Ex Parte Konaka

Board of Patent Appeals and Interferences

Jun 7, 2006

09781324 (B.P.A.I. Jun. 7, 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not written for publication and is not binding precedent of the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 YOSUKE KONAKA
_______________

Appeal No. 2006-1215
Application No. 09/781,324
_______________
HEARD: MAY 11, 2006
_______________
Before MARTIN, JERRY SMITH, and BARRY, 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 1-42, which constitute all the
claims pending in this application.
The disclosed invention pertains to an electronic apparatus
to which a plurality of batteries are detachably mounted.
Representative claim 1 is reproduced as follows:
1. An electronic apparatus to which a plurality of batteries
are detachably mounted, comprising:
a removal requirement receipt section receiving a removal
requirement for a part of the mounted batteries;
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Application No. 09/781,324
2
a processing ability determination section responsive to the
removal requirement for a battery from said removal requirement
receipt section to determine whether a supplying possible
electric power from the remaining batteries is an electric power
capable of maintaining a processing ability or an electric power
which needs to lower the processing ability; and
a processing ability control section lowering the processing
ability while keeping the electronic apparatus operative in
accordance with a decision from said processing ability
determination section that the electric power needs to lower the
processing ability.
The examiner relies on the following references:
Dunstan 5,600,230 Feb. 04, 1997
Takizawa et al. (Takizawa) 5,739,596 Apr. 14, 1998
Pole, II et al. (Pole) 6,272,642 Aug. 07, 2001
(filed Dec. 03, 1998)
Claims 1-42 stand rejected under 35 U.S.C. § 103(a). As
evidence of obviousness the examiner offers Takizawa in view of
Pole with respect to claims 1-15 and 25-34, and Dunstan is added
to this combination with respect to claims 16-24 and 34-42.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs 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
obviousness relied upon by the examiner as support for the
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rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in
the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we affirm.
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 (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, 1434
(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
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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 whole would
have suggested to those of ordinary skill in the art. In re
Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(citing In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed.
Cir. 2000)). See also In re Thrift, 298 F. 3d 1357, 1363, 63
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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. Note 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). 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 CFR § 41.37(c)(1)(vii)(2004)].
We consider first the rejection of claims 1-15 and 25-34
based on Takizawa and Pole. With respect to independent claims
1-3, the examiner essentially finds that Takizawa teaches the
claimed invention except that Takizawa does not teach the
lowering of the processing ability while keeping the electronic
apparatus operative as recited in the claims. The examiner cites
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Pole as teaching a system and method for managing power in an
electronic apparatus such that the power applied to the device
can be lowered while keeping the device operative. The examiner
holds that it would have been obvious to the artisan to modify
Takizawa to include a lower processing ability as taught by Pole
in response to a determination that the charge level is
insufficient to fully power the device [answer, pages 3-5].
With respect to claim 1, which is argued as the
representative claim for claims 1, 4, 7, 9, 11, 13, 16, 18, 20,
22, 23, 25, 28, 30, 32, 34, 36, 38, 40 and 41, appellant argues,
without substantial explanation, that neither Takizawa nor Pole
has any teaching or suggestion relating to the claimed processing
ability determination section. Appellant also argues that the
examiner’s line of reasoning for combining the teachings of
Takizawa and Pole is deficient and is simply a hindsight
reconstruction of the claimed invention [brief, pages 9-12].
The examiner responds that Takizawa teaches a processing
ability determination section that determines whether there is
sufficient power to operate the device if one of the batteries is
removed. The difference between Takizawa and the claimed
invention is that Takizawa turns off power to the device if there
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is insufficient power to operate the device. The examiner notes
that Pole also teaches a processing ability determination section
that lowers the processing ability of the device while
maintaining the device in an operable condition. The examiner
also responds that the combination of the reference teachings is
not based on hindsight because Pole suggests to the artisan that
the life of the batteries can be lengthened by switching to a
lower performance state during low usage [answer, pages 13-15].
Appellant responds that although Takizawa determines whether
one of a plurality of battery packs provides a sufficient
voltage, there is no determination of whether to maintain a
processing ability or lower the processing ability based on the
available electric power provided by the batteries. Appellant
also responds that although Pole teaches that depending on the
desired power consumption, the system may be set to one of
multiple performance states, it does not teach the claimed
processing ability determination section. Finally, appellant
argues that the cited portion of Pole would not have led the
artisan to combine the teachings of Takizawa and Pole to achieve
the claimed invention [reply brief, pages 1-4].
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We will sustain the examiner’s rejection of claims 1, 4, 7,
9, 11, 13, 16, 18, 20, 22, 23, 25, 28, 30, 32, 34, 36, 38, 40 and
41 for essentially the reasons argued by the examiner in the
answer. Takizawa clearly teaches a processing ability
determination section responsive to the removal requirement for a
battery. In Figure 6 for example, Takizawa teaches that when a
first battery is to be removed, a determination is made as to
whether the voltage of the other battery is sufficient to
continue to operate the device (S56). If the voltage of the
other battery is sufficient, then power to the device is switched
to the other battery (S60). If the voltage of the other battery
is not sufficient to power the device, however, the device is
turned off (S62). Thus, in our view, Takizawa teaches the
invention of claim 1 except that Takizawa turns the device off
rather than keeping the device operative under a lower processing
ability. Pole teaches that an electronic device may have
multiple performance states based on the desired power
consumption of the device [column 2, lines 4-6]. Pole also
teaches that one of the events that may trigger a transition from
a first power mode to a second lower power mode is a change in
the power source used by the device. Thus, Pole teaches changing
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the processing ability of an electronic device to a lower, but
still operative, state upon detection of a power source change.
We agree with the examiner that the artisan would have been
motivated to modify Takizawa to permit lower processing states as
taught by Pole instead of requiring a complete shutdown whenever
the lower processing states can be handled by the other battery.
With respect to claim 2, which is argued as the
representative claim for claims 2, 5, 8, 10, 12, 14, 17, 19, 21,
24, 26, 29, 31, 33, 35, 37, 39 and 42, appellant makes the same
arguments we considered above with respect to claim 1.
Therefore, we sustain the rejection of these claims for the same
reasons discussed above with respect to claim 1.
With respect to claim 3, which is argued as the
representative claim for claims 3, 6, 15 and 27, appellant makes
the same arguments we considered above with respect to claim 1
and additionally argues that neither Takizawa nor Pole teaches or
suggests the feature of lowering the processing ability of the
device in response to the detection of removal of a battery
[brief, page 13]. The examiner responds that the claims do not
require lowering the processing ability in response to detection
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of removal of a battery, but only a lowering of the processing
ability while keeping the device operative [answer, page 16].
Appellant responds that the examiner’s interpretation of what is
required by the claimed invention is incorrect [reply brief, page
5].
We will sustain the examiner’s rejection of claims 3, 6, 15
and 27. Claim 3 differs from claims 1 and 2 in that claim 3
recites “detecting mounting and removal of batteries” and
“detection of a removal of a battery” while claims 1 and 2 only
recite a detection of a removal requirement for a battery.
Appellant argues that neither Takizawa nor Pole teaches detection
of the removal of a battery. We do not agree. Although Takizawa
teaches that the opening of a battery cover is used to signal an
intended battery change, Takizawa also teaches that this
detection is the same as detecting the loading and unloading of
the battery. Specifically, Takizawa states:
The cover detection switch 14 forms the
battery load/unload detector means for
detecting whether a battery pack is being
installed or removed, and preferably operates
by detecting whether the battery cover is
opened or closed [column 5, lines 51-55].
Thus, even though Takizawa detects the opening of the battery
cover, Takizawa also suggests that it is the loading and
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unloading of the battery which is important. Therefore, we find
that Takizawa teaches the claimed detecting of the mounting and
removal of batteries.
In summary, we have sustained each of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1-42 is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND INTERFERENCES
)
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JS/kis
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