Ex Parte May et al

Board of Patent Appeals and Interferences

Oct 30, 2008

10603640 (B.P.A.I. Oct. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARCUS W. MAY,
DANIEL P. MULLIGAN,
and MATTHEW BRADY HENSON
____________

Appeal 2008-1596
Application 10/603,640
Technology Center 2800
____________

Decided: October 30, 2008
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and CARLA M. KRIVAK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Appellants’ invention relates to the efficient powering of devices such
as portable electronic equipment. (Spec. 1)
Claim 1 is illustrative of the invention and reads as follows:

1. A method for efficient battery use by a handheld multiple function
device, the method comprises:
monitoring at least one output for an overload condition;
monitoring a system voltage produced by a DC-to-DC converter for a
system low voltage condition;
monitoring voltage of the battery for a battery low voltage condition; and
enabling one of a plurality of fail safe algorithms based on when one or
more of the overload condition, the system low voltage condition, and the
battery low voltage condition are detected.
The Examiner relies on the following prior art references to show
unpatentability:
Barker US 3,609,504 Sep. 28, 1971
Patel US 5,018,148 May 21, 1991
Choudhury US 6,169,669 B1 Jun. 2, 2001
Urbano US 6,592,521 B1 Jul. 15, 2003
(filed Mar. 1, 2000)

Claims 1, 5-8, 11, 12, 14-16, 20-23, 26, 27, 29, and 30 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Urbano in view of
Choudhury.
Claims 2, 9, 17, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Urbano in view of Choudhury and Barker.
Claims 3, 4, 10, 13, 18, 19, 25, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Urbano in view of Choudhury and Patel.
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Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief and Answer for the respective details. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Brief have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUES
(i) Under 35 U.S.C. § 103(a), with respect to appealed claims 1, 5-8,
11, 12, 14-16, 20-23, 26, 27, 29, and 30, would one of ordinary skill in the
art at the time of the invention have found it obvious to combine Urbano and
Choudhury to render the claimed invention unpatentable?
(ii) Under 35 U.S.C. § 103(a), with respect to appealed claims 2, 9,
17, and 24, would one of ordinary skill in the art at the time of the invention
have found it obvious to modify the combination of Urbano and Choudhury
by adding the teachings of Barker to render the claimed invention
unpatentable?
(iii) Under 35 U.S.C. § 103(a), with respect to appealed claims 3, 4,
10, 13, 18, 19, 25, and 28, would one of ordinary skill in the art at the time
of the invention have found it obvious to modify the combination of Urbano
and Choudhury by adding the teachings of Patel to render the claimed
invention unpatentable?

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FINDINGS OF FACT
The relevant facts are:
1. Appellants have invented a method and apparatus for providing
efficient battery use by a handheld multiple function device by monitoring
various device conditions. The monitored device conditions include a
device output for an overload condition, a system voltage produced by a DC-
to-DC converter for a system low voltage condition, and the battery voltage
for a low battery condition. One of a plurality of fail-safe algorithms is
enabled based on a detection of one or more the monitored conditions.
(Spec. 3:12-30).
2. Urbano discloses (col. 4, l. 59 through col. 5, l. 25 and col. 8, l.
66 through col. 9, l. 11) a power consumption reduction system for use in a
multiple function handheld device which uses an uninterruptible power
supply. Either an analog or digital control system is utilized for control of
the power supply.
3. Choudhury discloses the detection of an overload in the form of
an overcurrent fault condition (col. 4, ll. 59-61 and Figure 3), a detection of
a low battery voltage (col. 4, ll. 30-34), and the detection of a system low
voltage (col. 4, ll. 35-39).
4. Choudhury also discloses (col. 4, l. 64 through col. 5, l. 19 and
col. 8, l. 58 through col. 9, l. 25) the enabling of fail safe control algorithms
in response to the detected overload, low battery voltage, and system low
voltage conditions.

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PRINCIPLES OF LAW
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). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[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). Furthermore,
there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
Appellants’ arguments in response to the Examiner’s obviousness
rejection of representative independent claim 1 based on the combination of
Urbano and Choudhury assert a failure by the Examiner to establish a prima
facie case of obviousness since all of the claimed limitations are not taught
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or suggested by the applied Urbano and Choudhury references.1 Appellants
initially attack (Br. 8) the Examiner’s reliance on Urbano with the
contention that, in contrast to the claimed invention, Urbano does not
disclose the sensing of one or more of low battery, overload, or system low
voltage conditions and initiating a fail safe algorithm in response.
To whatever extent, however, Appellants are suggesting that the
Examiner’s proposed combination of Urbano and Choudhury must fail since
Urbano does not provide a disclosure of the sensing of particular system
conditions, we find such contention to be without merit since the Examiner
has relied upon Choudhury for this teaching. It is apparent from the
Examiner’s line of reasoning in the Answer that the basis for the
obviousness rejection is the combination of Urbano and Choudhury. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Keller, 642 F.2d
413, 425 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
It is further noteworthy that Appellants do not dispute (Br. 9) the
Examiner’s stated position that Choudhury discloses the sensing of battery
current Ib, the battery voltage Vb, and the voltage V- with respect to ground.
We also find no arguments from Appellants which show any error in the
Examiner’s contention (Ans. 3, 4, 8, and 9) that these sensed conditions in
fact correspond, respectively, to the claimed output overload, battery low
voltage, and system low voltage conditions. This is confirmed by

1 Appellants argue claims 1, 5-8, 11, 12, 14-16, 20-23, 26, 27, 29, and 30
together as a group. See Br. 7. Accordingly, we select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii).

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Choudhury’s disclosure which describes the operation of an overcurrent
fault detector 351 (col. 4, ll. 59-61 and Figure 3), as well as low battery
voltage detection (col. 4, ll. 30-34), and system low voltage detection (col. 4,
ll. 35-39). Appellants have further shown no error in the Examiner’s finding
(Ans. 4 and 8) that Choudhury’s disclosure (col. 4, l. 64 through col. 5, l. 19
and col. 8, l. 58 through col. 9, l. 25) provides for the enabling of fail safe
control algorithms in response to the detected conditions as claimed.
Appellants’ further arguments (Br. 10) include a general allegation
that the Examiner has not established a proper basis for the proposed
combination of the Urbano and Choudhury references. In making this
argument, Appellants again call attention to the supposed individual
differences between the cited references and the claimed invention.
For all of the previously discussed reasons, however, we simply find
no error in the Examiner’s finding (Ans. 4 and 7) that the use of the digital
fail safe control algorithm features associated with the uninterruptable power
supply system of Choudhury would be recognized by the skilled artisan as
an obvious enhancement to the uninterruptable power supply system of the
handheld multiple function device of Urbano.
In our view the Examiner’s proffered combination of Urbano and
Choudhury reasonably teaches and/or suggests Appellants’ claimed
invention in terms of familiar elements that would have been combined by
an artisan having common sense using known methods to achieve a
predictable result. “‘The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.’” Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1161 (Fed. Cir. 2007) (quoting KSR, 127 S. Ct. at 1739).
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Accordingly, for all of the above reasons, since Appellants have not
persuaded us of any error in the Examiner’s stated position, the Examiner’s
35 U.S.C. § 103(a) rejection, based on the combination of Urbano and
Choudhury, of representative claim 1, as well as claims 5-8, 11, 12, 14-16,
20-23, 26, 27, 29, and 30 not separately argued by Appellants, is sustained.
We also sustain the Examiner’s obviousness rejections of dependent
claims 2-4, 9, 10, 13, 17-19, 24, 25, and 28 in which the teachings of the
secondary references to Barker and Patel are applied in separate
combinations with the combined teachings of Urbano and Choudhury.
Appellants have made no separate arguments as to the patentability of these
claims but, rather, has relied on arguments previously made with respect to
representative independent claim 1, which arguments we found to be
unpersuasive for all of the reasons discussed supra.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting claims 1-30
for obviousness under 35 U.S.C. § 103.

DECISION
The Examiner’s 35 U.S.C. § 103 rejection of claims 1-30, all of the
appealed claims, is affirmed.

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Application 10/603,640

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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

KIS

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