Ex Parte Parker

Board of Patent Appeals and Interferences

Sep 22, 2010

11256857 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY C. PARKER
____________

Appeal 2009-004032
Application 11/256,857
Technology Center 2800
____________

Before KENNETH W. HAIRSTON, MARC S. HOFF, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-37. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-004032
Application 11/256,857

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STATEMENT OF THE CASE
Appellant’s claimed invention is a power supply cooling system that
includes battery cells for powering the cooling system and providing power
to a computer device (Spec. ¶ [0012]). The cooling system is detached from
the computer device during a lightweight or low performance mode and is
attached to the computer device during a high performance mode (Spec.
¶ [0013]).
Independent claims 1 and 9, reproduced below, are representative of
the subject matter on appeal.
1. A power supply cooling system, comprising:

a computer device having at least one inlet for receiving an
airflow generated by a cooling system removably couplable to
the computer device, the computer device configured to receive
power from the cooling system, the computer device configured
to determine whether to enable operation thereof in a high
performance mode or in a low performance mode based on
whether the cooling system is coupled to the computer device.

9. A cooling system for a computer device, comprising:

a housing removably couplable to the computer device, the
housing having at least one battery cell for providing power to
the computer device; and

a fan disposed in the housing for providing an airflow to the
computer device.

REFERENCES
Nishigaki US 5, 664,118 Sep. 2, 1997
Ghosh US 6,459,574 B1 Oct. 1, 2002
Hidesawa US 6,515,856 B2 Feb. 4, 2003
Fuchida US 6,742,070 B2 May 25, 2004
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Application 11/256,857

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The Examiner rejected claims 1-7 under 35 U.S.C. § 102(b) based
upon the teachings of Nishigaki.
The Examiner rejected claim 37 under 35 U.S.C. § 102(b) based upon
the teachings of Hidesawa.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) based upon
the teachings of Nishigaki and Ghosh.
The Examiner rejected claims 9-36 under 35 U.S.C. § 103(a) based
upon the teachings of Nishigaki and Fuchida.
Appellant contends Nishigaki does not teach a computer device
receiving power from a cooling system (App. Br. 7-8; Reply Br. 6).
Appellant also contends Nishigaki does not teach a computer device
configured to determine whether to enable operation in a high performance
mode or a low performance mode based on whether the cooling system is
coupled thereto (App. Br. 6; Reply Br. 5-6).
Appellant further contends Hidesawa does not teach a housing
couplable to the computer device; and that the housing is not a battery pack
housing (App. Br. 10; Reply Br. 7-8). Lastly, Appellant contends the
combination of Nishigaki with Ghosh or Fuchida would not result in
Appellant’s claimed invention since none of the references teaches providing
a battery within a housing for providing power to the computer device (App.
Br. 11-12; Reply Br. 9-10).

ISSUES
Did the Examiner err in finding Nishigaki teaches a computer device
receiving power from a removably couplable cooling system and enabling
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Application 11/256,857

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operation in a high or low performance mode based on whether the cooling
system is coupled to the computer device?
Did the Examiner err in finding Hidesawa teaches a housing,
including a fan and at least one battery pack, couplable to a computer
device?
Did the Examiner err in finding Nishigaki in combination with Ghosh
or Fuchida teaches or suggests the features of Appellant’s claimed
invention?

FINDINGS OF FACT
1. Nishigaki teaches communication between a deskstation 2 and
portable computer 1 occurs when a communication connector 26 of the
deskstation and a communication connector 13 of the portable computer are
connected. This allows the portable computer to execute any necessary
processing (col. 13, l. 65-col 14, l. 5).
2. Hidesawa teaches a CPU, power supply 60, and clock switching
element 62 are mounted on a printed wiring board 30 within a housing 20
(Figs. 2-3; col. 3, ll. 5-18). The power supply supplies voltage from a
battery in the housing to electronic components (Fig. 6; col. 4, ll. 27-30).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
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Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)). See also In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994).

ANALYSIS
Claims 1-7
The Examiner asserts Nishigaki teaches all the features of Appellant’s
claims 1-7. Particularly, the Examiner asserts Nishigaki teaches a portable
computer device receiving power from a cooling system (Ans. 12) and
detecting whether to enable operation of the computer device in a high
performance mode or a low performance mode based on whether the cooling
system is coupled to the computer device (Ans. 4)
Appellant asserts Nishigaki does not teach or suggest the computer
receiving power from the cooling system (App. Br. 7). Appellant also
asserts connector 13, relied on for supplying power to the computer device
from the cooling system, is merely a communication connector (which the
Examiner agrees) (see Ans. 12) that “merely provides a communication
connection between the portable computer and deskstation” (App. Br. 8;
Reply Br. 6; FF 1).
Additionally, Appellant asserts the Examiner’s argument that
Nishigaki teaches changing the clock frequency based on a temperature of
the CPU (Ans. 11) is incorrect (App. Br. 6-7). Appellant contends that
although attaching a cooling system to the computer device in Nishigaki
may have an affect on the temperature of the CPU, the determination to
enable operation in a high performance mode or a low performance mode is
based on temperature and not whether the cooling system is coupled to the
computer device (App. Br. 6 and 7). We agree. The Examiner’s reliance on
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Figure 39 and column 55, lines 28-34 (Ans. 11), of Nishigaki is misplaced.
This section of Nishigaki appears to allow a high performance mode enabled
at all times, whether or not the computer device is coupled to a cooling
system (App. Br. 6; Reply Br. 7).
Thus, because Nishigaki does not teach all the features of claim 1 and
dependent claims 2-7, Nishigaki does not anticipate these claims.
Claim 37
The Examiner asserts Hidesawa teaches all the features of Appellant’s
claim 37 including a housing 20 coupled to a computer device 22 (Ans. 5).
As Appellant asserts, element 22 of Hidesawa is a display and not a
“computer device” as the Examiner urges (App. Br. 10; Reply Br. 7; FF 2).
The display is within the housing (Fig. 2) and is part of the computer device.
Further, the housing (display 22) does not include a fan and battery cell.
Thus, Hidesawa’s housing is not “couplable to the computer device” as
claimed. Therefore, Hidesawa does not teach all the features of Appellant’s
claim 37.
Claim 8
The Examiner asserts Ghosh teaches a computer system that runs in a
high performance mode when docked, thus it would be obvious to a skilled
artisan at the time of Appellant’s invention to combine Ghosh with
Nishigaki to obtain Appellant’s claimed invention (Ans. 6).
Claim 8 depends from claim 1. Because Ghosh does not cure the
above-identified deficiencies of Nishigaki, the combination of these
references does not render obvious claim 8.

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Claims 9-36
The Examiner asserts Nishigaki does not teach or suggest a housing
having at least one battery cell for providing power to a computer but
Fuchida teaches this feature (Ans. 6).
Appellant contends Nishigaki teaches away from modifying an
expansion unit to include a battery cell as taught by Fuchida because
Nishigaki does not need the battery cell (App. Br. 11-12; Reply Br. 9).
The portion of Nishigaki relied on by Appellant (col. 2, ll. 8-22; col.
5, ll. 3-8) recites a conventional expansion unit having a power supply unit
incorporated therein. Nishigaki does not state that a battery cannot or should
not be used in its expansion unit. Further, as noted by the Examiner,
Nishigaki teaches two power supplies in the cooling device/expansion unit
(Ans. 16). We agree with the Examiner’s statement that the pertinent legal
question is not whether Nishigaki needs modification, but rather, would an
ordinarily skilled artisan, at the time of Appellant’s invention, have modified
Nishigaki to include at least one battery cell (Ans. 15). We further agree
with the Examiner that including at least one battery cell as taught by
Fuchida would have been an obvious variation of Nishigaki’s deskstation
(Ans. 15-16) (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)).
Thus, claims 9, 15, 19, 25, and 33, and claims 10-14, 16-18, 20-24, 26-32
and 34-36 that depend therefrom, are obvious over Nishigaki and Fuchida.

CONCLUSION
The Examiner erred in rejecting claims 1-7and 37 under 35 U.S.C.
§ 102 and claim 8 under 35 U.S.C. § 103.

Appeal 2009-004032
Application 11/256,857

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The Examiner did not err in rejecting claims 9-36 under 35 U.S.C.
§ 103.

DECISION
The Examiner’s decision rejecting claims 1-37 is affirmed-in-part.
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-IN-PART

KIS

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