Ex Parte Liu

Board of Patent Appeals and Interferences

Feb 11, 2008

09954612 (B.P.A.I. Feb. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PING LIU
____________________

Appeal 2007-3127
Application 09/954,612
Technology Center 2100
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Decided: February 11, 2008
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Before JAMES D. THOMAS, ALLEN R. MACDONALD,
and THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF CASE
Appellant appeals the Examiner’s final rejection of claims 9, 10, 12,
13, 16-23, and 25-29 under 35 U.S.C. § 134(2002). We have jurisdiction
under 35 U.S.C. § 6(b)(2002).

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A. INVENTION
According to Appellant, the invention is a mechanism for providing
zero power control of a computer peripheral. The mechanism comprises a
switch electrically connected to a card detecting pin of the host device. The
switch is operated by a retractable antenna of the card. In this respect, when
the antenna is in a retracted position, the switch generates a "removed"
signal to the card detecting pin. The "removed" signal simulates that the
computer peripheral has been removed from the host device such that the
operating software of the host device will not supply power to the card. On
the other hand, when the switch detects the antenna in the extended state, the
switch will generate an "inserted" signal to the card detecting pin. The
"inserted" signal informs the host device operating system that a card has
been inserted and that power should be applied to the card (Spec., Abstract).

B. ILLUSTRATIVE CLAIM
Claim 9 is exemplary and is reproduced below:
9. A method of controlling power to a peripheral device
insertable into a host device, the method comprising the steps of:

a) simulating an insertion of the peripheral device with a switch by
generating an inserted signal upon extension of an antenna of the peripheral
device such that the host device supplies power to the peripheral device,
wherein extension of the antenna moves a lever coupled to the switch to
generate the inserted signal; and
b) simulating a removal of the peripheral device with the switch by
generating a removed signal upon retraction of the antenna of the peripheral
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device, wherein retraction of the antenna moves the lever such that the
switch causes the host device to terminate power to the peripheral device
and antenna.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fuller US 5,768,605 Jun. 16, 1998
Johnson US 6,573,868 B2 Jun. 3, 2003
(filed Feb. 28, 2001)

Claims 9, 10, 12, 13, 16-23, and 25-29 stand rejected under 35 U.S.C.
§ 103(a) over the teachings of Fuller and Johnson.

We affirm.

II. ISSUES
The issues are whether Appellant has shown that the Examiner erred
in finding that claims 9, 10, 12, 13, 16-23, and 25-29 are unpatentable under
35 U.S.C. § 103(a) over the teachings of Fuller and Johnson.

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Fuller
1. Fuller teaches introducing communication or network capability into a
computer system that limits unnecessary power consumption and that
remains compatible with the PCMCIA standard, wherein when no
means for communication is connected to the PCMCIA
communication card, no power is applied to the card, and once a
means for communication is connected, power is applied to the
PCMCIA communication card so that it can begin operation (col. 2, ll.
18-32).
2. If the PCMCIA card 40 is already inserted into the PCMCIA slot in
computer system 10, inserting cable connector 80 will couple nodes
CD#1 and CD#2 to ground through the cable connector 80 and the
PCMCIA card 40, causing computer system 10 to “detect” the
presence of the PCMCIA card 40. Computer system 10 will then
activate the PCMCIA card 40 by applying power to the card. Causing
computer system 10 to apply power only when the PCMCIA card 40
is in place and the cable connector 80 is inserted achieves the goal of
having the PCMCIA card 40 consume power only when a means for
communication is connected (col. 4, ll. 27-48; Fig. 5).
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3. In one embodiment, Fuller discloses that the cable connector is
connected via a retractable communication coupler 364 connected to a
switch 350. When the retractable communication coupler 364 is in
position P1, no cable connector or other means for communication
can be connected to PCMCIA card 340, and switch 350 therefore acts
to decouple card detect nodes from ground 116 that power is not
applied to the PCMCIA communication card 340. When the
retractable communication connector 364 is in extended position P2,
means for communication can be coupled to PCMCIA communication
card 340, and therefore switch 350 decouples nodes allowing
computer system 10 to detect the presence of the card (col. 5, ll. 10-
37; Fig. 7).
4. The cable connector 80 is connected to an antenna (col. 6, ll. 1-4).

Johnson
5. Johnson discloses an antenna system wherein the antenna is only
operable in the extended position and not the retracted position in
order to conserve power and prevent electrical interference with other
components in the electronic device (col. 3, ll. 6-9).
6. The antenna is a retractable pop-out antenna that is sized and
configured to be attached to a thin architecture PCMCIA card for use
in a portable computer. The circuitry or other components necessary
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for wireless communication may be located in the communications
card and electrically connected to the antenna (col. 3, ll. 26-33).
7. The antenna can be removably attached to the PCMCIA card (col. 3,
ll. 37-38).
8. When the antenna 50 is located in the extended position 158, the
control circuit indicates the antenna 50 should be capable of
transmitting and receiving wireless signals, and the control circuit 156
controls the switch 154 to allow electrical power to be supplied to the
antenna. The retracted position 162 causes the control switch 150 to
indicate that the antenna or antenna system should not be operable,
which causes the control circuit 156 to control the switch 154 to
disengage the electrical power from the antenna 50 (col. 13, ll. 1-15;
Figs. 6A-6B).

IV. PRINCIPLES OF LAW
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) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
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“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
The Supreme Court reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id. at 1740.
The Court noted that “[c]ommon sense teaches . . . that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” Id. at 1742.
The Federal Circuit recently concluded that it would have been
obvious to combine (1) a device for actuating a phonograph to play back
sounds associated with a letter in a word on a puzzle piece with (2) a
processor-driven device capable of playing the sound associated with a first
letter of a word in a book. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1161 (Fed. Cir. 2007). In reaching that conclusion, the Federal
Circuit recognized that “[a]n obviousness [determination] is not the result of
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a rigid formula disassociated from the consideration of the facts of a case.
Indeed, the common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Id. at
1161 (citing KSR, 127 S. Ct. 1727, 1739 (2007)). The Federal Circuit relied
in part on the fact that Leapfrog had presented no evidence that the inclusion
of a reader in the combined device was “uniquely challenging or difficult for
one of ordinary skill in the art” or “represented an unobvious step over the
prior art.” Id. (citing KSR, 127 S. Ct. at 1740-41).
In the absence of separate arguments with respect to claims subject to
the same rejection, those claims stand or fall with the claim for which an
argument was made. See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).
See also 37 C.F.R. § 41.37(c)(1)(vii)(2004).

V. ANALYSIS
35 U.S.C. § 103(a)
No teaching away
Appellant argues that the combination of the teachings of Johnson
with those of Fuller is improper because Johnson “expressly teaches away
from the limitation of ‘terminating power to the peripheral device and the
antenna’, as recited in Independent Claims 9, 16, and 25.” Appellant
references col. 4, ll. 4-10 and col. 12, ll. 58-60 of Johnson which states that
“other features of the communications card and/or electronic device,
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however, may still be usable even though wireless communication is not
possible” (App. Br. 9-10; Reply Br. 2).
The Examiner’s observed, beginning at page 5 of the Answer with
respect to Johnson, that Johnson is only being relied upon to teach a switch
that activate/deactivate the power supplied to an antenna according to the
position of the antenna. We agree with the Examiner that such teachings of
Johnson do not expressly teach away from powering off the computer card
(peripheral device) upon powering off of the antenna, but rather, Johnson
provides the additional teaching that the antenna may also be powered off to
conserve power consumption.
We further find that a teaching that the peripheral device may still be
usable even if the antenna is deactivated, as in Johnson, does not teach away
from the limitation of ‘terminating power to the peripheral device and the
antenna’ at least because the deactivation of the antenna is separate from the
functioning of the peripheral device. Thus, deactivating the antenna does
not require the activation or deactivation of the independently functioning
peripheral device, and therefore does not teach away from the combined
teaching of powering off of both the peripheral device and the antenna.
A reference teaches away “when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). In this case, Appellant has not pointed to any disclosure in Johnson
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or Fuller which would have led a person of ordinary skill not use Johnson’s
antenna in Fuller’s peripheral device. Appellant also has not provided any
technical reason as to why an antenna would not be able to be deactivated in
addition to the deactivation of a peripheral device. Thus, we see no error in
the Examiner’s findings or his conclusion.
Instead of teaching away, Fuller discloses that the peripheral device
may be attached to an antenna (FF 4). Similarly, Johnson discloses that the
antenna may be attached to a peripheral device (FF 7). Appellant has not
shown that it would not have been obvious to combine the peripheral device
of Fuller with the antenna of Johnson.

Adequate reason to combine
Appellant argues that the combination of teachings of Johnson with
those of Fuller is improper because there is no motive for the cited
combination of the Fuller and Johnson (App. Br. 10-11; Reply Br. 2).
The Examiner’s initial position as to the motivation to combine on
appeal beginning at page 4 of the Answer and the Examiner’s corresponding
responsive arguments beginning at page 5 of the Answer appear to us to
meet all of the limitations required by the independent claims on appeal.
The Examiner’s reasoning of combinability appears to us to comply with the
requirements of the above-noted case law. We agree with the Examiner’s
observations that it would have been obvious to combine the teachings of
Fuller and Johnson, because by adding the deactivation of the antenna as
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taught by Johnson to the deactivation of the PCMCIA card of Fuller, Fuller’s
intended purpose may be fulfilled and power consumption of Fuller’s system
may be further reduced.
Both Fuller and Johnson disclose introducing communication or
network capability into a computer system that limits unnecessary power
consumption and that remains compatible with the PCMCIA standard, by
powering off a device upon a switch indicating a retracted position (FF 1 and
5). Fuller discloses that when a retractable communication coupler is a first
position, no cable connector or other means for communication can be
connected to PCMCIA card, power is not applied to the PCMCIA card, and
when the communication coupler is in a second retracted position, a cable
connector connected to an antenna is connected to the PCMCIA card, and
the switch allows power to be applied to the card (FF 2-4). Johnson
discloses an antenna removably attached to a PCMCIA card, wherein when
the antenna is located in the extended position, power is supplied to the
antenna, and when the antenna is in a retracted position, power is disengaged
from the antenna (FF 6-8). Incorporating Johnson’s antenna power
deactivation step into Fuller’s step of terminating power to the entire
computer card does not change the function of either Johnson’s antenna or
Fuller’s PCMCIA computer card. Rather, Fuller’s powering off process is
merely extended to include further powering off the antenna attached
thereto. The combination yields an expected result of terminating power to
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the computer card and the antenna attached thereto, thereby reducing the
desired power consumption.
Appellant has provided no evidence that incorporating Johnson’s
termination of power to the antenna into Fuller’s termination of power to the
entire computer was “uniquely challenging or difficult for one of ordinary
skill in the art,” Leapfrog, 485 F.3d at 1162, nor has Appellant presented
evidence that this incorporation yielded more than expected results. Rather,
Appellant’s invention is simply an arrangement of the known teaching of
powering off of a PCMCIA card with the known teaching of powering off of
an antenna, yielding the expected result of powering off of both the
PCMCIA card and the antenna. “[W]hen a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 127 S. Ct. at 1740 (citing
Sakraida v. AG Pro, Inc., 425 U. S. 273, 282 (1976)).

All elements are taught
Appellant argues “Fuller and Johnson together do not teach each and
every limitation in Claims 9, 16, and 25” (App. Br. 11). Appellant repeats
the argument that “Johnson teaches that power is still applied to the
peripheral device after the antenna is retracted” (App. Br. 12; Reply Br. 2).
The Examiner’s position as to disclosing the claimed elements on
appeal beginning at page 3 of the Answer and the Examiner’s corresponding
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responsive arguments beginning at page 5 of the Answer appear to us to
meet all of the limitations required by independent claims 9, 16, and 25 on
appeal. The claims are rejected over the combined teachings of Fuller and
Johnson, and not Johnson alone, wherein Fuller discloses that when a
retractable communication coupler is a retracted position, power is not
applied to the PCMCIA card, and Johnson discloses that when the antenna is
in a retracted position, power is disengaged from the antenna (FF 2-4 and 6-
8). We find that Appellant has not shown that the Examiner erred in finding
that the combined teachings of Fuller and Johnson disclose each and every
recited element.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 9, 16, and 25 as unpatentable over the teachings of
Fuller and Johnson.
As to the other recited elements of claims 9, 16, and 25, Appellant
provides no argument to dispute that the Examiner has correctly shown
where all these claimed elements appear in the prior art. Thus, we deem
those arguments waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).
Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in rejecting claim 9, 16, and 25 under 35 U.S.C. § 103(a).
Because claims 10, 12, 13, 17-23, and 26-29 fall with claims 9, 16, and 25,
we conclude that Appellant has not shown that the Examiner erred in
rejecting claim 10, 12, 13, 17-23, and 26-29 under 35 U.S.C. § 103(a).

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CONCLUSIONS OF LAW
(1) Appellant has not shown that the Examiner erred in finding claims
9, 10, 12, 13, 16-23, and 25-29 are unpatentable over the teachings of Fuller
and Johnson.
(2) Claims 9, 10, 12, 13, 16-23, and 25-29 are not patentable.

DECISION
The Examiner's rejection of claims 9, 10, 12, 13, 16-23, and 25-29
under 35 U.S.C. §103(a) is affirmed.
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)(iv).

AFFIRMED

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ROBERT E. KREBS
THELEN REID & PRIEST LLP
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