Ex Parte LagnadoDownload PDFPatent Trial and Appeal BoardDec 21, 201613260363 (P.T.A.B. Dec. 21, 2016) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/260,363 09/25/2011 Isaac Lagnado 82852200 3366 22879 HP Tnr 7590 12/23/2016 EXAMINER 3390 E. Harmony Road Mail Stop 35 KIM, KENNETH S FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 2185 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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 y vonne.bailey @ hp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ISAAC LAGNADO Appeal 2015-007720 Application 13/260,3631 Technology Center 2100 Before JOHNNY A. KUMAR, JENNIFER L. McKEOWN, and CARL L. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—18, which are the only claims pending. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The invention relates to modifying power to a radio device. Abstract. Claim 1, reproduced below, is exemplary of the subject matter on appeal: 1 The real party in interest is identified as Hewlett-Packard Development Company, LP. App. Br. 1. Appeal 2015-007720 Application 13/260,363 1. A method comprising: configuring a processor to determine whether a radio device is communicating with an additional device; configuring the radio device to transition from a first power state to a second power state in response to whether the radio device is communicating with the additional device; and configuring a power device to modify an amount of power supplied to the radio device in response to the second power state of the radio device. App. Br. 17 (Claims Appendix). THE REJECTIONS2 Claims 1—18 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Final Act. 2—3. Claims 1—18 stand rejected under 35 U.S.C. § 102(b) as being anticipated by He et al. (US 8,046,610 B2; iss. Oct. 25, 2011) (“He”). Ans. Final Act. 4—5. ANALYSIS The § 112, second paragraph, rejection Appellant argues the Examiner fails to establish a prima facie case of indefiniteness and the rejection constitutes mere conclusory statements App. Br. 5—9; Reply Br. 1—2. In particular, Appellant argues the rejection is improper because the rejection (referred to as items a—d) is based on aspects that fall outside of the scope of claim 1 and is not based on the actual limitations of claim 1. Id. 2 35 U.S.C. § 102(b) rejections of claims 1—18 over Hussain, Livet, Sinivaara, and Tomono are withdrawn. Ans. 2. 2 Appeal 2015-007720 Application 13/260,363 The Examiner determines claims 1, 7, and 12 are indefinite because it is not clear: (a) what is the difference between the first power state and the second power state; (b) what is meant by “configuring a power device to modify an amount of power . . . in response to the transition to the second power state of the radio device;” (c) how the second power state can be at a different amount of power supplied; and (d) whether modifying the amount of power supplied is different from the change in power supplied when the radio device is transitioning from one power state to another power state Ans. 2—3. The Examiner states the rejections are made “to add clarity to the consequence and utility of modifying the amount of power supplied.” Id. at 3. We agree with Appellant that one of ordinary skill in the art would understand the scope of the invention. For example, the Specification describes first and second power states, modifying power, and various techniques for power management. See Spec. 24, 25, 39, 54, 57—60; Figs. 1, 2, 5. In re Packard, 751 F.3d 1307 (Fed. Cir. 2014). Therefore, we do not sustain the rejection of claims 1, 7, and 12. We also do not sustain the rejection of dependent claims 2—6, 8—11, and 13—18. The § 102(b) rejection The Examiner rejected claim 1 over He in the Final Office Action and provided additional rejection in the Answer. Final Act. 4—5; Ans. 3—5. Regarding claim 1, the Examiner finds He teaches: (a) configuring a processor to determine whether a radio device (11, 12, 15; col. 5, line 39; col. 4, line 37) is communicating with an additional device (col. 3, line 14; col. 2, lines 19 and 40; col. 3, line 65); 3 Appeal 2015-007720 Application 13/260,363 (b) configuring (col. 3, line 15) the radio device to transition from a first power state to a power state (col. 3, line 16; change of state pin or col. 3, line 24; recovery mode state; col. 4, line 48; recovery mode state) in response to whether the radio device is communicating with the additional device (col. 3, line 19; col. 4, line 32)[; and] (c) configuring a power device (13, 14) to modify an amount of power supplied to the radio device in response to the second power state of the radio device (col. 3, lines 20 and 24; power supplied is modified from power needed for WAN module 11 to power needed for notebook system 15 and WAN module 11; the modification is done by the switching power supply)[.] Ans. 4—5. Appellant argues He, column 4, line 37, does not disclose (b) configuring a power device to modify an amount of power supplied to the radio device in response to the second power state of the radio device because the cited portion discusses “something different namely (i) measuring the current consumed by an ‘externally-built WWAN module’ connected to a host device, and (ii) in response to a measured current that indicates a received transmission, causing the host device to enter an operating state.” App. Br. 14. According to Appellant: A person of ordinary skill in the art will readily appreciate that changing a power state of a host device in response to a measured current draw of an external wireless module (as discussed in Hussain[3]) clearly fails to disclose “configuring a power device to modify an amount of power supplied to the radio device in response to the second power state of the radio device,” as included in claim 1. Further, the cited teachings are not arranged as in claim 1. 3 Appellant also addresses the rejection of claims 1—18 over Hussain; this rejection is later withdrawn. See App. Br. 9—11; Ans. 2. 4 Appeal 2015-007720 Application 13/260,363 Id. at 15. Appellant further argues* * 4 the Examiner’s finding (b) supra is in error because the state pin does not disclose the WWAN module is transitioning from a first power state to a second power state. Reply Br. 3. According to Appellant: the He reference says nothing whatsoever about the “WWAN module 11” transitioning from a first power state to a second power state, much less doing so “in response to whether the radio device is communicating with the additional device.'1'’ Rather, the He reference describes something substantially different, namely that the “WWAN module 11” is maintained in a single “operating state.” Id. 3^4 (citing He, col 2,11. 19-24; col. 3,11. 5—9). Regarding the recovery mode cited in finding (b) supra, Appellant argues Examiner error because the recovery mode does not transition the WWAN module from a first power state to a second power state but, instead, the recovery mode is the exit from a sleep mode of a notebook computer to power on of the notebook computer. Reply Br. 4 (citing He, col. 4,11. 46— 48). Appellant argues the Examiner’s finding (c) supra errs in finding He’s switching power supply modifies the power supplied to the WAN module because the switching power supply always provides power to the WAN module but only provides power to the notebook system when the notebook system is not in sleep state. Reply Br. 5—6 (citing He col. 2,11. 28—31; col. 3, 11. 21—26). Appellant further argues regarding finding (c): 4 This argument was not presented in the Appeal Brief but is responsive to new findings first presented in the Examiner’s Answer. Compare Final Act. 4 with Ans. 4 (supplementing the rejection to include findings regarding He’s “change of state pin” disclosure at col. 3,1. 24). 5 Appeal 2015-007720 Application 13/260,363 the He reference says nothing whatsoever about the claimed “second power state” of the “WWAN module” (i.e., the asserted radio device). Thus, because the He reference fails to disclose “the second power state of the radio device, ” it is abundantly clear that the He reference cannot possibly disclose “configuring a power device to modify an amount of power supplied to the radio device in response to the second power state of the radio device. ” Reply Br. 6. We are persuaded of error because, on the record before us, the Examiner’s findings are insufficient to establish anticipation. In particular, the Examiner does not sufficiently explain how He discloses the first and second power states of the radio device, and how these two states are utilized to modify power supplied to the radio device. For example, we understand that the Examiner relies on the notebook system’s power off/sleep state and power on/recovery mode as the recited first and second power states, however, these notebook system power states are insufficient because He’s processor determines whether the external WWAN, not the notebook system, is communicating with an additional device.5 5 Additionally, we note that He describes an “activation state” and “idle state” of the external WWAN module wherein the power varies when it is answering a phone call/receiving a short message, but this description is not clearly applied in the rejection. He, col. 4,11. 30-48. In particular, the Examiner does not identify these states as the first and second states nor does the Examiner find that these states are utilized to modify power supplied to the radio device, i.e. the external WWAN module. Final Act. 4; Ans. 4. Moreover, the record before us presents only an anticipation rejection rather than an obviousness rejection. As such, the question of whether it would have been obvious at the time of the invention to one of ordinary skill in the art to incorporate the functionality of He’s external WWAN within the notebook system through an internal WWAN module is not before us. A claim is anticipated only if each and every element as set 6 Appeal 2015-007720 Application 13/260,363 We note that the Board is a reviewing body and not a place of initial examination. Moreover, it is our view that the rigorous requirements of 35 U.S.C. § 102(b) essentially require a one-for-one mapping of each argued limitation to the corresponding portion of the reference, which the Examiner must identify with particularity. Here, in that the Examiner’s anticipation rejection is not well supported by the express disclosure of the He reference and relies on conjecture, such conjecture would require us to resort to speculation and unfounded assumptions. We will not resort to such speculation or assumptions to cure the deficiencies in the factual basis in order to support the Examiner’s anticipation rejection. In view of the above, we cannot sustain the rejection of claim 1, and independent claims 7 and 12 which recite similar limitations. We also do not sustain the rejection of claims 2—6, 8—11, and 13—18 which depend from independent claims 1, 8, or 15. Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[Djependent claims are nonobvious if the independent claims from which they depend are nonobvious . . .”). DECISION We reverse the Examiner’s decision rejecting claims 1—18 under 35 U.S.C. § 112, second paragraph. We reverse the Examiner’s decision rejecting claims 1—18 under 35 U.S.C. § 102(b). REVERSED 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). 7 Copy with citationCopy as parenthetical citation