Ex Parte Dunko

Board of Patent Appeals and Interferences

Jan 28, 2010

10823069 (B.P.A.I. Jan. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GREG A. DUNKO
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Appeal 2009-002301
Application 10/823,069
Technology Center 2600
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Decided: January 28, 2010
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Before
JOHN A. JEFFERY, CARLA M. KRIVAK, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3, 5-7, 9, 11-14, 16, 18-20, 22, 24, and 26-36. Claims
2, 4, 8, 10, 15, 17, 21, 23, and 25 have been canceled (App. Br. 2). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
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STATEMENT OF THE CASE
Appellant’s invention relates to cell phones, pagers, and other portable
electronic devices that include an embedded antenna and an operatively
associated impedance matching circuit (Spec. 1-2). More specifically,
Appellant’s invention relates to such an impedance matching circuit that
includes at least one parameter, such as resistance, capacitance or
inductance, that may be adjusted based upon the configuration of the
portable electronic device’s housing (Spec. 2-3). For example, when a
sensor determines the configuration of a flip (or jack-knife) housing (e.g.,
open or closed configuration), an associated processor may locate a value for
the at least one parameter from a lookup table, and the at least one parameter
of the multi-mode matching circuit is then adjusted based upon the detected
housing configuration (Spec. 3, 9, 10).
The invention is not limited to sensing only two housing
configurations, but may also be applied to situations where the mobile
terminal housing may have configurations of half open, three-quarters open,
and the like (Spec. 7). Parameters for the matching circuit may also be
adjusted based upon whether the mobile terminal’s camera is protruded or
retracted (Spec. 9).
Independent claim 1 is illustrative, reading as follows:

1. A portable electronic device, comprising:

a housing;

an antenna associated with the housing;

a multi-mode matching circuit operatively associated
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with the antenna, the multi-mode matching circuit being
configured to operate in a first mode when the housing of the
portable electronic device is in a first configuration and in a
second mode when the housing of the portable electronic device
is in a second configuration; and

a sensor operatively associated with the multi-mode
matching circuit, wherein the sensor is configured to detect the
first configuration of the housing of the portable electronic
device and/or the second configuration of the housing of the
portable electronic device and wherein the multi-mode
matching circuit is configured to adjust at least one parameter
of the multi-mode matching circuit responsive to the first and/or
second detected configurations of the housing of the portable
electronic device, and wherein the at least one parameter is
stored in a lookup table; and

a processor operatively associated with the sensor, the
processor being configured to locate the at least one parameter
in the lookup table using the first and/or second detected
configuration of the housing of the portable electronic device as
a pointer for an entry in the lookup table.

The Examiner relies on the following prior art references to show
unpatentability:
Choo US 2004/0110541 A1 June 10, 2004
(filed Nov. 26, 2003)
Choi US 2004/0185920 A1 Sep. 23, 2004
(filed Jan. 28, 2004)
Kim US 6,862,432 B1 Mar. 1, 2005
(filed July 27, 2000)
Claims 1, 3, 5-7, 9, 11-14, 16, 18-20, 22, 24, and 26-30 stand rejected
under 35 U.S.C. § 102(e) as anticipated by Kim.
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Claims 31-33, 35, and 36 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kim in view of Choi.
Claim 34 stands rejected under 35 U.S.C. §103(a) as obvious over
Kim in view of Choi and Choo.

ARGUMENTS1 AND ISSUES
Claims 1, 3, 5-7, 9, 11-14, 16, 18-20, 22, 24, and 26-302
Appellant contests the Examiner’s finding that Kim discloses storing
“parameters” as required by claim 1 (App. Br. 7-8; Reply Br. 2). Appellant
does acknowledge that “the solution discussed in Kim is specific to stored
voltages and use of variable capacitance diodes” (App. Br. 8). Appellant
also acknowledges that “voltages are information” and further argues that
“Kim specifically states that the non-volatile memory [ ] stores a voltage
value” (Finding of Fact (FF) 2 infra). However, Appellant argues that “the
Examiner cannot just replace the word voltage with the word parameter and
conclude that these words mean the same thing” (Reply Br. 2).

1 Rather than repeat the arguments of Appellant or the Examiner, we refer to
the following documents for their respective details: (1) the Appeal Brief
(“App. Br”.) filed October 1, 2007; (2) the Examiner’s Answer (“Ans.”)
mailed December 28, 2007; and (3) the Reply Brief (“Reply Br.”) filed
February 27, 2008. In this decision, we have considered only those
arguments actually made by Appellant. Arguments which Appellant could
have made but did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
2 Appellant argues claims 1, 3, 5-7, 9, 11-14, 16, 18-20, 22, 24, and 26-30
together as a group (App. Br. 7-8). Accordingly, we select independent
claim 1 as representative of these claims. See 37 C.F.R. § 41.37(c)(1)(vii).
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The first issue before us, then, is: Has Appellant shown the Examiner
erred in finding that Kim’s stored voltage values may be interpreted as
constituting “parameters” as recited in claim 1?
Claims 31-33, 35, and 363
Independent claim 31 recites, inter alia, “the multi-mode
matching circuit being configured to operate in at least three modes
corresponding to respective first through third configurations of the
housing.” The Examiner acknowledges that Kim discloses two – not
three – housing configurations, but finds that Choi teaches a foldable
phone having at least three housing configurations, or opening
positions, that are detected by magnetic sensors (Ans. 8). The
Examiner also finds that motivation existed “to incorporate at least
three opening positions and modes taught by Choi [ ] into the portable
electronic device of Kim [ ] in order to provide more modes with auto-
detection” (id.).
Appellant acknowledges that Choi’s phone has four states, but
asserts the following arguments: (1) Choi does not “disclose[ ] or
suggest a multi-mode matching circuit being configured to operate in at
least three modes corresponding to respective first through third
configurations of the housing,” but rather senses the housing
configuration for different purposes; (2) no adequate motivation or
suggestion exists to combine the references; and (3) the Examiner’s

3 Appellant argues claims 31-33, 35, and 36 together as a second group (App.
Br. 9-10). Accordingly, we select independent claim 31 as representative of
these claims.
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obviousness rejection is a product of impermissible hindsight reasoning
(App. Br. 9-10).
The second issue before us, then, is: Has Appellant shown the
Examiner erred in finding that the cited prior art collectively teaches or
suggests providing a portable electronic device with a multi-mode matching
circuit that is configured to operate in at least three modes corresponding to
respective first through third configurations of the device’s housing?
Claim 34
Claim 34 depends from claim 31 and additionally recites that the
portable electronic device “further compris[es] a camera configured to
protrude from the portable electronic device during camera functionality and
to retract when not in use, wherein the first through third configurations of
the portable electronic device correspond to relative positions of the
camera.” The Examiner further combines Choo with Kim and Choi to teach
this missing feature (Ans. 9, 10, 13). Appellant argues that Choo’s
photographic device is integrated into Choo’s portable electronic device and
does not protrude (App. Br. 11).
The third issue before us, then, is: Has Appellant shown the Examiner
erred in finding that the cited prior art collectively teaches or suggests a
camera configured to protrude and retract from a portable electronic device?

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:

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Appellant’s Statements
1. The multi-mode matching circuit 27 may be, for
example, an impedance matching circuit and may be configured
to adjust one or more parameters or tuning coefficients, for
example, a resistance, capacitance and/or an inductance [ ] of
the multi-mode matching circuit responsive to the detected
configuration of the housing of the mobile terminal 22.
(Spec. 7:9-13).
2. “Kim specifically states that the non-volatile memory 31
stores a voltage value” (Reply Br. 2).
Kim
3. [Kim’s] device for matching an antenna impedance in a
portable radio telephone includes a folder sensor for sensing a
folded state or an unfolded state of the folder casing, a
controller for controlling a voltage according to a casing state
sensed at the folder sensor, and a matching circuit having a
variable capacitance diode for matching an impedance of the
antenna and an impedance of a transmission/reception circuit
according to the voltage of the [digital to analog (DAC)]
controller.
(col. 2, ll. 10-18).
Choo
4. A folding type mobile communication terminal includes an
integrated “photographic apparatus 160 [ ] rotatively installed on one side of
a hinge connection element 150, which rotatively connects the upper body
130 to the lower body 110” (¶ [0030]).
Webster’s Dictionary
5. Webster’s New Universal Unabridged Dictionary 2 ed. (1983)
includes the following definitions:
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protrude – “to thrust out or forth; to cause to move outward or to
project, as from confinement or from a small opening;” and “to jut out” (id.
1449).
retract – “to draw back or in” (id. 1548).

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “A claim is anticipated
only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference.” Verdegaal
Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).
To establish prima facie obviousness of a claimed invention, all the claim
limitations must be taught or suggested by the prior art. See In re Royka,
490 F.2d 981, 985 (CCPA 1974). 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 (Fed.
Cir. 1988). If the Examiner’s burden is met, the burden then shifts to
Appellant 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 In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). 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).

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ANALYSIS
Claims 1, 3, 5-7, 9, 11-14, 16, 18-20, 22, 24, and 26-30
Appellant has not shown the Examiner erred by finding that Kim’s
stored voltage values may be interpreted as constituting “parameters” as
recited in claim 1.
Appellant argues that “the Examiner cannot just replace the word
voltage with the word parameter and conclude that these words mean the
same thing” (Reply Br. 2). However, Appellant has not explained why a
voltage cannot be considered a “parameter.” Appellant’s Specification does
not set forth any express definition for the claim term “parameter.” In fact,
Appellant describes “parameters” as “numerical values” used to program
circuit elements of an impedance matching circuit such as resistors,
capacitors, and/or inductors (FF 1). Appellant also acknowledges that Kim’s
non-volatile memory stores a voltage value (FF 2). Moreover, Kim
discloses that the digital to analog controller (DAC) inputs this stored
voltage value into the impedance matching circuit for setting the capacitance
of the variable capacitance diode (FF 3). Restated, Kim’s voltage value is a
numerical value used to program the capacitance of Kim’s impedance
matching circuit. As such, we see no reason why the voltage values
disclosed by Kim are not “parameters” as recited by claim 1.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s anticipation rejection of representative claim 1. We
accordingly sustain the Examiner’s rejection of claim 1 and also claims 3, 5-
7, 9, 11-14, 16, 18-20, 22, 24, and 26-30, which fall with claim 1.

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Claims 31-33, 35, and 36
Appellant has not shown the Examiner erred in finding that the cited
prior art collectively teaches or suggests providing a portable electronic
device with a multi-mode matching circuit that is configured to operate in at
least three modes corresponding to respective first through third
configurations of the device’s housing.
Appellant’s argument – that Choi does not disclose or suggest “a
multi-mode matching circuit being configured to operate in at least three
modes corresponding to respective first through third configurations of the
housing” (App. Br. 9) – is not persuasive. This argument, directed to the
teaching of Choi alone, does not address whether Choi, in combination with
Kim, discloses this limitation. One cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant’s further arguments – that no adequate motivation or
suggestion exists to combine the references, and that the rejection is a
product of impermissible hindsight reasoning (App. Br. 9) – are also not
persuasive. Appellant does not dispute that Kim discloses every element of
claim 31 except for a third mode of a multi-mode matching circuit that
corresponds to a third housing configuration (see App. Br. 9-10). Appellant
does not dispute that Choi teaches a foldable phone with at least three
housing configurations associated with respective functionalities or modes
(see Ans. 7-8; App. Br. 9-10). As such, it seems to follow that if one of
ordinary skill in the art desired to include, within Kim’s foldable telephone,
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additionally known functionalities that have associated housing folding
positions other than fully open or closed, one would have desired to account
for the additional impedances resulting from these additional folding
positions as well. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007).
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s obviousness rejection of representative claim 31. We
accordingly sustain the Examiner’s rejection of claim 31 and also claims 32,
33, 35, and 36, which fall with claim 31.
Claim 34
Appellant has shown the Examiner erred in finding that the cited prior
art collectively teaches or suggests a camera configured to protrude and
retract from a portable electronic device.
Appellant and the Examiner appear to agree on the facts: (1) Choo
alone is being relied upon for teaching this limitation; (2) Choo’s camera is
integrated into the hinge of a mobile phone’s foldable housing hinge; and (3)
the camera eyehole rotates from a blocked position when the housing is
closed to an exposed position when the housing is opened (see Ans. 9, 13;
App. Br. 11; FF 4). The only question is whether the camera positions
resulting from this rotation may be interpreted as constituting protruded and
retracted positions as alleged by the Examiner.
We find this interpretation to be unreasonable. While the Examiner
states that this interpretation is according to a dictionary definition (Ans. 13),
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the Examiner’s Answer does not make of record either the precise definition
being relied upon or the dictionary from which this definition was obtained
(see Ans. 9-10, 13). Moreover, we understand “protrude” to alternatively
mean to thrust, project, or jut out (FF 5). We understand “retract” to
alternatively mean to draw back or draw in (id.). These general meanings do
not seem to describe a camera that is rotated to either expose or cover its
eyehole as asserted by the Examiner.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s obviousness rejection of claim 34. Accordingly, we will not
sustain the Examiner’s rejection of claim 34.

CONCLUSIONS
Appellant has not shown the Examiner erred in finding that Kim’s
stored voltage values may be interpreted as constituting “parameters” as
recited in claim 1. Accordingly, Appellant has not shown that the Examiner
erred in rejecting claims 1, 3, 5-7, 9, 11-14, 16, 18-20, 22, 24, and 26-30
under 35 U.S.C. § 102.
Appellant has not shown the Examiner erred in finding that the cited
prior art collectively teaches or suggests providing a portable electronic
device with a multi-mode matching circuit that is configured to operate in at
least three modes corresponding to respective first through third
configurations of the device’s housing. Accordingly, Appellant has not
shown that the Examiner erred in rejecting claims 31-33, 35, and 36 under
35 U.S.C. § 103.
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Appellant has shown the Examiner erred in finding that the cited prior
art collectively teaches or suggests a camera configured to protrude and
retract from a portable electronic device. Accordingly, Appellant has shown
that the Examiner erred in rejecting claim 34 under 35 U.S.C. § 103.

DECISION
We affirm the Examiner's decision rejecting claims 1, 3, 5-7, 9, 11-14,
16, 18-20, 22, 24, 26-33, 35, and 36.
We reverse the Examiner's decision rejecting claim 34.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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