Ex Parte Markow et al

Board of Patent Appeals and Interferences

Jun 16, 2004

08880032 (B.P.A.I. Jun. 16, 2004)

1 Application for patent filed June 20, 1997.
2 The only rejection of claims 43-46 under 35 U.S.C. § 112, second
paragraph, as indicated in the final Office action (Paper no. 16, mailed
November 8, 2000), was withdrawn in the answer (page 7).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MITCHELL A. MARKOW, DANIEL V. FORLENZA,
KEVIN R. FROST and GREGORY B. MEMO
____________
Appeal No. 2002-1987
Application No. 08/880,0321
____________
ON BRIEF
____________
Before FLEMING, DIXON, and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 34-42. Claims 1-33 have been cancelled and
claims 43-46 are not before us as their rejection was withdrawn
by the Examiner.2
We reverse.
Appeal No. 2002-1987
Application No. 08/880,032
2
BACKGROUND
Appellants’ invention relates to a ported speaker enclosure
of a portable computer formed between the upper surface and the
lower surface of the speaker enclosure.
Representative independent claim 36 is reproduced as
follows:
36. A modular ported speaker enclosure for a portable
computer system, the modular ported speaker enclosure comprising:
a speaker enclosure top independent of a plurality of
portable computer surfaces of the portable computer system;
a speaker enclosure base independent of the plurality
of portable computer surfaces and having a plurality of
ports formed therein the speaker enclosure base; and
a plurality of loudspeakers housed between the speaker
enclosure top and the speaker enclosure base.
The prior art references of record relied upon by the
Examiner in rejecting the appealed claims are:
Hickman 5,610,992 Mar. 11, 1997
Freadman 5,818,942 Oct. 6, 1998
(filed Nov. 2, 1994)
Claims 34-39, 41 and 42 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Freadman.
Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freadman and Hickman.
Appeal No. 2002-1987
Application No. 08/880,032
3 According to IBM Dictionary of Computing, McGraw-Hill, Inc., 1994, p.
517, “portable computer” is defined as “A microcomputer that can be hand
carried for use in more than one location,” a copy of which accompanies this
decision.
3
We make reference to the answer (Paper No. 22, mailed July
31, 2001) for the Examiner’s reasoning and to the brief (Paper
No. 21, filed May 14, 2001) for Appellants’ arguments
thereagainst.
OPINION
With respect to the rejection of claims 34-39, 41 and 42,
Appellants argue that Freadman does not teach or suggest a
speaker enclosure in a portable computer and instead, is directed
to speakers enclosed in a monitor or a keyboard of a conventional
computer (brief, page 6). The Examiner responds by pointing out
that, under the broadest reasonable interpretation, the computer
of Freadman represents a portable computer since nothing in the
reference precludes the system from being moved from one location
to another (answer, pages 3 & 4).
We agree with Appellants that the computer of Freadman is
not portable as it includes separate monitor and keyboard.
Although its components can be moved from one location to
another, it is not a portable computer within the ordinary
meaning of the term “portable computer.”3 A portable computer,
therefore, must be self-contained with respect to functionality
Appeal No. 2002-1987
Application No. 08/880,032
4
and power supply and be capable of functioning and maintaining
its computing capabilities while being transportable, such as a
laptop computer.
Appellants further argue that the description of the
computer monitor or keyboard embodiments of Freadman offer no
teaching to suggest that the speaker enclosure is independent of
the surfaces of the conventional computer monitor or the keyboard
(brief, pages 6-8). The Examiner relies on Figure 2 of Freadman
to show that the speaker enclosure, while being formed in the
keyboard shell, is independent of the keyboard surfaces as it can
be mounted on other parts such as the monitor (answer, page 4).
We agree with Appellants since the claimed top and base
independent of a plurality of surfaces of the portable computer
are not explicitly shown or disclosed in Freadman. The Examiner
merely refers to Figure 2 to show independent top and base of the
modular speaker enclosure whereas the dashed lines depicted as
extending along the edges merely indicate the boundaries of each
compartment without establishing whether surfaces independent of
the computer surfaces define the top and the base of the
enclosures. A rejection for anticipation under section 102
requires that the four corners of a single prior art document
describe every element of the claimed invention, either expressly
Appeal No. 2002-1987
Application No. 08/880,032
4 Our decision not to sustain the rejction of claims 34-39, 41 and 42
under 35 U.S.C. § 102 over Freadman should not be taken as an indication of
the patentability of these claims that would prevent the Examiner from
potentially introducing new grounds of rejection under 35 U.S.C. § 103 over
the combination of Freadman with other reference(s) to show the missing
elements.
5
or inherently, such that a person of ordinary skill in the art
could practice the invention without undue experimentation. See
Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d
1943, 1947 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-
79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994). In this case, as
there is no indication in Freadman that the surfaces depicted in
the speaker unit of Figure 2 are independent of the surfaces of
the computer, the examiner’s conclusion is based merely on
speculation and therefore, fails to support a prima facie case of
anticipation. Accordingly, the rejection of claims 34-39, 41 and
42 under 35 U.S.C. § 102 over Freadman cannot be sustained.4
Regarding the 35 U.S.C. § 103 rejection of claim 40, we note
the Examiner’s failure to point to any teachings or suggestions
in Hickman that would have overcome the deficiencies of Freadman
discussed above. Hickman, at best, shows a ported speaker
enclosure placed in the lower shell of a portable computer but
does not teach that the top and base surfaces of the enclosure
are independent of the computer surfaces (Figure 4 and col. 3,
line 49 et seq.). Based on our determination that Freadman does
Appeal No. 2002-1987
Application No. 08/880,032
6
not teach the invention of base claim 38 and the failure of
Hickman to provide the missing teaching or suggestion, the
35 U.S.C. § 103 rejection of the dependent claim 40 over Freadman
and Hickman cannot be sustained.
CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 34-39, 41 and 42 under 35 U.S.C. § 102 and
rejecting claim 40 under 35 U.S.C. § 103 is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2002-1987
Application No. 08/880,032
7
Intellectual Property Administration
Legal Department, M/S 35
P.O. Box 272400
Ft. Collins, CO 80527-2400