Ex Parte Sayers et al

Board of Patent Appeals and Interferences

Aug 29, 2012

11496987 (B.P.A.I. Aug. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CRAIG PETER SAYERS, JEFFERY AARON LEV,
JEFF PARKER, and IAN NEVILL ROBINSON
____________________

Appeal 2010-000449
Application 11/496,987
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, ERIC S. FRAHM, and
JASON V. MORGAN, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000449
Application 11/496,987

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Appellants’ Disclosed Invention
Appellants disclose a laptop docking station that provides for wireless
access from the laptop to a peripheral device connected to the docking
station when the laptop is undocked (Spec. ¶¶ [0001] and [0007]).
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphasis added:
1. A portable dock for a portable computing system, comprising:

a housing for attaching to a docking port of a portable computing
system, wherein said housing is hand carryable and is not required to enclose
said portable computing system;

a power supply transformer coupled with said housing;

a storage bay for holding a peripheral device coupled with said
housing; and

a network connectivity module coupled with said housing, wherein
said network connectivity module is a wired network connectivity module
when said portable computing device is coupled with said portable dock and
wherein said network connectivity module is a wireless network
connectivity module when said portable computing system is not coupled
with said portable dock, and

wherein said network connectivity module allows for wireless
communication between said portable computing [device] and said
peripheral device when said portable computer system is not coupled with
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said portable dock.

The Examiner’s Rejections1
The Examiner rejected:
(i) claims 1, 4, 9 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Nishigaki (US 5,664,118 A) in view of Lee (US
20040148445 A1) (Ans. 4-5);2
(ii) claims 2, 10, and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Nishigaki and Lee further in view of Forlenza (US
6,392,880 B1) (Ans. 5);
(iii) claims 3, 11, and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Nishigaki and Lee further in view of Horiuchi (US
5,301,334 A) (Ans. 5-6);
(iv) claims 5, 6, 8, 12, 14, 18, and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Nishigaki and Lee further in view of Sellers (US

1 In the Final Rejection mailed January 14, 2009, claims 1-20 were rejected
under § 112(2) because of unclear recitations and claims 9-14 were rejected
under § 112(2) and under § 101 for crossing statutory classes. These
rejections were withdrawn as indicated in the Advisory Action mailed May
22, 2009. Accordingly, the rejections under §§ 101 and 112(2) are not
before us.
2 The header of this rejection indicates that claim 5 is included as rejected
(see Ans. 4), however we note that of this group only claims 1, 4, 9, and 15
are rejected by Nishigaki and Lee as evidenced by a review of the statement
of the merits of the rejection as applied to claims 1, 4, 9, and 15 (see Ans. 4-
5). Claim 5 was rejected under § 103(a) over the combination of Nishigaki,
Lee, Sellers, Alpert, and Ryan (Ans. 6), and contains recitations that were
addressed by the Examiner with regard to those references (e.g., storing
cables, a recharge bay). For the purpose of this appeal, we treat this as
harmless error, and consider claim 5 to be rejected under § 103(a) over the
combination of Nishigaki, Lee, Sellers, Alpert, and Ryan, and not Nishigaki
and Lee.
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5,966,285 A), Alpert (US 5,655,143 A), and Ryan (US 5,627,450 A) (Ans.
6); and
(v) claims 7, 13, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Nishigaki and Lee further in view of Howell (US
5,995,366 A) (Ans. 6-7).
Appellants’ Contentions
Appellants contend that the Examiner erred in rejecting claims 1-20
for numerous reasons, including:3
(1) Lee does not teach a “peripheral device” because an external
network is not a peripheral device (App. Br. 15; Reply Br. 4);
(2) modifying Lee would change the principle of operation of Lee
(App. Br. 16); and
(3) Lee teaches away from the claimed “peripheral device” (App. Br.
16, 17); and
(4) Nishigaki teaches away from providing wireless communication
between the laptop and peripheral device when the laptop is undocked
because Nishigaki's expansion ports are disconnected from power when the
laptop is undocked (Reply Br. 2, 3).

3 Appellants only present arguments on the merits with regard to
independent claim 1 (see App. Br. 14-17). Like independent claim 1,
independent claims 9 and 15 also recite “...wireless communication between
said portable computing device and said peripheral device when said
portable computer system is not coupled with said portable dock.” For
dependent claims 2-8, 10-14, and 16-20, Appellants' arguments are directed
to the above limitation of claims 1, 9, and 15 and thus, separate patentability
is not argued for dependent claims 2-8, 10-14, and 16-20 (see App. Br. 18-
26; Reply Br. 2-5). We, therefore, select claim 1 as representative of the
group of claims 1-20. 37 C.F.R. § 41.37(c)(1)(vii).
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Issues on Appeal
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C. §
103(a) as unpatentable over the combination of references because:
(i) Lee does not teach a peripheral device;
(ii) Lee’s principle operation would be changed; and
(iii) Lee and/or Nishigaki teach away from the claimed invention?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 13-26) and the Reply Brief (Reply
Br. 1-5) that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 4, 7-
11). We highlight and amplify certain teachings and suggestions of Lee as
follows.
(i) Peripheral device
We disagree with Appellants (App. Br. 15; Reply Br. 4) that the
recited “between said portable computing [device]and said peripheral
device” is not met because Lee teaches wireless communication between the
portable computing device and the external network or, simply put, the
external network is not a peripheral device.
We agree with the Examiner (Ans. 4, 8, 9) that the combination of
Nishigaki and Lee teaches a “network connectivity module allow[ing] for
wireless communication between said portable computing [device] and said
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peripheral device when said portable computing system is not coupled with
said portable dock” as claimed. We also agree that Appellants have
presented arguments only with respect to the teachings of Lee. In rejecting
the limitation at issue, the Examiner relied upon both Nishigaki and Lee.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091 (Fed.
Cir. 1986). Thus, these arguments single out the teachings of Lee, without
appreciating that this limitation was met by the combination of both
references. The Examiner does not rely upon only Lee's external network to
satisfy the claimed “peripheral device.”
(ii) Changing principal operation of Lee
We do not agree with Appellants (App. Br. 16) that the principle
operation of Lee would have been changed because Appellants presented no
facts to support that conclusion other than that Lee's external network cannot
be a peripheral device. Quite differently, as discussed supra, the peripheral
device is met by the combination of Nishigaki and Lee. Regardless, we are
not persuaded that Lee's principle operation would have been changed.
Instead, the principle operation is to provide an undocked laptop, wirelessly
connected to the docking station's wireless access point, access to the wired
network port of the docking station (see Fig. 1) so that the laptop could be
connected to the Internet through the docking station’s wired port even
though the laptop was undocked (¶ [0021] which describes Fig. 1). Thus,
we agree with the Examiner that the principal operation of Lee would not
have been changed and the combination would have operated as expected by
persons of ordinary skill in the art (Ans. 7).
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(iii) Teaching away of Nishigaki or Lee
We do not agree with Appellants (App. Br. 16-17) that Lee’s
provision of providing wired or wireless access to an external network
teaches away from the claimed invention. We also disagree with Appellants
(Reply Br. 2, 3) that Nishigaki’s provision of stopping power to the
expansion connectors when the portable computer is undocked teaches away
from the claimed invention.
“‘A reference may be said to teach 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.’” Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citation omitted).
A person of ordinary skill, upon reading Lee, would not be
discouraged from following either path set out in the references (i.e., when a
laptop is undocked from the docking station, providing wireless access to the
network port, connected to the LAN cable, in of the docking station so the
laptop could have wireless access to the Internet provided by the docking
station without the laptop having to be docked), or would not be led in a
direction divergent from the path that was taken by Appellant. Ricoh, 550
F.3d at 1332. Indeed, the path of Lee appears to be the same as the path of
the Appellants as presently claimed (i.e., to provide an undocked laptop
wireless access to the wired Internet access from the docking station).
Although Nishigaki teaches, in an expressly disclosed embodiment
(Nishigaki col. 21, ll. 64-66), stopping power to the expansion ports, these
express features are not relied upon by the Examiner in the rejection.
Additionally, these arguments are directed to subject matter not present in
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the claim. Representative claim 1 does not require maintaining power to the
peripheral device.
Instead, representative claim 1 requires “a storage bay for holding a
peripheral device” (emphasis added). Regardless, the Examiner relies upon
Nishigaki to teach a docking station having, inter alia, a storage bay that
may hold a peripheral device (Ans. 4). The Examiner explains that
Nishigaki does not teach providing a wireless link to this peripheral device
(Ans. 4).
Lee provides a wireless link to a peripheral device (Ans. 4) such as the
network port connected to the LAN cable (as discussed supra). When
Nishigaki is combined with Lee, maintaining Lee’s wired network port in an
operable state is not discouraged by Nishigaki. In fact, Lee teaches that it is
desirable for the peripheral device to be operable when the laptop is
undocked such that the undocked laptop may have Internet access through
the wireless link to the peripheral device of the docking station (see e.g., Lee
Fig. 1). The benefit provided by Lee is that the user does not have to
disconnect the LAN cable from the docking station and reconnect the LAN
cable to a wireless access point in order to have wireless access to the
Internet (see Lee ¶ [0007]). Nishigaki does not disparage or discourage
persons of ordinary skill in the art from providing a wireless link to the
peripheral device, as taught by Lee.
In summary, Appellants’ arguments in the Appeal Brief and Reply
Brief do not convince us that Nishigaki and/or Lee teach away from the
claimed invention.

Appeal 2010-000449
Application 11/496,987

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CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-20 are not patentable.

DECISION
The Examiner's rejections of claims 1-20 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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