREET PITTSBURGH, PA 15143 FIRST NAMED INVENTOR Mark C. Davis 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. RPS920100063USNP(7 l 0.152) 1390 EXAMINER EDWARDS, CAROLYN R ART UNIT PAPER NUMBER 2625 MAILDATE DELIVERY MODE 05/13/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK C. DA VIS, CHEN HAO, JIN YURU, CHEN XINGWEN, and MICHAEL T. VANOVER Appeal2014-007444 Application 12/978,538 Technology Center 2600 Before DEBRA K. STEPHENS, KEVIN C. TROCK, and JESSICA C. KAISER, Administrative Patent Judges. TROCK, Administrative Patent Judge. DECISION ON APPEAL Introduction Appellants 1 seek review under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1, 3, 4, 6-10, 12, 13, 15-19, and 21-25. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is Lenovo Singapore PTE LTD. App. Br. 3. Appeal2014-007444 Application 12/978,538 Invention The claims are directed to a hybrid computing system consisting of a base device/component operably connected/coupled to a detachable/de- coupled display device/component, wherein the display component includes the functionality of a tablet computing device. Spec. if 21. Exemplary Claim Exemplary claim 1 is reproduced below with disputed limitations emphasized: 1. A system comprising: a base device having one or more processors therein, the base device having a first operating system; and a display device having one or more processors and one or more shared peripheral devices therein, the display device being detachably connected to the base device, the display device having a second operating system; and a connector providing one or more communication links between the base device and the display device; wherein control of the one or more shared peripheral devices is switched from the display device to the base device responsive to connecting the display device to the base device; and wherein the one or more communication links comprise a wired connection providing: a low level communication link transmitting control communications between a controller in the base device and a controller in the display device; and a higher bandwidth communication link transmitting media file data between a processor of the base device and a processor of the display device. 2 Appeal2014-007444 Application 12/978,538 Applied Prior Art The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kari dis Silvester US 6,362,440B1 Mar. 26, 2002 US 2003/0112585 Al June 19, 2003 REJECTIONS The Examiner made the following rejections: Claim 19 stands rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. Final Act. 3--4. Claims 1, 3, 4, 6-10, 12, 13, 15-19, 21, 22, 24, and 25 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Silvester. Id. at 4--8. Claim 23 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Silvester and Karidis. Id. at 9. ANALYSIS Non-Statutory Subject Matter Appellants argue the Examiner erred in finding that claim 19 is directed to non-statutory subject matter because claim 19's "inclusion of the word 'storage' plus clarification within the [S]pecification avoids encompassing a non-statutory signal." App. Br. 11-13 (citing Spec. i-f 46); Reply Br. 13-15. We are not persuaded. Appellants here, as in Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential-in-part), argue the inclusion of the word "storage" in the claim term "computer-usable medium" excludes transitory media from the scope of the term (App. Br. 12-13; Reply Br. 14-- 15). However, the Examiner finds, and we agree, there is no express 3 Appeal2014-007444 Application 12/978,538 exclusion of transitory media in the Specification. Ans. 3-5 (citing Spec. i-f 46). Rather than expressly defining computer readable storage media to exclude signals, the Specification only gives an example of a type of computer readable storage media, stating "non-signal computer readable storage medium may be a computer readable storage medium." Spec. i-f 46 (emphasis added). Indeed, the Specification states that its examples of computer readable storage media are "a non-exhaustive list." Id. Accordingly, because neither the claim nor the Specification expressly excludes transitory signals from the scope of the claim, we are not persuaded the Examiner erred in finding claim 19 is directed to non-statutory subject matter. Anticipation Appellants next contend Silvester does not disclose "one or more communication links comprise a wired connection providing ... a higher bandwidth communication link transmitting media file data between a processor of the base device and a processor of the display device," as recited in independent claim 1 and similarly recited in independent claims 10 and 19. App. Br. 14--17; Reply Br. 16-19. Specifically, Appellants argue Silvester's expansion port "does not seem to be involved with the connection between" a base device and a display device. App. Br. 17; Reply Br. 19. We are persuaded by Appellants' arguments. The Examiner finds Silvester teaches a base device which can connect to a tablet device via a connection module to provide low level control communications. Ans. 5---6 (citing Silvester i-fi-121, 27, Fig. 3); Final Act. 4--5. The Examiner also finds that Silvester provides high bandwidth data transmission using connectivity and expansion ports which connect the base device to external devices using cables. Ans. 6 (citing Silvester i-fi-1 19, 27-28), 9. The Examiner concludes 4 Appeal2014-007444 Application 12/978,538 that, via the connectivity and expansion ports, "a cable connector can be used to connect" the base device and the tablet device to transfer data. Id. (emphasis added). However, while it may be possible to connect the base device and the tablet device using a cable, the portions of Silvester cited by the Examiner do not actually disclose using the base device's connectivity and expansion ports to connect to the tablet device. See Silvester i-f 19, 21- 22, 27-28, Figs. 2-3. Furthermore, even if the base device and the tablet device were connected via connectivity and expansion ports, Silvester does not disclose that the connectivity and expansion port connection would switch control from the tablet device to the base device as required by the claim. The Examiner's rejection is based on anticipation, but the Examiner relies on features Silvester has not disclosed (connecting a base computer device to a tablet computer device using connectivity and expansion ports). Accordingly, on this record, we do not sustain the Examiner'sÂ§ 102 rejection of independent claims 1, 10, and 19.2 Because we do not sustain the Examiner'sÂ§ 102 rejection of independent claims 1, 10, and 19, we do not reach the merits of Appellants' remaining arguments for these claims or for claims 3, 4, 12, 13, 21, and 24, which depend from claims 1 or 10. App. Br. 14--19; Reply Br. 16-21. Therefore, we do not sustain the Examiner's Â§ 102 rejection of dependent claims 3, 4, 6-9, 12, 13, 15-18, 21, 22, 24, and 25. 2 In the event of further prosecution, the Examiner may wish to consider other portions of Silvester that may teach, or at least suggest, two logical computers, wherein the lower half with a high performance processor becomes a server, while the upper half becomes a client computer, and whether such a device may provide control communications and higher bandwidth communications between the two halves. See, e.g., Silvester ,-r,-r 14, 15, 31. 5 Appeal2014-007444 Application 12/978,538 Obviousness Claim 23, rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Silvester and Karidis, depends from claim 1. The Examiner relies upon Karadis to teach a case with a back plate for holding the display device and does not rely on Karadis to teach a high bandwidth communication link. Ans. 13-14; Final Act. 9. Because we are persuaded by Appellants' argument that Silvester does not disclose a high bandwidth communication link, and the Examiner does not cite Karadis to teach a high bandwidth communication link, we do not sustain the Examiner's rejection of claim 23. App. Br. 19-20; Reply Br. 20-21. DECISION We AFFIRM the Examiner's rejection of claim 19 under 35 U.S.C. Â§ 101. We REVERSE the Examiner's 35 U.S.C. Â§ 102 rejection of claims 1, 3, 4, 6-10, 12, 13, 15-19, 21, 22, 24, and 25. We REVERSE the Examiner's 35 U.S.C. Â§ 103(a) rejection of claim 23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv) (2009). AFFIRMED-IN-PART 6