Ex Parte Tsirkel et al

Board of Patent Appeals and Interferences

Sep 29, 2011

10879927 (B.P.A.I. Sep. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AARON M. TSIRKEL, ANIMESH MISHRA, PAUL
S. DIEFENBAUGH, and JOSE A. GODINHO
____________________

Appeal 2010-000686
Application 10/879,927
Technology Center 2100
____________________

Before ROMULO H. DELMENDO, KEVIN F. TURNER, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
10 and 12-21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ invention is directed to power management for computer
systems. (Spec. [0001].)
Claims 1 and 10, reproduced below, are illustrative of the claimed
subject matter:
1. A system, comprising:
a portable computer, having:
a processor;
a display coupled to the processor; and
an image-capturing device coupled to the processor,
wherein power consumption of the image-capturing device is
reduced when user presence, as confirmed through the image
capture device, is detected.

10. A method, comprising:
when no user interaction with a portable computer
system is detected, increasing power consumption of an image-
capturing device to capture an image to be analyzed for user
presence; and
maintaining power consumption of the portable computer
system when the user presence is detected, wherein maintaining
the power consumption of the computer system includes
reducing the power consumption of the image-capturing device.
(Appeal Brief, Claims Appendix1 13, 14.)

1 Appeal Brief filed April 27, 2009, hereinafter “App. Br.” and Claims
App’x, respectively.
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THE REJECTIONS
(I) The Examiner rejected claims 1-4, 10, 12, 13, and 17 under 35
U.S.C. § 102(e) as anticipated by McKee (US 2003/0158763
A1, published August 21, 2003). (Examiner’s Answer, dated
July 21, 2009, “Ans.” 3-6.)
(II) The Examiner rejected claims 5-9, 14-16, and 18-21 under 35
U.S.C. § 103(a) as unpatentable over McKee in view of Tsirkel
et al. (US 2003/0051179 A1, published March 13, 2003). (Ans.
3, 6; Final Rejection, dated July 25, 2008, “Final” 4;
Non-Final Rejection, dated October 26, 2007, “Non-Final” 4-
6.)
(III) The Examiner rejected claims 1-10 and 14-21 under 35 U.S.C.
§ 103(a) as unpatentable over Narayanaswami et al. (US
6,987,454 B2, issued January 17, 2006) in view of McKee.
(Ans. 6-8.)

ISSUES
With respect to Rejection I, the Examiner found that McKee discloses
a patron presence module, patron counter, staff presence detector, and patron
survey pad, which may all be combined into a single unit. (Ans. 6.) The
Examiner found that such a unit anticipates claims 1 and 10 by teaching a
portable computer with an image capture device. (Ans. 6.)
With respect to Rejection II, the Examiner found that McKee in view
of Tsirkel teaches all limitations of claims 5-9, 14-16, and 18-21. (Ans. 3, 6;
Final 4; Non-Final 4-6.) The Examiner determined that “[i]t would have
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been obvious to one of ordinary skill of the art having the teachings of
McKee with Tsirkel at the time the invention was made, to modify the
presence detection method of McKee to include the ability to reduce the
power of the display when no user is detected as taught by Tsirkel.” (Ans. 3,
6; Final 4; Non-Final 4.)
Appellants argue that McKee does not teach that the patron survey
pad can be combined into a single unit with the other sensor modules (i.e.,
patron presence detector, patron counter, and staff presence detector), and
therefore, that McKee does not teach a portable computer system having a
display. (App. Br. 10; Reply Br. 2.) Appellants also contend that the sensor
modules are mounted to tables in a restaurant, and therefore, the sensor
modules cannot be part of a portable computer system. (App. Br. 10; Reply
Br. 2.) Appellants further argue that because McKee does not teach a
display as part of the portable computer system, that the Examiner erred in
relying on McKee to support Rejection II. (App. Br. 11.)
Thus, the dispositive issues on appeal are:
(1) Whether the Examiner erred in finding that McKee discloses “a
portable computer, having: a processor; a display coupled to the
processor; and an image capturing device . . . ,” as recited in claim
1?
(2) Whether the Examiner erred in finding that McKee discloses “a
portable computer system,” as recited in claim 10?
(3) Whether the Examiner erred in determining that McKee in view of
Tsirkel renders claims 5-9, 14-16, and 18-21 obvious?

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PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
The Examiner bears the initial burden, on review of 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).
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”’ KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

FACTUAL FINDINGS (FF)
1. McKee discloses installing sensor modules at each table in a
restaurant environment, preferably hidden from the view of
patrons, such as under the table. (Par. [0020].)
2. McKee discloses a patron survey pad and states that:
Once the meal has been completed, the patrons are
presented with a check for the meal along with a
patron survey pad. The patrons then have an
opportunity to enter information according to the
questions presented on the patron survey pad.

(Par. [0044].)
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ANALYSIS
Rejection III
At the outset, we note that Appellants have not addressed Rejection
III. Therefore, we summarily affirm Rejection III. See 37 C.F.R. §
41.37(c)(1)(vii) (arguments not made are considered waived); MPEP §
1205.02 (“If a ground of rejection stated by the examiner is not addressed in
the appellant's brief, that ground of rejection will be summarily sustained by
the Board.”).

Issue One (Rejection I)
We agree with Appellants that claim 1 is not anticipated by McKee.
While McKee teaches combining a patron presence module, patron counter,
staff presence detector into a single unit, McKee does not teach that the
patron survey pad, which the Examiner relies on to teach the display recited
in claim 1, is combined with the other modules. Rather, McKee teaches that
a patron survey pad would be presented to patrons after a meal has been
completed. (FF 1.) Thus, McKee does not disclose a portable computer
having a display as recited in claim 1. Accordingly, the Examiner erred in
finding that McKee anticipates claim 1. Because claims 2-4 depend on
claim 1, the Examiner also erred in finding that McKee anticipates claims 2-
4.

Issue Two (Rejection I)
With respect to claim 10, we initially observe that unlike claim 1,
claim 10 does not require a display. We do not agree with Appellants’
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argument that the Examiner erred because the sensor modules disclosed in
McKee are mounted to tables and, as a result, are not portable. While
McKee discloses installing sensor modules at each table and preferably
hidden from the view of patrons, such as under the table (FF 1), McKee does
not require that the sensor modules be “mounted” as Appellants suggest.
Rather, McKee only requires that the sensor modules be “installed,” and we
have been directed to no persuasive evidence on the record that McKee’s
installation would prevent the sensor modules from being portable.
Moreover, Appellants have not pointed to any persuasive evidence
that McKee’s sensor modules would not otherwise be “portable” as
commonly understood by one of skill in the art. The term “portable” is
commonly defined as “capable of being carried or moved about” (MERRIAM-
WEBSTER’S COLLEGIATE DICTIONARY 907 (10th ed. 1993)). Appellants have
not directed us to any persuasive evidence that McKee’s single unit sensor
modules are incapable of being carried or moved about prior to or after
installation. Appellants have also not directed us to any particular definition
of portable in the Specification. As such, we agree with the Examiner that
“[o]ne of ordinary skill in the art would have recognized that these modules
or the combination thereof is/are light weigh[t], relatively small in size,” and
that “therefore, these modules or the combination thereof is/are portable.”
(Ans. 9.)
Appellants also argue that McKee does not teach a portable computer
system having a display. (App. Br. 10.) Appellants’ Specification states
that the computer system may be used with a DC or AC power source, may
include a central processing unit or processor, memory, storage media, a
keyboard, a cursor-control device, and a display. (Spec. [0018].) McKee’s
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patron counter, one of the sensor modules relied on by the Examiner,
includes, inter alia, a processor and a register. (Par. [0022], [0028].)
Thus, we affirm the Examiner’s 35 U.S.C. § 102 rejection of claim 10.
Because claims 12 and 13 depend from claim 10, and because Appellants
have not separately argued claims 12 and 13, we also affirm the Examiner’s
35 U.S.C. § 102 rejection of these claims. See In re Lovin, ---- F.3d ----,
2011 WL 2937946 (Fed. Cir. 2011); see also 37 C.F.R. § 41.37(c)(1)(vii).
We note that the Examiner has indicated that independent claim 17 is
also anticipated by McKee in the Grounds of Rejection to be reviewed on
appeal. (Ans. 3.) However, the Examiner has failed to address how McKee
anticipates claim 17 in the statement of the rejection. (Ans. 4-6.)
Accordingly, the Examiner has failed to make a prima facie case for the
rejection of claim 17. Thus, we reverse the Examiner's rejection of this
claim.

Issue Three (Rejection II)
In light of our discussion above, we agree with Appellants that the
Examiner erred in determining that McKee in view of Tsirkel renders claims
5-9, 14-16, and 18-21 obvious. The Examiner’s rationale (Ans. 3, 6; Final 4;
Non-Final 4) is predicated on the Examiner’s underlying factual
determination that McKee discloses a display as part of its portable
computer system. However, as discussed supra, McKee does not teach a
portable computer system having a display as recited in claim 1. The
Examiner does not provide an alternative sufficient rationale for combining
McKee and Tsirkel. Accordingly, we reverse the Examiner’s rejection of
claims 5-9, 14-16, and 18-21.
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CONCLUSIONS
The Examiner erred in finding that McKee discloses “a portable
computer, having: a processor; a display coupled to the processor; and an
image capturing device . . . ,” as recited in claim 1.
The Examiner did not err in finding that McKee discloses “a portable
computer system,” as recited in claim 10.
The Examiner erred in determining that McKee in view of Tsirkel
renders claims 5-9, 14-16, and 18-21 obvious.

DECISION
We reverse the Examiner’s rejection of claims 1-4 and 17 under 35
U.S.C. § 102(e) as anticipated by McKee.
We affirm the Examiner’s rejection of claims 10, 12, and 13 under 35
U.S.C. § 102(e) as anticipated by McKee.
We reverse the Examiner’s rejection of claims 5-9, 14-16, and 18-21
under 35 U.S.C. § 103(a) as unpatentable over McKee in view of Tsirkel.
We summarily affirm the Examiner’s rejection of claims 1-10 and 14-
21 under 35 U.S.C. § 103(a) as unpatentable over Narayanaswami in view of
McKee.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED

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CU