Ex Parte Sayers et al

Patent Trial and Appeal Board

Dec 8, 2016

11496987 (P.T.A.B. Dec. 8, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/496,987 07/31/2006 Craig Peter Sayers 82224578 6039
22879
HP Tnr
7590 12/12/2016 EXAMINER
3390 E. Harmony Road
Mail Stop 35
MYERS, PAUL R
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
12/12/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG PETER SAYERS, JEFFERY AARON LEV,
JEFF PARKER, and IAN NEVILL ROBINSON
Appeal 2014-009945
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
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 3—6, 11, 12, 14, 16—19, and 21—26. Claims 1, 2,
7—10, 13, 15, and 20 have been canceled. Claims 27—29 have not been
rejected (see App. Br. 23 and Reply Br. 10). This same application was
previously appealed (see Appeal No. 2010-000449), and the Board affirmed
the prior final rejection of claims 1—20 (Final Act. mailed Jan. 14, 2009) in a
Appeal 2014-009945
Application 11/496,987
Decision mailed August 31, 2012 (hereinafter, “Decision”).1 Claims 22, 24,
and 25 have been further amended during subsequent prosecution to further
define the portable dock for a portable computing system (claim 22), method
of using a portable dock with a portable computing system (claim 24), and
portable dock for a portable computing system (claim 25).2 We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claims
Exemplary independent claims 22 and 25 under appeal, with
emphases added to the disputed portions of the claims, read as follows:
22. A portable dock for a portable computing system, the
portable dock comprising:
a housing;
an electrical connector supported by said housing to
electrically connect said portable computing system with said
portable dock;
a power supply transformer supported by said housing to
transform power for said portable dock;
1 We note that the Appeal Brief asserted that there were no related appeals or
interferences. App. Br. 4. Appellants and Appellants’ counsel are reminded
that they have a duty to disclose prior and pending appeals that involve an
application or patent owned by Appellants or the application’s assignee, are
known to Appellants, Appellants’ legal representative, or assignee, “and
may be related to, directly affect or be directly affected by or have a bearing
on the Board’s decision in the pending appeal.” 37 C.F.R. § 41.37(c)(ii)(3)
(2013).
2 See, e.g., (i) claim 22 as amended; and (ii) claim 25 as amended, to now
include the two “wherein . . .” clauses at the end of each claim, as reprinted
infra (note italicized “wherein . . .” at the end of each of claims 22 and 25).
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Application 11/496,987
a storage bay formed in said housing to receive a
peripheral device; and
a network connectivity module supported by said housing,
wherein said network connectivity module is a wired network
connectivity module when said portable computing
system is docked with said portable dock and said network
connectivity module is a wireless network connectivity module
when said portable computing system is undocked with said
portable dock, wherein said network connectivity module allows
for wireless communication between said portable computing
system and said peripheral device when said portable computing
system is undocked with said portable dock,
wherein said electrical connector is provided on a first
surface of said housing and said storage bay is open to a second
surface of said housing substantially perpendicular to said first
surface of said housing, wherein said portable computing system
is supported on said first surface when said portable computing
system is docked with said portable dock,
wherein removal of said peripheral device from said
storage bay formed in said housing of said portable dock starts
an application of said portable computing system.
25. A portable dock for a portable computing device, the
portable dock comprising:
an electrical connector to connect with said portable
computing device;
a power supply transformer to transform a power source
into a usable power supply for said portable computing device;
a storage bay to hold a peripheral device for use by said
portable computing device; and
a network connectivity module to provide network
connection for said portable computing device, wherein said
network connectivity module provides a wired connection for
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Application 11/496,987
said portable computing device when said portable computing
device is docked with said portable dock and said network
connectivity module provides a wireless connection for said
portable computing device when said portable computing device
is undocked with said portable dock, wherein said network
connectivity module supports wireless communication between
said portable computing device and said peripheral device when
said portable computing device is undocked with said portable
dock,
wherein said electrical connector is provided on a first
side of said portable dock, wherein said portable computing
device is supported on said first side of said portable dock when
said portable computing device is docked with said portable
dock, and wherein said storage bay is open to a second side of
said portable dock substantially perpendicular to said first side
of said portable dock,
wherein said storage bay of said portable dock remains
powered and said peripheral device remains powered by said
portable dock when said peripheral device is in said storage bay
and said portable computing device is undocked with said
portable dock.
Examiner’s Rejections
(1) The Examiner rejected claims 4, 21—24, and 26 as being
unpatentable under 35 U.S.C. § 103(a) over Nishigaki (US 5,664,118; issued
Sep. 2, 1997), Lee (US 2004/0148445 Al; published July 29, 2004), Usui
(US 2001/0030851 Al; published Oct. 18, 2001), and Diomelli (US
7,817,645 B2; issued Oct. 19, 2010 with an effective filing date of Oct. 28,
2004).3 Final Act. 5—7; Ans. 2—A.
3 We note that although the Final Rejection (Final Act. 5 and 7) states that
claim 5 is rejected under § 103(a) as being obvious over the combination of
Nishigaki, Lee, Usui, and Diomelli, the features of claim 5 addressed by the
Examiner as being taught/suggested by Sellers, Alpert, and Ryan (the
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(2) The Examiner rejected claims 3 and 11 as being unpatentable
under 35 U.S.C. § 103(a) over Nishigaki, Lee, Usui, Diomelli, and Horiuchi
(US 5,301,334; issued Apr. 5, 1994). Final Act. 7—8; Ans. 4.
(3) The Examiner rejected claims 5, 6, 12, and 14 as being
unpatentable under 35 U.S.C. § 103(a) over Nishigaki, Lee, Usui, Diomelli,
Sellers (US 5,966,285; issued Oct. 12, 1999), Alpert (US 5,655,143; issued
Aug. 5, 1997), and Ryan (US 5,627,450; issued May 6, 1997). Final Act. 8;
Ans. 5.
(4) The Examiner rejected claim 25 as being unpatentable under 35
U.S.C. § 103(a) over Nishigaki, Lee, and Usui. Final Act. 8—9; Ans. 5—6.
(5) The Examiner rejected claim 16 as being unpatentable under
35 U.S.C. § 103(a) over Nishigaki, Lee, Usui, and Forlenza (US 6,392,880
Bl; issued May 21, 2002). Final Act. 10; Ans. 7.
(6) The Examiner rejected claim 17 as being unpatentable under
35 U.S.C. § 103(a) over Nishigaki, Lee, Usui, and Horiuchi. Final Act. 10-
11; Ans. 7—8.
(7) The Examiner rejected claims 18 and 19 as being unpatentable
under 35 U.S.C. § 103(a) over Nishigaki, Lee, Usui, Sellers, Alpert, and
Ryan. Final Act. 11; Ans. 8.
Examiner rejects claim 5 over the combination of Nishigaki, Lee, Usui,
Diomelli, Sellers, Alpert, and Ryan as stated at page 8 of the Final Rejection
and page 5 of the Answer). Therefore, we consider claim 5 to be rejected as
being obvious over the combination of Nishigaki, Lee, Usui, Diomelli,
Sellers, Alpert, and Ryan, and not Nishigaki, Lee, Usui, and Diomelli. This
was previously noted in the second footnote at the bottom of page 3 of our
Decision in the prior appeal of the instant application.
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ISSUES4
Based on Appellants’ arguments in the Appeal Brief (App. Br. 9—24)
and the Reply Brief (Reply Br. 2—11), the following two principal issues are
presented on appeal:
(I) Did the Examiner err in rejecting claims 4, 21—24, and 26 as
being obvious over the combination of Nishigaki, Lee, Usui, and Diomelli
because the combination fails to teach or suggest (i) an electrical connector,
housing, and portable computer system supported on the housing when
4 Based on Appellants’ arguments (App. Br. 9—15; Reply Br. 2—7) and the
similarity of subject matter of claims 4, 21—24, and 26 (initiating/starting an
application of the portable computing system when a peripheral device is
removed from the storage bay of the housing of the portable dock), we select
claim 22 as representative of the group of claims rejected over the
combination of Nishigaki, Lee, Usui, and Diomelli (claims 4, 21—24, and
26).
With regard to the rejection of (i) claims 3 and 11 over the
combination of Nishigaki, Lee, Usui, Diomelli, and Horiuchi; (ii) claims 5,
6, 12, and 14 over the combination of Nishigaki, Lee, Usui, Diomelli,
Sellers, Alpert, and Ryan; (iii) claim 16 over the combination of Nishigaki,
Lee, Usui, and Lorlenza; (iv) claim 17 over the combination of Nishigaki,
Lee, Usui, and Horiuchi; and (v) claims 18 and 19 over the combination of
Nishigaki, Lee, Usui, Sellers, Alpert, and Ryan, Appellants rely on the
arguments already presented with respect to independent claims 22 and 24
and assert that the additionally applied references fail to cure the deficiencies
of Nishigaki, Lee, Usui, and Diomelli (App. Br. 15—18 and 20-23; Reply Br.
7—8 and 10). The outcome of these rejections will stand/fall with the
outcome for the primary issue as to respective ones of independent claims
22, 24, and/or 25 from which these claims depend.
Because claims 16—19 stand rejected over the same base references as
claim 25 from which these claims depend, and Appellants’ arguments as to
claims 16—19 stem from the arguments presented as to claim 25, we select
claim 25 as representative of the group of claims 16—19 and 25, as resolve
this issue based on our analysis of Nishigaki, Lee, and Usui discussed infra.
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docked with a portable dock; and (ii) initiating/starting an application of the
portable computing system when a peripheral device is removed from the
storage bay of the housing of the portable dock, as recited in representative
independent claim 22?
(II) Did the Examiner err in rejecting claims 16—19 and 25 as being
obvious over the combination of Nishigaki, Lee, and Usui because the
combination fails to teach or suggest continuing to provide power to the
storage bay and peripheral device from the portable dock “when said
peripheral device is in said storage bay and said portable computing device
is undocked with said portable dock,” as recited in representative
independent claim 25?
ANALYSIS
We have reviewed the Examiner’s rejections (Einal Act. 5—11) in light
of Appellants’ contentions in the Appeal Brief (App. Br. 2—8) and the Reply
Brief (Reply Br. 2—11) that the Examiner has erred, as well as the
Examiner’s response (Ans. 9—12) to Appellants’ arguments in the Appeal
Brief. We disagree with Appellants’ arguments.
With regard to representative claims 22 and 25, we concur with the
conclusions reached by the Examiner, and adopt as our own (1) the findings,
conclusions, and reasons set forth by the Examiner in the action from which
this appeal is taken (see Final Act. 2—6), and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief
(see Ans. 2—11). We highlight and amplify certain teachings and
suggestions of the references, as well as certain ones of Appellants’
arguments as follows.
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Claims 4, 21—24, and 26
Claim 22 differs from the claims present in the prior appeal of this
application where we affirmed over the combination of Nishigaki and Lee,
with the exception that the two “wherein . . clauses were added to at the
end of claim 22 (see Decision at 2—3, reprinting claim 1 at issue in the prior
appeal). We agree with the Examiner (Ans. 3 4) that Usui teaches or
suggests the mechanical features of claim 22 (the location of the electrical
connector and support for the portable computer system), and Diomelli
teaches or suggests the functional features of claim 22 (starting an
application of the portable computer system when the peripheral device is
removed from the storage bay). Specifically, Usui discloses an electrical
connector 24 on the bottom of a housing of a portable computer 12 for
connecting to a docking station 10 (Usui, Figs. 1 and 4—6). And, Diomelli
discloses activation of specific software (i.e., an application) of a device
when a sub-unit (the telephone receiver) is removed from the support/
housing (Diomelli, col. 3,11. 41—57).
In light of our agreement with the Examiner’s findings, Appellants’
contentions that the combination of Nishigaki, Lee, Usui, and Diomelli fails
to teach or suggest (i) an electrical connector, housing, and portable
computer system supported on the housing when docked with a portable
dock; and (ii) initiating/starting an application of the portable computing
system when a peripheral device is removed from the storage bay of the
housing of the portable dock, and a second aggregation module, as set forth
in representative claim 22, are not persuasive.
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In view of the foregoing, we sustain the obviousness rejection of
claims 4, 21—24, and 26 under 35 U.S.C. § 103(a). For similar reasons, we
also sustain the Examiner’s remaining obviousness rejections of claims 3, 5,
6, 11, 12, and 14 (which also rely on the same base combination of
Nishigaki, Lee, Usui, and Diomelli).
Claims 16—19 and 25
We agree with the Examiner as to representative claim 25 (Final
Act. 8—9; Ans. 5—6 and 11—12; see also Decision 8) that Lee (paras. 5 and 7
cited at Final Act. 9 and Ans. 11—12), and not Nishigaki, teaches or suggests
the disputed limitation of keeping a docking bay and a peripheral device
powered when the peripheral device remains in the storage bay of the
portable dock and the portable computing system is undocked.
Because Appellants present arguments only as to Nishigaki, when Lee
was relied upon as to the disputed limitations in combination with Nishigaki
and Usui, Appellants’ contentions (based only on the failures of Nishigaki)
that the combination of Nishigaki, Lee, and Usui fails to teach or suggest
continuing to provide power to the storage bay and peripheral device from
the portable dock “when said peripheral device is in said storage bay and
said portable computing device is undocked with said portable dock” as set
forth in representative claim 25, are not persuasive.
In view of the foregoing, we sustain the obviousness rejection of
claim 25 under 35 U.S.C. § 103(a). For similar reasons, we also sustain the
Examiner’s remaining obviousness rejections of dependent claims 16—19
(which also rely on the same base combination of Nishigaki, Lee, and Usui).
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CONCLUSIONS
(I) The Examiner has not erred in rejecting claims 4, 21—24, and 26 as
being obvious over the combination of Nishigaki, Lee, Usui, and Diomelli,
because the combination teaches or suggests (i) an electrical connector,
housing, and portable computer system supported on the housing when
docked with a portable dock; and (ii) initiating/starting an application of the
portable computing system when a peripheral device is removed from the
storage bay of the housing of the portable dock, as recited in representative
independent claim 22.
(II) The Examiner has not erred in rejecting claims 16—19 and 25 as
being obvious over the base combination of Nishigaki, Lee, and Usui
because the combination teaches or suggests continuing to provide power to
the storage bay and peripheral device from the portable dock “when said
peripheral device is in said storage bay and said portable computing device
is undocked with said portable dock,” as recited in representative
independent claim 25.
DECISION5
The Examiner’s obviousness rejections of claims 3—6, 11, 12, 14, 16—
19, and 21—26 under 35 U.S.C. § 103(a) are affirmed.
5 The Patent Trial and Appeal Board is a review body, rather than a place of
initial examination. We leave to the Examiner, upon any further prosecution
of the instant application, to consider the appropriateness of further
rejection(s) of dependent claims 27—29 under 35 U.S.C. § 103(a) over the
cited references applied differently or in combination with additional
references. Specifically, the Examiner may wish to consider whether or not
Diomelli (see col. 4,11. 39-42) teaches or suggest the features of stopping an
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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)(l)(iv).
AFFIRMED
application of a portable computing system when the peripheral device is
inserted in the storage bay of the portable dock, as recited in claims 27—29.
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