Ex Parte Phillips

Board of Patent Appeals and Interferences

Nov 20, 2002

09107795 (B.P.A.I. Nov. 20, 2002)

1
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publication and is not binding precedent of the Board.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. 11

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GEORGE ERIC PHILLIPS
_____________
Appeal No. 2001-1427
Application No. 09/107,795
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS and RUGGIERO, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-15, all of the
pending claims.
The invention is directed to an adaptor that can be removably secured to a
peripheral device card such as a radiotelephone card.
Representative independent claim 1 and representative dependent claim 4 are
reproduced as follows:
Appeal No. 2001-1427
Application No. 09/107,795
2
1. An electronic device, comprising:
a housing;
a peripheral device slot within said housing, said peripheral device
slot comprising a peripheral device interface;
a peripheral device card removably secured within said peripheral
device slot such that a first end of said peripheral device card is
electrically connected to said peripheral device interface;
a power connector interface, wherein said power connector
interface is configured to provide electrical power from said electronic
device independent of said peripheral device interface, and
an adapter removably secured to a second end of said peripheral
device card and to said power connector interface such that said adapter
is electrically connected to said power connector interface and such that
said peripheral device card receives electrical power from said electronic
device independent of said peripheral device interface.
4. An electronic device according to claim 1 further comprising an
antenna pivotally mounted to said adapter.
The examiner relies on the following references:
Virtuoso et al. (Virtuoso) 5, 594,952 Jan. 14, 1997
Stein 5,628,055 May 06, 1997
Claims 1, 2, 4-8 and 10-14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Stein, while claims 3, 9 and 15 stand rejected under 35 U.S.C. § 103
as unpatentable over Stein in view of Virtuoso.
Appeal No. 2001-1427
Application No. 09/107,795
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Reference is made to the brief and answer for the respective positions of
appellant and the examiner.
OPINION
At the outset, we note that while claims 1-15 stand rejected, as indicated by the
examiner in the final rejection as well as the answer, and as acknowledged by appellant
at pages 1 and 3 of the brief, appellant apparently argues only the rejection of
dependent claims 4, 10 and 13. Note the statement of issues at the top of page 3 of
the brief. Accordingly, in view of no arguments presented by appellant with regard to
claims 1-3, 5-7, 8, 9, 11, 12, 14 and 15, the rejection of these claims under 35 U.S.C.
§ 103 is summarily sustained.
Our focus is on claims 4, 10 and 13 and the rejection thereof under 35 U.S.C.
§ 103 over Stein.
Claims 4, 10 and 13 add only the limitation that there is an antenna pivotally
mounted to said adaptor. Clearly, there can be no dispute about Stein showing this
specific limitation since column 7, lines 34-36, clearly states that “The particular
modular antenna structure 138 of FIG. 8 includes an antenna bar 140, which is pivotally
mounted through pivot antenna mount 141...” Accordingly, appellant relies on
limitations appearing in independent claims 1, 8 and 12 for the patentability argument,
yet, surprisingly enough, appellant does not argue the independent claims separately.
Appeal No. 2001-1427
Application No. 09/107,795
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In any event, applying Stein to independent claim 1, Stein clearly discloses an
electronic device, viz., a personal computer, with a housing and a peripheral device slot
201 within the housing. The slot has a peripheral device interface (slot connector 204).
Stein also teaches a peripheral device card (modular unit 131) removably secured
within the slot such that a first end of the “card” is connected to the interface (connector
133 on the modular unit connects to slot connector 204). With regard to a “power
connector interface,” Stein discloses an internal power supply 290 (Figure 12) which
provides power from the electronic device independent of the peripheral device
interface. An adaptor removably secured to a second end of the card is clearly seen in
Figure 10 of Stein. That adaptor comprises elements 142 and 154 to which the
antenna is connected. The adaptor is connected, albeit via the modular unit, or “card”
131, to the peripheral device interface 204.
While not shown as being connected to a power connector interface 290 in
Figure 10, because power is supplied by external supply 250, the examiner seems to
imply that, viewing the embodiments of Figure 10 and Figure 12 as a whole, wherein
each figure discloses either an internal power supply or an external power supply, but
not both, it would have been equally obvious to have both an external power supply with
an antenna (as in Figure 10) and an internal power supply (as in Figure 12). In our
view, the examiner’s rationale is clearly based on impermissible hindsight.
Appeal No. 2001-1427
Application No. 09/107,795
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Each of claims 4, 10 and 13, by dint of their dependence on independent claims
1, 8 and 12, respectively, requires the adaptor to be electrically connected to the power
connector interface such that the peripheral device card receives electrical power from
the electronic device “independent of said peripheral device interface” or “independent
of said PCMCIA interface.”
In Stein, if the peripheral device interface is connector 205 in Figure 10, either
device card 131 is connected to this peripheral interface and is supplied power from an
external source 250 (in Figure 10) or the card is connected to the peripheral interface
via an internal power supply 290 (Figure 12). While Figure 10 may show an
embodiment wherein power is supplied independent of the peripheral interface 205,
there is no power connector interface to provide electrical power from the electrical
device independent of the peripheral device interface because AC/DC adaptor 250 is
not being supplied “from the electrical device.” Where Figure 12 shows an
embodiment where power is supplied “from the electrical device” (viz., from supply
290), this power is supplied to the peripheral device interface 205 so that power is not
supplied independent of the interface. One figure discloses certain claimed elements
and another figure discloses other claimed elements but there is no suggestion within
Stein for combining Figures 10 and 12 in any manner so as to result in the instant
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claimed subject matter and the examiner’s explanation as to why it would have been
obvious to do so is not convincing of obviousness with the meaning of 35 U.S.C. § 103.
In order to meet the instant claimed limitations, one would need to modify Stein
by combining Figures 10 and 12 such as to include both power supplies and to make
supply 250 internal to the device while, at the same time, retaining the connection of
power supply 250 to connection 154. There is simply no reason, other than hindsight
gleaned from appellant’s own disclosure, for making such a modification.
Accordingly, we will not sustain the rejection of claims 4, 10 and 13 under 35
U.S.C. § 103.
While it may seem incongruous to do so, although we have reversed the
rejection of claims 4, 10 and 13 under 35 U.S.C. § 103, based on limitations appearing
in their independent claims, we have sustained the rejection of claims 1-3, 5-9, 11, 12,
14 and 15 under 35 U.S.C. § 103 because, for whatever reason, known only to
appellant, appellant has made a conscious effort to specifically not argue these claims,
going so far as to stating the issue on appeal as being solely whether claims 4, 10 and
13 were properly rejected under 35 U.S.C. § 103 (brief-page 3). Arguments not made
are waived. In re Kroekel, 803 F.2d 705, 709, 231 USPQ 640, 642-43 (Fed. Cir. 1986).
Accordingly, the examiner’s decision is affirmed-in-part.
Appeal No. 2001-1427
Application No. 09/107,795
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
eak/vsh
Appeal No. 2001-1427
Application No. 09/107,795
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MYERS, BIGEL, SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627